PTAB

IPR2021-00711

Google LLC v. Express Mobile Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System for Authoring Applications
  • Brief Description: The ’044 patent discloses a method and system for authoring software applications, particularly for mobile devices. The system features an authoring tool that generates application code by allowing a user to define user interface (UI) objects and associate them with components from a database of web services.

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 discloses the core limitations of the challenged claims. Huang teaches a system for developing browser-based software applications using an "Application Designer" (an authoring tool) and an "Application Player." The designer allows a user to generate code by creating bindings between application components (UI objects) and web service objects. Crucially, Huang discloses selecting a "symbolic name" (e.g., "Opportunity") from a list to represent a web service object, where the name is a character string that does not contain a persistent address. The authoring tool then associates the defined UI object with the web component corresponding to this symbolic name. Petitioner asserted this mapping covers the majority of limitations in independent claim 1.

    • For limitations in dependent claims, Petitioner argued that the combination of Huang and Angelov renders them obvious. Specifically for claim 2, which requires storing information in a "registry" that includes input/output definitions, Petitioner contended that while Huang teaches storing application definitions in a database, it does not explicitly call it a registry with I/O definitions. Angelov supplies this teaching by disclosing a web service "registry" that stores not only a list of available services but also their capabilities, such as specific methods, communication semantics, and the messaging format needed to invoke the service (i.e., definitions of input and output). For claim 11, requiring the generated code to be provided over a network, Petitioner pointed to Huang's incorporation by reference of the Nachnani application, which explicitly discloses a server sending the application to a player over a network.

    • Motivation to Combine (for §103 grounds): Petitioner argued that Huang and Angelov are in the same technical field of web services and address similar problems. A person of ordinary skill in the art (POSITA) would combine Angelov’s teachings of a web service registry with Huang’s authoring system to improve its functionality and efficiency. Huang’s system requires interaction with web services, but it does not explicitly disclose a centralized mechanism for storing all necessary metadata, such as the network address (URL) and input/output definitions. Angelov’s registry provides exactly this solution. A POSITA would combine these teachings to create a more robust and predictable system by storing the web service address and I/O definitions from Angelov in the same memory or database structure where Huang stores its symbolic names, thereby facilitating reliable access to the web services.

    • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in making this combination. The proposed modification involved applying a conventional data storage solution (a registry, as taught by Angelov) to a known web service authoring system (Huang) to achieve the predictable result of more efficient and reliable web service invocation.

4. Key Claim Construction Positions

  • Petitioner argued that the Board need not formally construe any claim terms to resolve the controversy because the challenged claims are obvious under any reasonable construction.
  • Petitioner noted that terms such as "application," "player," and "authoring tool" had been construed in co-pending district court litigation. However, Petitioner contended that the combination of Huang and Angelov anticipates the claims' limitations under both their plain and ordinary meaning and these prior constructions.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. The key arguments were:
    • The co-pending district court litigation was in its early stages, with significant investment still required before trial. Invalidity contentions had not yet been served, and the trial date was uncertain due to a pending motion to transfer venue.
    • Petitioner stated its intent to seek a stay of the litigation pending the outcome of the IPR and stipulated that it would not pursue in court any invalidity ground on which the IPR is instituted, thereby avoiding duplicative efforts.
    • Petitioner asserted a strong public interest in reviewing the ’044 patent, which it characterized as having been asserted against dozens of companies, arguing that canceling unpatentable claims would promote "overall system efficiency and integrity."

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 7, and 11 of Patent 9,928,044 as unpatentable.