PTAB

IPR2025-01525

Foleon Inc v. Turtl Surf & Immerse Ltd

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Document Assembly Systems and Methods
  • Brief Description: The ’290 patent discloses systems for automatically assembling interactive digital documents from a set of modular content items. The assembly is based on personalization parameters and assembly rules, and the final document includes a tracking feature to collect data on user interaction.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 7-14, and 16-18 are obvious over Harrop, Hailey, and Davis.

  • Prior Art Relied Upon: Harrop (Application # 2006/0036612), Hailey (Application # 2005/0080814), and Davis (Patent 5,796,952).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Harrop and Hailey taught the core limitations of independent claims 1 and 10, including generating an interactive document from modular items pulled from a master document based on personalization parameters. Harrop was cited for its document assembly system that generates instance documents from XML source documents based on user answers (personalization parameters), and Hailey was cited for a similar system that assembles documents from a knowledge base using rules and input data. Petitioner asserted that the key "tracking feature" limitation, which the Examiner relied upon for allowance, was expressly taught by Davis, which described embedding a tracking program in an HTML document to monitor user interactions like time spent, mouse events, and links clicked.
    • Motivation to Combine: Petitioner contended that Harrop, Hailey, and Davis are analogous art in the field of document assembly and creation. A person of ordinary skill in the art (POSITA) would combine the teachings of Harrop and Hailey to improve upon known document generation systems. A POSITA would further be motivated to incorporate the tracking feature from Davis into the Harrop/Hailey systems to collect user interaction data, thereby improving the systems by understanding user preferences and personalizing future documents.
    • Expectation of Success: Petitioner argued that combining these references would have been routine and predictable. The prior art references all described using well-understood technologies like HTML and JavaScript. Implementing the tracking program of Davis into an HTML document generated by the systems of Harrop or Hailey would involve known coding functions in a predictable manner.

Ground 2: Claims 5-6 and 14-15 are obvious over Harrop, Hailey, and Davis in further view of Lo.

  • Prior Art Relied Upon: Harrop (Application # 2006/0036612), Hailey (Application # 2005/0080814), Davis (Patent 5,796,952), and Lo (Application # 2005/0094205).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground targeted dependent claims directed to a graphical user interface (GUI) configured to display a preview of the interactive document upon receiving user input. Petitioner asserted that Lo taught this exact functionality through its "live proofing" feature, which interactively displays a preview of a document showing how variable data will appear when merged with a template. Lo’s system automatically navigates to show the part of the document corresponding to the user's input, directly mapping to the limitations of claims 6 and 15.
    • Motivation to Combine: A POSITA would combine Lo’s live-proofing feature with the base system of Harrop, Hailey, and Davis to gain the stated advantage of finding errors in the document design at an earlier stage through interactive navigation. The systems of Harrop and Hailey already provided GUIs for user input, making the addition of a preview feature a logical improvement to enhance usability.
    • Expectation of Success: Petitioner argued there was a high expectation of success because implementing a preview feature into the existing GUIs taught by Harrop and Hailey was a routine modification. It involved incorporating a known concept (previews) into a known system (a GUI for document generation) using conventional programming techniques.

  • Additional Grounds: Petitioner asserted an alternative ground for claims 1-5, 7-14, and 16-18, adding McKinlay (Application # 2004/0083474) to the combination of Harrop, Hailey, and Davis. McKinlay was cited to provide a more explicit teaching of implementing a link comprising personalization parameters using URL parameters and JavaScript, reinforcing the obviousness of limitation 1[C].

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial is not warranted because the challenge is an early one to a recently issued patent (less than a year old), meaning the Patent Owner has no settled expectations of validity. Furthermore, Petitioner contended that none of the prior art references, particularly Davis, were considered during prosecution. Petitioner asserted that the Examiner’s allowance was based on the novelty of the "tracking feature," a limitation expressly taught by Davis, suggesting a material error occurred that would have been avoided had the Examiner been aware of the cited art.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-18 of the ’290 patent as unpatentable.