Google LLC v. Express Mobile Inc

1. Case Identification

• Patent #: 9,471,287
• Filed: March 31, 2021
• Petitioner(s): Google LLC
• Patent Owner(s): Express Mobile, Inc.
• Challenged Claims: 1, 2, 7, and 11

2. Patent Overview

• Title: System and Method for Authoring Applications for Devices
• Brief Description: The ’287 patent relates to a system for authoring software applications for mobile devices. The system uses an authoring tool to generate code that allows content from web services to be presented on a device's display.

3. Grounds for Unpatentability

Ground 1: Obviousness over Huang and Angelov - 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 argued that Huang, which was not considered during prosecution, disclosed nearly all limitations of the challenged claims. Huang described a system for developing and executing browser-based software applications, including a web services "designer" (the claimed "authoring tool") that generates code to display content from web services on a user's computer (the claimed "device"). Huang’s designer allowed a user to select a web service object via a symbolic name (e.g., "Opportunity"), bind it to a user interface (UI) object (e.g., a text area), and generate an application to interact with that web service. Petitioner asserted Huang taught the production of device-independent code (an XML representation of the application) and device-dependent code (a JavaScript "Player" that executes the application in a browser).

  • Petitioner contended that the primary element missing from Huang was an explicit "registry" storing both the symbolic names and network addresses of the web services. To supply this, Petitioner introduced Angelov. Angelov, also not considered during prosecution, disclosed a standard web services model that included a "registry" (such as a UDDI registry) for storing "listings of various 'available' services." This registry was described as containing details about web services, including their location (e.g., URI or network address) and name, to assist applications in finding and using them.

  • For dependent claim 2, which added a registry that includes "definitions of input and output," Petitioner argued Angelov taught that its registry could provide details on the "capabilities" and "communication semantics" of a web service, which a person of ordinary skill in the art (POSITA) would understand to be definitions of input and output. For claim 11, which required the code to be "provided over said network," Petitioner argued Huang explicitly taught that its server provided the designer and player components to a user's browser via network protocols like HTTP or HTTPS.

  • Motivation to Combine: Petitioner argued a POSITA would combine Huang and Angelov because both addressed the same technical field of web service applications. A POSITA implementing Huang's system, which relied on accessing web services, would have been motivated to incorporate a well-known registry as taught by Angelov. Using a registry to maintain information about web services, including their names and network addresses, was a conventional, straightforward, and beneficial way to manage and facilitate access to those services. This modification would improve the maintainability and robustness of Huang's system.

  • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination. The integration of a web service registry (Angelov) into a system that uses web services (Huang) was a predictable combination of known components according to established principles. No technical hurdles would have prevented a skilled artisan from storing the addresses of Huang's web services in a registry to facilitate their lookup and use.

4. Key Claim Construction Positions

• Petitioner asserted that the challenged claims were unpatentable under any reasonable construction but analyzed them under the plain and ordinary meaning as well as constructions previously adopted by a district court in related litigation. Key constructions noted included:
  • "application": "device-independent code which contains instructions for a device and which is separate from the Player"
  • "player": "device-specific code which contains instructions for a device and which is separate from the Application"
  • "authoring tool": "a system, with a graphical interface, for generating code to display content on a device screen"
• Petitioner argued that Huang's XML application definitions met the construction for "application," its JavaScript code for executing the application met the construction for "player," and its "Application Designer" met the construction for "authoring tool."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv was inappropriate.
  • Petitioner stated it would seek a stay of the co-pending district court case (the "Texas Litigation") upon institution. It also noted a pending motion to transfer venue, which, if granted, would likely lead to a stay and reset the trial schedule.
  • While the trial date was scheduled for approximately one month before the Final Written Decision (FWD) deadline, Petitioner argued the date was uncertain, and significant investment in the litigation had not yet occurred (e.g., invalidity contentions were not yet served, and the claim construction hearing was months away).
  • Petitioner stipulated that it would not pursue in district court any invalidity ground on which the Board institutes review, eliminating concerns of duplicative efforts.
  • Petitioner emphasized a strong public interest in reviewing the ’287 patent, noting it has been asserted in dozens of district court cases and that this was the sole pending IPR challenge against it.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 2, 7, and 11 of the ’287 patent as unpatentable.