Facebook Inc v. Express Mobile Inc

1. Case Identification

• Case #: IPR2021-01457
• Patent #: 9,928,044
• Filed: September 1, 2021
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Express Mobile Inc.
• Challenged Claims: 1-2, 5-7, 11-12

2. Patent Overview

• Title: Systems and Methods for Presenting Information on a Mobile Device
• Brief Description: The ’044 patent discloses a system for generating code to provide content on a device's display. The system features an authoring tool configured to define a user interface (UI) object, associate it with a component from a database of web services, and produce code that, when executed by a "player" on a device, presents the web service component on the display.

3. Grounds for Unpatentability

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

• Prior Art Relied Upon: Anderson (a 2006 book on Java Studio Creator), Bowers (a 2003 book on web development), Jacobs (a 2006 book on XML for Flash), Ambrose-Haynes (a 2001 book on ColdFusion), and Geary (a 2004 book on JavaServer Faces).
• Core Argument for this Ground: Petitioner argued that the challenged claims combine two well-known technologies: creating a web application that uses a third-party web service and building that application using standard object-oriented programming techniques, specifically Java. The combination of references allegedly disclosed every element of the claims.
  • Prior Art Mapping: Petitioner asserted that Anderson, the primary reference, taught a complete system for building a Java application that accesses Google's web services. Anderson's "Java Studio Creator" was identified as the claimed "authoring tool." Petitioner mapped the Google Web Services Description Language (WSDL) file, explicitly referenced in Anderson and detailed in Bowers and Jacobs, to the "registry" storing "symbolic names" (e.g., doGoogleSearch) for web components. The UI objects in Anderson (e.g., a text field for input and a grid panel for output) were argued to correspond to the web service's inputs and outputs. Ambrose-Haynes was cited to show that the Java Virtual Machine (JVM) is the claimed device-specific "player" that executes the device-independent Java application. Geary was used to describe the underlying JavaServer Faces (JSF) technology, which Anderson's tool was built on, for creating standard UI component classes.
  • Motivation to Combine: A POSITA would combine these references because they all describe different aspects of the same common and commercially significant system: building a Java application to interact with Google's web services. Anderson provided an express motivation by identifying the specific Google WSDL file detailed in Bowers and by confirming its authoring tool was built on the JSF technology detailed in Geary. Combining these references was presented as merely consulting standard documentation for a technology stack.
  • Expectation of Success: Petitioner contended a POSITA would have had a high expectation of success, as the combination involved using standard, well-documented, and compatible Java technologies to achieve the predictable result of creating a web application that consumes a web service.

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

• Prior Art Relied Upon: The combination of references from Ground 1, in further view of NFS Administration (a 1993 book on UNIX Network File System).

• Core Argument for this Ground: Petitioner argued that claim 11, which adds the limitation that the application and player code is "provided over said network," recited a trivial and obvious design choice.

  • Prior Art Mapping: NFS Administration was cited for its teaching of using a distributed Network File System (NFS) to allow a computer to transparently access files (including software code) from remote storage over a network as if they were stored locally. Petitioner argued this well-known technique directly meets the claim 11 limitation.
  • Motivation to Combine: A POSITA developing a software application as described in Anderson would have been motivated to use a network file system like NFS for well-known benefits such as centralized file storage, simplified administration, improved data consistency, and version control, particularly in a collaborative development environment.
  • Expectation of Success: The expectation of success was argued to be high, as implementing network-based file storage using standard protocols was a routine task for developers at the time.

• Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 3-4) based on the combinations for Grounds 1 and 2, respectively, with the additional reference Witkowski (Patent 6,125,360) to provide an explicit teaching of a relational database in case the project storage disclosed in Anderson was found insufficient to meet the "database" limitation.

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 argued to be consistent with Java bytecode.
• "Player": Petitioner proposed "Device specific code, that is separate from the Application and interprets or executes the Application." This was mapped to the Java Virtual Machine (JVM), which is specific to an operating system.
• "Registry": Petitioner proposed "Database, XML file, or Portable Description Language file that exists on a computer." This construction was used to map the WSDL file (an XML file) described in the prior art to the claimed registry.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on the Fintiv factors was unwarranted. The parallel district court litigation was asserted to be in its early stages, with a trial date more than a year away and likely to be rescheduled due to a recent transfer of venue. Petitioner also stipulated that it would not pursue in litigation any invalidity ground on which the Board institutes IPR.
• Petitioner further argued that denial under §325(d) would be improper because the petition relied on new prior art references (e.g., Anderson, Bowers, Geary) and arguments that were not before the Examiner during prosecution or considered in any previously filed IPR petitions on the ’044 patent.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-2, 5-7, 11, and 12 of the ’044 patent as unpatentable.