PTAB

IPR2021-00700

Google LLC v. Express Mobile Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Designing and Building a Web Page
  • Brief Description: The ’397 patent describes a browser-based method and apparatus for designing and building websites. The system uses a WYSIWYG (what you see is what you get) build engine that allows a user to make selections from menus, with the resulting data being stored in a database and used to generate run-time files for the final website.

3. Grounds for Unpatentability

Ground 1: Claim 1 is obvious over Jammes in view of Lindholm.

  • Prior Art Relied Upon: Jammes (Patent 6,484,149) and Lindholm (The Java Virtual Machine Specification, 1997).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Jammes, which relates to software tools for developing and operating websites, discloses most limitations of claim 1. Jammes teaches a method for users ("store designers") to produce internet websites using an enhanced web browser. This system presents a hierarchical user interface with selectable icons (a "viewable menu") that allow the user to define relationships between products and groups. User actions, such as drag-and-drop operations, modify these relationships ("user selected settings"), and this information is stored in a product information database. Jammes further discloses generating a display (an updated user interface) substantially contemporaneously with the user's selections and generating a final website for consumers by retrieving this stored information from the database.

    Petitioner contended that Jammes does not explicitly disclose a "virtual machine capable of generating displays" or a "run time file" that "utilizes information stored in said database to generate virtual machine commands." To supply these limitations, Petitioner relied on Lindholm, which provides a complete specification for the Java Virtual Machine (JVM). Petitioner asserted that a POSITA would have found it obvious to implement the browser-based website design tool of Jammes using the well-known Java programming language and its associated JVM as taught by Lindholm. In this combination, a compiled Java program (a .class file) functions as the "run time file." This file, executed by the JVM, would retrieve relationship information from the Jammes database and generate the necessary bytecode ("virtual machine commands") to display the website content, thereby satisfying the remaining claim limitations.

    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would be motivated to combine the teachings for several reasons. Implementing a software-based process like that in Jammes using the Java language described in Lindholm was a popular, well-known approach that offered significant benefits, including platform portability and security. The petition highlighted that Jammes itself discloses the use of "Java applets" in the context of web programming, directly suggesting to a POSITA that leveraging the broader Java framework, including the JVM described in Lindholm, would be a logical and advantageous implementation choice.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination. Both Java programming and the use of a JVM were common, widespread tools for developing web-based applications. The proposed implementation was described as a straightforward application of a known computing tool (the JVM) to a known problem (creating a browser-based application), which would predictably result in an operable system without requiring undue experimentation.

4. Key Claim Construction Positions

  • Petitioner argued that express claim construction was not necessary because its unpatentability analysis holds under any of the constructions previously adopted by district courts or the Board for key terms in claim 1.
  • For the term "at least one run time file," Petitioner noted prior constructions including "one or more files, including a run time engine, that are downloaded or created... and executed by a browser to display a webpage." Petitioner asserted that in the proposed combination, a compiled Java .class file meets this definition, as it is a file executed at runtime by the JVM (the run time engine) to display web pages.

5. Arguments Regarding Discretionary Denial

  • General Plastic Factors: Petitioner argued against discretionary denial based on prior proceedings (a previously denied IPR by a different party and a pending ex parte reexamination) by emphasizing that it was not a party to those proceedings and this was its first challenge to the ’397 patent. Petitioner contended this factor weighs heavily against denial.
  • Fintiv Factors: Petitioner argued that the Fintiv factors for co-pending district court litigation also favored institution. Petitioner represented it would seek a stay of the litigation if the inter partes review (IPR) was instituted. It also noted that the litigation schedule was uncertain due to a pending motion to transfer venue, and that the most burdensome and expensive phases of the litigation had not yet occurred. Furthermore, Petitioner stipulated that it would not pursue in district court any invalidity ground on which the IPR is instituted, thus avoiding duplicative efforts and the risk of conflicting decisions.

6. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claim 1 of the ’397 patent as unpatentable.