LinkedIn Corp v. eBuddy Technologies BV

1. Case Identification

• Case #: IPR2022-00165
• Patent #: 8,402,179
• Filed: November 9, 2021
• Petitioner(s): LinkedIn Corporation
• Patent Owner(s): Ebuddy Technologies B.V.
• Challenged Claims: 1-3 and 6-10

2. Patent Overview

• Title: Event Notification System and Method
• Brief Description: The ’179 patent discloses methods for modifying a title associated with a software process (e.g., an application window title bar or taskbar item) to include information about an event that requires user notification, such as a new instant message or email.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 6, 7, and 9 are anticipated by Eaton under 35 U.S.C. §102

• Prior Art Relied Upon: Eaton (Application # 2003/0208545)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Eaton, which discloses an instant messaging (IM) communication system, teaches every limitation of the challenged claims. Eaton’s system processes various events (e.g., chat sessions, internet events) and generates event notifications. These notifications are stored in an array in server memory (Fig. 2, Fig. 6) and then provided to a process on a user's IM device. Petitioner contended that Eaton’s IM user interface (Fig. 4, Fig. 7) displays these event notifications, such as "Event 1 Status" and "Event ID 1," as display items in the title area of the IM application, thereby using the notification as a title. Eaton also allegedly discloses providing alternative titles from the array, such as by changing the displayed notification upon the occurrence of a second event.
  • Key Aspects: The core of this argument is that the "display items" shown at the top of Eaton's IM user interface constitute a "title" as broadly described in the ’179 patent.

Ground 2: Claims 1-3 and 6-10 are obvious over Eaton in view of Cheung and/or Odell under 35 U.S.C. §103

• 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: To the extent Eaton's event notifications are not considered "titles," Petitioner argued that Cheung and Odell explicitly teach this feature. Cheung discloses a notification system for Microsoft applications where a "title bar" indicates the source of a notification. Odell discloses an IM system where the "header" of a notification window contains the screen name of an account, functioning as a title. Petitioner asserted that combining these explicit title-bar notification teachings with Eaton's underlying system would render the claims obvious. For dependent claim 8 (receiving affirmation and clearing the array), Petitioner argued Cheung teaches a "Dismiss" button that removes the notification record from the database, which would be an obvious feature to add to Eaton's system to manage notifications.
  • Motivation to Combine: A POSITA would combine these references to improve the user experience of Eaton's notification system. All references are directed to similar IM and event notification systems from the same time period. Cheung and Odell address the known need to better manage and clearly present notifications to a user, providing an explicit motivation to integrate their more refined display techniques into Eaton's functional system.
  • Expectation of Success: A POSITA would have a high expectation of success, as combining these features involves applying known user interface techniques (title bar notifications) to a compatible and well-understood system (Eaton's IM framework).

Ground 3: Claims 1-3 and 6-10 are obvious over Kim in view of Cheung under 35 U.S.C. §103

• 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 Kim discloses the core invention by teaching a method to display real-time information (e.g., breaking news, stock prices) directly on the title bar of an active Windows application, such as WordPad. Kim discloses receiving information from a server, storing it, and replacing the application's title with the event notification. It also shows alternating between different event notifications (e.g., a news alert and a stock price) as the title. Petitioner contended this anticipates or, at a minimum, renders obvious most limitations. For any remaining elements, Cheung was introduced. For example, to address claim 6 (alternating with a variation of the notification), Petitioner argued a POSITA would combine Kim's title-bar text with Cheung's teaching of using a count icon in the taskbar to show the number of active notifications, thus creating a variation.
  • Motivation to Combine: A POSITA would combine Kim and Cheung to enhance the information provided to the user. Both references are directed to providing non-intrusive event notifications in Microsoft Windows applications. A POSITA would be motivated to improve Kim's system by incorporating Cheung's techniques for managing notifications and providing summary information (like a notification count), thereby making the system more efficient and informative.
  • Expectation of Success: The combination involves integrating known and compatible techniques for displaying information in a Windows environment, ensuring a predictable result and a high expectation of success.
• Additional Grounds: Petitioner also asserted that claims 1-3 and 9 are anticipated by Kim alone.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under §314(a) based on Fintiv factors. The co-pending district court litigation (the "Delaware Action") was in its early stages, with trial not set to begin for another 19 months, well after the statutory deadline for a Final Written Decision in the IPR. Petitioner noted that the judge in the Delaware Action has found it "fairly routine" to stay cases after IPR institution. Furthermore, Petitioner asserted diligence in filing the petition and noted that it would stipulate not to pursue in the district court any invalidity ground raised or that could have been reasonably raised in the IPR.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 1-3 and 6-10 of the ’179 patent as unpatentable.