Facebook Inc v. Express Mobile Inc

1. Case Identification

• Case #: IPR2021-01456
• Patent #: 9,471,287
• Filed: September 1, 2021
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Express Mobile Inc.
• Challenged Claims: 1-2, 5-7, 11, and 12

2. Patent Overview

• Title: Systems and Methods for Integrating Widgets on Mobile Devices
• Brief Description: The ’287 patent discloses a system for generating code to provide content on a device display. The system features an authoring tool that creates a device-independent "Application" and a device-dependent "Player," which work together to integrate functionality from third-party web services.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-2, 5-7, and 12 over Anderson, Bowers, Jacobs, Ambrose-Haynes, and Geary

• Prior Art Relied Upon: Anderson (a 2006 guide on Java Studio Creator), Bowers (a 2003 book on web development), Jacobs (a 2006 book on XML), Ambrose-Haynes (a 2001 book on ColdFusion), and Geary (a 2004 book on JavaServer Faces).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued the claims simply describe a conventional process for creating a Java application that accesses a web service. Anderson, the primary reference, was asserted to teach an authoring tool (Java Studio Creator) for building Java applications that utilize Google's web services, including designing a user interface and incorporating web service functions. The "registry" limitation was allegedly met by Anderson's use of a Web Services Description Language (WSDL) file to define the web service's inputs and outputs. Bowers and Jacobs were cited to provide further detail on the Google WSDL file, confirming it is an XML file that qualifies as a "registry" and showing concrete examples of data exchange. Geary was used to supply teachings on standard JavaServer Faces (JSF) classes (e.g., UIInput, UIOutput) for the claimed UI objects, as Anderson’s tool is based on JSF technology. Ambrose-Haynes was argued to teach that the Java Virtual Machine (JVM) is the device-dependent "Player" that interprets and executes device-independent Java bytecode (the "Application").
  • Motivation to Combine: A POSITA would combine Anderson with Bowers and Jacobs because they all describe the same Google web service, and Anderson's express identification of the WSDL file would motivate further investigation. A POSITA would combine Anderson with Geary because Anderson expressly states its authoring tool is built on JSF technology. A POSITA would combine Anderson with Ambrose-Haynes to understand the fundamental mechanics of the JVM, which is essential to executing the Java applications described by Anderson.
  • Expectation of Success: Petitioner asserted a high expectation of success because the combination involved using standard, compatible software technologies for their intended and well-known purposes.

Ground 2: Obviousness of Claim 11 over Anderson, et al., in view of NFS Administration

• Prior Art Relied Upon: The combination for Ground 1, and NFS Administration (a 1993 guide on Network File System).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that claim 11, which adds the limitation that the "Player" and "Application" code is "provided over said network," recites a well-known and obvious design choice. NFS Administration was asserted to teach a distributed file system that allows applications to transparently access files from remote storage over a network as if they were stored locally, directly teaching the concept of providing software code over a network.
  • Motivation to Combine: A POSITA developing a software application as taught by Anderson would be motivated to use a network file system like NFS to centralize file storage. This common practice would simplify administration, ensure version consistency, and reduce storage costs, all of which are particularly beneficial in a software development environment.
  • Expectation of Success: Petitioner asserted that the combination was straightforward, as network file systems were a standard feature of operating systems well before the patent's priority date.

4. Key Claim Construction Positions

• Petitioner argued that while express claim construction was not necessary for its unpatentability analysis, its arguments were consistent with the following proposed constructions:
  • "Application": Device-independent code, separate from the Player, which is interpreted or executed by the Player.
  • "Player": Device-specific code, separate from the Application, which interprets or executes the Application.
  • "registry": A database, XML file, or Portable Description Language file existing on a computer.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv, asserting that the co-pending district court litigation was in its early stages. Petitioner noted that the trial was scheduled more than a year away and that a recent transfer of the case to a new venue made the schedule uncertain. Petitioner also stipulated it would not pursue any instituted inter partes review (IPR) grounds in the litigation.
• Petitioner also argued against denial under 35 U.S.C. §325(d), stating that the petition relied on new prior art not previously considered during prosecution or in other co-pending IPRs involving the ’287 patent.

6. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-2, 5-7, 11, and 12 of the ’287 patent as unpatentable.