PTAB

IPR2021-00709

Google LLC v. Express Mobile Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System for Authoring Web-Based Applications
  • Brief Description: The ’755 patent describes a system and method for authoring software applications for devices. The system uses an authoring tool and a database of web services to generate code that provides content for display on a device's platform.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 7, and 11 are obvious over Huang in view of Angelov.

  • Prior Art Relied Upon: Huang (Application # 2007/0118844) and Angelov (Application # 2007/0067421).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Huang, which teaches a system for developing and executing browser-based applications, discloses most limitations of independent claim 1. Huang's system included a "Designer" that functions as the claimed "authoring tool" and a "Player" that executes the application. Specifically, the Designer allowed a user to define user interface (UI) objects (e.g., text fields), select a web component using a symbolic name (e.g., "Opportunity"), and associate the UI object with that component through a binding process. Huang's system generated two forms of code: an "Application" (in device-independent XML format) and a "Player" (in device-dependent JavaScript). Petitioner contended that Huang disclosed symbolic names that are character strings without a persistent address and separately disclosed the web service address (URL). However, to the extent Huang did not explicitly teach storing these elements together in a formal "registry," Angelov was introduced. Angelov explicitly taught a web service registry (e.g., a UDDI registry) that stores listings of available services, including their names and network addresses (URIs). The combination of Huang’s functional components with Angelov’s registry structure was argued to meet all limitations of claim 1. For the dependent claims, Petitioner argued the combined teachings render them obvious because Angelov disclosed including input/output definitions in a registry (for claim 2), and Huang disclosed that its application and player code are provided over a network (for claim 11).
    • Motivation to Combine: A POSITA would combine Angelov with Huang because both relate to the field of web services. Angelov's disclosure of a standard registry for storing service names and addresses represented a well-known solution to the common problem of managing web service information. Petitioner argued a POSITA would be motivated to incorporate this conventional registry into Huang’s system as a predictable and beneficial modification to simplify and streamline the organization, maintenance, and access of web services.
    • Expectation of Success: Petitioner asserted a high expectation of success in making this combination. Integrating a well-understood data structure like a registry (from Angelov) into a web service application framework (from Huang) was a straightforward engineering task using known principles. The expected result—a more organized and efficient system for accessing web services—was entirely predictable.

4. Key Claim Construction Positions

  • Petitioner identified several claim terms previously construed in district court litigation involving the ’755 patent but argued that the Board need not adopt formal constructions because the prior art renders the claims obvious under any reasonable interpretation.
  • "application": Construed in district court as "device-independent code which contains instructions for a device and which is separate from the Player." Petitioner argued Huang’s XML-based application definitions, which are stored in a database and loaded into the Player, met this construction.
  • "player": Construed in district court as "device-specific code which contains instructions for a device and which is separate from the Application." Petitioner argued Huang’s JavaScript-based player, which provides a user interface that executes the application on a particular device’s browser, met this construction.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under the Fintiv factors would be inappropriate and that all factors favored institution.
  • Co-pending Litigation: Petitioner acknowledged the co-pending Express Mobile, Inc. v. Google LLC litigation in the Western District of Texas but stated it would seek a stay upon institution. The district court schedule was argued to be uncertain due to a pending motion to transfer venue to the Northern District of California, where 11 other cases involving the ’755 patent were pending.
  • Investment and Overlap: Petitioner argued that the district court case was in its early stages, with significant investment in claim construction, expert discovery, and trial preparation yet to occur. To prevent duplicative efforts, Petitioner stipulated that it would not pursue in district court any invalidity ground on which the IPR is instituted.
  • Public Interest: Petitioner emphasized a strong public interest in reviewing the ’755 patent, noting that the Patent Owner has asserted it in dozens of district court cases. Petitioner argued that this IPR was the sole pending challenge to the patent and that its resolution would promote overall system efficiency and integrity.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 2, 7, and 11 of Patent 9,063,755 as unpatentable.