Express Mobile, Inc.Download PDFPatent Trials and Appeals BoardOct 4, 2021IPR2021-00710 (P.T.A.B. Oct. 4, 2021) Copy Citation Trials@uspto.gov Paper 7 571-272-7822 Entered: October 4, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD GOOGLE LLC, Petitioner, v. EXPRESS MOBILE, INC., Patent Owner. IPR2021-00710 Patent 9,471,287 B2 Before JEFFREY S. SMITH, AARON W. MOORE, and KRISTI L. R. SAWERT, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 314 IPR2021-00710 Patent 9,471,287 B2 2 I. INTRODUCTION Google LLC (“Petitioner”) filed a Petition requesting inter partes review of claims 1, 2, 7, and 11 of U.S. Patent No. 9,471,287 B2 (“the ’287 patent,” Ex. 1001). Paper 1 (“Pet.”), 6. Express Mobile, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to determine whether to institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and associated evidence, we do not institute an inter partes review as to the challenged claims. A. Related Matters The parties state that the ’287 patent is the subject of several district court proceedings. Pet. 1–3; Paper 4, 1–2. The ’287 patent is a continuation of U.S. Patent No. 9,063,755, which is the subject of IPR2021-00709. Paper 4, 5. The ’287 patent is related to U.S. Patent No. 9,928,044, which is the subject of IPR2021-00711. B. Real Parties in Interest Petitioner identifies itself as the real party in interest. Pet. 1. Patent Owner identifies itself as the real party in interest. Paper 4, 1. C. The ’287 Patent The technical field of the patent relates to a platform for authoring software code for mobile devices. Ex. 1001, 1:8–10. A user of the IPR2021-00710 Patent 9,471,287 B2 3 authoring platform provides instructions for a mobile device in the form of device-specific instructions, referred to as a Player, and device-independent instructions, referred to as an Application. Ex. 1001, 5:15–19. The authoring tool can produce a plurality of Players for different devices, and a plurality of Applications for displaying pages on the devices. Ex. 1001, 5:46–53. The Player transforms device-independent instructions of the Application into device-specific instructions that are executable by the device. Ex. 1001, 5:60–63. Thus, the authoring tool can be used to design device-independent Applications, and can generate Players that specific devices then use to generate displays from the Applications. Ex. 1001, 6:17–21. Figure 2A is reproduced below. IPR2021-00710 Patent 9,471,287 B2 4 Figure 2A above illustrates the communications between different system components. Ex. 1001, 2:21–23. Authoring platform 110 generates one or more Players which are provided to response director 210. Ex. 1001, 8:15–17. Device 130 requests a Player from response director 210, and receives and installs the Player. Ex. 1001, 8:18–20. Web service 230 is a plurality of services obtainable over the Internet. Ex. 1001, 8:26–27. Each web service is identified in an entry in web component registry 220. Ex. 1001, 8:27–30. Web component registry 220 is provided through server 120 to authoring platform 110 so that a user of the authoring platform may bind web services 230 to elements to be displayed on device 130. Ex. 1001, 8:30–34. A web component registry 220 for each registered web service 230 is loaded into authoring platform 110. Ex. 1001, 8:62–64. The user of the authoring platform can then assign components of any web service 230 to an Application without any need to write code. Ex. 1001, 8:64–66. D. Challenged Claim 1 Challenged claim 1 is reproduced below. 1. A system for generating code to provide content on a display of a device, said system comprising: computer memory storing a registry of: a) symbolic names required for evoking one or more web components each related to a set of inputs and outputs of a web service obtainable over a network, where the symbolic names are character strings that do not contain either a persistent address or pointer to an output value accessible to the web service, where each symbolic name has an associated data format class type corresponding to a subclass of User Interface (UI) objects that support the data format type of the symbolic name, and has a preferred UI object, and b) an address of the web service; IPR2021-00710 Patent 9,471,287 B2 5 an authoring tool configured to: define a (UI) object for presentation on the display, where said defined UI object corresponds to a web component included in said registry selected from a group consisting of an input of the web service and an output of the web service, where each defined UI object is either: 1) selected by a user of the authoring tool; or 2) automatically selected by the system as the preferred UI object corresponding to the symbolic name of the web component selected by the user of the authoring tool, access said computer memory to select the symbolic name corresponding to the web component of the defined UI object, associate the selected symbolic name with the defined UI object, where the selected symbolic name is only available to UI objects that support the defined data format associated with that symbolic name, and produce an Application including the selected symbolic name of the defined UI object, where said Application is a device-independent code; and a Player, where said Player is a device-dependent code, wherein, when the Application and Player are provided to the device and executed on the device, and when the user of the device provides one or more input values associated with an input symbolic name to an input of the defined UI object, 1) the device provides the user provided one or more input values and corresponding input symbolic name to the web service, 2) the web service utilizes the input symbolic name and the user provided one or more input values for generating one or more output values having an associated output symbolic name, 3) said Player receives the output symbolic name and IPR2021-00710 Patent 9,471,287 B2 6 corresponding one or more output values and provides instructions for the display of the device to present an output value in the defined UI object. E. Asserted Ground of Unpatentability Petitioner asserts the following grounds of unpatentability (Pet. 4): Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis 1, 2, 7, 11 103 Huang1 (Ex. 1007) 1, 2, 7, 11 103 Angelov2 (Ex. 1008) II. ANALYSIS Petitioner contends that claims 1, 2, 7, 11 of the ’287 patent are unpatentable under 35 U.S.C. § 103 as obvious over the combination of prior-art references Huang and Angelov. A patent claim is unpatentable under § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in evidence, objective indicia of non-obviousness.3 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). 1 U.S. Patent Publ. No. 2007/0118844 A1, published May 24, 2007. 2 U.S. Patent Publ. No. 2007/0067421 A1, published Mar. 22, 2007. 3 With respect to the fourth Graham factor, the parties at this time do not present arguments or evidence regarding objective indicia of non- obviousness. Therefore, the obviousness analysis at this stage of the proceeding is based on the first three Graham factors. IPR2021-00710 Patent 9,471,287 B2 7 “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A. Level of Ordinary Skill in the Art We consider the asserted grounds of unpatentability in view of the understanding of a person of ordinary skill in the art. In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id. at 963. Citing the Declaration of Dr. Sandeep Chatterjee, Ph.D., Petitioner contends that an ordinarily skilled artisan at the time of the invention “would have had a bachelor’s degree in electrical engineering, computer science, or the equivalent thereof, and at least two years of experience with web services.” Pet. 8 (citing Ex. 1002 ¶¶ 15–16). Petitioner also contends that “[m]ore education can supplement practical experience, and vice-versa.” Id. (citing Ex. 1002 ¶¶ 15–16). Patent Owner does not propose an alternative assessment of the level of ordinary skill in the art. See generally Prelim. IPR2021-00710 Patent 9,471,287 B2 8 Resp. To the extent necessary, and for this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’755 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). B. Claim Construction In an inter partes review, a claim “shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Petitioner proposes construction of various claim terms under the plain meaning of the terms and also under the district court constructions. Pet. 10–12. Patent Owner does not propose construing any claim terms. See generally Preliminary Response. Because our determination below is not impacted by Petitioner’s proposed claim constructions, we do not expressly construe any claim term for purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy). C. The Asserted Prior Art Before turning to Petitioner’s asserted grounds of unpatentability, we provide a brief summary of the references. 1. Huang Huang discloses a system for using web services as a data source for a software application. Ex. 1007, Abstract. Figure 1A shows an example of the system, and is reproduced below. IPR2021-00710 Patent 9,471,287 B2 9 Figure 1A above includes Application Designer 104 and Application Player 106. Ex. 1007 ¶ 40. Designer 104 is a computer program that provides a user interface that allows a user to create application 111. Id. Player 106 is a computer program that executes application 111, receives values from web services, sends values to web services, and invokes other operations provided by web services. Id. Server 120 receives web service interaction requests from designer 104, such as a request for a list of objects provided by a web service, and interacts with web services provided by specific vendors. Id. ¶ 43. The components of server 120 incude generic web service object model 130 (WSObject) and web service factory application programming interface 132 (WSFactory API). Id. ¶ 44. IPR2021-00710 Patent 9,471,287 B2 10 WSFactory API 132 includes WSObjectMapping 123, which maps, or converts, generic WSObject 130 to vendor-specific adapters, such as Siebel Web service adapter 134 for interacting with Siebel web service 140. Id. The mapping between generic WSObject 130 and the vendor-specific adapters is represented as WS Object XML definition 126, also referred to as an XML mapping file. Id. An example of the flow of data between an application component and a web service is shown in Figure 1B, which is reproduced below. Id. ¶ 57. Figure 1B above shows application component 170, including value 192, which may be set by a user as a value of a text box or a drop-down list. IPR2021-00710 Patent 9,471,287 B2 11 Id. Application component 170 is associated with script 196, which can access value 192. Id. Script 196 invokes engine 111 to perform web service interactions, such as setting and getting the value of web service attribute 155 associated with web service object 153 provided by vendor web service 156. Id. Each vendor web service 156 has a vendor-specific data model. Id. To allow designer 104 and player 106 to be vendor-independent and work with multiple web services without the need for vendor-specific code, generic WSObject 130 is provided to WS Factory server 120, which maps the generic WSObject to vendor-specific object 154. Id. Each vendor- specific object is mapped to the generic web services object by a definition stored in the XML mapping file. Id. ¶ 74. Applications interact with the generic web services object and need not contain hard-coded dependencies on vendor specific objects. Id. D. Asserted Obviousness over Huang and Angelov Petitioner contends that claims 1, 2, 7, and 11 of the ’287 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Huang in view of Angelov. Pet. 13–84. In particular, Petitioner contends that the combination of Huang and Angelov teaches or suggests each and every limitation of the challenged claims, and that a person of ordinarily skill in the art would have had a reason to combine the disclosures of the prior art. Id. Patent Owner opposes, relying on the Declaration of Kevin C. Almeroth, Ph.D. (Ex. 2001). Prelim. Resp. 4–13. In particular, Patent Owner argues that the prior art fails to teach or suggest three claim limitations: (1) “the device provides the user provided one or more input values and corresponding input symbolic name to the web service,” id. at 7–11; (2) “the web service utilizes the input symbolic name and the user provided one or more input values,” id. at 12; and (3) “the player receives IPR2021-00710 Patent 9,471,287 B2 12 the output symbolic name,” id. at 12–13. We address each of these limitations below. 1. the device provides the input symbolic name to the web service Claim 1 recites “the device provides . . . [the] corresponding input symbolic name to the web service.” Petitioner maps the claimed “symbolic name” to the name of a web service object, such as “Opportunity,” as disclosed by Huang. Pet. 23. Petitioner contends that a person of ordinary skill would have understood that the device of Huang provides the corresponding input symbolic name to the web service, because the object having the input symbolic name is the object whose attribute value is accessed via Huang’s binding technique. Pet. 67–68. According to Petitioner, a person of ordinary skill would have recognized that the corresponding input symbolic name is necessarily provided to the web service, because without the symbolic name, Huang’s binding-based technique, which identifies a web service object by its symbolic name, would not be able to resolve which web service object to modify in response to the user’s request. Id. Patent Owner contends that the device running the application player does not provide symbolic names to the web service, but instead, interacts with a generic web service object on the intermediary server. Prelim. Resp. 9. Patent Owner contends that the intermediary server converts the generic web service object and provides the result of the conversion to the web service. Id. Thus, according to Patent Owner, the device provides the input symbolic name to an intermediary server, which uses mapping to convert the input symbolic name, then provides the converted name to the web service. Prelim. Resp. 11. We agree with Patent Owner. Huang discloses that each vendor- IPR2021-00710 Patent 9,471,287 B2 13 specific object is mapped to the generic web service object by a definition stored in an XML mapping file. Ex. 1007 ¶¶ 44, 74. Huang discloses that WSObjectMapping 123 converts generic WS Object Model 130 to a vendor- specific adaptor, such as Siebel Web Service Adaptor 134 for interacting with Siebel Web Service 140. Ex. 1007 ¶¶ 44, 57. Contrary to Petitioner’s contention, Huang does not necessarily provide the claimed “input symbolic name” to the web service. Instead, Huang converts the input symbolic name to a vendor-specific adaptor, and uses the vendor specific adaptor to interact with the web service. Ex. 1007 ¶¶ 44, 57. On this record, we are not persuaded that Petitioner has sufficiently shown that the combination of Huang and Angelov teaches “the device provides . . . [the] corresponding input symbolic name to the web service” as recited in claim 1. 2. the web service utilizes the input symbolic name Claim 1 also recites that “the web service utilizes the input symbolic name.” Petitioner contends that Huang “discloses or suggests this aspect of” claim 1. Pet. 68 (citing Ex. 1002 ¶¶ 142–145). Pointing to Figure 21 of Huang, Petitioner contends that “[b]y disclosing that the ‘web service object name’ is ‘input data for the lookup’ and requested data is delivered to the application, Huang discloses that the web service utilizes the input symbolic name (either of Huang’s system or of the modified Huang-Angelov system) and the user provided one or more input values for generating one or more output values (e.g., values that are displayed to the user in the form of rows of a table.” Id. at 69–70 (citing Ex. 1007 ¶¶ 47, 71, 129, Fig. 21; Ex. 1002 ¶¶ 143–144). Patent Owner argues that “the input symbolic name” receives antecedent basis earlier in the claim, and thus, “must be provided by the device.” Prelim. Resp. 12. Patent Owner argues that, as with the previous IPR2021-00710 Patent 9,471,287 B2 14 claim limitation, “the web service disclosed in Huang never receives the input symbolic name from the device, and, as such, cannot utilize an input symbolic name that it never receives.” Id. (citing Ex. 2001 ¶ 44). Again, we agree with Patent Owner. Because the web service of Huang receives a converted name from the intermediary server, rather than “the input symbolic name” from the device as claimed, we are not persuaded that Petitioner has sufficiently shown that the combination of Huang and Angelov teaches this limitation. 3. the player receives the output symbolic name Claim 1 recites that “the player receives the output symbolic name.” Petitioner contends that, given Huang’s disclosures, “it would have been obvious to configure the Player of Huang’s system or the modified Huang system to receive the output symbolic name and corresponding one or more output values and provide instructions for a display of the computer (‘device’) to present the output value in the defined application component (‘UI object’).” Pet. 73 (citing Ex. 1002 ¶ 149). In particular, Petitioner points to the fact that Huang’s application 111 is executed as a browser- based application on the user’s computer as motivation for a person of ordinarily skill “to configure the Player (device-dependent code) of the combined system to provide instructions for the display of the computer to present the output value (e.g., returned from a lookup operation).” Id. (citing Ex. 1007 ¶ 40; Ex. 1002 ¶ 149). Patent Owner argues that “[t]he Petition ignores this limitation and thus must fail.” Prelim. Resp. 12. Patent Owner argues that “Petitioner fails to identify any alleged output symbolic name received by the player,” and also fails to “provide any reason why it would be obvious for the alleged player to receive an output symbolic name.” Id. at 12–13. In addition, IPR2021-00710 Patent 9,471,287 B2 15 Patent Owner argues that “[e]ven if Huang’s system were to provide some output symbolic name to the alleged player . . . it would not be the output symbolic name introduced in the ‘web service utilizes’ step.” Id. at 13. According to Patent Owner, this is because “the application and player do not know vendor-specific details,” and, thus, “any output symbolic would be converted by the intermediate server 120 before being provided to player 106.” Id. (citing Ex. 1007 ¶ 74; Ex. 2001 ¶ 45). We again agree with Patent Owner. Because Huang converts vendor- specific names of the web service to generic names, we are not persuaded that Petitioner has sufficiently shown that the combination of Huang and Angelov teaches this limitation. Because Petitioner has not sufficiently shown that the combination of Huang and Angelov would have rendered claim 1 obvious, we determine that Petitioner has not sufficiently shown that the combination of Huang and Angelov would have rendered dependent claims 2, 7, and 11 obvious. III. CONCLUSION For the foregoing reasons, we determine that the information presented in the Petition does not establish that there is a reasonable likelihood that Petitioner would prevail with respect to obviousness of claims 1, 2, 7, and 11 of the ’287 patent. IV. DISCRETIONARY ISSUES Because we deny institution on the merits, we do not reach the discretionary issues raised by Patent Owner. See Prelim. Resp. 13–3. V. ORDER Accordingly, it is ORDERED that the Petition is denied. IPR2021-00710 Patent 9,471,287 B2 16 PETITIONER: Naveen Modi Joseph Palys Daniel Zeilberger Arvind Jairam PAUL HASTINGS LLP naveenmodi@paulhastings.com josephpalys@paulhastings.com danielzeilberger@paulhastings.com arvindjairam@paulhastings.com PATENT OWNER: Sal Lim David Alberti Russell Tonkovich Hong Lin FEINBERG DAY KRAMER ALBERTI LIM TONKOVICH & BELLOLI LLP slim@feinday.com dalberti@feinday.com rtonkovich@feinday.com hlin@feinday.com Bridget A. Smith LOWENSTEIN & WEATHERWAX LLP smith@lowensteinweatherwax.com Copy with citationCopy as parenthetical citation