Petition for Inter Partes Review of
`U.S. Patent No. 9,772,814
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`FACEBOOK, INC.,
`Petitioner
`
`v.
`
`HYPERMEDIA NAVIGATION LLC,
`Patent Owner
`
`
`
`
`U.S. Patent No. 9,772,814
`Issue Date: September 26, 2017
`
`TITLE: SYSTEM AND METHOD FOR CREATING AND NAVIGATING A
`LINEAR HYPERMEDIA RESOURCE PROGRAM
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,772,814
`
`
`
`
`
`
`
`
`

`

`Table of Contents
`
`
`Page
`
`
`I. Mandatory Notices Under 37 C.F.R. § 42.8(A)(1) ........................................ 1 
`A.
`Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1) ............................ 1 
`B.
`Related Matters under 37 C.F.R. § 42.8(b)(2) ..................................... 1 
`C.
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) .................. 3 
`D.
`Service Information .............................................................................. 4 
`Fee Payment .................................................................................................... 4 
`II.
`III. Requirements under 37 C.F.R. §§ 42.104 and 42.108 ................................... 5 
`A. Grounds for Standing under 37 C.F.R. § 42.104(a) ............................. 5 
`B.
`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested ................................................ 5 
`Considerations Under §§325(d) and 314(a) ......................................... 6 
`C.
`IV. Overview of The ’814 Patent .......................................................................... 9 
`V.
`Claim Construction ....................................................................................... 10 
`A.
`“map area” .......................................................................................... 10 
`B.
`the “linear” terms ................................................................................ 11 
`C.
`“video element” and “linear program of video elements” ................. 15 
`VI. Claims 14-18, 20 Are Unpatentable ............................................................. 19 
`A.
`Brief Overview of Grounds ................................................................ 19 
`B.
`Brief Summary and Date Qualification of the Prior Art .................... 21 
`
`Greer (Ex. 1003) ...................................................................... 21 
`
`Richardson (Ex. 1004) ............................................................. 22 
`
`Behlendorf (Ex. 1007) ............................................................. 23 
`
`Stevens (Ex. 1005) and Appleman (Ex. 1006) ........................ 24 
`C. Ground 1: Obviousness of Claims 14, 15, 18, and 20 Over
`Greer and Behlendorf ......................................................................... 24 
`
`Independent Claim 20 .............................................................. 24 
`(a)
`“A method for…” (Claim 20, Preamble) ...................... 24 
`
` 
`
`
`
`-i-
`
` 
`
`

`

`(c)
`
`(d)
`
`(e)
`
`(f)
`
`(g)
`
`Table of Contents
`(continued)
`
`Page
`
`(b)
`
`“sending data from the network node to display, in
`a display window of a display device of a
`subscriber station at a user location, a first media
`element of the plurality of media elements,”
`(Claim 20[a]) ................................................................. 32 
`“the first media element having a forward link to a
`second media element of the linear Web program;”
`(Claim 20[b]) ................................................................. 35 
`“sending the linear Web program from the network
`node to the subscriber station;” (Claim 20[c]) .............. 37 
`“when the first media element is displayed in the
`display window, receiving a first signal in response
`to an action of the user indicating a first forward
`link activation, and in response to the first signal,
`sending data from the network node to display in
`the display window, the second media element of
`the linear Web program,” (Claim 20[d]) ....................... 38 
`“the second media element having a forward link
`to a third media element of the linear Web
`program; and” (Claim 20[e]) ......................................... 41 
`“when the second media element is displayed in
`the display window, receiving a second signal in
`response to an action of the user indicating a
`second forward link activation, and in response to
`the second signal, sending data from the network
`node to display in the display window, the third
`media element of the linear Web program.” (Claim
`20[f]) .............................................................................. 42 
`Independent Claim 14 .............................................................. 42 
`(a)
`“A method of presenting a linear program of video
`elements, the linear program including a first video
`element, a second video element and a third video
`element, the method comprising:” (Claim 14,
`Preamble) ....................................................................... 42 
`-ii-
` 
`
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`
`  
`
`
`
`
`
`

`

`Table of Contents
`(continued)
`
`Page
`
`(b)
`
`(c)
`
`(d)
`
`“sending data for displaying a plurality of
`indicators in a map area of a display screen, each
`of the plurality of indicators representing a
`corresponding one of the first video element, the
`second video element or the third video element,
`wherein the plurality of indicators includes at least
`one of: text, icons or graphical depictions;” (Claim
`14[a]) .............................................................................. 45 
`“sending data for displaying a forward link
`indicator corresponding to a next program element
`of the linear program of video elements;” (Claim
`14[b]) ............................................................................. 49 
`“selecting, by a server, the next program element
`of the linear program of video elements in
`response to a user selection of the forward link
`indicator; and” (Claim 14[c]) ........................................ 51 
`“sending data for displaying the selected next
`program element in a viewing area of the display
`screen;” (Claim 14[d]) ................................................... 52 
`“wherein the first video element, the second video
`element and the third video element are stored on
`the server.” (Claim 14[e]) ............................................. 53 
`Dependent Claim 15: “The method of claim 14 further
`comprising: in response to a user selection of one of the
`plurality of indicators, selecting a selected video element
`corresponding to one of, the first video element, the
`second video element or the third video element.” .................. 54 
`Dependent Claim 18: “The method of claim 14 further
`comprising: sending data for displaying the linear
`program of video elements to a subscriber station at a
`user location over an Internet.” ................................................ 55 
`D. Ground 2: Obviousness of Claim 16 over Greer, Behlendorf,
`Stevens, and Appleman ...................................................................... 55 
`
`(e)
`
`(f)
`
`
`
`
`
`-iii-
`
` 
`
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`  
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`
`
`

`

`Table of Contents
`(continued)
`
`Page
`
`E.
`
`F.
`
`
`
`Ground 3: Obviousness of Claim 17 Over Greer, Bellendorf,
`and Richardson ................................................................................... 64 
`Ground 4: Obviousness of Claims 14-15, 17-18, and 20 Over
`Greer, Bellendorf, and Richardson ..................................................... 67 
`G. Ground 5: Obviousness of Claim 16 Over Greer, Behlendorf,
`Richardson, Stevens, and Appleman .................................................. 70 
`VII. Conclusion .................................................................................................... 71 
`
`
`  
`
`
`
`-iv-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,772,814
`
`List of Exhibits
`
`
`
`Exhibit
`Description of Document
`No.
`1001 U.S. Patent No. 9,772,814 to Bruce Edward Stuckman et al. (filed June
`2, 2015, issued September 26, 2017) (“’814” or “’814 patent”)
`1002 Declaration of Christopher M. Schmandt (“Schmandt”)
`1003 U.S. Patent No. 6,009,429 to Timothy Dan Greer et al. (filed
`November 13, 1997, issued December 28, 1999) (“Greer”)
`1004 U.S. Patent No. 5,809,247 to John A. Richardson et al. (filed July 22,
`1996, issued September 15, 1998) (“Richardson”)
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`1011
`1012
`1013
`1014
`
`Excerpts from George H. Stevens et al., Designing Electronic
`Performance Support Tools: Improving Workplace Performance with
`Hypertext, Hypermedia and Multimedia (1995) (“Stevens”)
`
`Excerpts from Daniel Appleman, PC Magazine Visual Basic
`Programmer’s Guide to the Windows API (1993) (“Appleman”)
`
`Excerpts from Brian Behlendorf & David Chandler, Running a Perfect
`Web Site with Apache (1996) (“Behlendorf”)
`
`Excerpts from Comprehensive Dictionary of Electrical Engineering
`(1999)
`
`Excerpts from Webster’s New World Dictionary of Computer Terms
`(7th ed. 1999)
`
`Excerpts from McGraw-Hill Illustrated Telecom Dictionary (1998)
`
`Excerpts from Microsoft Press Computer Dictionary (3rd ed. 1997)
`
`Excerpts from Newton’s Telecom Dictionary (14th ed. 1998)
`
`Excerpts from PC Magazine (June 1995)
`
`Excerpts from Kooros et al., JavaScript (1996) (“Kooros”)
`
` 
`
`
`
`‐v‐ 
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,772,814
`
`List of Exhibits
`
`
`
`Exhibit
`No.
`1015
`
`1016
`
`1017
`
`1018
`1019
`
`1020
`
`1021
`
`1022
`1023
`
`1024
`1025
`
`1026
`
`1027
`
`Description of Document
`Excerpts from Sengupta et al., C++: Object-Oriented Data Structures
`(1994) (“Sengupta”)
`
`Excerpts from Silvester, Data Structures for Engineering Software
`(1993) (“Silvester”)
`
`Excerpts from Brookshear, Computer Science: An Overview (4th ed.
`1994) (“Brookshear”)
`
`Excerpts from PC Magazine (Jan. 1991)
`
`Excerpts from Gibson, Computer Systems: Concepts and Design
`(1991) (“Gibson”)
`
`Excerpts from John B. Smith et al., Hypertext, Communications of the
`ACM, Vol. 31, No. 7 (July 1988) (“Smith”)
`
`RFC 1866, “Hypertext Markup Language - 2.0,”
`<https://tools.ietf.org/html/rfc1866>
`
`Excerpts from Webster's New World College Dictionary (4th ed. 1999)
`
`Excerpts from Merriam-Webster's Collegiate Dictionary (10th ed.
`1998)
`
`RFC 2068 (1997), <https://www.ietf.org/rfc/rfc2068.txt>
`
`Excerpts from Valerie Quercia, Internet in a Nutshell (1997)
`(“Quercia”)
`
`Excerpts from Eric Ladd et. al, Platinum Edition Using HTML 3.2,
`Java 1.1, and CGI (1996) (“Ladd”)
`
`Excerpts from David Fox et al., Web Publisher’s Construction Kit with
`HTML 3.2 (1996) (“Fox”)
`
` 
`
`
`
`‐vi‐ 
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,772,814
`
`List of Exhibits
`
`
`
`Exhibit
`No.
`1028
`
`1029
`
`1030
`1031
`
`1032
`
`Description of Document
`Excerpts from Random House Webster’s College Dictionary (2d ed.
`1999)
`
`Excerpts from Crespo et al., Responsive interaction for a large Web
`application: the meteor shower architecture in the WebWriter II
`Editor (1997) (“Crespo”)
`
`Exhibit Not Used
`
`Summons in a Civil Action, Proof of Service from Hypermedia
`Navigation LLC v. Facebook, Inc., Case No. 4:17-cv-5383 (N.D. Cal.),
`ECF No. 14 (filed on October 11, 2017)
`
`Joint Claim Construction and Prehearing Statement filed in
`Hypermedia Navigation LLC v. Facebook, Inc., Case No. 4:17-cv-
`5383 (N.D. Cal.), ECF No. 58 (filed on August 24, 2018)
`
`1033
`
`Joint Claim Construction and Prehearing Statement filed in
`Hypermedia Navigation LLC v. Microsoft Corp., Case No. 4:18-cv-
`00670 (N.D. Cal.), ECF No. 85 (filed on August 24, 2018)
`1034 Order Denying Defendant’s Motion to Dismiss filed in Hypermedia
`Navigation LLC v. Facebook, Inc., Case No. 4:17-cv-5383 (N.D. Cal.),
`ECF No. 57 (filed on August 16, 2018)
`1035 Declaration of Sylvia Hall-Ellis (“Hall-Ellis”)
`1036 Order Dismissing Action, Hypermedia Navigation LLC v. Microsoft
`Corp., Case No. 4:18-cv-00670 (N.D. Cal.), ECF No. 89 (filed on
`September 18, 2018)
`
`1037
`Exhibit Not Used
`1038 Amended Complaint filed in Hypermedia Navigation LLC v.
`Facebook, Inc., Case No. 4:17-cv-5383 (N.D. Cal.), ECF No. 59 (filed
`on August 29, 2018)
`
` 
`
`
`
`‐vii‐ 
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,772,814
`
`List of Exhibits
`
`
`
`Exhibit
`No.
`1039
`
`Description of Document
`Plaintiff’s Opening Claim Construction Brief filed in Hypermedia
`Navigation LLC v. Facebook, Inc., Case No. 4:17-cv-5383 (N.D. Cal.),
`ECF No. 62 (filed on September 28, 2018)
`1040 Amended Scheduling Order filed in Hypermedia Navigation LLC v.
`Facebook, Inc., Case No. 4:17-cv-5383 (N.D. Cal.), ECF No. 68 (filed
`on October 19, 2018)
`
`1041
`
`1042
`
`Stipulation and Order Staying Litigation Pending Inter Partes Reviews
`filed in Hypermedia Navigation LLC v. Facebook, Inc., Case No. 4:17-
`cv-5383 (N.D. Cal.), ECF No. 69 (filed on October 24, 2018)
`
`’814 Infringement Claim Chart served by the Patent Owner on May 1,
`2018 in Hypermedia Navigation LLC v. Facebook, Inc., Case No.
`4:17-cv-5383 (N.D. Cal.)
`
` 
`
`
`
`‐viii‐ 
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,772,814
`
`Facebook, Inc. (“Petitioner”) submits this petition for Inter Partes Review of
`
`claims 14-18 and 20 of U.S. Patent No. 9,772,814 (Ex. 1001) (“’814 patent”).
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)
`The Petitioner, Facebook, Inc. is the real party-in-interest to this IPR petition.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`The ’814 patent is the subject of pending litigation involving Petitioner:
`
`Hypermedia Navigation LLC v. Facebook, Inc., Case No. 4:17-cv-05383 (N.D.
`
`Cal.). The Complaint in that action was filed on September 18, 2017 and served on
`
`the Petitioner on September 26, 2017, but did not assert the ’814 patent. (Ex. 1031.)
`
`An Amended Complaint was filed adding the ’814 patent on August 29, 2018. (Ex.
`
`1038.) The statute of limitations under § 315(b) for this Petition thus expires no
`
`earlier than August 29, 2019.
`
`The parties have exchanged claim construction positions for certain disputed
`
`terms (Ex. 1032) and the Patent Owner has filed an Opening Claim Construction
`
`Brief (Ex. 1039), but that litigation was stayed in light of the IPR petitions filed
`
`against the patents-in-suit before Petitioner’s Responsive Claim Construction Brief
`
`was due. (See Exs. 1040, 1041.) Thus, the Court has not yet issued any claim
`
`construction rulings, and no trial date has been set.
`
` 
`
`
`
`-1-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,772,814
`
`The ’814 patent was also the subject of pending litigation against third party
`
`Microsoft Corporation (“Microsoft”): Hypermedia Navigation LLC v. Microsoft
`
`Corp., Case No. 4:18-cv-00670 (N.D. Cal.). On August 10, 2018, Microsoft filed
`
`an IPR petition against the ’814 patent: Microsoft Corp. v. Hypermedia Navigation,
`
`LLC, Case No. IPR2018-01519. Petitioner was not involved in the preparation or
`
`filing of the Microsoft petition. Microsoft and the Patent Owner entered into a
`
`settlement and the Court has dismissed the action against Microsoft with prejudice.
`
`(See Ex. 1036, Order Dismissing Action, Hypermedia Navigation LLC v. Microsoft
`
`Corp., Case No. 4:18-cv-00670 (N.D. Cal.), ECF No. 89.) The settlement has
`
`resulted in the termination of IPR2018-01519, an IPR petition that Microsoft filed
`
`against the ’814 patent. (Order Dismissing Petition, IPR2018-01519, Paper 7
`
`(P.T.A.B. Nov. 6, 2018).) Nevertheless, as explained in Part III.C below, the
`
`present Petition raises prior art references and grounds of unpatentability
`
`substantially different from those asserted by Microsoft in IPR2018-01519.
`
`Other than the now-terminated petition filed by Microsoft and the present
`
`Petition, Petitioner is unaware of any other IPR petitions filed with respect to the
`
`’814 patent. But several IPR petitions have been filed against other patents in the
`
`same patent family. Petitioner itself has filed IPR petitions against U.S. Patent Nos.
`
`7,383,323 (IPR2018-01721), 9,083,672 (IPR2018-01763), 7,478,144 (IPR2018-
`
` 
`
`
`
`-2-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,772,814
`
`01783), 8,250,173 (IPR2018-01791), 7,383,324 (IPR2018-01807), 7,424,523
`
`(IPR2018-01808), and 7,769,830 (IPR2018-01809).
`
`Microsoft filed three IPR petitions on August 10, 2018, challenging U.S.
`
`Patent Nos. 9,083,672 (IPR2018-01518), 9,772,814 (IPR2018-01519), and
`
`7,424,523 (IPR2018-01537). Because the underlying case between Microsoft and
`
`the Patent Owner has settled, as mentioned above, the Board dismissed these IPR
`
`petitions prior to any institution decision.
`
`On June 22, 2018, third party Unified Patents, Inc. filed an IPR petition
`
`against U.S. Patent No. 7,769,830 (IPR2018-01286), which remains pending.
`
`Petitioner had no involvement in the preparation or filing of that petition. An
`
`institution decision is expected by January 17, 2019. The Patent Owner filed a
`
`Preliminary Response to the petition on October 17, 2018 (Paper 8).
`
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`Petitioner provides the following designation of counsel.
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley.com
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`Daniel J. Knauss (Reg. No. 56,393)
`dknauss@cooley.com
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave. NW, Suite 700
`Washington D.C. 20004
`Tel: (650) 843-5287
`Fax: (650) 849-7400
`
` 
`
`
`
`-3-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,772,814
`
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`
`
`
`
`
`
`Mark R. Weinstein (Admission pro hac
`vice to be requested)
`mweinstein@cooley.com
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington D.C. 20004
`Tel: (650) 843-5007
`Fax: (650) 849-7400
`Yuan Liang (Admission pro hac vice to
`be requested)
`yliang@cooley.com
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington D.C. 20004
`Tel: (202) 728-7132
`Fax: (202) 842-7899
`
`D.
`Service Information
`This Petition is being served by Federal Express to the attorney of record for
`
`the ’814 patent, GARLICK & MARKISON, 106 E. 6th Street, Suite 900, Austin, TX
`
`78701. Petitioner consents to electronic service at the addresses provided above for
`
`lead and back-up counsel.
`
`II.
`
`FEE PAYMENT
`This Petition requests review of six claims. A payment of $30,500 is
`
`submitted ($15,500 request fee plus $15,000 post-institution fee).
` 
`-4-
` 
`
`
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,772,814
`
`III. REQUIREMENTS UNDER 37 C.F.R. §§ 42.104 AND 42.108
`A. Grounds for Standing under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’814 patent is available for IPR and that Petitioner
`
`is not barred or otherwise estopped.
`
`B.
`
`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested
`Petitioner requests the Board institute IPR of claims 14-18 and 20 based on:
`
`Ground
`1
`2
`
`3
`
`4
`
`5
`
`Basis for Challenge under §103(a)
`Claims
`14, 15, 18, 20 Greer (Ex. 1003) and Behlendorf (Ex. 1007)
`16
`Greer, Behlendorf, Stevens (Ex. 1005) and Appleman
`(Ex. 1006)
`Greer, Behlendorf, and Richardson (Ex. 1004)
`
`Greer, Behlendorf, and Richardson
`
`17
`
`14, 15, 17, 18,
`20
`16
`
`Greer, Behlendorf, Richardson, Stevens, and
`Appleman
`
`Submitted with this Petition is a Declaration of Christopher Schmandt (Ex.
`
`1002) (“Schmandt”), a qualified technical expert. (Schmandt, ¶¶1-5, Ex. A.)
`
`The grounds listed above can be viewed as being part of two logical groups.
`
`Grounds 1-3 map Greer and Behlendorf to the two independent claims, 14 and 20.
`
`Grounds 4-5 rely on Greer and Behlendorf in further combination with Richardson
`
` 
`
`
`
`-5-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,772,814
`
`for those two claims.1 As further explained below, Grounds 4 and 5 are not
`
`redundant of Grounds 1 through 3. Grounds 4 and 5 add Richardson for independent
`
`claims 14 and 20 to account for a narrow construction the Patent Owner is advancing
`
`for the claim term “linear” in the concurrent litigation.
`
`C. Considerations Under §§325(d) and 314(a)
`This Petition does not present a situation in which “the same or substantially
`
`the same prior art or arguments previously were presented to the Office.” §325(d).
`
`With the exception of Richardson, none of the prior art references in Petitioner’s
`
`Grounds was cited during prosecution of the ’814 patent.
`
`Richardson was listed on an Information Disclosure Statement (IDS) filed
`
`during the prosecution of the ’814 patent, but it was never mentioned in any Office
`
`Action or substantively discussed by the Examiner or the applicants in those
`
`proceedings – let alone evaluated with respect to the narrow limitations to which it
`
`
`1 Ground 3 challenges dependent claim 17 based on the same references as Ground
`
`4 (Greer, Behlendorf, and Richardson), but the two grounds substantively differ in
`
`the way they map the prior art to independent claim 14. In particular, Ground 3
`
`relies on the mapping of claim 14 provided in Ground 1, and as such, only relies on
`
`Greer and Behlendorf for claim 14 and adds Richardson only for claim 17. Ground
`
`4, on the other hand, cites Richardson for each of claims 14 and 17.
`
` 
`
`
`
`-6-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,772,814
`
`is applied here. There is thus no basis to reject the Petition under §325(d). See, e.g.,
`
`Digital Check Corp. d/b/a ST Imaging v. E-Imagedata Corp., IPR2017-00178, Paper
`
`6 at 12-13 (P.T.A.B. April 25, 2017).
`
`Moreover, Grounds 4 and 5 rely on Richardson for a very limited purpose –
`
`accounting for a potentially narrow definition of “linear” that the Patent Owner has
`
`proposed in the concurrent litigation that would impose additional requirements for
`
`independent claims 14 and 20. With respect to dependent claim 17 as addressed in
`
`Grounds 3 and 4, Richardson is cited solely for the “backward link indicator”
`
`limitation. Accordingly, none of Petitioner’s Grounds cite Richardson as a primary
`
`reference or for the core limitations of the challenged independent claims. This
`
`Petition instead relies on Greer, a different reference that was never cited, as the
`
`foundation and primary reference for all Grounds.
`
`As explained in Part I.B, Microsoft filed an IPR against the ’814 patent in
`
`IPR2018-01519, but that IPR has been terminated. Nevertheless, Microsoft’s IPR
`
`petition raises no §325(d) issues here because, with the exception of Richardson, it
`
`did not cite Greer or any of the other references from Grounds 1-5. Microsoft’s IPR
`
`relied on Richardson as a primary reference with respect to two of the grounds it
`
`proposes. (See IPR2018-01519, Paper 2, at 3.) In contrast, this Petition cites
`
`Richardson for a different and more limited purpose and not as a primary reference.
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`Petition for Inter Partes Review of
`U.S. Patent No. 9,772,814
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`Moreover, because Microsoft’s IPR against the ’814 patent was terminated
`
`prior to a preliminary response or institution decision, the present Petition is not a
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`“follow-on” petition that implicates concerns under §314(a). See General Plastic
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`Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, at 15 (P.T.A.B.
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`Sept. 6, 2017) (“Gen. Plastic”) (“There is no per se rule precluding the filing of
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`follow-on petitions after the Board’s denial of one or more first-filed petitions on the
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`same patent.”).2 As noted, the ’814 patent was not asserted against Petitioner until
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`August 29, 2018 (Ex. 1038) and as such, this Petition is being filed more than nine
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`months prior to the §315(b) deadline. And even though this Petition comes after the
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`Patent Owner’s preliminary response from a separate proceeding on related U.S.
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`Patent No. 7,769,830 (IPR2018-01286), that proceeding involved a different
`
`petitioner, a different patent, and completely different prior art references. (See
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`Petition, IPR2018-01286, Paper 2, at 6 (identifying art for proposed grounds).) The
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`preliminary response in IPR2018-01286 thus provided no “roadmap” for the present
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`Petition and no opportunity for Petitioner to gain any perceived tactical advantage.
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`See Gen. Plastic, at 17. This is confirmed by the fact that, as detailed in Part VI
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`below, this Petition relies on largely the same prior art references, and prior art
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`mapping, previously set forth in Petitioner’s IPR challenges to other related patents
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`2 Unless otherwise noted, all underlining has been added for emphasis.
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`Petition for Inter Partes Review of
`U.S. Patent No. 9,772,814
`
`that were filed prior to the preliminary response in IPR2018-01286. (See, e.g.,
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`Petition, IPR2018-01763, Paper 2 (challenging related U.S. Patent No. 9,083,672).)
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`Accordingly, Petitioner respectfully requests that the Board fully consider the
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`grounds presented herein to ensure that Petitioner is afforded a fair opportunity to
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`present its case with respect to the ’814 patent.
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`IV. OVERVIEW OF THE ’814 PATENT
`The ’814 patent purports to describe a method for “creating and navigating
`
`entertaining Web programs that filter out unwanted information and present desired
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`information in a series of linearly linked websites.” (’814, 2:66-3:2.) In one
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`embodiment, “a user starts with the first site and in a guided tour fashion, when
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`finished, is directed exclusively to the second site. When done with the second site,
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`the user is directed exclusively to the next site, etc. The progression of sites defines
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`a programmed linear hypermedia resource path that is geared towards the
`
`entertainment of the user.” (’814, 3:2-8.) The user is thus guided along a
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`“predetermined linear path.” (See, e.g., ’814, 10:10-12.)
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`Figure 4 below, shows an exemplary user interface used to present Web
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`content in what the ’814 patent describes as a “linear” or “guided” fashion.
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`Petition for Inter Partes Review of
`U.S. Patent No. 9,772,814
`
`
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`(’814, Fig. 4; see also id., 2:30-32, 4:23-27.) User interface 28 in Figure 4 shows
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`features reflected in the challenged claims, addressed in Part VI below.
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`V. CLAIM CONSTRUCTION
`A.
`“map area”
`The term “map area” should be construed as “a user interface or a part
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`thereof displaying at least a portion of a linear path.” (Schmandt, ¶¶39-43.) This
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`definition has been agreed to by all parties in the pending litigations, i.e., the Patent
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`Owner, the Petitioner, and third-party Microsoft Corporation (a defendant in a
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`Petition for Inter Partes Review of
`U.S. Patent No. 9,772,814
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`separate suit that has since been dismissed). (Ex. 1033, at 1; Ex. 1032, at 5.)3 This
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`definition is consistent with the description of map area 30 provided by the ’814
`
`specification at 4:27-38. As described in that passage and depicted in Figure 4, the
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`“map area” is an area of the screen (i.e., “a user interface or a part thereof”) that
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`displays at least a portion of the linear program or path.
`
`B.
`the “linear” terms
`Claim 14[a] recites “a map area of a display screen.” As noted, the parties
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`have agreed (and Petitioner requests that the Board find) that “map area” means “a
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`user interface or a part thereof displaying at least a portion of a linear path.” The
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`3 Petitioner proposed in the litigation to construe “map area” as “a user interface or
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`a part thereof displaying at least a portion of [a/the] linear program,” which is
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`substantially similar except that it recites a “linear program” instead of “linear path.”
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`(Ex. 1032, at 5.) In the interests of streamlining the proceedings in IPR, Petitioner
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`has agreed to the Patent Owner’s construction. Petitioner intended to indicate its
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`agreement with the Patent Owner’s construction of “map area” in Petitioner’s
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`Responsive Claim Construction Brief, but as noted, the litigation was stayed before
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`that brief was due. (See Exs. 1040, 1041.) There is thus no inconsistency between
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`Petitioner’s claim construction positions in IPR, and the positions it intends to take
`
`in the underlying litigation.
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`Petition for Inter Partes Review of
`U.S. Patent No. 9,772,814
`
`term “linear path” is thus incorporated into the proposed construction of “map
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`area,” and thus, required by at least claim 14[a]. Additionally, challenged
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`independent claims 14 and 20 elsewhere recite a “linear program” or “linear Web
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`program.” Given the close relationship between the “linear” terms, Petitioner will
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`discuss them together.
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`Petitioner and the Patent Owner have exchanged competing constructions for
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`the term “linear” in the underlying litigation, but the Court has issued no claim
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`construction rulings. (Ex. 1032, at 5.) The parties’ proposals are:
`
`Party
`Patent Owner
`
`Construction of “Linear”
`no more than one exclusive forward link and one
`exclusive backward link
`
`Petitioner
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`serially linked websites
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`(Id.) As applied to “linear path,” “linear program,” and “linear Web program,”
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`these proposals simply require one to replace “linear” with the chosen definition.
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`Under Petitioner’s construction, therefore, a “linear path” is a “path of serially linked
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`websites,” a “linear program” is a “program of serially linked websites,” and a
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`“linear Web program” is a “Web program of serially linked websites.”
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`Petitioner has pointed out this claim construction issue for the Board, but for
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`purposes of applying the prior art to the challenged claims, it is not necessary for the
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`Board to provide an express construction for “linear” at this time. This is because,
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`Petition for Inter Partes Review of
`U.S. Patent No. 9,772,814
`
`as explained in Part VI, Grounds 4 and 5 specifically account for the Patent Owner’s
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`narrower construction in the event it is adopted. Nevertheless, if the Board feels a
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`construction is warranted, it should adopt Petitioner’s proposal.
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`The fact that the linear program or linear path refers to a program or path of
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`“serially linked websites” is consistent with the purpose of the alleged invention –
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`to simplify navigation across multiple websites on the Web. One of ordinary skill
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`would have understood that the problem addressed by the alleged invention relates
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`to locating relevant content stored across multiple different websites, not locating
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`content within a single website. (Schmandt, ¶33.) For example, the Background of
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`the patent bemoans the fact that “even sophisticated Web users are often frustrated
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`by the amount of useless, undesirable material that appears on the Web.” (’814, 2:4-
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`6; see also id., 2:8-11.)
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`In an attempt to address these perceived challenges, the very first paragraph
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`of the Detailed Description states:
`
`The present invention addresses the need for creating and navigating
`entertaining Web programs that filter out unwanted information and
`present desired information in a series of linearly linked websites. In
`one embodiment of the present invention, a user starts with the first site
`and in a guided tour fashion, when finished, is directed exclusively to
`the second site. When done with the second site, the user is directed
`exclusively to the next site, etc. The progression of sites defines a
`programmed linear hypermedia resource path that is geared towards the
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`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,772,814
`
`entertainment of the user.
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`(’814, 2:66-3:8.) Similarly, the specification explains that the “FORWARD” button
`
`in Figure 4 is used “to proceed along to the next in the serially linked series of
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`websites.” (’814, 5:55-59.) The patent also explains that “the linear hypermedia
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`resource program provides advantages over standard bookmark functions available
`
`on Internet Web browsers because an entire sequence of websites/Web pages having
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`an exclusive linear path may be saved.” (’814, 7:26-30.)
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`The terms “linear path” and “linear program” have no accepted meaning to
`
`persons of ordinary skill. (Schmandt, ¶44.) Federal Circuit law is clear that when
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`“terms have no plain or established meaning to one of ordinary skill in the art,” as is
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`the case here, “they ordinarily cannot be construed broader than the disclosure in the
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`specification.” Indac