Facebook Inc v. Express Mobile

1. Case Identification

• Case #: IPR2021-01226
• Patent #: 7,594,168
• Filed: July 6, 2021
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Express Mobile Inc.
• Challenged Claims: 1-4 and 6

2. Patent Overview

• Title: Browser Based Web Site Generation Tool and Run Time Engine
• Brief Description: The ’168 patent describes a method and system for designing and building websites. The technology involves a browser-based build engine that constructs a database of website objects and a runtime engine that generates the final website for a user’s browser from the stored database.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 and 6 are obvious over Reynolds, Lemay Web, Lemay Java, Perry, and Witkowski.

• Prior Art Relied Upon: Reynolds (Patent 6,052,717), Lemay Web (a 1996 book on HTML publishing), Lemay Java (a 1996 book on Java programming), Perry (a 1992 book on C++ programming), and Witkowski (Patent 6,125,360).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Reynolds taught the core system of the challenged claims, describing an "ibook" system with a server application (the "build engine") that accepts user input to create web pages composed of objects ("passages") and stores them in databases. Reynolds also disclosed a client-side navigation tool (the "runtime engine") that retrieves these passages from the database to generate the "ibook" website. Petitioner asserted that Lemay Web taught adding animated objects to web pages using pre-built Java applets, where HTML parameters define the object’s "style," including the sequence of images ("transformations") and timing controls ("time lines"). To satisfy narrower constructions of "time lines" requiring an asynchronous process, Petitioner cited Lemay Java for its teaching of using multithreading for Java applet animations. Finally, Petitioner argued that implementing Reynolds’ database using a "multidimensional array" was an obvious design choice, citing Perry and Witkowski as evidence of the elementary and well-known nature of organizing data in tables with rows and columns (i.e., relational databases).
  • Motivation to Combine: A POSITA would combine Reynolds with Lemay Web and Lemay Java to enhance the static "ibook" system with dynamic, animated content, thereby enriching the user experience. Lemay Web provided an express motivation by detailing the ease of using pre-built applets. A POSITA would implement the database described in Reynolds using the well-known multidimensional array structures shown in Perry and Witkowski to leverage mature, reliable, and efficient relational database technology, a suitable alternative explicitly mentioned in Reynolds.
  • Expectation of Success: Petitioner contended a POSITA would have a high expectation of success, as the combination involved integrating known web animation techniques into a web creation platform and using standard, well-documented database structures.

Ground 2: Claims 1-4 and 6 are obvious over Reynolds, Lemay Web, Lemay Java, Perry, Witkowski, and Coombs.

• Prior Art Relied Upon: All references from Ground 1, plus Coombs (a 1998 book on setting up an internet site).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground incorporated all arguments from Ground 1 and added Coombs to preemptively address a narrow interpretation of the term "website" as requiring a dedicated domain name. Petitioner argued that Coombs taught that registering a unique domain name was a basic, fundamental first step for establishing any website on the internet.
  • Motivation to Combine: A POSITA would be motivated to apply Coombs' teaching to the Reynolds "ibook" system to make the resulting website easily accessible to visitors via a simple URL. Registering a domain name would also facilitate the website's discoverability by allowing it to be indexed by popular search engines, a goal explicitly contemplated by Reynolds.
  • Expectation of Success: Success was expected because registering a domain name was a simple, common, and entirely predictable process for making any collection of web pages publicly accessible as a cohesive "website."

4. Key Claim Construction Positions

• Petitioner stated that express claim construction was unnecessary because the challenged claims are unpatentable under any reasonable construction, including those previously proposed in related litigation.
• "time lines": Petitioner argued that the style parameters taught in Lemay Web (e.g., STARTIMAGE, PAUSE) met constructions requiring "a sequence of changes" or an "independent process that defines one or more values for an object... over time." To address a more restrictive construction requiring an "independent asynchronous process," Petitioner relied on Lemay Java's teaching of multithreading for Java applets.
• "multidimensional array": Petitioner asserted this was a well-known data structure, exemplified by the common tables with rows and columns used in relational databases, as taught by Perry and Witkowski.
• "child object": Petitioner argued that the "derivative passages" in Reynolds, which are "spawned by" and "depend on" parent passages, met the proposed constructions for this term.

5. Arguments Regarding Discretionary Denial

• §314(a) / Fintiv: Petitioner argued against discretionary denial, asserting that the parallel district court litigation was in its early stages. At the time of filing, claim construction briefing was still ongoing, no claim construction order had been issued, and the trial was scheduled more than a year away. Petitioner also stipulated it would not pursue any instituted ground in the district court litigation.
• §325(d): Petitioner contended that denial under §325(d) would be improper because none of the primary references (Reynolds, Lemay Web, Lemay Java, Coombs, Perry) were cited or considered during the original prosecution. It was argued these references supply the very limitations the Examiner previously found missing from the art of record. The asserted combinations were also different from those in a related ex parte reexamination.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-4 and 6 of the ’168 patent as unpatentable.