Atlassian Corp PLC v. Express Mobile Inc

1. Case Identification

• Case #: IPR2021-01471
• Patent #: 9,063,755
• Filed: August 31, 2021
• Petitioner(s): Atlassian Corp. PLC and Atlassian, Inc.
• Patent Owner(s): Express Mobile, Inc.
• Challenged Claims: 23-25

2. Patent Overview

• Title: Method of Providing Information to a Device from a Web Component of a Web Service
• Brief Description: The ’755 patent discloses a method for deploying software applications that interact with web services. The method involves a client device accepting a device-dependent "first code" and a device-independent "second code," which contains symbolic names for web service inputs and outputs, enabling the device to communicate with the web service.

3. Grounds for Unpatentability

Ground 1: Obviousness over Arner - Claims 23-25 are obvious over Arner.

• Prior Art Relied Upon: Arner (Patent 8,341,595).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Arner discloses all limitations of the challenged claims. Arner describes a system for developing and running Rich Internet Applications (RIAs) on mobile devices.
    • The device-dependent "first code" is met by Arner's "application player," which resides on the client device and is specific to the device's operating environment (e.g., written in C or C#). Petitioner asserted it would be obvious to deliver this player over a network.
    • The device-independent "second code" is met by Arner's RIAs, which are platform-independent XML files provided to the device over the network.
    • Arner’s use of a "WSDL Integrator" tool reads WSDL files to incorporate web service functionality. These WSDL files contain a plurality of symbolic names for inputs and outputs (e.g., "Number," "ListingName") and function as the claimed "registry," as the ’755 patent specification states a registry can be an XML file.
    • Arner discloses the player executing, processing symbolic names from the RIA, and sending SOAP requests to a web service, which in turn sends a SOAP response (a device-independent "third code") containing web service output back to the device.
  • Motivation to Combine (for §103 grounds): As a single-reference obviousness challenge, the motivation was to apply known techniques. For instance, Petitioner argued a POSITA would have been motivated to deliver Arner's device-dependent player over a network for efficiency, as this was a commonplace method for software distribution.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in implementing Arner's disclosed system, which inherently uses the claimed combination of device-dependent and device-independent components to access web services.

Ground 2: Obviousness over Huang and Shenfield - Claims 23-25 are obvious over Huang in view of Shenfield.

• Prior Art Relied Upon: Huang (Application # 2007/0118844) and Shenfield (Application # 2006/0200749).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Huang discloses a browser-based system analogous to the claimed invention, and Shenfield provides the missing teaching of a truly device-dependent first code.
    • Huang discloses a "Player" (first code) that executes XML-based applications (device-independent second code) to access web services. The applications contain "bindings" that map application components to web service attributes using symbolic names (e.g., "OppName"). Huang’s system uses WSDL descriptions for web services, which serve as the claimed "registry."
    • While Huang’s Player is delivered over a network and executes the application, Petitioner argued it may not be explicitly "device-dependent." Shenfield was introduced to supply this teaching, disclosing a "native runtime environment" that is compiled for a specific processor and operating system.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Shenfield's teachings with Huang's system to facilitate Huang's goal of creating platform-neutral applications that can run on any device. To make Huang’s device-independent XML applications run on a wide variety of devices (some without browsers), a POSITA would have been motivated to implement Huang’s Player as a device-specific native runtime, as taught by Shenfield. This would ensure the applications display and function correctly across different device platforms.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success in modifying Huang's Player to incorporate the native, device-dependent runtime concepts from Shenfield. The techniques for developing such players were well known, and both references describe systems where a runtime environment interprets and executes an XML-based application.

4. Key Claim Construction Positions

• "device-dependent code": Petitioner adopted the district court construction: "code that is specific to the operating system, programming language, or platform of a device."
• "device-independent code": Petitioner adopted the district court construction: "code that is not specific to the operating system, programming language, or platform of a device."
• "registry": Petitioner disagreed with a district court construction of "a database that is used for computing functionality." Petitioner argued this is too narrow, as the ’755 patent specification explicitly states a registry can be an "XML file." Petitioner asserted the claims are obvious under either construction, as the prior art WSDL files (XML) function as a registry, and it would be obvious to store these WSDLs in a database.

5. Arguments Regarding Discretionary Denial

• Petitioner presented substantial arguments against discretionary denial under 35 U.S.C. §314(a) and §325(d).
  • Fintiv Factors: Petitioner argued the parallel district court case was in its infancy, with a Markman hearing having just occurred and discovery just beginning. Petitioner also stipulated that it would not pursue in district court any invalidity ground on which the IPR is instituted.
  • Serial Petitions: Petitioner argued that denial under General Plastic was inappropriate because, although this was the fourth IPR against the ’755 patent, Atlassian was not a petitioner in the other three, and the challenged claims (23-25) were not at issue in the prior petitions.
  • Advanced Bionics Standard: Petitioner argued denial was improper because the primary references (Arner and Shenfield) were never cited or considered during prosecution, and the combination of Huang and Shenfield was never considered.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 23-25 of Patent 9,063,755 as unpatentable.