Walt Disney Parks Resorts US Inc v. Agile Journeys LLC

Prosecution History analysis

Examiner Search analysis

Invalidity Framework analysis

Petition

Petition Analysis

## 1. Case Identification
- Patent #: [7,212,983](https://ai-lab.exparte.com/patent/7212983)
- Filed: October 11, 2023
- Petitioner(s): Walt Disney Parks and Resorts U.S., Inc.
- Patent Owner(s): [Agile Journeys LLC](https://ai-lab.exparte.com/party/agile-journeys-llc)
- Challenged Claims: 1, 3-5, 7-8, 10-14, and 16-25

## 2. Patent Overview
- Title: System and Method for Creating Itineraries
- Brief Description: The [’983](https://ai-lab.exparte.com/case/ptab/IPR2024-00494/doc/1001) patent discloses a system and method for creating customized itineraries for visitors at a facility, such as a theme park. The system uses a computer, often a portable device, to access information about a party (e.g., attributes, interests) and data about attractions, and then selects a set of attractions to form a customized itinerary.

## 3. Grounds for Unpatentability

#### Ground 1: Obviousness over Sim in View of 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](https://ai-lab.exparte.com/case/ptab/IPR2024-00494/doc/1005) (WO 97/18534) and [Doi](https://ai-lab.exparte.com/case/ptab/IPR2024-00494/doc/1006) (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" that forms the basis of the claimed invention. Sim’s system used a controlling computer and portable modules to collect party information (e.g., health status, ride preferences) and attraction data to determine an "optimum sequence and time of attractions" and display this itinerary to the party. Petitioner contended that to the extent Sim does not explicitly teach a computer that "selects" attractions, Doi provides this missing element. Doi, also not considered during prosecution, discloses a theme park navigation system where a computer automatically selects and recommends attractions based on matching party information (e.g., age) with attraction data (e.g., wait times, age appropriateness).
    - **Motivation to Combine:** A Person of Ordinary Skill in the Art (POSITA) would combine Sim and Doi to improve Sim's existing itinerary system. Sim and Doi address the same problems of crowd management and enhancing customer satisfaction in theme parks. A POSITA would have found it obvious to incorporate Doi's automated attraction selection into Sim's framework to provide better, more relevant recommendations to users from the outset, thereby reducing user effort and maximizing attraction utilization.
    - **Expectation of Success:** A POSITA would have a reasonable expectation of success because the combination involves applying a known technique (Doi's automated selection) to a similar system (Sim's itinerary planner) in the same field of art. The integration was predictable and would yield the expected benefit of a more automated and customized itinerary.

#### Ground 2: Obviousness over Waytena - Claims 1, 3-5, 8, 10, 12-14, 16-21, 23-25 are obvious over Waytena alone.
- **Prior Art Relied Upon:** [Waytena](https://ai-lab.exparte.com/case/ptab/IPR2024-00494/doc/1007) (Patent 5,978,770).
- **Core Argument for this Ground:**
    - **Prior Art Mapping:** Petitioner asserted that Waytena, which was considered during prosecution, renders the challenged claims obvious. Waytena discloses a system for an amusement park using Personal Communication Devices (PCDs) that store party information (age, health, ride preferences) and attraction data. The system uses this information to present a "list of attractions that match the particular preferences" of the party, from which the user can make reservations to create a scheduled itinerary. Petitioner argued that the only distinction raised during prosecution—that Waytena requires a user to manually select from the "matched" list whereas the ’983 patent’s computer performs the selection—is not a patentable one.
    - **Motivation to Combine (N/A - Single Reference):** Petitioner argued it would have been obvious to a POSITA to modify Waytena to automatically present the list of matched attractions with proposed reservation times, giving the party an option to accept the entire computer-generated itinerary without manual, item-by-item selection.
    - **Expectation of Success:** A POSITA would have recognized that Waytena's system could readily perform this function, as the PCD already selects and presents the list of matching attractions. Automating the final scheduling step would be a simple and predictable modification to enhance user convenience.

#### Ground 3: Obviousness over Waytena in View of 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](https://ai-lab.exparte.com/case/ptab/IPR2024-00494/doc/1008) (Patent 5,758,257).
- **Core Argument for this Ground:**
    - **Prior Art Mapping:** This ground reinforces the argument against Waytena. Petitioner contended that if Waytena is found to require manual selection, Herz explicitly teaches the automation needed to render the claims obvious. Herz, which was not considered during prosecution, discloses 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.
    - **Motivation to Combine:** A POSITA would combine Waytena and Herz to improve the user experience in Waytena's system. The motivation would be to apply the automated scheduling taught by Herz to the theme park attraction context of Waytena, thereby relieving the user of the burden of manually selecting each attraction for their itinerary. The ’983 patent itself identifies attractions as including movies, directly linking the subject matter of Herz and Waytena.
    - **Expectation of Success:** A POSITA would have a high expectation of success in applying Herz's automated scheduling to Waytena's system. Both systems are designed to find and organize desirable content for a user based on their preferences; applying this known automation technique from one content-selection system to another would be a predictable modification.

- **Additional Grounds:** Petitioner asserted additional obviousness challenges, including combinations of Sim, Doi, and Waytena for certain dependent claims, and combinations of Waytena, Herz, Sim, and Doi for other dependent claims. These arguments relied on similar rationales, substituting or adding references to teach specific features like privilege-based selection (claim 7) or itinerary adjustments due to interruptions (claim 11).

## 4. Key Claim Construction Positions
- **"presentation means":** Petitioner contended that this term in claims 1 and 3 is a means-plus-function term under §112, ¶6. The recited functions are receiving and presenting the itinerary. Based on the specification and dependent claim 16, Petitioner identified the corresponding structure as the disclosed "display screen 130."

## 5. Arguments Regarding Discretionary Denial
- **Fintiv Factors (§314(a)):** Petitioner argued that discretionary denial under *Fintiv* is not warranted. The parallel district court case is in its infancy, with fact discovery just beginning and no *Markman* hearing scheduled. The trial is not expected until 2025 at the earliest, ensuring that an IPR Final Written Decision (FWD) would issue long before trial.
- **Same or Substantially Same Prior Art (§325(d)):** Petitioner argued that denial is inappropriate because the petition raises new and non-cumulative arguments. The primary references of Sim, Doi, and Herz were never considered during prosecution. Although Waytena was considered, the Examiner allegedly erred by only analyzing it for anticipation and failing to consider whether it rendered the claims obvious, an unconsidered argument presented in the petition.

## 6. Relief Requested
- Petitioner requests that the Board institute an inter partes review (IPR) and cancel claims 1, 3-5, 7-8, 10-14, and 16-25 of the ’983 patent as unpatentable.

Disney challenges theme park itinerary patent on multiple obviousness grounds, citing Sim, Doi & Waytena against 21 automated planning claims.

IPR2024-00029

Walt Disney Parks Resorts US Inc v. Agile Journeys LLC