PTAB

IPR2021-01145

SAP America Inc v. Express Mobile Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Generating Code to Provide Content to a Device
  • Brief Description: The ’287 patent describes a system for generating applications for display on various devices. The system uses an authoring tool to create a device-independent application and a device-dependent "Player," which interprets the application to display content based on inputs and outputs from web services.

3. Grounds for Unpatentability

Ground 1: Obviousness over Huang - Claims 1, 3, 5-7, 11-13, 15, 17, 19-21, and 24-27 are obvious over Huang.

  • Prior Art Relied Upon: Huang (Application # 2007/0118844).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Huang, which teaches a framework for developing and executing browser-based applications, disclosed all limitations of the challenged claims. Huang’s system included a "Designer" (authoring tool) and a "Player" provided to a device's browser. The Designer creates applications stored in device-independent XML format, which define bindings between user interface (UI) components and web service attributes. Petitioner asserted that Huang's use of character string names (e.g., "OppName," "CloseDate") for web service attributes met the "symbolic name" limitations of claim 1. Huang’s framework provided a device-independent application (XML definitions) and a device-dependent player (code executed in a specific browser) to the device for execution, fulfilling the core architectural claims.
    • Motivation to Combine (for §103 grounds): Not applicable (single reference ground).
    • Expectation of Success (for §103 grounds): Not applicable (single reference ground).

Ground 2: Obviousness over Huang in view of Sanders - Claims 1, 3, 5-7, 11-13, 15, 17, 19-21, and 24-27 are obvious over Huang in view of Sanders.

  • Prior Art Relied Upon: Huang (Application # 2007/0118844) and Sanders (Patent 6,938,077).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that to the extent Huang did not explicitly teach a device-dependent "Player," Sanders remedied this deficiency. Sanders disclosed delivering device-specific content by either storing multiple website versions on the server or using a single version with embedded, executable client-side scripts to optimize content for a specific browser or operating system.
    • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Sanders' teachings with Huang's system to ensure the Player was compatible with various device operating systems and browsers. This would maximize the Player's functionality and further Huang's goal of interoperability by allowing a single device-independent application to run across different platforms using a compatible, device-dependent Player.
    • Expectation of Success (for §103 grounds): A POSITA would have expected success in this combination, as implementing device-specific client-side code was a well-known technique for achieving cross-browser compatibility.

Ground 3: Obviousness over Huang in view of Gong - Claims 1, 3, 5-7, 11-13, 15, 17, 19-21, and 24-27 are obvious over Huang in view of Gong.

  • Prior Art Relied Upon: Huang (Application # 2007/0118844) and Gong (Patent 6,915,306).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed the "preferred UI object" limitation (claim 1.a.4) and the automatic selection of that object (claim 1.d.2). Petitioner argued that if Huang did not explicitly disclose these features, Gong did. Gong taught techniques for automatically generating UI elements based on data types and default templates, such as creating list boxes or text boxes appropriate for the underlying data.
    • Motivation to Combine (for §103 grounds): A POSITA would be motivated to apply Gong’s teachings of automatically generating default UI objects to Huang's authoring tool. This would reduce the burden on the application developer by automatically selecting suitable or preferred UI components (e.g., a dropdown menu for a data field with predefined options), making the authoring process faster and less error-prone.
    • Expectation of Success (for §103 grounds): The combination was argued to be a predictable application of known UI design principles to improve the efficiency of a known type of development tool.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Huang with both Sanders and Gong. Further grounds challenged claims 3, 7, 17, and 21 (reciting "text chat" and "simultaneous chat sessions") by adding Bearman (Application # 2004/0260820A1), which taught using an instant messaging client for real-time data exchange between users and web services.

4. Arguments Regarding Discretionary Denial

  • §325(d) - Same or Substantially Same Art or Arguments: Petitioner argued against discretionary denial under §325(d), stating that the primary references (Huang, Sanders, Gong, Bearman) were not considered by the examiner during the original prosecution. Petitioner also distinguished this petition from a co-pending IPR on the same patent (IPR2021-00710), asserting reliance on different grounds, different prior art, and substantially different arguments regarding the mapping of Huang's disclosures to the claims.
  • §314(a) - Parallel Litigation (Fintiv Factors): Petitioner argued against discretionary denial under Fintiv, asserting that the parallel district court case ("SAP Litigation") was in its early stages. At the time of filing, infringement contentions had only recently been served, invalidity contentions were not yet due, no claim construction ruling had been issued, and no trial date was set. Petitioner noted the district court had already shown a willingness to stay litigation pending patent office reviews.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 3, 5-7, 11-13, 15, 17, 19-21, and 24-27 of the ’287 patent as unpatentable.