Walt Disney Parks Resorts US Inc v. Agile Journeys LLC

1. Case Identification

• Case #: IPR2024-00029
• Patent #: 7,212,983
• Filed: October 11, 2023
• Petitioner(s): Walt Disney Parks and Resorts U.S., Inc.
• Patent Owner(s): Agile Journeys LLC
• Challenged Claims: 1, 3-5, 7-8, 10-14, 16-25

2. Patent Overview

• Title: System and Method for Providing an Itinerary
• Brief Description: The ’983 patent discloses a system and method for creating customized itineraries for visitors at a facility, such as a theme park. The invention uses a computer to access party information and attraction data to select a matching set of attractions, thereby creating a customized itinerary to manage visitor experience and avoid information overload.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sim and Doi - Claims 1, 3, 5, 7-8, 10-14, 16-17, 19-20, 22-25 are obvious over Sim in view of Doi.

• Prior Art Relied Upon: Sim (WO 97/18534) and Doi (Patent 6,938,066).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Sim, which was not considered during prosecution, discloses a theme park "queue management system" for providing guests with an itinerary. Sim’s system uses a controlling computer and portable modules to determine an "optimum sequence and time of attractions" based on party information (e.g., height, health status) and park data (e.g., ride status, queue lengths). To the extent Sim does not explicitly teach a computer "selecting" attractions based on matching criteria, Doi remedies this. Doi, also not considered during prosecution, teaches a "customer navigation system" for theme parks where a computer "selects" and recommends attractions based on matching party information, such as age, with attraction data.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Sim and Doi as both address the same problem of theme park navigation and guest satisfaction using similar components (portable terminals and a central computer). A POSITA would have been motivated to incorporate Doi's automated attraction selection based on matching user data into Sim's itinerary generation framework as a known technique to improve a similar device, thereby enhancing customer satisfaction and maximizing attraction utilization.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success, as combining Doi's selection logic with Sim's existing data-collection and itinerary-generation infrastructure would predictably yield a system that automatically selects matching attractions for a guest's itinerary.

Ground 2: Obviousness over Waytena - Claims 1, 3-5, 8, 10, 12-14, 16-21, 23-25 are obvious over Waytena.

• Prior Art Relied Upon: Waytena (Patent 5,978,770).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Waytena, which was considered by the Examiner for anticipation but not obviousness, discloses all elements of the challenged claims. Waytena teaches a system with portable communication devices (PCDs) that collect patron information (age, health, ride preferences) and access attraction data. The PCD software then selects and presents a "list of attractions that match the particular preferences" of the party, from which the party can make reservations to form an itinerary.
  • Core Argument: Petitioner argued the Examiner erred by focusing on the manual reservation step in Waytena. The act of generating a tailored list of matching attractions is itself a "selection" by the computer. Furthermore, it would have been obvious to a POSITA to modify Waytena to present the list of matched attractions with proposed reservation times, allowing a user to accept the entire computer-generated itinerary in a single step rather than selecting each attraction individually. This would be a simple design choice to enhance user convenience.

Ground 3: Obviousness over Waytena and Herz - Claims 1, 3-5, 8, 10, 12-14, 16-21, 23-25 are obvious over Waytena in view of Herz.

• Prior Art Relied Upon: Waytena (Patent 5,978,770) and Herz (Patent 5,758,257).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addresses the key prosecution argument that distinguished Waytena: automated computer selection versus manual user selection. Waytena provides the foundational theme park itinerary system. Herz, which was not considered during prosecution, teaches a system that automatically selects and schedules content (e.g., movies) for a user by creating a customized "virtual channel" that best matches the user's profile, eliminating the need for manual selection of each item.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Waytena and Herz to automate the itinerary generation process and improve user convenience. Herz explicitly states its system can be applied to "numerous other areas of technology" beyond video programs to assist customers in selecting services. Applying Herz's known technique of automatic content scheduling to Waytena's system of theme park attractions would have been an obvious modification to meet customer needs in an analogous field.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in applying Herz's automated selection logic to Waytena, which already contained the necessary party and attraction data, to create a fully scheduled, customized itinerary without requiring manual user intervention for each attraction.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Sim, Doi, and Waytena (Ground 2); Waytena, Herz, and Sim (Ground 5); and Waytena, Herz, and Doi (Ground 6), which relied on similar principles of combining known elements from the prior art.

4. Key Claim Construction Positions

• "presentation means" (claims 1 and 3): Petitioner contended this is a means-plus-function term under §112, ¶6. The recited functions are "receiv[ing] said itinerary from said computer" and "present[ing] said itinerary to said party." Based on the specification's disclosure of a "portable computer" with a "display screen 130," Petitioner argued the corresponding structure for performing these functions is the "display screen 130."

5. Arguments Regarding Discretionary Denial

• Fintiv Factors (§314(a)): Petitioner argued discretionary denial under Fintiv is not warranted. It asserted that the parallel district court case is in its early stages, with discovery in its infancy, no Markman hearing conducted, and a trial date not scheduled until 2025 at the earliest.
• Same or Substantially Same Art or Arguments (§325(d)): Petitioner argued against denial, stating that the petition raises new, non-cumulative prior art, as Sim, Doi, and Herz were never considered during prosecution. Regarding Waytena, Petitioner contended that the Examiner erred in a manner material to patentability by considering it only for anticipation and failing to evaluate whether it rendered the claims obvious, an unconsidered argument presented in the petition.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1, 3-5, 7-8, 10-14, and 16-25 of the ’983 patent as unpatentable.