Express Mobile, Inc.

Patent Trials and Appeals Board

Oct 4, 2021

IPR2021-00711 (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.

IPR2021-00711
Patent 9,928,044 B2

Before JEFFREY S. SMITH, AARON W. MOORE, and
KRISTI L. R. SAWERT, Administrative Patent Judges.

SAWERT, 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 for inter partes review of
claims 1, 2, 7, and 11 of U.S. Patent No. 9,928,044 B2 (Ex. 1001, “the ’044
patent”). Paper 1 (“Pet.”). Patent Owner, Express Mobile, Inc., 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
institute an inter partes review if “the information presented in the
petition . . . and any response . . . 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(a). After considering the
Petition, the Preliminary Response, and the evidence of record, we
determine the information presented does not show a reasonable likelihood
that Petitioner would prevail in establishing the unpatentability of at least
one of the challenged claims of the ’044 patent. Accordingly, we do not
institute an inter partes review of claims 1, 2, 7, and 11 of the ’044 patent on
the grounds asserted in the Petition.
II. BACKGROUND
A. Related Matters
The parties identify several district court proceedings involving the
’044 patent. Pet. 1–5; Paper 4, 1–2 (Patent Owner’s Mandatory Notices).
The ’044 patent claims priority to U.S. Patent No. 9,063,755, which was the
subject of IPR2021-00709 (also filed by Petitioner), and is related to U.S.
Patent No. 9,471,287, which was the subject of IPR2021-00710 (also filed
by Petitioner). Paper 4, 4–5.
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B. Real Parties in Interest
Petitioner identifies Google LLC as the real party in interest. Pet. 1.
Patent Owner identifies Express Mobile, Inc., as the real party in interest.
Paper 4, 1.
C. Overview of the ’044 patent
The technical field of the ’044 patent relates to a platform for
authoring software code for mobile devices. Ex. 1001, 1:6–9. A user of the
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. Id. at 5:13–19. The authoring
tool can produce a plurality of Players for different devices, and a plurality
of Applications for displaying pages on the devices. Id. at 5:46–53. The
Player transforms device-independent instructions of the Application into
device-specific instructions that are executable by the device. Id. at 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. Id. at 6:17–21.

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Figure 2A is reproduced below.

Fig. 2A “is a schematic of an embodiment of system illustrating
the communications between different system components.”
Ex. 1001, 2:21–23.
Figure 2A illustrates the communications between different system
components. Id. at 2:21–23. Authoring platform 110 generates one or more
Players which are provided to response director 210. Id. at 8:15–17. Device
130 requests a Player from response director 210, and receives and installs
the Player. Id. at 8:18–20. Web service 230 is a plurality of services
obtainable over the Internet. Id. at 8:26–27. Each web service is identified
in an entry in web component registry 220. Id. at 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. Id. at 8:30–34. A web component registry 220
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for each registered web service 230 is loaded into authoring platform 110.
Id. at 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. Id. at 8:64–66.
D. The Challenged Claims
Petitioner challenges claims 1, 2, 7, and 11 of the ’044 patent. Pet. 6.
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) 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 where each
symbolic name has a preferred UI object, and
b) an address of the web service;
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 computer memory
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,
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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,
store information representative of said defined UI object
and related settings in a database;
retrieve said information representative of said one or
more said UI object settings stored in said
database; and
build an application consisting of one or more web page
views from at least a portion of said database
utilizing at least one player, where said player
utilizes information stored in said database to
generate for the display of at least a portion of said
one or more web pages,
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, the device
provides the user provided one or more input
values and corresponding input symbolic name to
the web service, 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,
and the player receives the output symbolic name and
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.
Ex. 1001, 37:48–38:40.

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E. Asserted Evidence
Petitioner submits the following evidence:
Evidence Exhibit No.
Declaration of Sandeep Chatterjee, Ph.D. 1002
U.S. Patent Publ. No. 2007/0118844 A1 (published May 24,
2007) (“Huang”) 1007
U.S. Patent Publ. No. 2007/0067421 A1 (published Mar.
22, 2007) (“Angelov”) 1008
F. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability:
Claims Challenged 35 U.S.C. § References
1, 2, 7, 11 103(a)1 Huang, Angelov
Pet. 6–7.
III. ANALYSIS
Petitioner contends that claims 1, 2, 7, 11 of the ’044 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

1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125
Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’044
patent has an effective filing date before the effective date of the applicable
AIA amendments, we refer to the pre-AIA version of 35 U.S.C. § 103.
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matter and the prior art; (3) the level of ordinary skill in the art; and (4)
when in evidence, objective indicia of non-obviousness.2 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.
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.

2 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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Citing the Declaration of Dr. Chatterjee, 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. 7–8 (citing Ex. 1002 ¶¶ 15–16). Petitioner also contends that “[m]ore
education can supplement practical experience, and vice-versa.” Id. at 8
(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.
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
’044 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001).
B. Claim Construction
In this inter partes review, we apply the same claim construction
standard that would be used in a civil action under 35 U.S.C. § 282(b).
37 C.F.R. § 42.100(b). In applying this standard, we generally give claim
terms their ordinary and customary meaning as would be understood by an
ordinarily skilled artisan at the time of the invention and in the context of the
entire patent disclosure. See id.; see also Phillips v. AWH Corp., 415 F.3d
1303, 1312–14 (Fed. Cir. 2005) (en banc).
Petitioner proposes construction of various claim terms “under the
plain meaning of the terms . . ., and also under the district court
constructions.” Pet. 12; see also id. at 10–12. Patent Owner does not
propose construing any claim terms. See generally Prelim. Resp. Because
our determination below is not impacted by Petitioner’s proposed claim
constructions, we need not expressly construe any claim term for this
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Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in
controversy need to be construed, and only to the extent necessary to resolve
the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
795, 803 (Fed. Cir. 1999))).
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, code (57). Figure 1A, reproduced below,
shows an example of the system.

FIG. 1A “is an illustrative drawing of a system for developing
and executing browser-based applications.” Ex. 1007 ¶ 9.
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Figure 1A includes Application Designer 104 and Application Player
106. Id. ¶ 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 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.

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An example of the flow of data between an application component
and a web service is shown in Figure 1B, reproduced below. Id. ¶ 57.

Fig. 1B “is an illustrative drawing of a binding between an
application component and a web service.” Ex. 1007 ¶ 10.
Figure 1B 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.
¶ 57. 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,
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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.
2. Angelov
Angelov discloses a system and method for generating a web services
description file. Ex. 1007, code (57). According to Angelov, “‘web
services’ can be viewed as a technology for engaging in business
relationships (e.g., buying and selling) in a partially or wholly automated
fashion over a network such as the Internet.” Id. ¶ 4. Angelov states that a
web services model “includes a registry 101, a service provider 102 and a
service consumer 103.” Id. “The registry 101 includes listings of various
‘available’ services, and, may assist the service consumer 103 in searching
for a suitable service provider based on the web servicing needs of the
service consumer 103.” Id. ¶ 5.
D. Asserted Obviousness over Huang in view of Angelov
Petitioner contends that claims 1, 2, 7, and 11 of the ’044 patent are
unpatentable under 35 U.S.C. § 103(a) as obvious over Huang in view of
Angelov. Pet. 13–83. 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
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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 the output symbolic name,” id. at 12–13. We
address each of these limitations below.
1. “the device provides the user provided one or more input values and
corresponding input symbolic name to the web service”
Claim 1 recites that “the device provides the user provided one or
more input values and corresponding input symbolic name to the web
service.” Ex. 1001, 38:30–33. Petitioner contends that “Huang discloses or
suggests this limitation.” Pet. 66 (citing Ex. 1002 ¶¶ 137–157). Petitioner
does not rely on any of the teachings of Angelov for this claim limitation.
Specifically, Petitioner maps the claimed “symbolic name” to the
name of a web service object, such as “Opportunity,” as disclosed by Huang.
Pet. 22. Petitioner contends that Huang’s computer (“device”) “provides the
corresponding input symbolic name (e.g., ‘Opportunity’)” to the web
service, because “the object having the input symbolic name (e.g.,
‘Opportunity’) is the object whose attribute value is accessed (e.g., to set it)
via Huang’s binding technique.” Id. at 70 (Ex. 1002 ¶ 145). According to
Petitioner, a person of ordinary skill would have recognized that “the
corresponding input symbolic name is necessarily provided to the web
service, e.g., because without the input symbolic name, Huang’s binding-
based technique (which requires identification of 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. (citing Ex. 1007, Fig. 4A;
Ex. 1002 ¶ 145).
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Patent Owner, in response, argues that Huang and Angelov fail to
teach this claim limitation because Huang’s device does not provide
“anything at all” to the web service. Prelim. Resp. 7–8. Specifically, Patent
Owner argues that Huang’s device running the application player does not
provide symbolic names to the web service, but instead, interacts with a
generic web service object on an intermediary server. Id. at 8 (citing
Ex. 1007 ¶ 57, Fig. 1B). Patent Owner contends that this intermediary
server converts the generic web service object and provides the result of the
conversion to the web service. Id. (citing Ex. 1007 ¶ 27, Fig. 1B). 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, and then provides the converted name to the web service. Id. at 9
(citing Ex. 1007 ¶ 124; Ex. 2001 ¶¶ 39–40). Patent Owner argues that,
“because of the conversion, the information provided to the web service by
the intermediary server differs from those provided by the device.” Id.
(emphasis omitted).
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. Id. ¶¶ 44, 57. Contrary to Petitioner’s
contention, Huang does not necessarily provide the claimed “input symbolic
name” to the web service. See Pet. 70. 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. Therefore, on
this record, we are not persuaded that Petitioner has sufficiently shown for
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institution that Huang teaches or suggests “the device provides . . . [the]
corresponding input symbolic name to the web service” as recited in claim 1.
As noted above, Petitioner does not rely on Angelov for any of the teachings
of Angelov for this claim limitation.
2. “the web service utilizes the input symbolic name and the user provided
one or more input values”
Claim 1 also recites that “the web service utilizes the input symbolic
name.” Ex. 1001, 38:33–34. Petitioner contends that Huang “discloses or
suggests this aspect of” claim 1. Pet. 71 (citing Ex. 1002 ¶¶ 146–149).
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 71–72 (citing
Ex. 1007 ¶¶ 47, 71, 129, Fig. 21; Ex. 1002 ¶¶ 147–148).
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
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that Petitioner has sufficiently shown that the combination of Huang and
Angelov teaches this limitation. Supra § III.D.1.
3. “the player receives the output symbolic name”
Claim 1 recites that “the player receives the output symbolic name.”
Ex. 1001, 38:37. 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. 75 (citing Ex. 1002 ¶ 153). 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 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 ¶ 153).
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
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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.
IV. 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 ’044 patent. Thus, we do not institute an inter
partes review of the challenged claims.
V. DISCRETIONARY ISSUES
Because we deny institution on the merits, we do not reach the
discretionary issues raised by Patent Owner. See Prelim. Resp. 13–31.
VI. ORDER
Accordingly, it is
ORDERED that the Petition is denied.

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FOR PETITIONER:
Naveen Modi
Joseph Palys
Daniel Zeilberger
Arvind Jairam
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
danielzeilberger@paulhastings.com
arvindjairam@paulhastings.com

FOR 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