Express Mobile, Inc.Download PDFPatent Trials and Appeals BoardOct 4, 2021IPR2021-00700 (P.T.A.B. Oct. 4, 2021) Copy Citation Trials@uspto.gov Paper 7 571-272-7822 Date: 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. IPR2021-00700 Patent 6,546,397 B1 Before JEFFREY S. SMITH, AMANDA F. WIEKER, and KRISTI L. R. SAWERT, Administrative Patent Judges. WIEKER, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 314, 37 C.F.R. § 42.4 IPR2021-00700 Patent 6,546,397 B1 2 I. INTRODUCTION A. Background Google LLC (“Petitioner”) filed a Petition requesting an inter partes review of claim 1 (“challenged claim”) of U.S. Patent No. 6,546,397 B1 (Ex. 1001, “the ’397 patent”). Paper 1 (“Pet.”). Express Mobile, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have authority to determine whether to institute an inter partes review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons provided below and based on the record before us, we determine that Petitioner has not demonstrated a reasonable likelihood that Petitioner would prevail in showing the unpatentability of the challenged claim. Accordingly, we do not institute an inter partes review. B. Related Proceedings The parties identify the following pending litigation matters related to the ’397 patent: Express Mobile, Inc. v. Google LLC, No. 6-20-cv-00804 (W.D. Tex.); Express Mobile, Inc. v. Dropbox, Inc., No. 3-21-cv-01145 (N.D. Cal.); Express Mobile, Inc. v. Salesforce.com, Inc., No. 3-20-cv- 08461 (N.D. Cal.); IPR2021-00700 Patent 6,546,397 B1 3 Express Mobile, Inc. v. Booking.com B.V., No. 3-20-cv-08491 (N.D. Cal.); Express Mobile, Inc. v. SAP SE, No. 3-20-cv-08492 (N.D. Cal.); Express Mobile, Inc. v. Oath Holdings Inc. f/k/a Yahoo!, No. 3- 20-cv-08321 (N.D. Cal.); Express Mobile, Inc. v. Pinterest, Inc., No. 3-20-cv-08335 (N.D. Cal.); Express Mobile, Inc. v. Amazon.com, Inc., No. 3-20-cv-08339 (N.D. Cal.); Express Mobile, Inc. v. Adobe Inc. d/b/a Adobe Systems Inc., No. 3-20-cv-08297 (N.D. Cal.); Express Mobile, Inc. v. HubSpot, Inc., No. 1-20-cv-01162 (D. Del.); Express Mobile, Inc. v. Squarespace, Inc., No. 1-20-cv-01163 (D. Del.); Express Mobile, Inc. v. Microsoft Corp., No. 3-20-cv-06152 (N.D. Cal.); Express Mobile, Inc. v. Expedia, Inc., No. 6-20-cv-00801 (W.D. Tex.); Express Mobile, Inc. v. eBay Inc., No. 6-20-cv-00802 (W.D. Tex.); Express Mobile, Inc. v. Facebook Inc., No. 6-20-cv-00803 (W.D. Tex.); Express Mobile, Inc. v. Atlassian Corporation PLC, No. 6-20- cv-00805 (W.D. Tex.); Express Mobile, Inc. v. Web.com Group, Inc., No. 3-20-cv- 00839 (M.D. Fl.); Express Mobile, Inc. v. GoDaddy.Com, LLC, No. 1-19-cv- 01937 (D. Del.); IPR2021-00700 Patent 6,546,397 B1 4 Express Mobile, Inc. v. Wix.com, Ltd., No. 3-19-cv-06559 (N.D. Cal.); Shopify Inc. v. Express Mobile, Inc., No. 1-19-cv-00439 (D. Del.); X Commerce, Inc. d/b/a Magento, Inc. v. Express Mobile, Inc., No. 3-17-cv-02605 (N.D. Cal.); and Express Mobile, Inc. v. Slack Technologies, Inc., No. 3-21-cv- 02001 (N.D. Cal.). Pet. 1–3; Paper 4, 1–2. Additionally, the parties identify over 80 other terminated district court proceedings related to the ’397 patent. Pet. 3–11; Paper 4, 3–9. The parties also identify the following inter partes review proceeding involving the ’397 patent: BigCommerce, Inc. v. Express Mobile, Inc., IPR2018-00750 (PTAB) (institution denied Aug. 30, 2018). Pet. 3; Paper 4, 9. Finally, the parties identify pending Ex parte Reexamination Control No. 90/014,615, concerning the ’397 patent, which was requested by Unified Patents, LLC. Pet. 3; Paper 4, 2. C. The ’397 Patent The ’397 patent is titled “Browser Based Web Site Generation Tool and Run Time Engine,” and issued on April 8, 2003, from Application No. 09/454,061, which was filed on December 2, 1999. Ex. 1001, (21), (22), (45), (54). The ’397 patent relates to designing and building webpages. Id., Abstract. According to the patent, the invention addresses limitations of conventional mark-up and scripting languages. See id. at 1:11–50. At the time of the invention, conventional website-construction tools generated HTML (hypertext mark-up language) and script code (e.g., JavaScript) as output. Id. at 1:11–14. To draw the website and its IPR2021-00700 Patent 6,546,397 B1 5 pages, a browser interpreted the corresponding HTML and script code. Id. at 1:14–15. According to the ’397 patent, conventional mark-up and scripting languages have several limitations: they are not designed for “serious multimedia applications,” have almost no file-handling capability, are slow and inefficient, and are unable to reformat text and images dynamically. Id. at 1:17–21. The ’397 patent describes a method that defines a webpage as a collection of user-selected settings and stores those settings in a database. Id. at 5:52–62. When the webpage is to be drawn, the browser calls a run- time engine, which reads the database and generates the webpage. Id. So, instead of using only static user-authored code, the invention dynamically creates HTML code based on real-time conditions. See, e.g., id. at 17:11– 13. For example, the invention can scale the generated webpages to the user’s screen resolution. Id. at 2:43–45. To realize these features, the ’397 patent discloses a browser-based interface for creating a webpage and a run-time engine for drawing the webpages for the website’s visitors. See id. at 2:33–37, 5:57–62. In the ’397 patent, the user creates a webpage using a browser-based interface. Id. at 2:33–37. In the interface, the user selects settings for the webpage’s objects. See, e.g., id. at 6:64–7:3. The invention then stores the user- selected settings in a multi-dimensional database. Id. at 2:37–39; see also id. at 30:25–28. A run-time generation procedure creates a compressed program-customized run-time engine file with the associated database. Id. at 2:40–42. When a web user views the page, the user’s browser calls the run- time engine. Id. at 5:57–59. The run-time engine then reads the database, downloads the associated files, and draws the webpage. Id. at 5:59–62. IPR2021-00700 Patent 6,546,397 B1 6 D. Illustrative Claim Claim 1 is the only challenged claim and is reproduced below. 1. A method to allow users to produce Internet websites on and for computers having a browser and a virtual machine capable of generating displays, said method comprising: (a) presenting a viewable menu having a user selectable panel of settings describing elements on a website, said panel of settings being presented through a browser on a computer adapted to accept one or more of said selectable settings in said panel as inputs therefrom, and where at least one of said user selectable settings in said panel corresponds to commands to said virtual machine; (b) generating a display in accordance with one or more user selected settings substantially contemporaneously with the selection thereof; (c) storing information representative of said one or more user selected settings in a database; (d) generating a website at least in part by retrieving said information representative of said one or more user selected settings stored in said database; and (e) building one or more web pages to generate said website from at least a portion of said database and at least one run time file, where said at least one run time file utilizes information stored in said database to generate virtual machine commands for the display of at least a portion of said one or more web pages. Ex. 1001, 65:44–66:2 (emphasis added). E. Applied References Petitioner relies upon the following references: Jammes et al., U.S. Patent No. 6,484,149 B1, filed Oct. 10, 1997, issued Nov. 19, 2002 (Ex. 1007, “Jammes”); and Tim Lindholm and Frank Yellin, The Java™ Virtual Machine Specification, Addison-Wesley (1997) (Ex. 1008, “Lindholm”). IPR2021-00700 Patent 6,546,397 B1 7 Pet. 13–16. Petitioner submits the Declaration of Sandeep Chatterjee, Ph.D. (Ex. 1002). Patent Owner submits the Declaration of Glenn Weadock (Ex. 2001). F. Asserted Ground of Unpatentability Petitioner asserts that claim 1 would have been unpatentable on the following ground: Claim Challenged 35 U.S.C. § Reference(s)/Basis 1 103 Jammes, Lindholm II. DISCUSSION A. Claim Construction For petitions filed on or after November 13, 2018, 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 submits that no claim term requires express construction. Pet. 32, 35. Nonetheless, Petitioner discusses the claim phrase “at least one run time file,” id. at 32–33, and identifies several additional claim terms that have been construed previously by district courts, id. at 34–35. Among these additional terms is “settings,” which has been construed previously as “an attribute of an object available for selection.” Id. at 34 (citing Ex. 1023, 13; Ex. 1025, 6; Ex. 1027, 1). According to Petitioner, it analyzes claim 1 in accordance with the claim’s plain meaning and also under the identified district court constructions. Id. at 33, 35–36. Patent Owner states only that “[d]istrict courts have repeatedly construed ‘settings’ as ‘an attribute of an object available for selection.’ Petitioner does not dispute this construction, and in fact purports to analyze IPR2021-00700 Patent 6,546,397 B1 8 the asserted references in view of this construction.” Prelim. Resp. 25 (citing Ex. 2016, 10; Ex. 2017, 13; Ex. 2018, 6). Patent Owner does not dispute this construction of the term. Id. In accordance with the parties’ briefing, we apply the previous district courts’ construction of “settings” as “an attribute of an object available for selection.” Pet. 35–36; Prelim. Resp. 25. Based on our analysis of the issues in dispute at this stage of the proceeding, we agree that no further claim term requires express construction. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). B. Principles of Law A claim is unpatentable under 35 U.S.C. § 103 if “the differences between the subject matter sought to be patented 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 skill in the art; and (4) objective evidence of non- obviousness.1 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). When evaluating a combination of teachings, we must also “determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of prior art 1 Patent Owner does not present objective evidence of non-obviousness at this stage. IPR2021-00700 Patent 6,546,397 B1 9 elements would have produced a predictable result weighs in the ultimate determination of obviousness. Id. at 416–417. In an inter partes review, the petitioner must show with particularity why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). We analyze the challenges presented in the Petition in accordance with the above-stated principles. C. Level of Ordinary Skill in the Art Petitioner identifies the appropriate level of skill in the art as that possessed by a person having “a bachelor’s degree in electrical engineering, computer science, or the equivalent thereof, and at least two years of experience with programming relating to websites.” Pet. 16 (citing Ex. 1002 ¶¶ 15–16). Alternatively, “[m]ore education can supplement practical experience, and vice-versa.” Id. Patent Owner identifies the appropriate level of skill in the art as that possessed by a person having “a bachelor’s or graduate degree in computer science, mathematics, engineering, or a similar discipline together with knowledge of software development and web design, together with approximately two or three years of experience,” where education and experience “are on a sliding scale relative to each other.” Prelim. Resp. 10– 11 (citing Ex. 2001 ¶ 19). According to Patent Owner, “[t]he analysis herein is the same for both Petitioner’s definition of a [person of ordinary skill in the art] and that of Patent Owner’s.” Id. at 11. IPR2021-00700 Patent 6,546,397 B1 10 For purposes of this Decision, we adopt Petitioner’s assessment as set forth above, which appears consistent with the level of skill reflected in the Specification and prior art. D. Asserted Ground of Unpatentability Petitioner contends that claim 1 of the ’397 patent is unpatentable as obvious over Jammes and Lindholm. Pet. 36–77. Patent Owner disagrees. Prelim. Resp. 24–42. 1. Overview of Jammes (Ex. 1007) Jammes is a U.S. Patent titled “Systems and Methods for Viewing Product Information, and Methods for Generating Web Pages.” Ex. 1007, code (54). Jammes discloses “a software architecture for allowing merchants to design and efficiently manage computer network-based electronic stores.” Id. at 2:61–64. In an embodiment, “a software system is provided which includes software tools permitting a store designer to use an enhanced Web browser to design and manage an electronic store.” Id. at 2:65–3:1. Jammes describes a “Merchant Workbench” that “allows a merchant having little or no knowledge of HTML coding or database queries to design an electronic store.” Id. at 3:6–8. In the electronic store, “a collection of template Web pages is integrated with a product information database (or inventory control system) such that information is extracted on-demand from the database, merged with the Web page templates, and presented to consumers.” Id. at 3:8–12. IPR2021-00700 Patent 6,546,397 B1 11 Figure 3 of Jammes is reproduced below. Figure 3 “illustrates components of the Merchant Workbench which generate a hierarchal user interface enabling a user to access and update data describing inventory of an electronic store.” Id. at 4:46–49. As shown in Figure 3, enhanced Web browser 112 includes tree structure control 304 and store management control 306. Id. at 11:15–17. Store design user interface 310 comprises left pane 308 and right pane 309. “The tree structure control 304 includes a refresh method which generates, and repaints as needed,” left pane 308. Id. at 11:24–26. “The hierarchical display of elements (e.g., icons, text labels, and lines) of the left pane 308 of the store design user interface 310 represents relationships between products and groups of products advertised and sold by an electronic store.” Id. at 11:33–37. “When a user selects a group to examine its contents (i.e., subordinate products or groups contained in the group), the store management control determines what products are contained in the group IPR2021-00700 Patent 6,546,397 B1 12 and renders the right pane 309 to display a list of those products.” Id. at 11:54–58. 2. Overview of Lindholm (Ex. 1008) Lindholm is a textbook titled “The JavaTM Virtual Machine Specification.” Ex. 1008, 1. Lindholm describes “a complete specification for the Java Virtual Machine.” Id. at 3.2 Lindholm explains that “Java is a general-purpose concurrent object-oriented programming language.” Id. at 4. Java was “initially developed to address the problems of building software for networked consumer devices” and was “designed to support multiple host architectures and to allow secure delivery of software components.” Id. Thus, “compiled Java code had to survive transport across networks, operate on any client, and assure the client that it was safe to run.” Id. Lindholm further explains that “compiled Java programs are network- and platform-independent” and “behave the same way regardless of where they come from, or what kind of machine they are being loaded into and run on.” Id. at 4–5. Lindholm describes the Java Virtual Machine as “the cornerstone of Sun’s Java programming language” that is “responsible for Java’s cross-platform delivery, the small size of its compiled code, and Java’s ability to protect user’s from malicious programs.” Id. at 5. “The Java Virtual Machine is an abstract computing machine” that “has an instruction set and uses various memory areas.” Id. According to Lindholm, “[c]ompiled code to be executed by the Java Virtual Machine is stored in a binary file which has a platform-independent format, the class file format.” Id. at 32. 2 We refer to Petitioner’s added page numbers in Lindholm. IPR2021-00700 Patent 6,546,397 B1 13 3. Independent Claim 1 Claim 1 recites, “presenting a viewable menu having a user selectable panel of settings describing elements on a website.” As discussed above, various district courts have construed “settings” as “attributes of an object available for selection,” and Petitioner applies both that construction and the Petitioner’s proposed plain meaning when asserting obviousness over Jammes and Lindholm. Pet. 34–36. For this limitation, Petitioner relies upon Jammes’ hierarchical user interface 310 through which a merchant organizes product information. Id. 47–48. According to Petitioner, “Jammes explains that ‘[t]he hierarchical display of elements . . . of the left pane 308 of the store design user interface 310 represents relationships between products and groups of products advertised and sold by an electronic store.’” Id. at 48 (quoting Ex. 1007, 11:33–40). For example, Petitioner provides Jammes’ example of the automotive group “Sedans,” which is associated with the products “Honda Accord” and “Toyota Camry.” Id. at 50. Petitioner contends that Jammes’ user interface allows a merchant to modify information about products by selecting, dragging, and dropping product icons into folders for different groups. Id. at 48–49. Petitioner asserts that a person of ordinary skill in the art would have understood that the panes of Jammes’ user interface are user-selectable panels of settings because the product and group relationships “are capable of being set by the user and stored based on user interactions with the panes,” e.g., via a drag- and-drop procedure. Id. at 54. According to Petitioner, “[t]he relationship information of a given product or product group (such as described above) is an attribute of an object (e.g., the product or product group) available for selection,” and describes elements on a website “because Jammes discloses IPR2021-00700 Patent 6,546,397 B1 14 that the relationship information set by the merchant describes and governs how elements (e.g., icons) are displayed on a web page (‘website’) that is constructed by Jammes’ process.” Id. at 54–55. Patent Owner argues that, “[u]nlike the claimed user selected panel of settings, the interface described by Jammes merely shows the product relationships in a folder hierarchy.” Prelim. Resp. 26. Patent Owner argues that these “abstract relationships are not used to modify the appearance or behavior of any objects,” but instead simply dictate which products will be returned in an end user query for a group. Id. at 27; see also id. at 29–30 (“[T]hese hierarchical relationships, in contrast to the user selectable settings disclosed in the ’397 patent, such as font, text weight, and the like, are not actually ‘attribute[s] of an object available for selection’ . . . . [These relationships] are used to affect the return of a product in response to a user query for products with a relationship to a particular group and the category under which a product is listed to a user.”). With respect to Jammes’ drag-and-drop functionality, Patent Owner argues, Rather than selecting settings for elements of a website, Jammes’ [graphical interface unit] only permits the modification of hierarchical relationships in a folder-like interface. Such an interface is not the [what you see is what you get] editor of the ’397 patent. Modifications to the relationships through the Jammes interface are only abstractly linked to the eventual organization of the online store page produced by the Jammes system, rather than providing a web page designer with a specific visual representation of the effect of particular user settings. Id. at 28–29; see also id. at 31 (“The drag-and-drop operation in Jammes merely enables the user to move icons on the display to change content- based relationships between products and groups.”). IPR2021-00700 Patent 6,546,397 B1 15 Having considered the parties’ arguments and evidence, we determine that Petitioner has not met its burden of showing that Jammes’ product relationship information are settings, or attributes of an object available for selection, that describe elements on a website. We discern three deficiencies in Petitioner’s showing. First, Petitioner has not demonstrated sufficiently that Jammes’ product relationship information are “settings” or “attributes of an object.” This relationship information reflects inventory organization information, akin to areas of a back storeroom that are organized by product type. See Ex. 1007, Fig. 7D (depicting folders identifying areas of a store organized by product type, e.g., “Automotive” is organized separately from “Computer,” which is organized separately from “Clothing”); Prelim. Resp. 26 (“Jammes merely shows the product relationships in a folder hierarchy.”). Petitioner has not shown how inventory organization information is an “attribute of an object” like, e.g., font style as disclosed in the ’397 patent. See Ex. 1001, Fig. 37. Specifically, other than the conclusory statement that “[t]he relationship information of a given product or product group (such as described above) is an attribute of an object (e.g., the product or product group),” Petitioner does not explain or support how or why this is so. Pet. 54. The cited portion of Dr. Chatterjee’s declaration provides no further explanation. Ex. 1002 ¶ 78. Moreover, although we need not determine whether Patent Owner is correct in suggesting that a setting must “modify the appearance or behavior of any objects” (Prelim. Resp. 27), Petitioner makes no persuasive showing as to how or why it understands “relationship information” to be “an attribute,” in light of the Specification. Pet. 54. IPR2021-00700 Patent 6,546,397 B1 16 Second, unlike the examples disclosed in the ’397 patent, Petitioner has not shown that Jammes’ inventory organization information is “user selectable” or “available for selection.” The ’397 patent explains that when a setting is selected, for example by a mouse click on a drop down list, the setting is immediately implemented and the results are displayed. See, e.g., Ex. 1001, 10:36–52 (describing interactive and selectable fields where “the results [are] immediately processed by the build engine and displayed in the build frame 500”). Petitioner does not explain how Jammes’ drag-and-drop organizational changes constitute selection of a setting or attribute of an object, when read in light of the Specification. To the contrary, when Jammes’ inventory organization information is modified by dragging and dropping a product to a group, the relationship information is updated, e.g., “Honda Accord” becomes associated with the “Sedans” group, for example, but no setting or attribute of an object is selected that describes elements on a website. The relationship data is simply altered in a database. We agree with Patent Owner that “[m]odifications to the relationships through the Jammes interface are only abstractly linked to the eventual organization of the online store page produced by the Jammes system, rather than providing a web page designer with a specific visual representation of the effect of particular user selected settings.” Prelim. Resp. 28–29. Third, we are not persuaded that Jammes’ inventory organization information “describ[es] elements on a website,” as required by claim 1. The ’397 patent discloses user-selectable settings that describe how items will appear on the website, e.g., whether the font style will be bolded or italicized. See, e.g., Ex. 1001, Fig. 37. By contrast, Jammes’ relationship information describes back storeroom inventory information for various products and groups of products. At best, this information dictates what IPR2021-00700 Patent 6,546,397 B1 17 products ultimately will be displayed on a website in response to an end user query for a product group. See, e.g., Ex. 1007, Fig. 18. But Petitioner has not explained persuasively how this describes elements on a website. In other words, Petitioner has not established that the provision of content to be displayed on a website “describes elements on a website” as recited by the claim. III. CONCLUSION For the foregoing reasons, we determine that Petitioner has not demonstrated a reasonable likelihood it would prevail in establishing the unpatentability of the challenged claim of the ’397 patent. Accordingly, we deny institution of an inter partes review. IV. ORDER Upon consideration of the record before us, it is: ORDERED that the Petition is denied as to the challenged claim, and no trial is instituted. IPR2021-00700 Patent 6,546,397 B1 18 FOR PETITIONER: Naveen Modi Joseph E. Palys Daniel Zeilberger Arvind Jairam PAUL HASTINGS LLP PH-Google-ExpressMobile-IPR@paulhastings.com FOR PATENT OWNER: David L. Alberti Sal Lim Russell S. Tonkovich David K. Wiggins FEINBERG DAY KRAMER ALBERTI LIM TONKOVICH & BELLOLI LLP dalberti@feinday.com slim@feinday.com rtonkovich@feinday.com dwiggins@feinday.com Bridget A. Smith LOWENSTEIN & WEATHERWAX LLP smith@lowensteinweatherwax.com Copy with citationCopy as parenthetical citation