PTAB

IPR2021-01455

Facebook Inc v. Express Mobile Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Systems and Methods for Presenting Information on Mobile Devices
  • Brief Description: The ’755 patent discloses a system for generating code to provide content on a device's display. The system uses an authoring tool to access a registry of web services, define a user interface (UI) object, associate the object with a web service component, and produce both a device-independent "Application" and a device-dependent "Player" to execute it.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1, 2, and 5-7 over Anderson, Bowers, Jacobs, and Ambrose-Haynes

  • Prior Art Relied Upon: Anderson (a 2006 guide for Java Studio Creator), Bowers (a 2003 book on web development), Jacobs (a 2006 book on XML for Flash), and Ambrose-Haynes (a 2001 book on ColdFusion).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the prior art teaches a conventional process for creating a platform-independent Java application that accesses a web service. Anderson, the primary reference, disclosed the Java Studio Creator as the claimed "authoring tool" for building web applications. The combination of Anderson, Bowers, and Jacobs taught using a Web Services Description Language (WSDL) file for the Google web service as the claimed "registry," which stores "symbolic names" (e.g., doGoogleSearch) and the web service address. Ambrose-Haynes was cited to confirm that Java applications are device-independent code (the "Application") that run on a device-dependent Java Virtual Machine or JVM (the "Player"). The combined teachings disclosed an authoring tool that defines UI objects (e.g., text fields, result displays), associates them with a web service method like doGoogleSearch, and produces a Java application and a JVM player to execute it, thereby meeting the limitations of independent claim 1 and its dependents.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) developing a Java application as taught by Anderson would be motivated to consult Bowers and Jacobs for detailed information on the Google WSDL file that Anderson expressly identifies. A POSITA would also consult a reference like Ambrose-Haynes to understand the well-known, fundamental aspects of Java's platform independence, such as the role of the JVM, which Anderson assumes. The references were analogous art directed to the common goal of web application development using web services.
    • Expectation of Success: A POSITA would have had a high expectation of success because the combination involved using standardized, well-documented technologies (Java, WSDL, SOAP) for their intended and well-known purposes.

Ground 2: Obviousness of Claim 11 over Anderson, Bowers, Jacobs, and Ambrose-Haynes in Further View of NFS Administration

  • Prior Art Relied Upon: The combination from Ground 1 in view of NFS Administration (a 1993 guide for UNIX System V Network File System).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that claim 11 adds the limitation that the code for the "Player" and "Application" is "provided over said network." NFS Administration disclosed a distributed file system, a well-known technology by 2008, that allows a computer to transparently access files from remote storage over a network as if they were stored locally. Petitioner argued that applying this teaching to the system of Ground 1 would result in the "Application" and "Player" code being stored on a remote server and provided over a network to the executing device, rendering claim 11 obvious.
    • Motivation to Combine: A POSITA would combine the web development system of Ground 1 with the network file storage of NFS Administration to address common problems in software development. Using a centralized network file system enhances consistency and simplifies administration for development teams, as all developers can work from the same set of shared files, preventing versioning conflicts. This was a known solution to a known problem. Furthermore, software components like the JVM were commonly downloaded over the internet.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success, as implementing a system to retrieve code from a remote location using a mature technology like NFS would have been trivial and transparent to the application itself.

4. Key Claim Construction Positions

  • "Application": Petitioner proposed "Device-independent code which contains instructions for a device, is separate from the Player, and is interpreted or executed by the Player." This construction was used to map Java bytecode to the claimed "Application."
  • "Player": Petitioner proposed "Device specific code, that is separate from the Application and interprets or executes the Application." This was critical for mapping the Java Virtual Machine (JVM), which is platform-specific, to the claimed "Player."
  • "registry": Petitioner proposed "Database, XML file, or Portable Description Language file that exists on a computer." This construction allowed the Google WSDL file, which is an XML file, to satisfy the "registry" limitation.

5. Arguments Regarding Discretionary Denial

  • §314(a) / Fintiv: Petitioner argued against discretionary denial, asserting that the co-pending district court litigation was in its early stages. A trial was scheduled more than a year away, and the case had recently been transferred, making the existing schedule unlikely to hold. Petitioner also committed not to pursue in litigation any invalidity ground on which an inter partes review (IPR) is instituted.
  • §325(d): Petitioner contended that denial under §325(d) was inappropriate because the petition relied on new prior art references that were not cited or considered during the original prosecution of the ’755 patent.

6. Relief Requested

  • Petitioner requested institution of an IPR and cancellation of claims 1, 2, 5-7, and 11 of the ’755 patent as unpatentable.