Express Mobile Inc.

Patent Trials and Appeals Board

Oct 4, 2021

IPR2021-00709 (P.T.A.B. Oct. 4, 2021)

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.

IPR2021-00709
Patent 9,063,755 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
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I. INTRODUCTION
Google LLC (“Petitioner”) filed a Petition requesting inter partes
review of claims 1, 2, 7, and 11 of U.S. Patent No. 9,063,755 B2 (“the ’755
patent,” Ex. 1001). Paper 1 (“Pet.”), 4. 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 ’755 patent is the subject of several district
court proceedings. Pet. 1–3; Paper 4, 1–2. The ’755 patent is the parent of
U.S. Patent No. 9,471,287, which is the subject of IPR2021-00710. Paper 4,
3. The ’755 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 ’755 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
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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, 5:8–15. 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, 5:42–49.
The Player transforms device-independent instructions of the Application
into device-specific instructions that are executable by the device. Ex. 1001,
5:56–58. 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, 6:12–17.
Figure 2A is reproduced below.

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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,
8:7–9. Device 130 requests a Player from response director 210, and
receives and installs the Player. Ex. 1001, 8:9–11. Web service 230 is a
plurality of services obtainable over the Internet. Ex. 1001, 8:18–19. Each
web service is identified in an entry in web component registry 220.
Ex. 1001, 8:19–22. 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,
8:22–26. A web component registry 220 for each registered web service 230
is loaded into authoring platform 110. Ex. 1001, 8:54–56. 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, 8:56–58.
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, and
b) the address of the web service;
an authoring tool configured to:
define a user interface (UI) object for presentation on the
display, where said UI object corresponds to the web
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component included in said registry selected from the
group consisting of an input of the web service and an
output of the web service,
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,
produce an Application including the selected symbolic name
of the defined UI object, where said Application is a
device-independent code, and
produce a Player, where said Player is a device-dependent
code;
such that, when the Application and Player are provided to the
device and executed on the device, and when a user of
the device provides one or more input values associated
with an input symbolic name to an input of 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
corresponding one or more output values and provides
instructions for a display of the device to present an
output value in the defined UI object.
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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 ’755 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).
“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.

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.
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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. 5–6 (citing Ex. 1002 ¶¶ 15–16). Petitioner also contends that
“[m]ore education can supplement practical experience, and vice-versa.” Id.
at 6 (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. Resp.
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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. 10–11. 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 asserted 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.
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Figure 1A above includes Application Designer 104 and Application
Player 106. Ex. 1007 ¶ 40. Application Designer 104 is a computer
program that provides a user interface that allows a user to create application
111. Id. Application 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 include generic web service object model 130 (WSObject) and
web service factory application programming interface 132 (WSFactory
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API). Id. ¶ 44. 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.

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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.
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 ’755 patent are
unpatentable under 35 U.S.C. § 103(a) as obvious over Huang in view of
Angelov. Pet. 12–79. 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. 3–16. 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
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7–11; (2) “the web service utilizes the input symbolic name and the user
provided one or more input values,” id. at 12; (3) “the player receives the
output symbolic name,” id. at 12–13; and “an authoring tool configured
to . . . produce a player.” id. at 14–16. We address each of these
limitations below.
1. an authoring tool configured to produce a Player
Claim 1 recites “an authoring tool configured to . . . produce a Player,
where said Player is a device-dependent code.” Petitioner contends that,
although Huang and Angelov do not explicitly disclose that the Application
Designer is configured to produce a player, it would have been obvious to
implement such a feature. Pet. 51. According to Petitioner, the designer of
Huang is configured to generate a software application executed by a player,
and this shows that a person of ordinary skill would have found it
predictable to generate the player itself, because the player is also software.
Pet. 52. Petitioner contends that, because Huang does not explicitly disclose
what produces the player, a person of ordinary skill would have leveraged
existing resources disclosed in Huang that already produce other software.
Pet. 52. According to Petitioner, producing device-dependent code was well
known and advantageous. Pet. 52–54.
Patent Owner contends that creating and saving applications as XML
definitions in a database as taught by Huang is significantly simpler than
generating Java Server Pages (JSP) or JavaScript that produce a player.
Prelim. Resp. 15. Patent Owner contends that Huang does not disclose using
the Application Designer to generate JSP or JavaScript, nor does Huang
disclose how to do so. Prelim. Resp. 15. Patent Owner contends that
Petitioner does not explain how any resource in Huang could be leveraged to
produce a player. Prelim. Resp. 15.
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We are not persuaded by Petitioner’s contention that producing
device-dependent code was well-known because such knowledge is already
shown by Huang’s disclosure of a player which may be JSP and may include
JavaScript. Ex. 1007 ¶ 41. However, the player disclosed by Huang is sent
from server 120 to browser 101 (which executes the player and the
Application Designer), not produced by the Application Designer. Id.; see
Pet 51 (“Huang does not explicitly disclose what produces [the] player.”).
Petitioner has not sufficiently shown that a person of ordinary skill who
could produce applications using the designer of Huang could also produce a
player using the same designer. We agree with Patent Owner that Huang
does not disclose how the designer or any other resource of Huang would
produce a player, and Petitioner does not sufficiently explain how any
resource in Huang could be leveraged to do so. On this record, Petitioner
has not sufficiently shown that the combination of Huang and Angelov
teaches “an authoring tool configured to . . . produce a Player, where said
Player is a device-dependent code.”
2. 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. 21. 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. 61. 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
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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. Pet. 61.
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-
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.
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3. 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. 61 (citing Ex. 1002 ¶¶ 124–127). 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 63 (citing Ex. 1007 ¶¶ 47, 71, 129, Fig. 21; Ex. 1002
¶¶ 125–126).
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
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.
4. 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
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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. 67–68 (citing Ex. 1002 ¶ 131). 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 ¶ 131).
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,
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
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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 ’755 patent. Thus, we do not institute an inter
partes review of the challenged claims.
IV. DISCRETIONARY ISSUES
Because we deny institution on the merits, we do not reach the
discretionary issues raised by Patent Owner. See Prelim. Resp. 16–35.
IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied.
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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