PTAB

IPR2022-00133

Ebates Performance Marketing Inc v. IBM Corp

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Generating Portal Pages with Stacked Portlets
  • Brief Description: The ’234 patent relates to graphical user interfaces for customized portal pages. It addresses the problem of cluttered interfaces by disclosing methods for grouping and "stacking" portlets based on commonalities, and presenting them as a "stack of stacks" that a user can navigate.

3. Grounds for Unpatentability

Ground 1: Obviousness over GridSphere References - Claims 1-2, 4-8, 10-14, and 16-18 are obvious over GridLab in view of Gridsphere1 and Gridsphere2.

  • Prior Art Relied Upon: GridLab (a 2003 portal design paper by Novotny et al.), Gridsphere1 (a 2004 framework paper by Novotny et al.), and Gridsphere2 (a 2004 framework paper by Novotny et al.).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued the combination discloses every limitation of the independent claims. GridLab taught a portal architecture with customizable layouts using components called a PortletTabbedPane and PortletTab, explicitly enabling a multi-level tabbed structure to categorize portlets. Gridsphere1 and Gridsphere2 provided concrete visual examples of this structure, showing a portal with main tabs and sub-tabs. Petitioner contended this arrangement meets the "stack of stacks" limitation: each main tab is a "stack," and the group of portlet-containing sub-tabs within it constitutes a "stack of portlets." Selecting a main tab presents its stack of portlets while the others remain not presented, thus teaching the claimed control and selection functionality.
    • Motivation to Combine: A POSITA would combine these references because they were authored by the same individuals, describe the same GridSphere portal technology, and are highly interrelated. Petitioner asserted a POSITA would view them as a single collective work, where Gridsphere1 and Gridsphere2 merely supplement GridLab’s earlier disclosure with illustrative examples and further implementation details.
    • Expectation of Success: A POSITA would have a high expectation of success because the references describe the same software and provide implementation details. It would be trivial to use the visual examples and portal details from Gridsphere1 and Gridsphere2 to implement the multi-level tabbed structure described in GridLab.

Ground 2: Obviousness over GridSphere References and Chaudhri - Claims 1-2, 4-8, 10-14, and 16-18 are obvious over the combination of Ground 1 in view of Chaudhri.

  • Prior Art Relied Upon: The references from Ground 1, further in view of Chaudhri (Patent 7,490,295).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground reinforces Ground 1 by arguing that Chaudhri’s teachings of overlapping "widgets" (analogous to portlets) on a dashboard explicitly disclose the claimed "stacking." Chaudhri taught that widgets "may overlap one another" to reduce clutter and save screen space. Petitioner asserted this provides an express teaching of placing portlets in front of or behind one another, fulfilling the broadest interpretation of the "stacking" limitation.
    • Motivation to Combine: A POSITA would combine Chaudhri’s teachings with the GridLab portal to provide an uncluttered and easy-to-use interface, a shared goal of both references. This combination would be particularly useful for improving the user experience on small-screen devices like PDAs, which GridLab was designed to support. The use of overlapping windows was a well-known technique for managing limited GUI space.
    • Expectation of Success: Success was reasonably expected because both GridLab and Chaudhri taught saving state information for GUI elements (e.g., position, size). Modifying GridLab’s software to also save the Z-order (stacking order) of portlets, as taught by Chaudhri, would have been a minimal and straightforward software modification.

Ground 3: Obviousness over Prior Art and Rose - Claims 1, 3, 7, 9, 13, and 15 are obvious over the combination of Ground 1 or 2 in view of Rose.

  • Prior Art Relied Upon: The references from Ground 1 or 2, further in view of Rose (a 1993 paper on content-aware file interfaces).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addresses claims requiring the determination of stackability based on common content (e.g., claims 3, 9, 15). While GridLab determined stacking based on a user’s saved profile, Rose taught an alternative: automatically grouping and stacking items by indexing their content and extracting "descriptive keywords" to create "sub-piles." This directly maps to the limitation of examining "content elements and markup elements" to identify a commonality for stacking.
    • Motivation to Combine: A POSITA would apply Rose’s known content-indexing and sub-piling methodology to GridLab’s portlets to provide an improved, automated method of categorization. When a user added a new portlet, it would have been obvious to apply Rose's technique to index its content and automatically suggest or place it in a content-relevant tab within the GridLab portal.
    • Expectation of Success: Success was expected because content indexing was a well-known and trivial technique at the time. GridLab’s portlets were packaged in text-readable WAR files (containing XML, JSP, etc.) that were simple to index using the conventional methods disclosed by Rose.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) against claims 5, 11, and 17 based on the Ground 1 or 2 combinations in view of Hesmer (the ’538 application), which taught explicitly querying a user to determine portlet placement in a portal layout.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under both General Plastic and Fintiv.
  • General Plastic (Serial Petitions): Petitioner contended that denial was unwarranted because this petition was filed by a different party (Rakuten) than a prior IPR filed by Zillow. Furthermore, Petitioner asserted it presented different prior art and substantively distinct invalidity grounds compared to the Zillow petition.
  • Fintiv (Parallel Litigation): Petitioner argued that the co-pending district court litigation was in its earliest stages, with no trial date set, no claim construction conducted, and no significant discovery undertaken. Petitioner asserted that a final written decision in the IPR would issue well before any potential trial date. Petitioner also stipulated not to pursue the same invalidity grounds in the district court litigation, weighing against denial.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-18 of Patent 7,543,234 as unpatentable.