LinkedIn Corp v. eBuddy Technologies BV

1. Case Identification

• Case #: IPR2022-00164
• Patent #: 8,230,135
• Filed: November 9, 2021
• Petitioner(s): LinkedIn Corporation
• Patent Owner(s): eBuddy Technologies BV.
• Challenged Claims: 1-3 and 6-10

2. Patent Overview

• Title: Modifying a Process Title to Include Event Information
• Brief Description: The ’135 patent describes methods for modifying the title of a software application (e.g., in a titlebar or taskbar) to display information about an event requiring user notification. The system processes an event, generates a character string for it, stores the string in an array, and uses it to provide an alternative title for the application.

3. Grounds for Unpatentability

Ground 1: Obviousness over Eaton in view of Cheung and/or Odell - Claims 1-10

• Prior Art Relied Upon: Eaton (Application # 2003/0208545), Cheung (Application # 2004/0061716), and Odell (Patent 7,590,696).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Eaton anticipates or renders obvious the primary limitations of the challenged claims. Eaton disclosed an instant messaging (IM) communication system that receives information about various events (e.g., sports, chat sessions), generates corresponding event notifications, and stores them as a "plurality of screen names" in server memory, which functions as the claimed "title array." These notifications were then provisioned for display in the title area of an IM user interface on a client device, with the system capable of providing alternative titles based on new events. To the extent Eaton was found deficient in explicitly teaching display in a "titlebar or taskbar" or certain user interactions, Petitioner asserted that Cheung and Odell remedied this. Cheung taught displaying notifications in the title bar of a pop-up window or as a notification count in the taskbar, and Odell taught displaying IM status events in an application window's header. Furthermore, Cheung taught dismissing notifications, which would clear them from the system, meeting the limitation of removing the notification from the title array.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references as they all addressed the common problem of providing event notifications within IM or other desktop applications during the same time period. Petitioner contended that a POSITA would look to the user interface solutions in Cheung (e.g., non-intrusive title bar notifications) and Odell to improve the notification display and management of the system disclosed in Eaton. The combination was presented as a predictable application of known techniques to improve a known system.
  • Expectation of Success: A POSITA would have a high expectation of success because implementing the notification display methods of Cheung or Odell within Eaton's IM framework involved applying known user interface techniques to a compatible software system for their intended purpose.

Ground 2: Obviousness over Kim alone or in view of Cheung - Claims 1-3 and 6-10

• Prior Art Relied Upon: Kim (Korean Patent Publication No. 2000-0036288) and Cheung (Application # 2004/0061716).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kim anticipated or, at a minimum, rendered obvious the independent claims. Kim disclosed a method for receiving real-time information (e.g., stock prices, breaking news) from a server and displaying it directly in the title bar of the currently active Microsoft Windows application (e.g., WordPad). Kim taught replacing the application's default title with the new event information and storing this information in temporary memory, which Petitioner argued functioned as the claimed "title array." The system alternated titles to display new events, thus providing an "alternative title." Petitioner asserted that if Kim's "temporary memory" was not considered a "title array," it would have been an obvious design choice for a POSITA to use a simple array data structure for this purpose. For dependent claims requiring variations of the notification, Petitioner argued that Cheung's disclosure of using a count icon in the taskbar would be an obvious variation to implement in Kim's system to inform the user of the number of received events.
  • Motivation to Combine: A POSITA would be motivated to combine Kim and Cheung because both references were directed at providing event notifications in Microsoft Windows applications and sought to improve user convenience. A POSITA would naturally look to Cheung's techniques for managing notifications (e.g., dismissal, count icons) to enhance the functionality of Kim's system, which focused on the core mechanism of displaying real-time data in the title bar.
  • Expectation of Success: The combination was argued to be predictable. Integrating Cheung's user interface management features into Kim's title-bar display system was a straightforward implementation of known software techniques to improve functionality.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors, despite a co-pending district court case.
• Key arguments included:
  • The district court trial was scheduled for June 12, 2023, well after the statutory deadline for a Final Written Decision (FWD) in the inter partes review (IPR).
  • The co-pending litigation was in its early stages, with no claim construction briefing or expert discovery completed.
  • Petitioner asserted it would file a stipulation in the district court action, agreeing not to pursue any invalidity ground raised or that could have been reasonably raised in the IPR.
  • Petitioner contended that a stay of the district court action was likely if the IPR was instituted, preserving judicial resources.

5. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-3 and 6-10 of Patent 8,230,135 as unpatentable under 35 U.S.C. §§ 102 and 103.