001 - Unified - Petition-021315

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Unified Patents Inc.,
Petitioner
v.
Vantage Point Technology, Inc.
Patent Owner
IPR2015-____
Patent 6,615,233
____________
PETITION FOR INTER PARTES REVIEW
TABLE OF CONTENTS
I.
INTRODUCTION ...........................................................................................1
II.
MANDATORY NOTICES .............................................................................2

A.
Real Party-in-Interest ............................................................................2
B.
The Patent Owner ..................................................................................2
C.
Related Matters......................................................................................2
D.
Identification of Lead and Back-Up Counsel........................................3
E.
Service Information ...............................................................................3
III.
PAYMENT OF FEES .....................................................................................3
IV.
REQUIREMENTS FOR INTER PARTES REVIEW ......................................3
V.
VI.
A.
Grounds for Standing ............................................................................3
B.
Statement of Precise Relief Requested (37 C.F.R. 42.22(a))

and Identification of Challenges (37 C.F.R. 42.104(b)) ....................4
C.
How the Construed Claims are Unpatentable under the

Statutory Grounds identified in 37 C.F.R. 42.104(b)(2) and
Supporting Evidence Relied upon to Support the Challenge................4
D.
Threshold Showing of Reasonable Likelihood That Petitioner

Would Prevail With Respect To At Least One Challenged
Claim (35 U.S.C. 314(a)) Has Been Met ...........................................5
FACTUAL BACKGROUND..........................................................................5
A.
Declaration Evidence ............................................................................5
B.
The State of the Art as of 1998 .............................................................6
C.
The Challenged 233 Patent ..................................................................7
CLAIM CONSTRUCTION (37 C.F.R. 42.104(b)(3)).................................7

A.
Support for Claim Construction ............................................................9
ii
VII. THE GROUNDS SHOWING THAT PETITIONER HAS A

REASONABLE LIKELIHOOD OF PREVAILING ....................................18
A.
The Prior Art Relied Upon Was Publicly Available Before

February 17, 1997 ..........................................................................18
1. Overview ........................................................................................18
2. Element-by-element Analysis ........................................................27
[1a] An apparatus for transmitting a set of documents from a
server computer to a client computer, the apparatus
comprising: .....................................................................................27
[1b] an input that receives download request messages from the
client computer; ..............................................................................28
[1c] a selector that, in response to receipt of a download request
message, selects one of the set of documents based upon
information not in the download request, the download
request message including no address information
identifying the selected one of the set of documents; and .............29
[1d] an output that forwards both a controller and the selected
one of the set of documents to the client computer, ......................32
[1e] when executing on the client computer, the controller
commanding the client computer to generate and transmit a
download request message to the server computer. .......................34
[2a/b] The apparatus as defined by claim 1 further comprising:
a document modifier that adds the controller to documents in
the set of documents. ......................................................................35
[3a/b]. The apparatus as defined by claim 1 wherein the
download request-messages request to download the
selector. ..........................................................................................36
[6a/b]. The apparatus as defined by claim 1 wherein the
controller is a tag incorporated into each document in the set
of documents. .................................................................................38
iii
[7a/b] The apparatus as defined by claim 1 wherein the

controller commands the client computer to generate and
transmit a download request message to the server computer
after a predetermined condition is satisfied. ..................................40
[8a/b] The apparatus as defined by claim 1 wherein each
document is identified by a document identifier, the
apparatus further comprising: ........................................................41
[8c] memory that stores a list of the set of documents, the list
having the document identifier of each document in the set
of documents, .................................................................................42
[8d] the selector accessing the list to select the selected
document. .......................................................................................42
[9a/b] The apparatus as define by claim 1 wherein the controller
is incorporated into at least one document in the set of
documents.......................................................................................42
[10a/b] The apparatus as defined by claim 1wherein the server
computer includes a retriever that retrieves the selected
document for forwarding to the client computer. ..........................43
retriever is server software. ............................................................44
selector is a control script...............................................................45
selector executes on the server computer.......................................45
download request message is forwarded to the selector by
the server computer. .......................................................................46
selected one of the set of documents is a web page that, after
being forwarded to the client computer, is interpreted and
graphically displayed upon a client-side display device. ...............47
iv
[17a] A computer program product for use on a computer

system for transmitting a set of documents from a server
computer to a client computer, the computer program
product comprising a computer usable medium having
computer readable program code thereon, the computer
readable program code comprising: ...............................................49
[17b] program code for receiving download request messages
from the client computer; ...............................................................50
[17c] program code that, in response to receipt of a download
request message, selects one of the set of documents based
upon information not in the download request, the download
request message including no address information
identifying the selected one of the set of documents; and .............50
[17d] program code for forwarding both a controller and the
selected one of the set of documents to the client computer, ........50
commanding the client computer to generate and transmit a
download request message to the server computer. .......................50
[27c] the server having server software for retrieving
documents on the server computer, the apparatus
comprising: .....................................................................................50
[27d] an input that receives download request message from the
client computer; ..............................................................................51
[27e] a selector that, in response to receipt of a download
request message, selects one of the set of documents and
commands the server software to retrieve the selected one of
the set of documents, the download request message
including no address information identifying the selected on
of the set of documents; and ..........................................................51
[27f] an output that forwards the selected one of the set of
documents to the client computer. .................................................51
[31a] A method of transmitting a set of documents from a
server computer to a client computer, each documents in the
v
set of documents being identified by an identifier in a

document list, the method comprising: ..........................................51
[31b] receiving a first download request from the client
computer; ........................................................................................52
[31c] accessing, in response to receiving the first download
request, the document list to identify the identifier of a first
document in the document list, the first download request
including no address information identifying the first
document; and ................................................................................52
[31d] transmitting the first document and a controller to the
client computer after the identifier of the first document is
identified,........................................................................................52
[31e] the controller commanding the client computer to
transmit a second download request to the server computer
after a predetermined condition is satisfied. ..................................52
server computer to a client computer, each document in the
set of documents being identified by an identifier in a
document list, the apparatus comprising:.......................................52
[41b] a receiver for receiving a first download request from the
client computer; ..............................................................................52
[41c] means for accessing, in response to receiving the first
download request, the document list to identify the identifier
of a first document in the document list, the first download
request including no address information identifying the first
document; and ................................................................................52
[41d] means for causing the server computer to transmit the
first document and a controller to the client computer after
the identifier of the first document is identified, the
controller controlling the client computer to transmit a
second download request to the server computer after a
predetermined condition is satisfied. .............................................54
[42a] The apparatus as defined by claim 41 further including: ..........55
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[42b] means for receiving the second download request from

the client computer; ........................................................................55
[42c] means for accessing, in response to receiving the second
download request, the document list to identify the identifier
of a second document in the document list; and ............................56
[42d] means for causing the server computer to transmit the
second document to the client computer after the identifier
of the second document is identified..............................................57
[49a] A computer program product for use on a computer
system for transmitting a set of documents from a server
computer to a client computer, .......................................................58
[49b] each document in the set of documents being identified
by an identifier in a document list, the computer program
product comprising a computer usable medium having
computer readable program code thereon, the computer
readable program code including: ..................................................58
[49c] program code for receiving a first download request from
the client computer; ........................................................................58
[49d] program code for accessing, in response to receiving the
first download request, the document list to identify the
identifier of a first document in the document list, the first
download request including no address information
identifying the first document; and ................................................59
[49e] program code for causing the server computer to transmit
the first document and a controller to the client computer
after the identifier of the first document is identified, ...................59
[49f] the controller controlling the client computer to transmit a
server computer to a client computer, the apparatus
comprising: .....................................................................................59
vii
[59b] a document list having at least one identifier, each

identifier in the list identifying one of the set of documents;
and ..................................................................................................59
[59c] a list manager to receive a download request originating
from the client computer and responsively access the list to
identify a first identifier, the list manager controlling the
server computer to transmit a copy of the document
identified by the first identifier to the client computer, the
download request message including no address information
identifying the document,...............................................................59
[59d] the list manager transmitting a controller to the client
computer in response to receipt of the download request, .............60
[59e] the controller controlling the client computer to transmit a
VIII. CONCLUSION..............................................................................................60
viii
I.
INTRODUCTION
Pursuant to the provisions of 35 U.S.C. 311-319, Unified Patents Inc.,
(Unified or Petitioner) hereby petitions the Patent Trial and Appeal Board to
institute inter partes review of claims 1-3, 6-13, 15-17, 27, 31, 41-42, 49, and 59 of
U.S. Patent No. 6,615,233 to Davis et al. (the 233 Patent, Ex. 1001).
In short, the 233 Patent attempts to claim a webserver that selects a web
page which was not identified by the client browser and downloads that web page
to the browser with a META-REFRESH tag, which causes the browser to
automatically request another web page. This functionality was performed
routinely by many websites well before the 233 Patent, for example, when
displaying an automatically advancing slideshow to users. Even people outside of
the computer field had recognized the benefit of automatically advancing web
pages: http://pmc.iath.virginia.edu/text-only/issue.596/miles.596. Webservers
performed this routine functionality using CGI scripts and the META-REFRESH
tag, both of which were well known and used together years before the 233
Patents earliest priority date. The prior art relied upon hereinwhich was not
before the Examinerdiscloses a CGI script for an automatically advancing slide
show that uses a META-REFRESH tag, thus anticipating every element of the
challenged claims.
II.
MANDATORY NOTICES
Pursuant to 37 C.F.R. 42.8(a)(1), Unified provides the following
mandatory disclosures.
A.
Real Party-in-Interest
Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner certifies that Unified is the real

party-in-interest, and further certifies that no other party exercised control or could
exercise control over Unifieds participation in this proceeding, the filing of this
petition, or the conduct of any ensuing trial. See Ex. 1005.
B.
The Patent Owner
The 233 Patent is assigned to Vantage Point Technology, Inc. (Vantage

Point).
C.
Related Matters
The 233 Patent has been asserted in the following litigations, none of which
involve Unified:
1. Vantage Point v. Apple, Inc., 2-14-cv-00985 (EDTX, filed 10/21/14)
2. Vantage Point v. SugarSync, Inc., 2-14-cv-00989 (EDTX, filed
10/21/14)
3. Vantage Point v. Google Inc., 2-14-cv-00988 (EDTX, filed 10/21/14)
4. Vantage Point v. Dropbox, Inc., 2-14-cv-00987 (EDTX, filed 10/21/14)
5. Vantage Point v. Box, Inc., 2-14-cv-00986 (EDTX, filed 10/21/14)
6. Vantage Point v. Amazon.com, Inc., 2-14-cv-00984 (EDTX, filed
10/21/14)
2
D.
Identification of Lead and Back-Up Counsel
Pursuant to 37 C.F.R. 42.8(b)(3), Petitioner provides the following

designation of counsel: Lead counsel is Michael L. Kiklis (Reg. No. 38,939) and
back-up counsel are Scott A. McKeown (Reg. No. 42,866) and Katherine D.
Cappaert (Reg. No. 71,639).
E.
Service Information
Pursuant to 37 C.F.R. 42.8(b)(4), papers concerning this matter should be

served on the following:
Address:
Michael L. Kiklis
Oblon
1940 Duke Street
Alexandria, VA 22314
Email:
cpdocketkiklis@oblon.com
Telephone: (703) 413-2707/(703)413-3000 (main)
Fax:
(703) 413-2220
III.
PAYMENT OF FEES
The undersigned authorizes the Office to charge the required fees as well as
any additional fees that might be due to Deposit Account No. 15-0030.
IV.
REQUIREMENTS FOR INTER PARTES REVIEW

As set forth below and pursuant to 37 C.F.R. 42.104, each requirement for
inter partes review of the 233 patent is satisfied.

A.
Grounds for Standing
Petitioner certifies pursuant to 37 C.F.R. 42.104(a) that the 233 Patent is

available for inter partes review and that Petitioner is not barred or estopped from
requesting inter partes review challenging the patent claims on the grounds
identified herein.
B.
Statement of Precise Relief Requested (37 C.F.R. 42.22(a)) and

Identification of Challenges (37 C.F.R. 42.104(b))
Petitioner requests inter partes review and cancellation of claims 1-3, 6-13,
15-17, 27, 31, 41, 42, 49, and 59 of the 233 Patent as being anticipated by the
following printed publication, which is prior art pursuant to 35 U.S.C. 102(b):
CGI Manual of Style, Robert McDaniel, Ziff-Davis Press, January 1, 1996; ISBN
1-562-76397-0; ISBN-13 978-1562763978 (CGI Manual) (Ex.1002).
C.
How the Construed Claims are Unpatentable under the Statutory

Grounds identified in 37 C.F.R. 42.104(b)(2) and Supporting
Evidence Relied upon to Support the Challenge
The challenged claims are to be construed as indicated in Section VI, below.

Pursuant to 37 C.F.R. 42.104(b)(4), an explanation of how the challenged claims
are unpatentable under the statutory grounds identified above, including the
identification of where each element of the claim is found in the prior art, is
provided in Section VII, below, in the form of an analysis. Pursuant to 37 C.F.R.
42.104(b)(5), the appendix numbers of the supporting evidence relied upon to
support the challenges and the relevance of the evidence to the challenges raised,
including identifying specific portions of the evidence that support the challenges,
are provided in Section VII, below, in the form of an analysis.
D.
Threshold Showing of Reasonable Likelihood That Petitioner

Would Prevail With Respect To At Least One Challenged Claim
(35 U.S.C. 314(a)) Has Been Met
Information presented in this Petition, including the unpatentability ground

detailed in Section VII, below, establishes a reasonable likelihood that Petitioner
will prevail with respect to at least one of the challenged claims. See 35 U.S.C.
314(a). Indeed, that section, supported by the Hutchinson declaration (Ex. 1003)
and the Gregory declaration (Ex. 1004), demonstrates how the challenged claims
are anticipated by the relied upon prior art.
V.
FACTUAL BACKGROUND
A.
Declaration Evidence
This Petition is supported by the declaration of Professor Norman

Hutchinson, Ph.D. from the University of British Columbia (attached as Ex. 1003).
Dr. Hutchinson offers his opinion with respect to the skill level of one of ordinary
skill in the art (Ex. 1003, 20-21), the content and state of the prior art (Ex. 1003,
22-30), claim construction (Ex. 1003, 16), and the teachings and suggestions
that one of ordinary skill would understand based on the CGI Manual (Ex. 1003,
pp. 30-76). Dr. Hutchinson is an Associate Professor of Computer Science at the
University of British Columbia. He has over twenty-five years of experience in
5
distributed systems and has written and lectured extensively on this topic. See Ex.
1003.
This petition is also supported by a declaration from Ms. Jodi Gregory. Ms.
Gregory authenticates Ex. 1002 and testifies that it was publicly available before
Feb. 17, 1997, one year before the earliest priority date of the 233 Patent. See Ex.
1004.
B.
The State of the Art as of 1998
The Internet was widely used well before 1998. By 1993, for example, a
wide variety of clients and servers were developed that used the World Wide Web
protocol (HTTP) to download documents from the World Wide Web servers to
clients. Ex. 1003, 26. The CGI Manualfrom 1996explains the basic
interactions between clients and servers, the use of HTTP, HTML, URLs, Web
browsers, as well as CGI scripts and the META-REFRESH tag. Ex. 1002, pps. 513; 15-26; 192-212. In fact, the 233 Patent itself admits that HTTP, HTML, web
server/browser interactions, browsers displaying web pages, and the METAREFRESH tag were all well known. Ex. 1001, 1:21-39; 4:52-55.
Downloading static web pages has its limits, and the industry soon
recognized the benefits of downloading dynamically generated web pages. CGI
scripts provide the ability to do exactly this. CGI can be used to retrieve web
pages and modify them before transmitting them for display by a browser. Ex.
1002, p. 12; Ex. 1003, 28.
The META-Refresh tag was implemented by Netscape Navigator in 1995.
If included in a web page downloaded to a browser, it instructs the browser to
request a refresh of that web page or, if a URL is provided in the tag, to request
another web page. The 233 Patent uses this tag as its controller, and this is the
exact same tag that the CGI Manual discloses for the automatic slide show that
anticipates the challenged claims. Ex. 1003, 30; Ex. 1002, p. 192, 196-198.
C.
The Challenged 233 Patent
The 233 Patent attempts to patent a very basic and well-known idea:
downloading to a browser a web page that was selected by the web server and that
automatically requests an additional web page without user interaction. Ex. 1001,
Abstract. The 233 Patent simply claims well-known, even ubiquitous, prior art
functionality. For example, claim 1 merely recites receiving download requests
from a client, selecting a document using information not in the download request,
and downloading that document and a controller to the client, where the controller
causes the client to send a download request to the server.
VI.
CLAIM CONSTRUCTION (37 C.F.R. 42.104(B)(3))

Pursuant to 37 C.F.R. 42.204(b)(3), the claims subject to inter partes review
shall receive the broadest reasonable construction in light of the specification of

7
the patent in which [they] appear[]. See 42 C.F.R. 100(b). If the Patent Owner
contends that a claim construction different than the Broadest Reasonable
Interpretation should apply to avoid prior art, the appropriate course is for the
Patent Owner to seek to amend its claims. For the purposes of this petition, the
Petitioner adopts the plain meaning for all claim terms. The Petitioner proposes a
specific construction for several terms below:
Claim Term
Document (all claims)
Selector (all claims)
Controller
Means for accessing
(claim 41)
Means for causing the

server computer to
transmit (claim 41)
Proposed construction
A collection of computer data
Any mechanism used to select or choose one item
from a set or collection of items
Any mechanism used to cause an entity to perform
some action
Invokes 35 U.S.C. 112(6)
Function: accessing, in response to receiving the
first download request, the document list to identify
the identifier of a first document in the document
list, the first download request including no address
information identifying the first document
Structure: software code in the memory of a
computer that, when executed by the computer
processor, accesses a list of document identifiers to
select one of the identifiers
Function: causing the server computer to transmit
the first document and a controller to the client
computer after the identifier of the first document is
identified
processor, causes the server computer to transmit
8
Means for receiving the

second download request
from the client computer
(claim 42)
Means for accessing

(claim 42)
Means for causing the

server computer to
transmit the second
document (claim 42)
A.
the first document and a controller to the client

computer over a network
Function: receiving the second download request
from the client computer
processor, receives the second download request
from the client computer over a network
Function: accessing, in response to receiving the
second download request, the document list to
identify the identifier of a second document in the
document list
processor, accesses the document list to identify the
identifier of a second document in the document list
Function: causing the server computer to transmit
the second document to the client computer after the
identifier of the second document is identified
processor, causes the server computer to transmit
the second document to the client computer over a
network
Support for Claim Construction
Lack of support for all means-plus-function elements As an initial matter, Dr.

Hutchinson testifies that the 233 Patent does not provide adequate support for any
of the means-plus-function elements of claims 41 and 42 discussed below. See Ex.
1003, 16. If the Board agrees and decides that claims 41 and 42 cannot be
9
construed because the 233 Patent lacks adequate support for the means-plusfunction elements in those claims, the Petitioner respectfully requests that the
Board so state in its institution decision to effectively preclude the Patent Owner
from asserting those claims.
Document (all claims) Websters New World College Dictionary (Fourth
Edition) defines a document as: anything printed, written, etc. that contains
information or is relied upon to record or prove something. The Microsoft
Computer Dictionary (Fifth Edition) defines the term in a more restrictive manner,
including Any self-contained piece of work created with an application program. .
. . But it also recognizes that To a computer, however, data is nothing more than
a collection of characters. Dr. Hutchinson thus testifies that one of ordinary skill
in the art would understand that with reference to computers, a document is any
collection of information, including information to be manipulated by an
application. The 233 Patent describes a document in this general sense and uses
a web page as an example of a document, but does not otherwise contradict the
ordinary meaning. See Ex. 1001, at 1:24-30; 2:19-20; 3:1-10. Dr. Hutchinson
therefore concludes that one of ordinary skill would understand that the broadest
reasonable interpretation of this term is therefore a collection of computer data
and that this definition includes a World Wide Web page. Ex. 1003, 16.
10
Selector (all claims) The Microsoft Computer Dictionary (Fifth Edition) does
not contain a definition of selector, but does define select as: In information
processing, to choose from a number of options or alternatives. Websters New
World College Dictionary (Fourth Edition) defines selector as: a person or thing
that selects. Dr. Hutchinson thus testifies that the ordinary meaning of a selector
is any mechanism used to select or choose one item from a set or collection of
items. A selector is described in only a single place at Ex. 1001, 2:25-27; see
also 2:23-35. Dr. Hutchinson concludes therefore that the lack of description
would lead one of ordinary skill to understand that the ordinary meaning is the
broadest reasonable interpretation, which is any mechanism used to select or
choose one item from a set or collection of items. Ex. 1003, 16.
Controller The Microsoft Computer Dictionary (Fifth Edition) defines a
controller as: A device that other devices rely on for access to a computer
subsystem. Dr. Hutchinson testifies that this definition is clearly not applicable to
the 233 Patent because it does not discuss hardware devices at all. Rather, the
controller of the 233 Patent is an HTML tag. Websters New World College
Dictionary (Fourth Edition) defines controller as: a person or device that
controls. Dr. Hutchinson testifies that the 233 Patent describes the controller
broadly and generally at Ex. 1001, Abstract, 1:65-2:3 and at 3:4-10; 4:44:5:30. He
therefore concludes that one of ordinary skill would understand that this term is
11
being used in its ordinary and general way and therefore the broadest reasonable
interpretation is any mechanism used to cause an entity to perform some action.
Ex. 1003, 16.
Means for accessing (claim 41) This element as well as the other means-plusfunction elements discussed below invoke 35 U.S.C. 112(6). The function is
accessing, in response to receiving the first download request, the document list to
identify the identifier of a first document in the document list, the first download
request including no address information identifying the first document. Dr.
Hutchinson reviewed the 233 Patent to identify the structure corresponding to this
function and noted that the patent describes only briefly and indirectly how the
list is accessed:
Although a session variable 112 is discussed, however, it should be
noted that other methods of determining the current URL in the
document list 108 may be utilized. For example, the control script
110 may be written to include its own pointer. In other embodiments,
the current URL may be maintained in a database or in a text file. Ex.
1001, at 4:13-19.
Dr. Hutchinson considers this structure to be a very general description that
includes a number of mechanisms, including a session variable, a pointer in the
control script, a database, or a text file. He concludes that software code in the
memory of a computer is the only structure common to these mechanisms. He
12
therefore testifies that one of ordinary skill would understand that the structure
that corresponds to the claimed function is software code in the memory of a
computer that, when executed by the computer processor, accesses a list of
document identifiers to select one of the identifiers. Moreover, based on the
quote above and that many mechanisms can be used, Dr. Hutchinson testifies that
the way in which the means for accessing is performed is that software executed
by a processor and residing in the memory of a computer accesses a list of
document identifiers to select one of the identifiers of the first document without
having received any address information from the client for the first document.
He also concludes that the result of the means for accessing claim element is that
a document identifier is selected. Ex. 1003, 16.
Means for causing the server computer to transmit (claim 41) The function
for this limitation follows: causing the server computer to transmit the first
document and a controller to the client computer after the identifier of the first
document is identified. Dr. Hutchinson notes that the patent describes the
structure corresponding to this element as follows:
To that end, the apparatus first receives a first download request from
the client computer. Once the request is received, then the document
list is accessed to identify the identifier of a first document in the
document list. Once identified, the first document and a controller are
transmitted to the client computer. Ex 1001, at 1:60-65.
13
Conversely, if it is determined at step 302 that the end of the list 108
has not been reached, then the process continues to step 304 in which
the current page (i.e., the current page and its associated controller) is
transmitted to the client computer 100. Ex 1001, at 2:26-30.
He also notes that Fig. 1 shows that the server computer is connected to the client
computer via the Internet, indicating that all communication between the two is
accomplished via the Internet, including the transmission of the first document and
a controller to the client computer. He therefore concludes that one of ordinary
skill would understand that the structure that corresponds to the claimed function is
software code in the memory of a computer that, when executed by the computer
processor, causes the server computer to transmit the first document and a
controller to the client computer over a network. He has reviewed the 233
Patent and found that it is essentially silent on the way this element is
accomplished, other than the above quote and Fig. 1. Given the lack of
description, Dr. Hutchinson testifies that the way the function of this element is
performed is by software in the memory of the server and executed by the web
servers processor transmits the first document and the controller to the client
computer over a network after the identifier of the first document is identified.
He also testifies that the result of this element is that a first document and a
controller are transmitted to the client computer. Ex. 1003, 16.
14
Means for receiving the second download request from the client computer
(claim 42) The function for this limitation follows: receiving the second
download request from the client computer. Dr. Hutchinson notes that the only
place the patent discusses receiving a second download request is in the summary:
In accordance with other aspects of the invention, in response to
receipt of the second download request, the server again accesses the
document list to identify the identifier of a second document in the
document list. Ex 1001, at 2:4-7.
He also notes that Fig. 1, as mentioned above, shows that the server computer is
connected to the client computer via the Internet, which means that all
communication between the client and server is accomplished via the Internet.
Given this lack of description, Dr. Hutchinson concludes that one of ordinary skill
would understand that the structure that corresponds to the claimed function is
processor, receives the second download request from the client computer over a
network. Dr. Hutchinson also testifies that the 233 Patent does not disclose the
way in which the function is performed, and thus concludes that one of ordinary
skill in the art would understand the way is software code in the memory of a
computer that, when executed by the computer processor, receives the second
download request from the client computer over a network. He testifies that the
15
result of this element is that a second download request is received. Ex. 1003,
16.
Means for accessing (claim 42) The function for this limitation follows:
accessing, in response to receiving the second download request, the document
list to identify the identifier of a second document in the document list. Dr.
Hutchinson notes that the patent only discusses this function in the summary:
document list. Ex 1001, at 2:4-7.
Based on the lack of description, Dr. Hutchinson concludes that the structure that
corresponds to the claimed function is software code in the memory of a computer
that, when executed by the computer processor, accesses the document list to
identify the identifier of a second document in the document list. Likewise, Dr.
Hutchinson notes that the way this function is performed is also unspecified, and
that, [g]iven the lack of description, one of ordinary skill would understand the
way for performing the recited function is software code in the memory of a
computer that, when executed by the computer processor, accesses the document
list to identify the identifier of a second document in the document list in response
to receiving the second download request. Dr. Hutchinson also testifies that the
16
result of this element is that the identifier of a second document in the document
list is identified. Ex. 1003, 16.
Means for causing the server computer to transmit the second document
(claim 42) The function for this limitation follows: causing the server computer
to transmit the second document to the client computer after the identifier of the
second document is identified. Dr. Hutchinson notes that the patent only
discusses this limitation in the summary:
document list. Once identified, the second document is transmitted to
the client computer. Ex 1001, at 2:4-9.
As noted above, Fig. 1 shows the client and server connected to the Internet. Dr.
Hutchinson testifies that there is no structure disclosed for this limitation. Based
on this limited description, Dr. Hutchinson concludes that one of ordinary skill
would understand that the structure that corresponds to the claimed function is
processor, causes the server computer to transmit the second document to the client
computer over a network. Dr. Hutchinson notes that the way the function is
performed is also unspecified, and therefore, one of ordinary skill would
understand the way to be software code in the memory of a computer that, when
17
executed by the computer processor, causes the server computer to transmit the
second document to the client computer over a network after the identifier of the
second document is identified. Dr. Hutchinson also testifies that the result of
this element is that the server computer transmits the second document to the
client computer. Ex. 1003, 16.
VII. THE GROUNDS SHOWING THAT PETITIONER HAS A
REASONABLE LIKELIHOOD OF PREVAILING
A.
The Prior Art Relied Upon Was Publicly Available Before

February 17, 1997
Jodi Gregory and Dr. Hutchinson authenticate Ex. 1002 and testify that this
exhibit was published on January 1, 1996 and was publicly available before
February 17, 1997, which is one year before the earliest priority date of the 233
Patent. Ex. 1003, 38; Ex. 1004, 6.
B.
Analysis Demonstrating How The Prior Art Anticipates Claims 13, 6-13, 15-17, 27, 31, 41, 42, 49, and 59 of the 233 Patent
1.
Overview
The following is Dr. Hutchinsons analysis from his declaration, Ex. 1003,
pps. 30-76. Although the Petitioner reformats that analysis and in some places
shortens the analysis, this analysis is Dr. Hutchinsons, and as such, Petitioner
quotes liberally from his declaration. The following includes quotations from Dr.
Hutchinson in italics and quotes from Ex. 1002 in quotation marks.
18
The 233 Patent is rendered unpatentable by a number of technologies

that were widely known before the priority date of the 233 Patent. As
soon as the World Wide Web was developed, scripts were used to
determine what content would be sent to clients that sent download
requests.
With
the
introduction
of
the
<META
HTTP-
EQUIV=Refresh> tag in the HTML 3.0 specification and its

implementation in client browsers including Netscape, Microsofts
Internet Explorer, and NCSAs Mosaic, it became possible for a web
document to command the client to send an additional download
request after a period of time had elapsed. A few of the possibilities
that this technology enabled are described in the CGI Manual:
The following sections include some examples of client pull. The
first example demonstrates how to use a splash screen and uses no
CGI script. Ex 1002, p. 195.
Now let's take the client pull feature and extend it by using a CGI
script. For this example you will create a guided tour of the
Educational Software Web site. This Web site has only three pages-the home page, the Software Downloads page, and the Technical
Support page. The guided tour feature will take the user through each
page of the Educational Software Web site, explaining what
information is on each Web page and what the user can do on the
page. Although you can implement a guided tour without client pull,
you will use client pull so the user does not have to click on links to
go to the next page in the tour. Ex. 1002, p. 198 (emphasis added).
19
The guided tour example takes the user through a sequence of web
pages automatically, without manual intervention. Ex. 1003, 32.
By 1997, many websites were using this technology to show
automatically advancing slide shows of current news stories, sports
stories, or pictures. Such slide show scripts were often discussed in
the USENET discussion groups that brought web authors together.1 . .
. Listing 8.4 of Ex. 1002 shows a web page that directs the user to the
guided tour slide show where the web pages are advanced
automatically. This web page is initially downloaded to the clients
browser and displayed to the user. The user can then start the guided
tour slide show by selecting the Guided Tour link on the page.
Page 200 depicts how this web page is rendered in the browser.
https://groups.google.com/forum/#!searchin/comp.infosystems.www.authoring.cgi/
before$3A1997$2F02$2F17$20AND$20slideshow/comp.infosystems.www.author
ing.cgi/jzbbOrUq30s/Ugk415uH8KsJ
20
I have reproduced the HTML page listing 8.4 below and added line
numbers to the listings of program code found in the CGI Manual for
convenience in referring to them.
21
On line 15, the HTML code, refers the reader to a Guided Tour which
can be activated by clicking on the link named Guided Tour which
includes the URL: /cgi-bin/guided.pl. Another link to the Guided
Tour web page is included in lines 19-20 of Listing 8.4 above. The
Guided Tour application in the CGI Manual is an example of this sort
of slide show, and uses the META Refresh tag to cause the client to
send an additional download request in exactly the same manner as
the 233 Patent. Ex. 1003, 33.
The guided.pl script appears in the CGI Manual on pages 209-212. I
have reproduced it below.
22
23
24
I have added line numbers to the script for convenience in referring to

sections of the script more precisely. Ex. 1003, 34.
The script is installed in a Web server with the name guided.pl in a
manner consistent with how the script is referred to in Listing 8.4, that
is, in the cgi-bin directory on the Web server. When the script is
executed using a URL like that in Listing 8.4 (/cgi-bin/guided.pl),
the web server executes the script and passes any additional
information from the user on the client to the CGI script. The
User_Data subroutine on lines 77-124 of the script process the userprovided data. The elements of the independent claims of the 233
Patent are all found in the guided.pl script and the World Wide Web
server in which it is installed as described by the CGI Manual. With
respect to claim 1, the input is the portion of the Web server that
receives the users request and initializes the execution of the
guided.pl script. The selector is the guided.pl script itself. It contains
a list of documents, shown on line 9. Short descriptions of these Web
pages are on lines 10-13, and expanded descriptions are on lines 1423. The guided.pl script selects one of the documents as shown on
lines 39-40. In particular, line 39 chooses the home.html page if
the initial download request does not contain an indication of which
page is desired. In Listing 8.4 at line 15, it can be readily seen that
the guided.pl script is invoked without any address information for the
first document. Therefore, when the clients initial request is received
by the guided.pl script running on the server, no identifying
information of a web page is received. The guided.pl script thus
selects the home.html page to download without any such
25
identifying information. The guided.pl script further includes a

document modifier that modifies the selected document to include a
controller before it is transmitted to the client computer. Specifically,
on line 48 of the guided.pl script, the controller, an HTML 3.0
<META> tag (or META-REFRESH tag), is stored in the variable
$add_tag.
This is the exact same tag (i.e., controller) that is
described in the 233 Patent. On lines 54-57 the selected document is

read into the variable @template. Line 61 modifies the document by
splicing the controller into the document in the @template variable.
Finally, the guided.pl script prints the resulting document in lines 6364.
The CGI Manual explains that the data printed during the
execution of a CGI script is sent to the client that made the initial
request. See Ex. 1002, p. 10:
For instance, this example just prints three lines of text to standard
out (stdout), which is the default location to which a program sends its
output. In most cases standard out is the monitor. However, for CGI
scripts, standard out is sent to the Web server and then on to the Web
browser.
The output is the portion of the Web server that returns the document
to the client computer.
See Ex. 1002, pps. 6-10.
As explained
previously, the HTML <META> tag with the HTML-EQUIV attribute

set to Refresh is a controller that causes the client computer to
generate and transmit a download request message to the server
computer. Ex. 1003, 35; see also 30-32.
26
One of ordinary skill in the art would recognize, as I do, that the CGI
Manual (Ex. 1002) discloses all the features of the challenged claims.
Ex. 1003, 36.
2.
Element-by-element Analysis
The following analysis demonstrates, on a limitation-by-limitation basis,

how claims of the 233 Patent are anticipated by Ex. 1002 under 35 U.S.C. 102.
For ease of reference, this analysis includes letters for the individual claim
elements (e.g., 1a). This analysis is a presentation of Dr. Hutchinsons analysis
from his claim chart in his declaration, although shortened in various places. Ex.
1003, pp. 48-76. Text in italics is explanatory testimony from Dr. Hutchinsons
claim chart (i.e., his testimony). Id. All other text below are direct quotes from
Ex. 1002.
[1a] An apparatus for transmitting a set of documents from a server
computer to a client computer, the apparatus comprising:
CGI MANUAL discloses the operation of web servers, an apparatus
for transmitting a set of documents from a server computer to a client
computer. [Ex. 1003, p. 48]
See Ex. 1002, pps. 1-26.
Clients and Servers
To understand the World Wide Web and CGI programming, you must
understand the division between Web clients and Web servers and
how HTTP facilitates the interaction between the two. Simply put, a
server handles requests from various clients. [Ex. 1002, p. 5]
27
With networked computers, clients and servers are very common. A

server typically runs on a different machine than the client, although
this is not always the case. The interaction between the two usually
begins on the client side. The client software requests an object or
transaction from the server software, which either handles the request
or denies it. If the request is handled, the object is sent back to the
client software. On the World Wide Web, servers are known as Web
servers, and clients are known as Web browsers. Web browsers
request documents from Web servers, allowing you to view
documents on the World Wide Web. [Ex. 1002, p. 5]
The process of viewing a document on the Web starts when a Web
browser sends a request to a Web server. The Web browser sends
details about itself and the file it is requesting to the Web server in
HTTP request headers. The Web server receives and reviews the
HTTP request headers for any relevant information, such as the name
of the file being requested, and sends back the file with HTTP
response headers. The Web browser then uses the HTTP response
headers to determine how to display the file or data being returned by
the Web server. [Ex. 1002, p. 6]
[1b] an input that receives download request messages from the client
computer;
CGI MANUAL discloses that all web servers comprise an input that
receives download request message from the client computer. The
CGI Manual describes that this is what Web servers do: repeatedly
receive a request from a client, process the request, and transmit the
result back to the client. [Ex. 1003, pp. 48-49]
28

[1c] a selector that, in response to receipt of a download request
message, selects one of the set of documents based upon information not in the
download request, the download request message including no address
information identifying the selected one of the set of documents; and
A selector that, in response to receipt of a download request message, selects one
of the set of documents based on information not in the download request
CGI MANUAL discloses a selector (a CGI program written in the
Perl programming language) that, in response to receipt of a
download request message, selects one of the set of documents based
on information not in the download request.
The set of documents are identified in the beginning of the guided.pl
script in CGI Listing 8.8. For convenience in referring to specific
portions of the web scripts in CGI MANUAL, I have added line
numbers to the lines of the scripts in Listings 8.4 and 8.8. [Ex. 1003,
p. 49]
[Ex. 1002, Listing 8.8, line 9, pp. 209-212]

29
When the request contains no address information (address

information is in the page field of the form if it is present), the
selector selects one of the documents, in this case the first one, which
has not been identified in the request. The Perl language clause
unless $data{page} indicates that the assignment of home.html
to $data{page} is to be performed only if a page has not been
specifically requested by the request from the client; if the client
specifically requests a page it is stored in the $data{page} variable
by the User_Data subroutine on lines 77-124, and in this case the
unless prevents the overwriting of the page requested by the user.
[Ex. 1003, pp. 49-50]

The download request message including no address information identifying the
selected one of the set of documents
CGI MANUAL discloses the selector processing a download request
message that includes no address information identifying the selected
one of the set of documents. [Ex. 1003, p. 50]

The identifier of the selected document is held in the variable
$url_prefix. [Ex. 1003, p. 50]
30
[Ex. 1002, Listing 8.8, lines 39-46, pp. 209-212]

CGI MANUAL discloses how the guided tour script is invoked by
including the HTML code for the Educational Software Home Page,
included in Listing 8.4. [Ex. 1003, p. 51]
The reference to the /cgi-bin/guided.pl script on line 15 does not

include any address information for a document in the set of
documents. This is simply a call of the script. Therefore, the CGI
script (guided.pl) will select the first document without any address
identification. [Ex. 1003, p. 51]
31
[Ex. 1002, Listing 8.4, lines 14-16, p. 199](emphasis added)

[1d] an output that forwards both a controller and the selected one of
the set of documents to the client computer,
CGI MANUAL discloses an output that forwards both a controller
and the selected one of the set of documents to the client computer.
The CGI Manual describes that this is what Web servers do:
repeatedly receive a request from a client, process the request, and
transmit the result back to the client. [Ex. 1003, p. 51]
Remember, CGI stands for Common Gateway Interface. As its name
implies, it is a gateway between the Web server and your CGI script.
It enables the CGI program that you write to receive input from and
send output to a Web browser. [Ex. 1002, p. 9]
CGI MANUAL discloses that the response includes the requested file.
At line 54 the file is opened using the file handle TEMPLATE. The
content of the file is read into the array @template on line 56. The
controller, the META Refresh tag, is stored in the variable $add_tag
32
on line 48, and the controller is added to the document on line 61

when the contents of the variable $add_tag is spliced into the
@template variable containing the content of the file. The URL in the
META Refresh tag indicates the file that the client should request
when it makes the second request as commanded by the controller.
[Ex. 1003, p. 52]
[Ex. 1002, Listing 8.8, lines 48-63, pp. 209-212](emphasis added)

The print statement at line 63 sends the document to standard out
which, for CGI scripts, means it is sent to the client browser. [Ex.
1003, p. 53]
[Ex. 1002, p. 10]
33
[1e] when executing on the client computer, the controller commanding

the client computer to generate and transmit a download request message to
the server computer.
CGI MANUAL discloses that, when executing on the client computer
the controller commands the client computer to generate and transmit
a download request message to the server computer. The following
quotes describe what happens when the META-REFRESH tag is
executed on the client when it has a URL for the document that should
be downloaded. This tag was added to the web page downloaded to
the client on lines 48 and 61 of the guided.pl script discussed
immediately above. [Ex. 1003, pp. 53-54]
Client Pull
Client pull only occurs when there is a special directive in a document

you told your Web browser to request from a Web server. This special
directive is a simple HTML 3.0 tag, <META>, that is used to simulate
HTTP response headers. In other words, directives in the <META>
tag are included with the HTTP response headers sent from the Web
server. For example, when the tag
<META HTTP-EQUIV="Refresh" CONTENT=5>
is included in an HTML document, a Web browser that supports the
<META> tag will include the header
Refresh: 5
with the HTTP response headers that were sent from the Web server.
You can use the <META> tag and Refresh HTTP response header
together to cause a user's Web browser to reload the current page or
load a different Web document after a specified amount of time. So, a
34
document containing the preceding <META> tag would reload itself

after 5 seconds had elapsed. This reload will continue to occur as long
as the Web browser is displaying an HTML page with the preceding
<META> tag.
Apart from the <META> tag, this HTML code is similar to the code
at numerous other Web sites. As you learned earlier in this chapter,
the <META> tag drives the client pull action. This version of the
<META> tag is slightly different from the ones you saw earlier. In the
attribute CONTENT is the URL for another document. By specifying
the URL in this manner, you can instruct the Web browser to load a
different document instead of reloading the same one. The line
<META HTTP-EQUIV="Refresh" CONTENT="5;
URL=http://www.castingguild.com/actors-album/">
tells a client pull enabled Web browser to load the URL
http://www.castingguild. com/actors-album/ after five seconds. [Ex.
1002, pp. 192-198]
[2a/b] The apparatus as defined by claim 1 further comprising: a
document modifier that adds the controller to documents in the set of
documents.
CGI MANUAL discloses a document modifier that adds the controller
to documents in the set of documents. CGI MANUAL discloses that
each document has the controller added to it when it is sent to the
client by the guided.pl script.
35
controller, the META Refresh tag, is stored in the variable $add_tag

on line 48, and the controller is added to the document on line 61
when the contents of the variable $add_tag is spliced into the
@template variable containing the content of the file. [Ex. 1003, p.
55]
[Ex. 1002, Listing 8.8, lines 48-63, pp. 209-212](emphasis added)

[3a/b]. The apparatus as defined by claim 1 wherein the download
request-messages request to download the selector.
CGI MANUAL discloses that the download request messages request
to download the selector. The Educational Software Home Page is
included in Listing 8.4. [Ex. 1003, p. 56]
36
The request message that starts the Guided Tour is shown on line 15
as: /cgi-bin/guided.pl, which is the name of the selector.
One
skilled in the art would recognize that when a web server receives a
download request message that begins with the name of a script,
rather than sending the script itself to the client, the web server runs
the script and sends the output to the client. In the below example, the
request is a request to download the script, but the web server will run
the script instead and return the output. [Ex. 1003, pp. 56-57]
When a Web browser requests a CGI script from a Web server, the
server starts the CGI script and passes the HTTP request headers to
it. Ex. 1002, p. 6.
14: If you have Netscape Navigator 1.1 or greater, you can select the
<A
15: HREF="/cgi-bin/guided.pl">Guided Tour</A>, which will
acquaint you
16: with our Web site.} [Ex. 1002, Listing 8.4, lines 14-16, p. 199]
The second download is also a request to download the selector. The
controller transmitted to the client after receiving the first download
request message commands the client to generate and transmit the
second download request message to the server. The controller, the
META Refresh tag, includes the URL that the client is to include in the
second download request message in its CONTENT attribute. As seen
on lines 7, 43, 48, and 61 of the guided.pl script, the URL field of the
CONTENT
attribute
is
set
to
"http://www.robertm.com/cgi-
bin/guided.pl?page=" on line 7, has the name of the next page to

37
request added to it on line 43, is included in the URL field of the

CONTENT attribute of the META Refresh tag on line 48, and is
spliced into the document on line 61. This URL is also a request to
download the selector. It differs from the first download request
message only in 2 ways. First, it is an absolute (starts with http://)
URL rather than a relative URL. Second, it contains an address of
the document that is to be requested, the page= portion of the URL
after the ?. [Ex. 1003, p. 57]
7: $url_prefix = "http://www.robertm.com/cgi-bin/guided.pl?page=";
43: $url_prefix .= $pages[1];
48: $add_tag = "<META HTTP-EQUIV=\"Refresh\"

CONTENT=\"3; URL=$url_prefix\">\n";
61: splice(@template, 2, , $add_tag); [Ex. 1002, Listing 8.8, lines

7, 43, 48, 61, pp. 209-212].
[6a/b]. The apparatus as defined by claim 1 wherein the controller is a
tag incorporated into each document in the set of documents.
CGI MANUAL discloses that the controller is a tag incorporated into
each document in the set of documents. The tag is the META Refresh
tag, identical to the tag in the 233 patent.
At line 54 of the guided.pl script, the file is opened using the file
handle TEMPLATE. The content of the file is read into the array
@template on line 56. The controller, the META Refresh tag, is stored
in the variable $add_tag on line 48, and the controller is added to the
38
document on line 61 when the contents of the variable $add_tag is

spliced into the @template variable containing the content of the file.
[Ex. 1003, p. 58]
49: $guide =
"<CENTER><HR>$guide_text{$data{\"page\"}}<HR></CENTER>"
;
50:
51:
52: # Windows users need to change the string
"$path/$data{\"page\"}" to
53: # "$path\\$data{\"page\"}"
54: open(TEMPLATE, "$path/$data{\"page\"}") || die "Contenttype:
55: text/html\n\nCannot open HTML files!";
56: @template = <TEMPLATE>;
57: close(TEMPLATE);
58:
59: $template[2] = "<TITLE>Guided Tour $page_names{$data{\"page\"}}</TITLE>\n";
60: splice(@template, 5, , $guide);
61: splice(@template, 2, , $add_tag);
62:
63: print "Content-type: text/html\n\n";
print @template; [Ex. 1002, Listing 8.8, lines 48-63, pp. 209-212]
39
[7a/b] The apparatus as defined by claim 1 wherein the controller

commands the client computer to generate and transmit a download request
message to the server computer after a predetermined condition is satisfied.
CGI MANUAL discloses that the controller (the META-REFRESH
tag) commands the client computer to generate and transmit a
download request message to the server computer after a
predetermined condition is satisfied, the predetermined condition
being that a certain period of time has elapsed. In the guided.pl script
at line 48, the time period is 30 seconds. The CGI Manual describes
in detail the effect of this tag and uses an example of 5 seconds for a
predetermined condition. [Ex. 1003, p. 59; see also Ex. 1003, 14;
Ex. 1002, pps. 192-212]
Client Pull
Client pull only occurs when there is a special directive in a document

you told your Web browser to request from a Web server. This special
directive is a simple HTML 3.0 tag, <META>, that is used to simulate
HTTP response headers. In other words, directives in the <META>
tag are included with the HTTP response headers sent from the Web
server. For example, when the tag
<META HTTP-EQUIV="Refresh" CONTENT=5>
is included in an HTML document, a Web browser that supports the
<META> tag will include the header
Refresh: 5
with the HTTP response headers that were sent from the Web server.
You can use the <META> tag and Refresh HTTP response header
together to cause a user's Web browser to reload the current page or
40
load a different Web document after a specified amount of time. So, a

document containing the preceding <META> tag would reload itself
after 5 seconds had elapsed. This reload will continue to occur as long
as the Web browser is displaying an HTML page with the preceding
<META> tag.
Apart from the <META> tag, this HTML code is similar to the code
at numerous other Web sites. As you learned earlier in this chapter,
the <META> tag drives the client pull action. This version of the
<META> tag is slightly different from the ones you saw earlier. In the
attribute CONTENT is the URL for another document. By specifying
the URL in this manner, you can instruct the Web browser to load a
different document instead of reloading the same one. The line
<META HTTP-EQUIV="Refresh" CONTENT="5;
URL=http://www.castingguild.com/actors-album/"> tells a client pull
enabled Web browser to load the URL http://www.castingguild.
com/actors-album/ after five seconds. [Ex. 1002, pp. 192-198]
[8a/b] The apparatus as defined by claim 1 wherein each document is
identified by a document identifier, the apparatus further comprising:
CGI MANUAL teaches that each document is identified by a
document identifier, the identifier being the name of the file in which
the document is stored.
script in CGI MANUAL Listing 8.8. The three documents are
identified using the names home.html, downloads.html, and
tech-support.html. [Ex. 1003, pp. 60-61]
41
9: @pages = ("home.html", "downloads.html", "techsupport.html"); [Ex. 1002, Listing 8.8, line 9, pp. 209-212]
[8c] memory that stores a list of the set of documents, the list having the
document identifier of each document in the set of documents,
CGI MANUAL discloses memory (a list in the Perl programming
language named @pages) that stores a list of the set of documents,
the list having the document identifier of each document in the set of
documents.
script in CGI MANUAL Listing 8.8. The three documents are
identified using the names home.html, downloads.html, and
tech-support.html. [Ex. 1003, p. 61]
9: @pages = ("home.html", "downloads.html", "techsupport.html"); [Ex. 1002, Listing 8.8, line 9, pp. 209-212]
[8d] the selector accessing the list to select the selected document.
CGI MANUAL discloses the selector (guided.pl) accessing the list to
select the selected document. The list of pages is accessed on line 40.
[Ex. 1003, p. 61]
39: $data{'page'} = "home.html" unless $data{'page'};
40: shift(@pages) until $pages[] eq $data{'page'}; [Ex. 1002,
Listing 8.8, line 54, pp. 209-212]
[9a/b] The apparatus as define by claim 1 wherein the controller is
incorporated into at least one document in the set of documents.
See claim element [1d] and 2[a/b].
42
[10a/b] The apparatus as defined by claim 1wherein the server

computer includes a retriever that retrieves the selected document for
forwarding to the client computer.
CGI MANUAL discloses that all web servers include a retriever that
retrieves the selected document for forwarding to the client computer.
The retriever is that portion of the web server that finds and retrieves
requested files (documents). [Ex. 1003, p. 62]
CGI MANUAL discloses that the retriever is the guided.pl script and
the underlying operating system which allows the selected document
to be read by the guided.pl script.
underlying operating system supports the opening and reading of the
selected document, whose name is stored in the $data{page}
variable. [Ex. 1003, p. 62]
43
49: $guide =
"<CENTER><HR>$guide_text{$data{\"page\"}}<HR></CENTER>"
;
50:
51:
52: # Windows users need to change the string
"$path/$data{\"page\"}" to
53: # "$path\\$data{\"page\"}"
54: open(TEMPLATE, "$path/$data{\"page\"}") || die "Contenttype:
55: text/html\n\nCannot open HTML files!";
56: @template = <TEMPLATE>;
57: close(TEMPLATE);
58:
59: $template[2] = "<TITLE>Guided Tour $page_names{$data{\"page\"}}</TITLE>\n";
60: splice(@template, 5, , $guide);
61: splice(@template, 2, , $add_tag);
62:
63: print "Content-type: text/html\n\n";
print @template; [Ex. 1002, Listing 8.8, lines 48-63, pp. 209-212]
The data printed by the guided.pl script on line 63 is transmitted to
the client by the web server. Ex. 1002, p. 10. [Ex. 1003, p. 63]
[11a/b] The apparatus as defined by claim 10 wherein the retriever is
server software.
44
CGI MANUAL discloses that the retriever of a web server is server

software, that is, it executes in the web server. guided.pl is a CGI
script that executes on the web server, and the underlying operating
system also executes on the web server. [Ex. 1003, p. 63]
See claim element [10a/b].
[12a/b] The apparatus as defined by claim 1 wherein the selector is a
control script.
CGI MANUAL discloses that the selector (guided.pl) is a control
script. A CGI program is a control script. [Ex. 1003, p. 63]
server starts the CGI script and passes the HTTP request headers to it.
The information stored in the request headers is available for your
script to use. Normally, when a CGI script is finished executing, the
output is passed back to the Web server, which formats an HTTP
response header and sends the information to the Web browser. [Ex.
1002, p. 6]
See claim element [1c].
[13a/b] The apparatus as defined by claim 1 wherein the selector
executes on the server computer.
CGI MANUAL discloses that the selector executes on the server
computer. The selector is the CGI script guided.pl, which is executed
on the server computer. [Ex. 1003, p. 64]
Let's take a look at what is happening behind the scenes when you
call this script from your browser. First, the browser sends an HTTP
request for the first-one.pl file in the cgi-bin directory on the
45
www.robertm.com
machine.
The
Web
server
on
the
www.robertm.com machine receives the request and finds the file on

the system. Because the request is for a document in the cgi-bin
directory, the Web server knows that it is a CGI script, and executes
it. At this point, the script takes over. It executes its three lines and
sends the output, stdout in this case, to the Web server. The Web
server receives the data and checks the header the CGI script returned.
The header in the preceding script is the Content-type: text/html line.
(Valid headers are discussed in detail in Chapter 2.) This header tells
the Web server that the data it received from the CGI script is just
HTML. The Web server then forms an HTTP response header and
sends the header and the CGI output to the Web browser that called
it. [Ex. 1002, p. 11]
[15a/b] The apparatus as defined by claim 1 wherein the download
request message is forwarded to the selector by the server computer.
CGI MANUAL discloses that the download request message is
forwarded to the selector by the server computer. The selector is a
CGI script. All CGI scripts are initiated by the web server, which
forwards both the URL that is the request message as well as any
additional data sent by the client in the request message to the
selector (the guided.pl CGI script) when it is executing. [Ex. 1003, p.
64]
server starts the CGI script and passes the HTTP request headers to it.
The information stored in the request headers is available for your
script to use. Normally, when a CGI script is finished executing, the
46
output is passed back to the Web server, which formats an HTTP

response header and sends the information to the Web browser. [Ex.
1002, p. 6]
CGI scripts also provide a mechanism for making Web pages
interactive. By using the <FORM> tag in HTML, you can receive data
directly from the user who is viewing your Web pages. All of this data
can be sent to a CGI script that can then act upon it. [Ex. 1002, p. 13]
You don't need to do much to ensure that your CGI script receives
the necessary data from your Web server. The CGI has already
defined how this is done and the task is performed automatically
every time your Web server executes a CGI script. All of the relevant
data sent to the server from the Web browser, such as form input, plus
the HTTP request headers are sent from the server to the CGI script in
either environment variables or by standard input (stdin), which is the
default location at which your program receives input. [Ex. 1002, p.
15]
[16a/b] The apparatus as defined by claim 1 wherein the selected one of
the set of documents is a web page that, after being forwarded to the client
computer, is interpreted and graphically displayed upon a client-side display
device.
CGI MANUAL discloses that the selected one of the documents is a
web page that, after being forwarded to the client computer, is
interpreted and graphically displayed upon a client-side display
device. [Ex. 1003, p. 65]
47
CGI MANUAL shows that the content of the response is a web page,
being the content of one of the three files: home.html, downloads.html,
tech-support.html.
CGI MANUAL shows how the three pages look when they are
displayed on the client-side display device. See Figures 8.6, 8.7, and
8.8, CGI MANUAL, pp. 200-203. Thus, one of ordinary skill would
understand that the three downloaded web pages are interpreted and
graphically displayed on a display device. [Ex. 1003, p. 66]
48
[17a] A computer program product for use on a computer system for

transmitting a set of documents from a server computer to a client computer,
the computer program product comprising a computer usable medium having
computer readable program code thereon, the computer readable program
code comprising:
See claim element [1a].
49
[17b] program code for receiving download request messages from the
client computer;
See claim element [1b].
[17c] program code that, in response to receipt of a download request
message, selects one of the set of documents based upon information not in the
download request, the download request message including no address
information identifying the selected one of the set of documents; and
See claim element [1c].
[17d] program code for forwarding both a controller and the selected
one of the set of documents to the client computer,
See claim element [1d].
commanding the client computer to generate and transmit a download
request message to the server computer.
See claim element [1e].
[27a/b] An apparatus for transmitting a set of documents from a server
computer to a client computer, each document having a controller that
commands the client computer to generate and transmit a download request
message,
CGI MANUAL discloses that each document transmitted to the client
computer by the server computer has a controller that commands the
client computer to generate and transmit a download request
message. This controller is the META Refresh tag that is added to the
document on lines 48, 54-57, 61, and 63-64 of Listing 8.8 (the
guided.pl script). [Ex. 1003, p. 69]
[27c] the server having server software for retrieving documents on the
server computer, the apparatus comprising:
50
CGI MANUAL discloses that the server has server software for
retrieving documents on the server computer. The server software for
retrieving documents on the server computer includes the guided.pl
script and that portion of the web server that finds and retrieves
requested files (document). [Ex. 1003, p. 69]
See claim element [10a/b].
[27d] an input that receives download request message from the client
computer;
[27e] a selector that, in response to receipt of a download request
message, selects one of the set of documents and commands the server
software to retrieve the selected one of the set of documents, the download
request message including no address information identifying the selected on
of the set of documents; and
See claim elements [1c] and [10a/b].
These sections of the claim chart above show that the guided.pl script
and the web servers operating system perform this functionality. [Ex.
1003, p. 70]
[27f] an output that forwards the selected one of the set of documents to
the client computer.
See claim element 1[d].
[31a] A method of transmitting a set of documents from a server
computer to a client computer, each documents in the set of documents being
identified by an identifier in a document list, the method comprising:
See claim elements [1a] and [8a/b].
51
These sections . . . discuss all features of this element. The document

list is the list of three documents on line 9 of the guided.pl script. [Ex.
1003, p. 70]
[31b] receiving a first download request from the client computer;
[31c] accessing, in response to receiving the first download request, the
document list to identify the identifier of a first document in the document list,
the first download request including no address information identifying the
first document; and
See claim elements [1c] and [8d].
[31d] transmitting the first document and a controller to the client
computer after the identifier of the first document is identified,
[31e] the controller commanding the client computer to transmit a
second download request to the server computer after a predetermined
condition is satisfied.
See claim elements [1e] and [7a/b].
computer to a client computer, each document in the set of documents being
identified by an identifier in a document list, the apparatus comprising:
See claim elements [1a], [8a/b], and [31a].
[41b] a receiver for receiving a first download request from the client
computer;
[41c] means for accessing, in response to receiving the first download
request, the document list to identify the identifier of a first document in the
document list, the first download request including no address information
identifying the first document; and
52
The CGI Manual describes this same structure performing the same
function in substantially the same way to produce substantially the
same result. The guided.pl script is software code (a CGI script
written in the Perl programming language) in the memory of the Web
server computer, that when executed by the processor of the Web
server accesses a list of document identifiers to select one of the
identifiers of a first document in the document list. This software code
accesses the document list responsive to receiving the first download
request and this download request does not include address
information identifying the first document. This is shown on pps. 6
and 9, lines 39-40 of the guided.pl script, and line 15 of Listing 8.4
which shows that only the name of the script is passed to the server so
that when the guided.pl script runs it does not have any address
information identifying the first document. The CGI Manual therefore
discloses the same structure performing the same function. The CGI
Manual discloses the recited function performed in substantially the
same way because the software (the guided.pl CGI script) executed by
a processor and residing in the memory of the Web server computer
accesses a list of document identifiers to select one of the identifiers of
the first document without having received any address information
from the client for the first document. This is shown on pps. 6 and 9,
lines 39-40 of the guided.pl script, and line 15 of Listing 8.4. The
result is substantially the same because a document identifier is
selected. See lines 39-40 of the guided.pl script. Ex. 1003, 37.
See also claim elements [8d] and [1c].
53
[41d] means for causing the server computer to transmit the first
document and a controller to the client computer after the identifier of the
first document is identified, the controller controlling the client computer to
transmit a second download request to the server computer after a
predetermined condition is satisfied.
The CGI Manual discloses the same structure performing the same
same result. The structure disclosed in the CGI Manual is software
code (the code of the Web server and a CGI script (guided.pl) written
in the Perl programming language) in the memory of the Web server
computer that when executed by the processor of the Web server
causes the server computer to transmit the first document and a
controller (an embedded META-REFRESH tag) to the client computer
over a network. This is shown on pps. 6, 9 and is shown on lines 48,
54-57, 61, and 63-64 of the guided.pl script. After identifying the first
document on lines 39-40, the controller (the META-REFRESH tag) is
stored in a variable on line 48, the document is prepared on lines 5457, the controller is added to the document on line 61, and the result
is printed on lines 63-64. The data printed by the CGI script is
transmitted to the client by the software code of the Web server. Ex.
1002, p. 10. The META-REFRESH tag instructs the client to transmit
a second download request after 30 seconds elapses as shown on line
48 of the guided.pl script. Therefore, the CGI Manual discloses the
same structure performing the same function as the means for causing
limitation. The way the CGI Manual performs the recited function is
substantially the same because the software (the code of the Web
server and the guided.pl CGI script) executed by a processor and
54
residing in the memory of the Web server computer causes the server
computer to transmit the first document and a controller to the client
computer over a network after the identifier of the first document is
identified. See lines 39, 40, 48, 54-57, 61 and 63-64 of the guided.pl
script and pps 6, 9, 10. The result is substantially the same as the
means for causing element because a first document and a controller
is transmitted to the client computer, as shown by the evidence I cited
in this paragraph. See Ex. 1003, 37.
See also claim elements [1d], [1e] and [7a/b].
[42a] The apparatus as defined by claim 41 further including:
[42b] means for receiving the second download request from the client
computer;
same result as this element.
The CGI Manual discloses that the
second download request is received from the client computer by

software code (the code of the Web server) in the memory of the Web
server computer, that when executed by the processor of the Web
server, receives the second download request from the client
computer. Ex. 1002, pps. 6, 9. As stated in the previous paragraph,
the guided.pl script inserts the META-REFRESH tag into the web
page that is downloaded to the client. This tag instructs the client to
transmit a second download request after 30 seconds elapses as
shown on line 48 of the guided.pl script. See also, Ex. 1002, pps. 192-
55
212 (discussion of client pull and METAREFRESH tag).

Therefore, the CGI Manual discloses the same structure performing
the same function. The CGI Manual discloses the recited function
performed in substantially the same way because it discloses that
software (the code of the Web server) executed by a processor and
residing in the memory of the Web server computer receives the
second download request from the client computer. See pps. 6, 9, 192212. The result is substantially the same because the Web server
computer receives the second download request from the client
computer. See pps. 6, 9, 192-212. See Ex. 1003, 37.
See also claim element [1b].
[42c] means for accessing, in response to receiving the second download
request, the document list to identify the identifier of a second document in
the document list; and
same result. The CGI Manual discloses the guided.pl script, which is
software code (a CGI script written in the Perl programming
language) in the memory of the Web server computer, that when
executed by the processor of the Web server, accesses the document
list to identify the identifier of a second document in the document list
responsive to receiving the second download request. This is shown
on lines 39-40 of the guided.pl script and pps. 6, 9, and 192-212. The
second request made by the client will request a particular one of the
documents as indicated by the controller (the META-REFRESH tag)
that was transmitted with the document to the client in response to the
56
first request. Line 48 of the guided.pl script tells the client which
page to request in the second download request. The CGI Manual
therefore discloses the same structure performing the same function.
The CGI Manual discloses the same function performed in
substantially the same way because software (the guided.pl CGI
script) executed by a processor and residing in the memory of the Web
server computer accesses the document list to identify the identifier of
a second document in the document list in response to receiving the
second download request. See above discussion; see also lines 39-40,
48 and pps. 6, 9, and 192-212. The result is substantially the same
because a document list is accessed to identify the identifier of a
second document in the document list. See lines 39-40, 48 of the
guided.pl script and pps. 6, 9, and 192-212. See Ex. 1003, 37.
See also claim element [8d].
[42d] means for causing the server computer to transmit the second
document to the client computer after the identifier of the second document is
identified.
same result. The structure disclosed in the CGI Manual is software
code (the guided.pl script and the code of the web server) in the
memory of the web server that, when executed by the servers
processor, causes the server computer to transmit the second
document to the client computer over the network after the identifier
of the second document is identified. See lines 48, 54-57, 61, and 6364 of the guided.pl script and pps. 6, 9. After the second documents
57
identifier is identified in lines 39-40, the controller is stored in a

variable on line 48, the document is prepared on lines 54-57, the
controller is added to the document on line 61, and the result is
printed on lines 63-64.
The data printed by the CGI script is
transmitted to the client by the software code of the Web server. Ex.
1002, p. 10. The CGI Manual therefore discloses the same structure
performing the same function. The way the function is performed is
substantially the same because software (the code of the Web server
and the guided.pl CGI script) executed by a processor and residing in
the memory of the Web server computer causes the server computer to
transmit the second document to the client computer over a network
after the identifier of the second document is identified. See lines 3940, 48, 54-57, 61, and 63-64 of the guided.pl script and pps. 6, 9, 10,
and 192-212. The result is that a second document is transmitted to
the client computer. See lines 48, 54-57, 61, and 63-64 of the
guided.pl script and pps. 6, 9, 10, and 192-212. See Ex. 1003, 37.
See also claim element [1d].
[49a] A computer program product for use on a computer system for
transmitting a set of documents from a server computer to a client computer,
[49b] each document in the set of documents being identified by an
identifier in a document list, the computer program product comprising a
computer usable medium having computer readable program code thereon,
the computer readable program code including:
See claim elements [8a/b] and [31a].
[49c] program code for receiving a first download request from the
client computer;
58

[49d] program code for accessing, in response to receiving the first
download request, the document list to identify the identifier of a first
document in the document list, the first download request including no
address information identifying the first document; and
See claim elements [1c] and [8d].
[49e] program code for causing the server computer to transmit the first
document and a controller to the client computer after the identifier of the
first document is identified,
[49f] the controller controlling the client computer to transmit a second
download request to the server computer after a predetermined condition is
satisfied.
computer to a client computer, the apparatus comprising:
[59b] a document list having at least one identifier, each identifier in the
list identifying one of the set of documents; and
See claim elements [8a/b], [8c], and [31a].
[59c] a list manager to receive a download request originating from the
client computer and responsively access the list to identify a first identifier,
the list manager controlling the server computer to transmit a copy of the
document identified by the first identifier to the client computer, the
download request message including no address information identifying the
document,
See claim elements [1b], [8c], [1c] and [31c].
The list manager is the guided.pl script described in these sections . . .
[Ex. 1003, p. 75]
59
[59d] the list manager transmitting a controller to the client computer in

response to receipt of the download request,
[59e] the controller controlling the client computer to transmit a second
download request to the server computer after a predetermined condition is
satisfied.
VIII. CONCLUSION
For the reasons set forth above, Petitioner has established a reasonable
likelihood of prevailing with respect to at least one claim of the 233 Patent.
Therefore, Petitioner respectfully requests that the Patent Trial and Appeal Board
institute an inter partes review and then proceed to cancel claims 1-3, 6-13, 15-17,
27, 31, 41, 42, 49, and 59.
Respectfully submitted,
OBLON
Dated: February 13, 2015
/Michael L. Kiklis/
Michael L. Kiklis
Reg. No. 38,939
Customer Number
22850
Tel. (703) 413-3000
Fax. (703) 413-2220
60
Petitioners Exhibit List (February 13, 2015)
PETITIONERS EXHIBIT LIST

February 13, 2015
Exhibit
Description
Ex. 1001
U.S. Patent No. 6,615,233
Ex. 1002
CGI Manual of Style, Robert McDaniel, Ziff-Davis Press,

January 1, 1996; ISBN 1-562-76397-0; ISBN-13 9781562763978 (CGI Manual)
Ex. 1003
Declaration of Norman Hutchinson, Ph.D.
Ex. 1004
Declaration of Jodi Gregory
Ex. 1005
Unified Patents First Set of Voluntary Interrogatories
61
CERTIFICATE OF SERVICE
The undersigned certifies service pursuant to 37 C.F.R. 42.6(e) and
42.105(b) on the Patent Owner by Express Mail of a copy of this Petition for Inter
Partes Review and supporting materials at the correspondence address of record
for the 233 patent as well as counsel of record in the district court litigations:
Sunstein Kann Murphy & Timbers LLP
125 Summer Street
Boston, MA 02110-1618
Paul V. Storm
Gardere Wynne Sewell LLP
1601 Elm Street, Suite 3000
Dallas, Texas 75201
Dated: February 13, 2015
By:
/Michael L. Kiklis/
Michael L. Kiklis
Reg. No. 38,939

001 - Unified - Petition-021315

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UNITED STATES PATENT AND TRADEMARK OFFICE

MANDATORY NOTICES .............................................................................2

Real Party-in-Interest ............................................................................2

The Patent Owner ..................................................................................2

Identification of Lead and Back-Up Counsel........................................3

Service Information ...............................................................................3

PAYMENT OF FEES .....................................................................................3

REQUIREMENTS FOR INTER PARTES REVIEW ......................................3

Grounds for Standing ............................................................................3

Statement of Precise Relief Requested (37 C.F.R. 42.22(a))

How the Construed Claims are Unpatentable under the

Threshold Showing of Reasonable Likelihood That Petitioner

Declaration Evidence ............................................................................5

The State of the Art as of 1998 .............................................................6

The Challenged 233 Patent ..................................................................7

CLAIM CONSTRUCTION (37 C.F.R. 42.104(b)(3)).................................7

Support for Claim Construction ............................................................9

VII. THE GROUNDS SHOWING THAT PETITIONER HAS A

The Prior Art Relied Upon Was Publicly Available Before

[7a/b] The apparatus as defined by claim 1 wherein the

[17a] A computer program product for use on a computer

set of documents being identified by an identifier in a

[42b] means for receiving the second download request from

[59b] a document list having at least one identifier, each

Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner certifies that Unified is the real

The Patent Owner

The 233 Patent is assigned to Vantage Point Technology, Inc. (Vantage

Identification of Lead and Back-Up Counsel

Pursuant to 37 C.F.R. 42.8(b)(3), Petitioner provides the following

Pursuant to 37 C.F.R. 42.8(b)(4), papers concerning this matter should be

REQUIREMENTS FOR INTER PARTES REVIEW

inter partes review of the 233 patent is satisfied.

Grounds for Standing

Petitioner certifies pursuant to 37 C.F.R. 42.104(a) that the 233 Patent is

Statement of Precise Relief Requested (37 C.F.R. 42.22(a)) and

How the Construed Claims are Unpatentable under the Statutory

The challenged claims are to be construed as indicated in Section VI, below.

Threshold Showing of Reasonable Likelihood That Petitioner

Information presented in this Petition, including the unpatentability ground

This Petition is supported by the declaration of Professor Norman

The State of the Art as of 1998

The Challenged 233 Patent

CLAIM CONSTRUCTION (37 C.F.R. 42.104(B)(3))

shall receive the broadest reasonable construction in light of the specification of

Means for causing the

Means for receiving the

Means for accessing

Means for causing the

the first document and a controller to the client

Support for Claim Construction

Lack of support for all means-plus-function elements As an initial matter, Dr.

The Prior Art Relied Upon Was Publicly Available Before

The 233 Patent is rendered unpatentable by a number of technologies

EQUIV=Refresh> tag in the HTML 3.0 specification and its

I have added line numbers to the script for convenience in referring to

identifying information. The guided.pl script further includes a

This is the exact same tag (i.e., controller) that is

described in the 233 Patent. On lines 54-57 the selected document is

See Ex. 1002, pps. 6-10.

previously, the HTML <META> tag with the HTML-EQUIV attribute

The following analysis demonstrates, on a limitation-by-limitation basis,

With networked computers, clients and servers are very common. A

The process of viewing a document on the Web starts when a Web

[Ex. 1002, Listing 8.8, line 9, pp. 209-212]