Professional Documents
Culture Documents
Unified Patents Inc. v. MyMail, LTD., IPR2017-00967, (PTAB Sept. 13, 2017)
Unified Patents Inc. v. MyMail, LTD., IPR2017-00967, (PTAB Sept. 13, 2017)
Unified Patents Inc. v. MyMail, LTD., IPR2017-00967, (PTAB Sept. 13, 2017)
gov Paper: 10
571-272-7822 Entered: September 13, 2017
v.
MYMAIL, LTD.,
Patent Owner.
____________
Case IPR2017-00967
Patent 8,275,863 B2
____________
DECISION
Institution of Inter Partes Review
35 U.S.C. 314 and 37 C.F.R. 42.108
IPR2017-00967
Patent 8,275,863 B2
1
Petitioner indicated that the original Petition did not comply with the word
count limit set forth in 37 C.F.R. 42.24. See Paper 8; Paper 9, 66 (stating
that the word count for the Second Corrected Petition is 14,134 words). Due
to the short time frame, we instructed Petitioner to file the Second Corrected
Petition with no changes except to add page numbers and we indicated that
we would disregard any portion of the Petition in excess of the word count.
Paper 8. Petitioners ground 6, based on Reilly and December, includes the
portion of the Petition that is in excess of the word-limit by 134 words. Pet.
66. In view of our disposition, here with respect to grounds, 46 (see infra
Section II.B.4), we need not consider what, if any, effect our disregarding
the 134 words (see Paper 8) would have had on a decision on the merits with
respect to ground 6.
2
IPR2017-00967
Patent 8,275,863 B2
3
IPR2017-00967
Patent 8,275,863 B2
4
IPR2017-00967
Patent 8,275,863 B2
D. Evidence of Record
Petitioner relies on the following references and declaration (see Pet.
910):
Reference or Declaration Exhibit No.
U.S. Patent No. 5,740,549 (Reilly) Ex. 1003
U.S. Patent No. 5,347,632 (Filepp) Ex. 1004
U.S. Patent No. 5,021,949 (Morten) Ex. 1005
U.S. Patent No. 5,644,737 (Tuniman) Ex. 1006
J.W. Olsen, Big Three On-Line Services Reach Out to the Ex. 1007
Internet, PC Magazine, June 27, 1995 (Olsen)
John December and Neil Randall, The World Wide Web Ex. 1008
Unleashed (2d. ed. 1995) (December)
Declaration of Dr. Benjamin B. Bederson Ex. 1009
E. Asserted Grounds of Unpatentability
Petitioner asserts that the challenged claims are unpatentable on the
following grounds (see Pet. 10):
Claims Challenged Basis Reference(s)
1, 11, 1417, 20, and 23 102(e) Reilly
1, 45, 11, 1417, 20, and 23 102(b) Filepp
1, 2, 45, 11, 1417, 20, and 23 103(a) Filepp and Morten
1, 2, 11, 1417, 20, and 23 103(a) Reilly and Tuniman
2 and 10 103(a) Filepp and Olsen
2 and 10 103(a) Reilly and December
II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
construed according to their broadest reasonable interpretation in light of the
specification of the patent in which they appear. See 37 C.F.R. 42.100(b);
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 214446 (2016).
5
IPR2017-00967
Patent 8,275,863 B2
6
IPR2017-00967
Patent 8,275,863 B2
cited by the panel in the 269 IPRshould be viewed in the context of the
sentence that precedes it, which describes the Internet linking many of the
worlds business, institutions, and individuals. See Prelim. Resp. 89
(quoting Ex. 1001, 1:4446). As such, Patent Owner is correct that the
specification supports its requirement for public accessibility. Moreover,
Patent Owner also provides evidence from the 1994, 1998, 1999, and 2002
editions of the Microsoft Computer Dictionary that, during the time period
encompassing the invention of the 863 patent,2 the Internet, when
capitalized as it is in the claims, was consistently understood as requiring
both public accessibility and the Internet Protocol. See id. at 9 (citing Ex.
2006, 220 (When capitalized (Internet), the term refers to the collection of
networks and gateways that use the TCP/IP suite of protocols.); Ex. 2011;
Ex. 2013; Ex. 2014).
Patent Owner also provides unrebutted evidence3 that the meaning of
internet is different when not capitalized. Prelim. Resp. 1011 (citing Ex.
2003 50). For example, Patent Owner provides dictionary evidence that
internet has been understood to more broadly refer to all networks that
have a path between them, while the same evidence defines Internet as
2
The application for the 863 patent was filed on October 16, 2003 and
claims the benefit of U.S. Provisional Application No. 60/050,186, filed on
June 19, 1997 and U.S. Application No. 09/100,619, filed on June 19, 1998.
Ex. 1001 at [22], [60], [62].
3
Although we recognize that Petitioner does not ordinarily have an
opportunity to rebut a Patent Owner Preliminary Response prior to the
Institution Decision, in this case Petitioner was aware from the 269 IPR that
Patent Owner was likely to proffer a construction of Internet. See 37
C.F.R. 42.104(b)(3) (requiring Petition to identify . . . [h]ow the challenged
claim is to be construed.)
7
IPR2017-00967
Patent 8,275,863 B2
requiring TCP/IP. See id. at 11 (citing Ex. 2007, 249), Ex. 2006, 220.
Accordingly, based on this additional evidence, we are persuaded that the
correct understanding of the claim term Internet at the time of the
invention would have included both the public accessibility and Internet
Protocol requirements proposed by Patent Owner.
For the foregoing reasons, we construe the Internet as the publicly
accessible interconnected network of networks that communicate using the
Internet Protocol. Similarly, the claim term user Internet device should
be construed as an apparatus allowing a user to access the publicly
accessible interconnected network of networks that communicate using the
Internet Protocol.
2. Web Browser
Claim 2 of the 863 patent recites the user Internet device as part of a
web browser. Petitioner contends that the Board should construe, as it did
in the 269 IPR, web browser as a software application that enables a user
to find HTML documents (i.e., web pages) and display them to a user. Pet.
15 (citing 269 Institution Decision, 78). Patent Owner does not propose a
construction for the term web browser. We agree that Petitioners
proposed construction accords with the broadest reasonable construction
consistent with the specification. See Ex. 1001, 10:6111:4. Accordingly,
for purposes of this Decision, we construe web browser as a software
application that enables a user to find HTML documents (i.e., web pages)
and display them to a user.
3. Other Terms
Petitioner also proposes constructions for the terms automatically
and name-value pair. Pet. 1315. Patent Owner does not propose
8
IPR2017-00967
Patent 8,275,863 B2
9
IPR2017-00967
Patent 8,275,863 B2
10
IPR2017-00967
Patent 8,275,863 B2
prevailing as to claim 1, as well as claims 4, 5, 11, 1417, 20, and 23, which
depend from claim 1.
2. Alleged Obviousness of Claims 1, 2, 4, 5, 11, 1417, 20, and
23 by Filepp and Morten
Petitioner contends claims 1, 2, 4, 5, 11, 1417, 20, and 23 are
obvious over Filepp and Morten. Pet. 4047. Petitioner relies substantially
on its anticipation analysis of claim 1 based on Filepp (see id. at 3137
(mapping Filepp to claim 1)), and provides additional evidence and
argument that either Filepp and Morton would have rendered the subject
matter of claim 1 obvious as to the Internet-related claim limitations
discussed above. See id. Morten relates to linking an SNA capable host to
another SNA capable host using Internet Protocol. Ex. 1005, Abstract,
7:2141. We have reviewed Petitioners assertions and supporting evidence,
and Patent Owners opposing arguments, assertions and evidence. 4 For the
reasons discussed in more detail below, we are persuaded that Petitioner
demonstrates a reasonable likelihood of prevailing in showing that claims 1,
4
Patent Owner makes a general argument that institution be denied because
Petitioners contentions are based on unexplained quotations from the
references and not well organized, easy-to-follow arguments for each
ground. Prelim. Resp. 1214. However, Petitioner has identified where it
contends the elements of the claims are found. See Pet. 3137, 4047; 37
C.F.R. 104(b)(4) (The petition must specify where each element of the
claim is found in the prior art patents are printed publications relied upon).
We independently review this evidence (whether explicated or not) as well
as Patent Owners arguments in ascertaining whether the reasonable
likelihood standard has been satisfied.
11
IPR2017-00967
Patent 8,275,863 B2
4, 5, 11, 1417, 20, and 23, but not claim 2, are obvious over Filepp and
Morten.
a. The Internet Limitations
Petitioner contends that, by the mid-1990s, proprietary networks such
as SNA were being replaced by IP-based networks and integrated with the
Internet. Pet. 40; see Ex. 1009 122124. According to Petitioner,
[g]iven the rapidly increasing popularity of the Internet in the mid-1990s, a
[person of ordinary skill in the art] would have had reason to adapt the SNA-
based embodiment of the invention in Filepp to the Internet-bridging
technology disclosed in Morten, creating a toolbar that updated over the
Internet. Pet. 40. The motivation for doing so, Petitioner contends, would
have included providing users with increased performance and
interoperability and the wider array of resources available through the
Internet. Id. at 4041 (citing Ex. 1004, 1:1125).
Patent Owner contends that Petitioner fails to establish how Filepp
and Morton teach the elements of claim 1. Prelim Resp. 5659. In
particular, Patent Owner argues [t]he portions of Morten cited by Petitioner
do not describe devices that themselves communicate over the Internet.
Rather, Morten describes tunneling SNA traffic from two SNA devices over
the Internet. Id. at 57. In support of this position, Patent Owner argues that
the full text of claim 1 of Mortencited by Petitionerclarifies that a first
front end processor coupled to first SNA host, and a second front end
processor coupled to a second SNA host, wherein each processor is used
for tunneling SNA traffic over a packet switched protocol. Id. at 58
(quoting Ex. 1005, claim 1). Thus, according to Patent Owner, the SNA
host of Filepp is not transformed to an Internet host, but instead . . . an SNA
12
IPR2017-00967
Patent 8,275,863 B2
host remains an SNA host and merely uses the Internet with the help of
another device (a front-end processor). Id. We do not find this argument
persuasive.
First, Petitioner has provided evidence that a person of ordinary skill
in the art would have been motivated to adapt a proprietary network, such as
described in Filepp, to the Internet to access the wider array of resources
that were increasingly available. See Ex. 1009 123124. For purposes of
this Decision, we find this testimony credible because it is supported by
Filepps disclosure, cited by Petitioner, that the reception systems (i.e., RS
400) would be expected to be conventional personal computers and
interconnected with a wide variety of networking technologies including
PSTN and broadcast media. See id. (citing Ex. 1004, 4:14, 6:5556).
Second, even accepting Patent Owners view that the SNA host
described in Filepp merely uses the Internet with the help of another
device (Prelim. Resp. 58), this does not mean a user Internet Device would
have not have been obvious in view of Filepp and Morten. See In re Keller,
642 F.2d 413, 425426 (CCPA 1981) (The test for obviousness is not
whether the . . . claimed invention must be expressly suggested in any one or
all of the references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art).
Although explicitly described as a separate front-end processor (FEP),
Morten describes the IP to SNA bridging functionality as software
developed for an MC68000 based processor. See Ex. 1005, 13:1032. We
determine that incorporating the software-based IP bridging functionality
(i.e., the front end device of claim 1 of Morten) into the SNA host (which
Filepp contemplates as a conventional personal computer or an IBM-
13
IPR2017-00967
Patent 8,275,863 B2
compatible) to use the Internet would have been among the inferences and
creative steps that a person of ordinary skill in the art would employ. KSR
Intl Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); see Soverain Software
LLC v. New Egg, Inc., 705 F.3d 1333, 134344 (Fed. Cir. 2013) (holding
routine incorporation of Internet technology into existing processes to be
obvious), Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (affirming obviousness judgment where there was no
evidence that the recited combination of elements was uniquely challenging
or difficult for one of ordinary skill in the art).
b. Other Disputed Limitations of Claim 1
Patent Owner contends Petitioner has not shown that Filepp discloses
the recited toolbar data stored in a toolbar defining database wherein the
toolbar data compris[es] a plurality of attributes, each attribute associated
with a button of the toolbar. Wherein for each button of the toolbar, at
least one of the plurality of attributes identif[ies] a function to be performed
when the button is actuated, but, instead, provides only bare citations
without explanation. Prelim. Resp. 46 (emphasis removed). In particular,
Patent Owner contends
Claim element [l.d] explicitly requires that the toolbar
data compris[es] a plurality of attributes, each associated with a
button of the toolbar. Therefore, to establish that Filepp
anticipates claim 1, Petitioner must show that Filepps page
element objects (the alleged toolbar data) comprise display
data (alleged attributes) and that each of the display data items
in the page element objects (the alleged attributes) is
associated with a button of the toolbar. . . . Petitioner does not
provide an explicit disclosure in Filepp for claim element [1.d]
and therefore must rely on inherency to meet this claim element.
Nevertheless, the citation provided by Petitioner demonstrates
14
IPR2017-00967
Patent 8,275,863 B2
that each item of the display data of a page object element (the
alleged attributes) is not associated with a button of the toolbar.
Prelim. Resp. 48. We disagree.
As an initial matter, in considering the obviousness of the claimed
subject matter, the question is not what Filepp inherently discloses, but what
Filepp and Morten would have taught or suggested to a person of ordinary
skill in the art. See Keller, 642 F.2d at 425426. Thus, even if Patent
Owner is correct that it is not necessary in Filepp to associate each of the
plurality of display data items to a button of the toolbar, and [i]t is also
conceivable that the display data of Filepp (the alleged attributes) could
include a single attribute that defines properties of multiple buttons (Prelim.
Resp. 49), the question before us is whether the cited teachings of Filepp
teach or suggest, A plurality of attributes, each associated with a button of
the toolbar. At this stage of the proceeding, we find that they do.
The alleged toolbar is Filepps command bar 290 having a number
of commands 291298 which the user can execute. Ex. 1004, 9:5357.
Page element objects 504 (i.e., the alleged toolbar data) contain the
display datatext and graphicto be displayed within partitions 250 to 290
and to further provide the associated control data and programs. Id. at
10:6611:1. Page element objects control the functionality within the
screen partition by means of field definition segments 516 and program call
segments 532. Id. at 11:58. At this stage of the proceeding, we find that
these descriptions of the page element object containing the display data as
well as the functionality (e.g. JUMP, etc.), within the screen partition (e.g.,
command bar 290) teach or suggest the recited plurality of attributes, each
associated with a button of the toolbar. See id. at 74:5260 (explaining that
functions can be performed by the command bar and be treated as another
15
IPR2017-00967
Patent 8,275,863 B2
partition for every page for which an appropriate set of supporting objects
exist).
Patent Owner also contends that Petitioner has not shown that Filepp
discloses a revision level . . . to a predetermined network address, as claim
1 recites. Prelim. Resp. 51. Specifically, Patent Owner argues that the cited
portions of Filepp do not mention a network address much less a
predetermined network address and, moreover, a predetermined network
address is not inherently used because [o]ne can send data without even
specifying a network address using, for example, a broadcast technique.
And such broadcasting was possible using the SNA network disclosed in
Filepp. Id. (citing Ex. 1004, 89:110, 84:6165, 78:3843). We are not
persuaded by this argument.
Once again, the relevant question is whether Filepp and Morten teach
or suggest a predetermined network address, not whether alternatives are
possible. The cited portion of Filepp teaches delivery system 20, on
interactive network 10, having object storage facility 439 (i.e., the toolbar-
defining database), which receives a revision level from RS 400 (i.e., the
user Internet device). Ex. 1004, 2:5165; 6:1012; 89:110; Pet. 34. As
discussed above, at this stage of the proceeding, we find that a person of
ordinary skill in the art would have combined an SNA host (such as delivery
system 20 and RS 400) with an IP front-end processor as discussed in
Morten to use the Internet. Morten also provides for identifying a host by its
32-bit binary IP address (i.e., predetermined network address). See Ex.
1005, 38:2835 (The TCP support package shall provide a name
conversion service . . . [to] convert a long character name for a DDN host or
a dotted decimal name for a DDN host to the 32 bit binary IP address
16
IPR2017-00967
Patent 8,275,863 B2
17
IPR2017-00967
Patent 8,275,863 B2
such as command bar 290 (i.e., the claimed toolbar). The Petition cites to
teachings in Filepp that objects have a header that contains an object ID.
Pet. 37 (citing Ex. 1004, 12:2435, Figs. 4a4b, claim 10). According to Dr.
Bederson, [t]hese object IDs provide unique names to each object in the
database. Their value is represented by the sequence of bytes that represent
the object itself. Ex. 1009 119. At this stage of the proceeding, we credit
this testimony (see 37 C.F.R. 42.108(c)), which is consistent with the
description of Figures 4a and 4b. See Ex. 1004, 12:2435. Moreover,
Filepp also describes of updating an object to replace a stale object and
support the desired screen. Ex. 1004, 89:118. As such, the updated object
would update the toolbar data including any graphics and functionality
associated with the toolbar buttons (i.e., attributes). Accordingly, for
purposes of this Decision, we determine that Filepp in combination with
Morten teaches or suggests the requirements of claim 4.
e. Claims 1417 and 20
Patent Owner contends Petitioner relies on the same citation of Filepp
without identifying how these citations anticipate the varied features of
claims 1417 and 20. Prelim. Resp. 5455. As an initial matter, the
question is not whether Filepp anticipates the limitations of claims 1417
and 20, but whether Filepp, in combination with Morten, teaches or suggests
the respective claim limitations. Moreover, given the nature of the claim
limitations at issue (one new attribute to the toolbar data, changing the
one or buttons of the toolbar, updating at least one attribute of the toolbar
data, updating the one or more buttons of the toolbar, and updating an
attribute defining a button caption) (see Ex. 1001, claims 1417, 20), we
are not persuaded that Petitioners reliance on the same portion of Filepp as
18
IPR2017-00967
Patent 8,275,863 B2
5
Thus, we are not persuaded by Patent Owners argument that Olsen does
not cure the deficiency in Filepp with respect to the user Internet device.
Prelim. Resp. 59. As discussed above, however, we determined that
Petitioner demonstrated sufficiently that the combination of Filepp and
Morten teaches or suggests the user Internet device.
6
Page 7 refers to exhibit pagination not magazine pagination.
19
IPR2017-00967
Patent 8,275,863 B2
20
IPR2017-00967
Patent 8,275,863 B2
21
IPR2017-00967
Patent 8,275,863 B2
22
IPR2017-00967
Patent 8,275,863 B2
PETITIONER:
Jonathan Stroud
Roshan Suresh Mansinghani
UNIFIED PATENTS INC.
jonathan@unifiedpatents.com
roshan@unifiedpatents.com
PATENT OWNER:
Lori A. Gordon
Daniel S. Block
STERNE KESSLER GOLDSTEIN FOX P.L.L.C
lgordon-PTAB@skgf.com
dblock-PTAB@skgf.com
23