Booking Holdings Inc v. Express Mobile Inc

1. Case Identification

• Case #: IPR2022-00249
• Patent #: 9,063,755
• Filed: December 1, 2021
• Petitioner(s): Booking Holdings, Inc.
• Patent Owner(s): Express Mobile, Inc.
• Challenged Claims: 1, 3, 5-7, 11, 12, 14, 16-18, 21, and 22

2. Patent Overview

• Title: Systems and Methods for Presenting Information on Mobile Devices
• Brief Description: The ’755 patent discloses a system for generating code to provide content on mobile devices. The system features an authoring tool that produces a device-independent "Application" and a device-dependent "Player," where the Player interprets the Application to execute and display content derived from web services.

3. Grounds for Unpatentability

Ground 1: Obviousness over Core Web Development References - Claims 1, 3, 5-7, 12, 14, 16-18, and 21 are obvious over Anderson, Bowers, Jacobs, and Ambrose-Haynes.

• Prior Art Relied Upon: Anderson (Java Studio Creator Field Guide (2d ed. 2006)), Bowers (Advanced FileMaker Pro 6 Web Development (2003)), Jacobs (Foundation XML for Flash (2006)), and Ambrose-Haynes (Professional ColdFusion 5.0 (2001)).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of references taught every element of the challenged claims. Anderson disclosed an "authoring tool" (Java Studio Creator) for building Java web applications (the claimed "Application") that access third-party web services like Google Search. The "computer memory storing a registry" was taught to be the Web Services Description Language (WSDL) file for the Google web service, which Anderson identified by URL and Bowers detailed. This WSDL file contained "symbolic names" (e.g., doGoogleSearch) required to evoke web components, which corresponded to functions with defined inputs and outputs. Ambrose-Haynes was cited to show that the Java Virtual Machine (JVM) was the well-known, device-dependent "Player" that interprets and executes the device-independent Java bytecode ("Application"). Jacobs was used to confirm the structure of messages sent to the web service, showing how user input values and symbolic names were provided.
  • Motivation to Combine: A POSITA would combine Anderson, Bowers, and Jacobs because they all described the same conventional technology (Google web services). Anderson provided a high-level guide, motivating a developer to consult Bowers and Jacobs for essential implementation details like the WSDL file structure and SOAP message formats. A POSITA would combine this with Ambrose-Haynes because Java applications, as taught by Anderson, were universally understood to run on a JVM, and Ambrose-Haynes described the standard, platform-specific nature of the JVM.
  • Expectation of Success: Petitioner asserted a high expectation of success, as the combination merely involved using well-established, industry-standard technologies (Java, WSDL, SOAP, JVMs) for their intended purposes in a predictable manner.

Ground 2: Obviousness over Core References and Network Storage - Claims 11 and 22 are obvious over Anderson, Bowers, Jacobs, and Ambrose-Haynes in further view of NFS Administration.

• Prior Art Relied Upon: The combination from Ground 1, plus NFS Administration (UNIX® System V NFS Administration (1993)).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed dependent claims 11 and 22, which added the limitation that the "code" (the Application and/or Player) is "provided over said network." Petitioner argued that NFS Administration disclosed the Network File System (NFS), a well-known technology that allowed a computer to access files from remote storage over a network as if they were stored locally. This established technique for providing software code over a network rendered the additional claim limitation obvious.
  • Motivation to Combine: A POSITA developing the system in Ground 1 would be motivated to use a network file system as taught by NFS Administration to achieve significant, known benefits. NFS Administration explicitly taught advantages such as centralized file storage, simplified administration, and improved consistency of shared files. These benefits would have been particularly valuable in the software development context described by Anderson.
  • Expectation of Success: Success would have been reasonably expected, as NFS was a mature and widely used technology for remote file access, and integrating it with a software development environment was a routine practice.

4. Key Claim Construction Positions

• "Application": Petitioner argued for a construction of "device-independent code that is separate from the Player/player and is interpreted or executed by the Player/player." This emphasizes the two-part, separate nature of the claimed system.
• "Player": Correspondingly, Petitioner proposed "Executable device specific code, that is separate from the Application and interprets or executes the Application." This construction is central to mapping the prior art JVM to the "Player."
• "Registry": Petitioner's arguments relied on constructions from related litigation, such as "Database, XML file, or Portable Description Language file that exists on a computer," aligning with the prior art WSDL files.
• "Web component": Petitioner argued this term covers a "software object that provides functionalities of a web service," consistent with mapping the functions defined in the prior art WSDL file.

5. Arguments Regarding Discretionary Denial

• Fintiv Factors (§314(a)): Petitioner argued against discretionary denial, asserting that factors weighed in favor of institution. It contended that a stay of the parallel Booking Litigation was likely, given the early stage of the case (no trial date set, discovery incomplete) and the high stay-grant rate in the district. Petitioner also offered to stipulate not to pursue in court any grounds raised or that reasonably could have been raised in the IPR.
• General Plastic Factors: Petitioner argued against serial petition denial, noting this was its first IPR against the ’755 patent. While the asserted art was the same as in a co-pending Facebook IPR, this petition challenged additional claims, and Petitioner was amenable to consolidation to reduce the burden on the Patent Owner.
• §325(d) (Cumulative Art): Petitioner argued denial under §325(d) was inappropriate because none of the asserted prior art references were considered by the USPTO during the original prosecution of the ’755 patent or in any previously instituted IPRs.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 3, 5-7, 11, 12, 14, 16-18, 21, and 22 of the ’755 patent as unpatentable.