Express Mobile, Inc.Download PDFPatent Trials and Appeals BoardOct 4, 2021IPR2021-00711 (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. IPR2021-00711 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 IPR2021-00711 Patent 9,928,044 B2 2 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. IPR2021-00711 Patent 9,928,044 B2 3 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. IPR2021-00711 Patent 9,928,044 B2 4 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 IPR2021-00711 Patent 9,928,044 B2 5 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, IPR2021-00711 Patent 9,928,044 B2 6 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. IPR2021-00711 Patent 9,928,044 B2 7 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. IPR2021-00711 Patent 9,928,044 B2 8 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. IPR2021-00711 Patent 9,928,044 B2 9 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 IPR2021-00711 Patent 9,928,044 B2 10 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. IPR2021-00711 Patent 9,928,044 B2 11 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. IPR2021-00711 Patent 9,928,044 B2 12 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, IPR2021-00711 Patent 9,928,044 B2 13 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 IPR2021-00711 Patent 9,928,044 B2 14 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). IPR2021-00711 Patent 9,928,044 B2 15 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 IPR2021-00711 Patent 9,928,044 B2 16 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 IPR2021-00711 Patent 9,928,044 B2 17 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 IPR2021-00711 Patent 9,928,044 B2 18 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. IPR2021-00711 Patent 9,928,044 B2 19 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 Copy with citationCopy as parenthetical citation