PTAB

IPR2022-00176

LinkedIn Corp v. eBuddy Technologies BV

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Contact List Display System and Method
  • Brief Description: The ’395 patent describes a system and method for contact list aggregation, where contact lists from various conventional messaging services are merged and displayed as a single, consolidated list to a user.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-11 under 35 U.S.C. §102

  • Prior Art Relied Upon: Odell (Patent 7,590,696).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Odell discloses every limitation of claims 1-11. Odell describes a communications system where a user can link multiple instant messaging (IM) accounts (e.g., AOL, AIM, ICQ) to a single primary account. Upon logging into the primary account, the system automatically authenticates and signs into all linked accounts. Odell’s system then presents a single graphical user interface (GUI) showing an aggregated "buddy list" containing contacts from the primary and all linked accounts. Petitioner contended that the system components in Odell map directly to the claimed elements: Odell’s "authentication server" (374) performs the function of the claimed "network login engine"; the "account linking database" (380), which stores user buddy lists, is the claimed "network contacts database"; and the "admin server" (372), which acts as a "clearinghouse" for managing account linking and validation, functions as the claimed "web server" and "contact aggregation engine."

Ground 2: Obviousness of Claims 1-11 under 35 U.S.C. §103

  • Prior Art Relied Upon: Odell (Patent 7,590,696) alone and/or in view of Daniell (Patent 7,185,059).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that to the extent any claim limitations are not fully disclosed by Odell, the differences would have been obvious to a Person of Ordinary Skill in the Art (POSITA). For example, if Odell were found not to explicitly teach storing the aggregated contact list on a web server, it would have been obvious to do so in view of Daniell. Daniell expressly discloses storing a consolidated "address book database" on a server with which the client device communicates. A POSITA would have found it obvious to apply Daniell’s server-side storage teaching to Odell’s system to improve performance, data integrity, and fault tolerance.
    • Motivation to Combine: Petitioner argued there were multiple motivations to combine Odell and Daniell. Both references address the same problem of aggregating contacts from multiple IM services into a common interface. They are from the same technical field and time period. Daniell explicitly provides the motivation of storing a "duplicate copy... stored at a server" so that a user’s contact list can be updated when logging in, which would improve the system disclosed in Odell. Furthermore, Daniell’s teachings are expressly compatible with the AOL messaging service, which is a primary focus of the Odell patent.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references. The combination involved applying a known technique (server-side storage from Daniell) to a similar system (Odell) to achieve predictable benefits like improved data synchronization and fault tolerance. The compatibility of Daniell's address book with Odell's buddy list system would have been understood, making the integration straightforward.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial under §314(a) based on the Fintiv factors for the co-pending district court litigation. The litigation was in its early stages, with a trial date set for 19 months away, well after the statutory deadline for a Final Written Decision (FWD) in the IPR. Petitioner also noted the high potential for a stay in the litigation if the IPR was instituted and committed to stipulating that it would not pursue in court any invalidity ground raised or that reasonably could have been raised in the IPR.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-11 of the ’395 patent as unpatentable under 35 U.S.C. §§ 102 and 103.