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Unified Patents Inc. v. Kaldren LLC, IPR2017-02195, (PTAB Oct. 4, 2017)
Unified Patents Inc. v. Kaldren LLC, IPR2017-02195, (PTAB Oct. 4, 2017)
Roshan Mansinghani, Reg. No. 62,429 Ashraf A. Fawzy, Reg. No. 67,914
roshan@unifiedpatents.com afawzy@unifiedpatents.com
Unified Patents Inc. Unified Patents Inc.
13355 Noel Road, Suite 1100 1875 Connecticut Ave. NW, Floor 10
Dallas, TX, 75240 Washington, D.C. 20009
Telephone: (214) 945-0200 Telephone: (202) 871-0110
v.
KALDREN, LLC
Patent Owner
____________
IPR2017-02195
Patent 6,820,807
____________
I. INTRODUCTION............................................................................................... 1
II. U.S. PATENT 6,820,807 ................................................................................... 1
A. Summary ................................................................................................. 1
B. Prosecution History ................................................................................. 2
C. Level of Ordinary Skill in the Art ........................................................... 3
III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
42.104 .......................................................................................................... 4
A. Grounds for standing under 37 C.F.R. 42.104(a) ................................. 4
B. Identification of challenge under 37 C.F.R. 42.104(b) and relief
requested............................................................................................... 4
C. Claim construction under 37 C.F.R. 42.104(b)(3)................................ 5
hyperlinks .................................................................................... 5
program code ............................................................................. 7
arbitrarily complex piece of program code ............................... 8
means for extracting the digital data values from the substrate 8
means for retrieving the information resource identified by the
digital data ........................................................................................ 10
IV. THERE IS A REASONABLE LIKELIHOOD THAT THE CHALLENGED
CLAIMS ARE UNPATENTABLE.............................................................. 11
A. Ground 1: Wellner anticipates claims 1-4, 6-15, 18, and 20-24 and also
renders obvious claims 8 and 24 ........................................................ 11
i) Claim 1 ......................................................................................... 13
Claim 2: ....................................................................................... 18
Claim 3: ...................................................................................... 19
Claim 4: ...................................................................................... 23
Claim 6: ....................................................................................... 24
Claim 7: ...................................................................................... 27
Claim 8: ..................................................................................... 28
Claims 9-11: .............................................................................. 30
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Claim 12: .................................................................................... 31
Claim 13: ..................................................................................... 35
Claim 14: .................................................................................... 36
Claim 15: ................................................................................... 36
Claim 18: ................................................................................... 37
Claim 20: ................................................................................... 37
Claim 21: ................................................................................... 38
Claims 22-23: ............................................................................ 38
Claim 24: ................................................................................... 39
B. Ground 2: Wellner in view of Hudetz renders claims 16-17 and 21
obvious under 103(a) ....................................................................... 39
i) Claims 16 and 17: ......................................................................... 39
Claim 21: ..................................................................................... 42
C. Ground 3: Wellner in view of Zdybel renders claims 2 and 13-14
obvious under 103(a) ....................................................................... 44
i) Claims 2 and 13: ........................................................................... 46
ii) Claim 14: ..................................................................................... 47
D. Ground 4: Laszlo in view of Zdybel renders obvious claims 1-4, 6-7, 12-
13, 15, 20, and 22-23 under 103(a) ................................................. 48
i) Claim 1: ........................................................................................ 50
ii) Claim 2: ....................................................................................... 54
iii) Claim 3: ...................................................................................... 55
iv) Claim 4: ...................................................................................... 60
iii) Claim 6: ...................................................................................... 60
Claim 7: ...................................................................................... 62
Claim 12: ..................................................................................... 63
Claim 13: .................................................................................... 66
vii) Claim 15: ................................................................................... 66
viii) Claim 20: ................................................................................... 66
Claims 22-23: ............................................................................. 67
V. CONCLUSION ............................................................................................... 68
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VI. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(A)(1) ....................... 69
A. Real Party-In-Interest ............................................................................ 69
B. Related Matters ...................................................................................... 69
C. Lead and Back-Up Counsel Under 37 C.F.R. 42.8(b)(3) ................... 71
D. Payment of Fees Under 37 C.F.R. 42.103 .......................................... 72
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I. INTRODUCTION
Partes Review (IPR) of claims 1-4, 6-18, and 20-24 (the Challenged Claims)
A. Summary
into an encoded pattern onto a physical substrate, such as ink on paper. 807 Patent
attached to a computing device. Id. at 1:28-31, 27:20-39, Figs. 1, 16. The digital
data may be encoded into a two-dimensional pattern including both a width and
height, such as a two-dimensional bar code. Id. at 10:44-11:8, Figs. 1-5, 8-16, 25.
Petitioner notes, however, that use of such two-dimensional code symbols were
Generally, the encoded digital data may comprise the location of, for
example, a computer file, executable file, visual image, word processing document,
claim 7. Specifically, the digital data may include data that causes human-readable
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48:53-62, 49:60-50:12, 50:21-32, Fig. 25. Additionally, the digital data may
include the location of program code that may initiate or invoke a function, such as
B. Prosecution History
U.S. Patent Application No. 09/382,173, which issued as the 807 Patent,
was filed as a divisional application on November 21, 2000 with two claims.807
Prosecution History (EX1002) at 94. The 807 Patent claims its earliest priority to
rendered obvious by Wang (U.S. Patent 5,490,217) (EX1038), which taught a two-
hyperlinks would have been a design choice which is well within the skill levels
1
Petitioner notes that the parent 882 Patents claims are directed, in detail, to the
specific formatting of 2-D machine readable patterns, whereas the 807 Patent, in
contrast, is generally directed to using any 2-D pattern whatsoever to access data.
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and expectations of an ordinary skilled artisan, and thus is not considered novel.
Id.
instructions for accessing data from the encoded pattern, but rather merely encodes
a document itself into machine readable code such that the entire document may be
Supplemental Amendment on November 21, 2000 adding claims 3-27. Id. at 175-
183.
A Notice of Allowance for claims 1-27 was issued August 27, 2002, with
claims 3-27 having never been rejected. Id. at 184. The reasons for allowance
stated that the cited prior art failed to disclose the claimed method for accessing
data of claim 1 and also concluded, without further explanation, that the limitations
A person having ordinary skill in the art (PHOSITA) at the time of the
alleged invention (i.e., March 1, 1996) of the 807 Patent would have been a
the industry equivalent thereof, and approximately one to two years of industry
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with additional experience substituting for less education or additional education
Petitioner certifies that the 807 Patent is available for IPR and that
Petitioner is not barred or estopped from requesting IPR of the 807 Patent.
In view of the prior art, evidence, and arguments herein, claims 1-4, 6-18
and 20-24 of the 807 Patent are unpatentable and should be cancelled. 37 C.F.R.
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42.104(b)(1). Based on the prior art references identified below, IPR of these
Section IV, infra, identifies where each element of the Challenged Claims is
found in the prior art. 37 C.F.R. 42.104(b)(4). The exhibit numbers of the
supporting evidence relied upon to support the challenges are provided above and
the relevance of the evidence to the challenges raised are provided in Section IV.
37 C.F.R. 42.104(b)(5).
The 807 Patent has expired. As such, the claim terms should be given their
art in question at the time of the invention pursuant to the principles set forth
in Phillips v. AWH Corporation. 415 F.3d 1303, 1316 (Fed. Cir. 2005).
specifically discussed below should be given their plain and ordinary meaning in
hyperlinks
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The 807 Patent describes a hyperlink only once, stating that information
information. Id. at 48:53-62. As seen in Figure 25 below, the lower portion (2504)
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Id. at 49:29-32, 49:60-50:12; Fig. 25 (annotated). Such icons may, when selected
access further information, such as a URL. Id. at 50:21-32. The 807 expressly
states that HTML is just one method to those skilled in programming for
accomplishing this linking. Id. This usage is consistent with the well understood
program code
Claims 3-11 and 22-23 recite a program code. See 807 Patent (EX1001)
code has been formatted into a machine readable two dimensional pattern. Id. The
807 Patent teaches a wide variety of data whose location may be formatted into
(describing functions), claim 7 (parameters required for execution); see also id.
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Thus, program code would have at least included a a computer file, batch
file, script file, application file, audio file, video file, executable file, visual image,
The 807 Patent provides little distinction between program code and an
arbitrarily complicated files that can ease use by performing functions for the
user, rather than the user having to know how to perform those functions. Id. at
6:67-7:22. Further, by reciting arbitrarily complex, this term does not require
some minimum number of steps and is, instead, arbitrary as to the number of steps.
means for extracting the digital data values from the substrate
Claims 12 recites means for extracting the digital data values from the
The recited function for this term in claim 12 is extracting the digital data
values from the substrate, and this recited function is accomplished by the
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disclosed corresponding structure in the specification of a handheld scanner, a
sheet-fed page scanner, a business card scanner, a drum scanner or another type of
computer then performs a decoding process to reconstruct the original digital data
The 807 Patent states that the overall method of decoding a substrate
error detection, error correction, and decompression, these steps should not be
included in the proper construction of means for extracting the digital data values
from the substrate, because the digital data values have already been extracted
prior to performance of such steps. Id. at 27:20-26, 28:5-23 (The series of digital
data values resulting from decoding process 1602 is then subjected to error
correction and detection processing) (emphasis added), Fig. 16; see also
Reboulet Decl. (EX1003) at 44. And these steps are simply described as being
preferred and not required for extracting the data. Other embodiments are
disclosed in which original computer files or other digital data are recovered
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additional steps of error detection, error correction, and decompression are not
function of extracting the digital data values from the substrate and the
configured to perform the steps of scanning and decoding and equivalents thereof.
identified by the digital data. See 807 Patent (EX1001) at claim 12.
The recited function for this term in claim 12 is retrieving the information
resource identified by the digital data and this recited function is accomplished by
specification describes that the computer may access the identified information
retrieval is then completed by the computer presenting the resource to the user,
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Therefore, the disclosed corresponding structure for performing the function
of retrieving the information resource identified by the digital data would have at
least included a computer programmed with an algorithm that performs the steps
information resource to the user, and equivalents thereof. Id. at 46:9-39, 49:16-23,
The following prior art references disclose each limitation of the Challenged
Claims and render the Challenged Claims unpatentable. Included below are
A. Ground 1: Wellner anticipates claims 1-4, 6-15, 18, and 20-24 and
also renders obvious claims 8 and 24
August 15, 1994, issued on June 17, 1997 and therefore qualifies as prior art to
the 807 Patent under 35 U.S.C. 102(e) (pre-AIA). See Wellner (EX1004).
Wellner was not cited or discussed during prosecution of the 807 Patent.
at Abstract, 1:33-46, 2:28-42, 3:65-4:2, 4:26-45; see also Figs. 1-3. Specifically,
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Wellner teaches a process in which an address of an electronic object on a
more appropriate for its system because of the ability of a Xerox glyph to encode
a large amount of data in a short space. Id. at 1:33-53, 2:22-27, 4:26-45, 6:9-46;
Fig. 2; see also Reboulet Decl. (EX1003) at 32. Xerox glyphs were well-known
two-dimensional patterns for encoding data. Id. at 33; see also Wellner Article
may scan the mark with a scanning pen or other scanning device to decode the encoded
network location of the electronic object on a server. Id. at 2:28-56, 3:21-23, 4:58-64,
5:37-48; see also id. at Figs. 1-4. Wellner then teaches that the electronic object is
retrieved from the location on the network and displayed to the user, in some cases
automatically. Id. at Abstract, 1:33-46, 2:28-42, 4:58-64, see also id. at 5:37-65, 6:10-
36, Fig 3.
2
See also Bennett Decl. (EX1013) at 31-33 (Wellner Article bears a 1994
copyright date and was indexed and publicly available in libraries by at least
November 1994).
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Wellner is in the same field of endeavor as and is reasonably pertinent to the
claimed invention of the 807 Patent. As mentioned above, the 807 Patent teaches a
printed pattern that encodes data for accessing information resources or program code,
such as a word processing document, executable file, or video file. 807 Patent
Patent uses an attached scanning device to decode the encoded data to access the
46:9-39, Fig. 1.
Like the 807 Patent, Wellner relates to a method for controlling access to
data on an object. Wellner (EX1004) at Abstract, 1:5-6, 1:33-46, 2:22-42. Also like
the 807 Patent, Wellner may further encode a location of program code to be executed
Wellner, therefore, is analogous art to the claimed invention of the 807 Patent.
i) Claim 1
[1(pre)] A method accessing data comprising:
To the extent the preamble is deemed limiting, Wellner teaches a method of
server. Wellner (EX1004) at Abstract, 1:33-46, 4:58-64, Figs. 1, 3, see also id. at
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multimedia systems and, more specifically, to a method and apparatus for
information, games, and other multimedia documents. Id. at 1:5-13; see also id. at
2:28-42, 3:65-4:2, 6:9-46. Wellner also teaches that it can be used to access
data in marks such as a standard bar code or a Xerox glyph and which include a
readable digital data, are disclosed as being appropriately utilized because they can
encode a large amount of data in a short space. Id. at 4:26-45; Reboulet Decl. (EX1003)
at 32.
Wellner teaches that the instructions encoded in the marks include a universal
identifier code for electronic objects accessible on the [] network. Id. And Wellner
teaches that a single swipe/scan of a mark instructs the system to automatically access
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an electronic object, such as a film, which is accessed and played. Id. at 4:58-5:3; see
also id. at 6:10-36 (describing examples of electronic objects being instantly accessed
and played). Wellner further states that these codes could work in a similar way as the
client access software for World Wide Web), only they would be read from paper
Wellner, therefore, teaches encoding digital instructions for accessing data through
encoding digital data values into machine-readable patterns. See also Reboulet Decl.
(EX1003) at 34.
hand delivery, courier or other contract delivery service as well as any other means
for moving the digitally encoded substrate. 807 Patent (EX1001) at 44:59-45:5.
Wellner (EX1004) at 2:28-42, Fig. 2. Further distribution of the digital data marks
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advertisement, textbook, or pamphlet. Id. at 2:28-42, 6:9-46. Any of these channels
(EX1003) at 35.
above, Wellner teaches that a user may scan the digital data marks with a scanning
pen or other scanning device. Wellner (EX1004) at 1:36-39, 2:30-35, 3:21-23, 4:58-64,
5:37-48; see also id. at 2:47-65, Figs. 2-4. For example, Wellner teaches that a user
selecting a film from a paper catalog scans the identification (ID) marks next to the
description of the film with the scanner pen after which the pen transmits scanned
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Id. at 4:65-5:3, 5:37-44, Fig. 2. Wellner teaches that the interface unit then interprets
the information sent by the pen to enact further communication steps, as discussed
below. Id. at 5:3-7. Wellner also describes that the scanner pen 11 may include a
it to the interface unit (part of the computer) or it may transmit the raw
unprocessed output from its scanning head 401 to the interface unit 15 for
therefore, teaches decoding the formatted digital data. See also infra Sec.
[1(d)] activating the digital instructions for accessing data, whereby the data is
accessed.
Wellner teaches that after the encoded digital instructions have been scanned
and decoded, they are activated when the system accesses and presents the
Wellner (EX1004) at 1:33-51, 4:26-45, 4:58-64. Wellner states that one may
access any electronic object by swiping data stored in marks first to identify a
service and establish a connection to it, and then to identify a domain within that
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For example, in the case of marks corresponding to a video, the scanned and
decoded data transmitted to a server via a network may identify an MPEG data
stream, which is then transmitted to and displayed for the user. Id. at 5:49-66, 6:10-
16. In other examples, the scanned digital instructions may access audio data, live
discussions, or electronic documents. Id. at 3:65-4:6, 6:17-46; see also id. at Fig. 3.
Claim 2:
Wellner teaches that the encoded digital instructions may include an identifier
code for electronic objects on a network that work in the same way a URL identifier
expressly teaches that the marks may themselves represent Internet Universal
Resource Locator[s] (URL[s]). Id. at claims 3, 24, & 25. 3 Further, Wellner teaches
that the marks encoding the URL or other identifier code of the electronic objects
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data that, when selected, automatically accesses further sources of information (i.e.,
linked electronic object, such as the video or electronic document, are not
themselves encoded in the digital data and are, therefore, extraneous to (and
separate from) the formatted digital data. Id. Thus, a PHOSITA would have
understood Wellner teaches digital instructions for accessing data that consists of
Claim 3:
[3(pre)] A method for accessing information, the method comprising:
Wellner teaches this preamble, to the extent it is limiting. See supra Sec. IV.A.i.
at [1(pre)].
computer file, batch file, script file, application file, audio file, video file,
See supra Sec. III.C. Wellner teaches that the electronic objects accessed through
MPEG data stream (video), audio programs and sound bites (audio),
or word processing document), among other example electronic objects, see id. at
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2:28-42, 3:65-4:2, 6:9-46, which each constitute program code. Id. at 2:28-42,
6:9-46; see also id at 3:65-4:2. Thus, a PHOSITA would have understood the
(EX1003) at 38.
Wellner states that these unique identifiers could work in a similar way as the
(Internet client access software for World Wide Web), only they would be read
buttons. Id. A PHOSITA, therefore, would have understood that this unique
Further, Wellner specifically teaches that the machine readable indicia of the
2:22-27. Wellner teaches that Xerox glyphs are more appropriate for use in its
system than standard-bar codes [which] would become too large to be placed
amount of data in a short space. Id. at 4:26-45. A PHOSITA would have known that
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a Xerox glyph constitutes a two dimensional formatted pattern of machine
readable data. Reboulet Decl. (EX1003) at 33; see also supra Sec. IV.A. Exemplary
[3(b)] extracting the location of the first program code from the machine
readable indicia; and
As previously discussed, Wellner teaches information scanned and
interpreted from digital data marks including an object code to select the
Wellner (EX1004) at 1:33-46. Wellner teaches that the user may access any
electronic object by swiping data stored in marks to first to identify a service and
establish a connection to it, and then to identify a domain within that service, and
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finally to identify a specific electronic object controlled by that service. Id. at
4:58-64. Wellner further teaches that the interface unit interprets the information sent
by the pen to retrieve the program code, as discussed below, or the pen may itself
decode[] the scanned mark first and provide this decoded form to the interface unit,
which then uses it to retrieve the program code. Id. at 2:46-56, 5:3-7; see also id. at
[3(c)] retrieving the first program code according to the extracted location for
execution by a computer.
Wellner specifically states that In order to retrieve the associated
multimedia document, a user scans the printed ID with the scanner or pen (11), and
the movie, product information, or game immediately starts to play. Id. at 2:28-35
(emphasis added). Wellner discusses the retrieval functionality from the server
side, stating, Once a user's input selection is processed, the server 13 sends
multimedia data or programs down to the interface unit 15, which displays it on the
include scanned bar codes linking to video instructions, newspapers and magazines
linking to audio sound bites, advertisements presenting bar codes that may be
with the company and to ordering, and textbooks with bar codes that could ink
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the textbook to live discussion groups with other students or to live interactions
with professors and tutors. Id. at 6:9-46; see also id. at 3:65-4:6.
implementing these functions. Id. at 3:40-45 (The interface unit 15 and television
display unit, etc., so as to implement the features described herein.) (emphasis added);
Claim 4:
therefore, would have understood this teaches automatically executing the first
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Claim 6:
6. The method of claim 3 comprising:
encoding a location of a second program code in the machine readable indicia;
extracting a location of a second program code from the machine readable
indicia; and
retrieving the second program code according to the extracted location.
of marks 10, such as Xerox glyphs, that encode a universal identifier [] used to
access the content (e.g., the movie), Wellner further describes additional
functions such as ordering, playing, pausing, or stopping the movie. Id. at 5:12-27,
Fig. 2; see also id. at 5:60-6:1 (predesignated control function marks (e.g., an
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batch file, script file, application file, audio file, video file, executable file, visual
image, word processing document, or functional parameter. See supra Sec. III.C.
Reboulet Decl. (EX1003) at 40. Further, Wellner teaches that the predefined
control marks 17, when scanned, cause the interface to communicate with the
server to implement the commands in the same manner as when the marks 10 for
the content are scanned. Wellner (EX1004) at 5:60-6:1, Fig. 3 (returning to step
302 for swiping across control function marks); Reboulet Decl. (EX1003) at 40.
And since Wellner teaches that the marks encode a universal identifier [] used
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to uniquely address every accessible electronic object on a communication
network, a PHOSITA would have understood that the predefined control marks
also encode locations of their respective program code, so that files required to
perform the requested functions, such as ordering, playing, etc., can be accessed
Thus, based on any of these predefined control marks, Wellner teaches encoding
4
Notably, claim 6 (as well as claims 7-11, through their dependence on claim 6)
claim 6 does not expressly require a single contiguous machine readable indicium
encoding the location of two program codes, but may rather be satisfied by a
substrate having multiple machine readable indicia encoding the locations of a first
program code and second program code. Specifically, Wellner teaches that the
predefined control marks may be located on the same object (catalog, card, etc.)
as the indicia for the first program code (e.g., movie, electronic document, etc,).
Wellner (EX1004) at 5:25-27. Further, besides appearing in the claims, the terms
machine readable indicia and indicia are never used by the 807 specification.
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Thus, a PHOSITA would have understood that the act of scanning and
location of program code for that predefined mark and retrieving the program code
Claim 7:
program code that includes the functional parameters such as ordering, playing,
pausing, or stopping the movie (i.e., the first program code). Id. at 5:12-27, Fig. 2;
see also supra Sec. IV.A.v at Claim 6. The parameters for the ordering and playing
functions of the movie are required for the execution of the movie, and thus
Wellner teaches that retrieving the second program code provides parameters
required for the execution of the first program code by the computer. Reboulet
While the 807 specification refers to a datatile, it describes that datatiles can be
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Claim 8:
8. The method of claim 6 comprising:
launching an application program on the computer; and
loading the first program code within the application program.
As discussed above regarding claim 3, Wellner teaches retrieving a first
at 2:28-42, 3:40-45, generally at 5:12-65, Figs. 1-3; see also supra Sec. IV.A.iii at
limitations [3(a)-(c)]. Specifically, Wellner states that in the case of a movie, this
decompressed by interface 15, in step 308, before it can be displayed on the TV (or
multimedia) receiver 16. Wellner (EX1004) at 5:56-60. The 807 Patent teaches
application such that datasectors are decoded and the application software is
to the user (e.g., where the application software is a video player, the video player
displays a continuous stream of video derived from the datatiles). 807 Patent
its computer for decompression and playing of a video stream. Reboulet Decl.
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program would necessarily have to be launched and the video stream would
necessarily have to be loaded in order to decompress and play the video stream.
Id.5
have found it obvious to design the system such that the first program code is
loaded into an application program that is launched on the computer. Id. at 43.
identifier codes could work in a similar way as the well-known Universal Resource
Locator (URL) identifiers in NCSA Mosaic (Internet client access software for World
Wide Web). Wellner (EX1004) at 4:35-37. Based on Wellners express teachings and
accessed via URL for presentation to a user, a PHOSITA would have found it obvious
to launch an Internet client access application program (such as Mosaic) and load
the video stream (or other electronic object) into the application program. Id.; Reboulet
5
Petitioner notes that Claim 8 does not require the application to be launched
through any particular process (such as a scan of a machine readable indicium) and,
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Claims 9-11:
in the form of a functional parameter to order, play, pause, or stop a movie. See
supra Sec. IV.A.v. Further, as discussed for claim 8, Wellner teaches or renders
streaming movie (first program code) into the application program. See supra Sec.
predefined control mark to cause a movie data stream loaded into an application
program to be ordered and played, paused, or stopped teaches providing the second
program code to the application (i.e., the functional parameter providing the
program code (i.e., ordering, playing, pausing, or stopping), and the function
comprises acting on the first program code by the application (i.e., ordering,
playing, pausing, or stopping the movie data stream). Reboulet Decl. (EX1003) at
40-41.
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Claim 12:
in Sec. IV.A.i.
information resource, such as a movie, game, electronic document, etc. See supra
Sec. IV.A.iii at [3(a)]. Further, Wellner teaches that the machine readable indicia of
digital data values may also be presented with human readable indicia, such as a
description of the film such as the movie title HOME ALONE. Wellner
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Id. at Fig. 2 (annotated). Further, Wellner also states that alphanumeric characters,
[12(b)] means for extracting the digital data values from the substrate; and
As discussed above, the means for extracting the digital data values from
the substrate would have required performing the recited function of extracting
the digital data values from the substrate and the corresponding structure would
have at least included a scanner and computer configured to perform the steps of
scanning and decoding and equivalents thereof. See supra Sec. III.C. Wellner
scanner means for reading marks on an object. Wellner (EX1004) at 1:36-39, 2:22-
56 (As shown in FIG. 1, the system illustratively consists of one or more hand-held
scanners or pens (11) that read marks (e.g., bar codes, alphanumeric characters, or
Xerox glyphs) on the surface of an object.), 3:21-23; see also id. at Figs. 1, 2, 4.
Further, Wellner teaches that the scanner is attached to a computer. As seen below in
Figures 1-2, the scanner (in this case, a scanner pen 11) is connected to a television
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U.S. Patent Jun. 17, 1997 Sheet 1 of 3 5,640,193 U.S. Patent 6,820,807
OTHER SERVERS
FIG. 1 | SERVER
17
14 COMMUNICATIONS NETWORK
USER INTERFACE
15T(CONTROLIER MEMORYIRANSMITTERRECEIVERDISPLAY)
12
11 SCANNER 19A
`--, Ht! IIHRSON
10 MARKSON OBJECT
Id. atSCANNER
2:43-46,
PEN 3:25-45, Figs. 1-2 (annotated). Wellner states that the interface unit 15
18 So
and television 16 may together be implemented in a well-known manner using, for
receiver units, display unit, etc., so as to implement the features described herein. Id. at
3:40-45, Figs. 1-2. The scanner pen may be attached through a cable, wire pair, infrared
link, or radio link. Id. at 2:42-46, Figs. 1-2. Thus, Wellner teaches a scanner attached to
a computer.
it to the interface unit (part of the computer) or it may transmit the raw
unprocessed output from its scanning head 401 to the interface unit 15 for
processing so as to interpret[] it. Id. at 2:47-54, 5:28-46, Figs. 3-4. After the
with servers to transmit commands and access electronic content. Id. at 5:45-6:1,
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Fig. 3. Wellner, therefore, teaches performing the function of extracting digital data
values from the substrate by performing the steps of scanning and decoding using a
[12(c)] means for retrieving the information resource identified by the digital
data.
As discussed above, the means for retrieving the information resource
identified by the digital data would have required performing the recited function
of retrieving the information resource identified by the digital data and the
steps of: (1) activating a communication device, such as a modem, (2) accessing
the information resource identified by digital data, and (3) presenting the
information resource, and equivalents thereof. See supra Sec. III.C. Wellner
including a controller, memory, transmitter and receiver units, display unit, etc., so as to
added), see also id. at Figs. 1-2. The transmitter and receiver units enable the
computer to communicate with [a] multimedia server to request the movie that the
user has selected through a scan. Id. at 4:65-5:7, 5:37-60. The request for the selected
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server via a communications network 14. Id.; see also id. at 4:26-35, Figs. 1, 3. A
telephone may be used for establishing the connection to the server, such as where the
would have understood this to teach a modem or its equivalent for communicating via
the telephone or cable network). Reboulet Decl. (EX1003) at 45. Further, Wellner
describes that the server then transmits the selected movie back to the computer,
which begins to play the movie for the user. Wellner (EX1004) at 5:3-7; 51-60.
retrieving the information resource identified by the digital data by performing the
resource identified by the digital data, and (3) presenting the information resource.
Id. at 1:39-46, 3:40-45, 5:1-7, 5:40-60, Fig. 3. Reboulet Decl. (EX1003) at 45.
Claim 13:
13. The system of claim 12 wherein the digital data comprises one or more
hyperlinks.
Wellner teaches this limitation. See supra Sec. IV.A.ii at Claim 2.
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Claim 14:
14. The system of claim 13 wherein the digital data identifies a location of a
web page.
Wellner teaches that digital instructions encoded may include an identifier code
for electronic objects on a network that work in a similar way as the well-known
Universal Resource Locator (URL) identifiers in NCSA Mosaic (Internet client access
software for World Wide Web). Wellner (EX1004) at 4:26-45. And Wellner
expressly teaches that the marks may themselves represent Internet Universal
Resource Locator[s] (URL[s]). Id. at claims 3, 24, & 25. A PHOSITA, therefore,
would have understood this to teach digital data identifying a location of a web
Claim 15:
15. The system of claim 12 wherein the human readable indicia provides an
indication of a composition of the digital data.
As previously discussed, Wellner teaches an embodiment in which a user
selects a film from a paper catalog and scans the marks next to the description of
the film with a scanner pen. Id. at 4:65-5:7. As seen below in Figure 2, this
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Claim 18:
18. The system of claim 12 wherein the digital data comprises data used by the
information resource to perform a function.
Wellner teaches this limitation. See supra Sec. IV.A.viii at claims 9-11.
Claim 20:
IV.A.i at [1(a)].
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[20(c)] retrieving the information resource for presentation to a user.
Wellner teaches this limitation. See supra Sec. IV.A.iii at limitation [3(c)].
Claim 21:
(Internet client access software for World Wide Web) (Wellner (EX1004) at 4:26-45)
(EX1003) at 39.
Claims 22-23:
that claim 22 contains an obvious error and should read, The method of claim
would have included program code invoking a function. See supra Sec. III.C.
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data stream to be ordered, played, paused, or stopped. See supra Sec. IV.A.viii.
code, using the received information resource (movie) as input. Reboulet Decl.
(EX1003) at 41.
Claim 24:
IV.A.vii at Claim 8.
16. The system of claim 12 wherein the human readable indicia comprises a
textual address.
17. The system of claim 16 wherein the textual address comprises a Uniform
Resource Locator.
As discussed above for claims 2, 14, and 21, Wellner teaches encoded
digital data comprising a URL. See supra Sections IV.A.xi, IV.A.xv, IV.A.ii,.
Further, as discussed for claim 12, Wellner teaches presenting a human readable
indicia along with the machine readable indicia (e.g., presenting Home Alone
beside the glyphs or other machine readable marks), but Wellner does not
expressly teach that the human readable indicia comprises a textual address
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(claim 16) or wherein the textual address comprises a Uniform Resource Locator
(URL) (claim 17). U.S. Patent No. 5,978,773 to Hudetz et al. (Hudetz)
11:9-27, 11:62-67, Fig. 9. Hudetz was filed on October 3, 1995 and issued on
November 2, 1999, and it therefore qualifies as prior art under 102(e) (pre-AIA).
Hudetz was not cited or discussed during prosecution of the 807 Patent. Hudetz is
in the same field of endeavor as and is reasonably pertinent to the claimed invention of
the 807 Patent. The 807 Patent and Hudetz each teach a computerized data access
system that encodes digital data into machine readable patterns to retrieve
at 47. Hudetz, therefore, is analogous art to the claimed invention of the 807
Patent.
server into a bar code printed on a document. Id. at 10:21-44, 11:9-27, 11:62-67,
Figs. 8-10. When the bar code is scanned and decoded to extract the address, web
browser software navigates the user to the website. 11:28-61, 10:45-11:8. Hudetz
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teaches presenting the websites textual mnemonic address alongside the machine
A PHOSITA at the time of the 807 Patent would have found it obvious to
combine the teachings of Wellner and Hudetz to present the location of a web site
via a URL encoded in machine readable indicia alongside a human readable form
of the textual address for the URL, as taught by Hudetz. Reboulet Decl. (EX1003)
NCSA Mosaic (Internet client access software for World Wide Web), and Wellner
claims encoding in its marks an Internet Universal Resource Locator (URL). Wellner
(EX1004) at 4:26-45; see also id. at claims 3, 24, & 25. Further, as discussed,
readable indicia for accessing the content (e.g., Home Alone). See supra Sec.
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IV.A.ix at [12(a)]. These teachings would have suggested to and prompted a
PHOSITA to also present a human readable textual URL alongside the machine
readable indicia of the URL, as taught by Hudetz. Reboulet Decl. (EX1003) at 46.
A PHOSITA would have appreciated that Hudetzs printed human readable URL
would have benefitted Wellners encoded machine readable URL by providing the
readable content allows the user to know and choose the desired content to be
accessed. Id. Further, a PHOSITA also would have appreciated that Hudetzs
concern about encoding lengthy URLs in potentially lengthy bar code symbols
Therefore, it would have been obvious to combine Wellner with Hudetz, and
Claim 21:
include an identifier code for electronic objects on a network that work in a similar
way as the well-known Universal Resource Locator (URL) identifiers in NCSA Mosaic
(Internet client access software for World Wide Web), and that the marks may
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themselves represent Internet Universal Resource Locator[s] (URL[s]), which a
PHOSITA would have understood to expressly teach digital data identifying a location
To the extent that Patent Owner argues that Wellner does not teach
extracting a URL for accessing a web page, Hudetz teaches the same and it would
have been obvious to combine Hudetz with Wellner. As discussed, Hudetz teaches
on a remote server into a bar code printed on a document. Id. at 10:21-44, 11:9-27,
11:62-67, Figs. 8-10. When the bar code is scanned and decoded to extract the
address, web browser software navigates the user to the website. 11:28-61, 10:45-
Hudetz, which teaches that this simplifies the cumbersome process of manual
desire to provide for rapid selections of remote content from a number of choices.
Wellner (EX1004) at 1:23-30, 1:66-2:9; see also Reboulet Decl. (EX1003) at 48.
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C. Ground 3: Wellner in view of Zdybel renders claims 2 and 13-14
obvious under 103(a)
Wellner teaches that the encoded digital data can comprise hyperlinks as
required by claims 2 and 13-14, as discussed above. See supra Section IV.A.ii.
However, to the extent Patent Owner argues to the contrary, European Application
describes electronic document systems and methods of tightly coupling the usual
hardcopy outputs to the electronic documents from which the human readable
hardcopies are produced. Id. at 1:1-6. The coupling may use hardcopy documents
(e.g. paper) as an essentially lossless medium for storing and transferring digital
electronic documents, the hypertext pointers are encoded into machine readable
digital representations that are printed along with the human readable hard copy
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10:13, Figs. 3-4. The two-dimensional glyphs for encoding electronic documents
Id. at Figs. 3-4. Specifically, Zdybel teaches that markings may be black and white
binary bar codes or may provide two or more levels of machine readable
Zdybel was published on April 12, 1991, and therefore qualifies as prior art
to the 807 Patent under 35 U.S.C. 102(b) (pre-AIA). See Zdybel (EX1006).
Zdybel was not cited or discussed during prosecution of the 807 Patent. Zdybel is
in the same field of endeavor as and is reasonably pertinent to the claimed invention of
the 807 Patent. The 807 Patent and Zdybel each teach a computerized data access
system that encodes and decodes digital data into machine readable two
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elements), 5:34-6:9 (describing encoding and decoding of digital data), Figs. 3-
at 49. Further, Zdybel seeks to coupl[e] the usual hard copy version of
information more easily and quickly (Zdybel (EX1006) at 1:1-14, 5:5-11), and
the 807 Patent similarly seeks to link the largely separate environments of paper
and computers and convey data with greater ease and speed. 807 Patent
glyphs. Id. at 4:10-15, 9:49-10:34, 11:53-12:11, Figs. 3-4. And Zdybel teaches
that these pointers in hypertext documents link to other documents. Id. at 4:10-15.
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machine-readable digital data. Reboulet Decl. (EX1003) at 51; see also supra Sec.
III.C.
Xerox glyphs. Reboulet Decl. (EX1003) at 52. A PHOSITA would have been
machine readable marks can function like (and can encode) Internet URLs, which
can be invisibly linked to on-screen buttons. Id. Doing so would have required
both systems use two-dimensional glyphs (and Petitioner notes Zdybel lists Xerox
as the applicant). Id. And a PHOSITA would have appreciated that Zdybels use of
14. The system of claim 13 wherein the digital data identifies a location of a
web page.
Wellner in view of Zdybel renders claim 13 obvious. See supra Sec. IV.C.i.
Further, as discussed, Wellner teaches that the digital data may be an internet URL,
which identifies a location of a webpage. See supra Sec. IV.xi; see also Reboulet
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D. Ground 4: Laszlo in view of Zdybel renders obvious claims 1-4, 6-7,
12-13, 15, 20, and 22-23 under 103(a)
U.S. Patent No. 5,331,547 to Laszlo (Laszlo) (EX1007) issued on July 19,
1994 and therefore qualifies as prior art to the 807 Patent under 102(b) (pre-
AIA). See Laszlo (EX1007). Laszlo was not cited during prosecution of the 807
Patent.
functions and/or to retrieve electronic documents and display them for the
in a database and/or optical disk storage, including but not limited to written
documents, articles, reports and correspondence; graphic and video still and
moving images, illustrations, charts, tables, and graphs; audio records including
image reader to thereby activate various computer functions such as open window,
close window, pull down menu, escape window, start help, increase window size,
scroll down, page up, page right, print window content, print document, tab left,
previous page, next document, and rotate image. Id. at 2:61-65, 3:57-4:3, Fig 2.
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Laszlo is in the same field of endeavor as and is reasonably pertinent to
purported problems addressed by the claimed invention of the 807 Patent. The 807
Patent teaches a printed pattern that encodes data for accessing program code such as a
word processing document, video file, audio file, visual image, etc. 807 Patent
Patent uses an attached scanning device to decode the encoded data to access the
Like the 807 Patent, Laszlo relates to a method for controlling access to
electronic documents and/or control codes through use of a wand and/or laser
scanner reading bar codes of machine readable data printed on an object. Laszlo
(EX1007) at Abstract 1:35-43, 2:33-52, 3:3-5, Fig. 1A. Also like the 807 Patent,
function upon a user scan of a printed machine readable pattern. Id. at 1:61-65, 3:57-4:3,
Figs. 1A-C, 2. Laszlo states that this eases use of computer functions, such as those
requiring navigation of menus, id. at 1:13-33, which the 807 Patent similarly seeks to
both Laszlo and the 807 Patent seek to link the paper world with the electronic world.
Id. at 1:37-50; Laszlo (EX1007) at 4:31-37 Laszlo, therefore, is analogous art to the
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Laszlo teaches that its printed code symbols will typically be bar codes
and that a high number base, such as base 64, is preferred to compress as much
information as possible into a small printed area and to allow for a larger
Laszlo does not expressly teach using two-dimensional patterns for the printed code
symbols. And while Laszlo does teach using the codes to permit linkages between
documents, Laszlo does not expressly recite use of hyperlinks. Zdybel, however,
6:9, 9:49-10:34, Figs. 3-4), ii) including those that encode hypertext pointer values
from electronic hypertext documents and these pointer values link [] to related
i) Claim 1:
permitting access to and control of a graphic user interface and data stored in a
database or multiple databases. Laszlo (EX1007) at 1:9-11; see also id. at 1:34-41,
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[1(a)] producing digital instructions for accessing data,
formatting into a pattern the series of digital data values representing said
digital instructions for accessing data,
Laszlo teaches producing digital instructions, which are encoded as digital
data in predetermined code symbols such as bar codes and which activate
databases and displaying them for the operator. Id. at Abstract, 1:35-43, 1:61-65,
encoding this information in printed code symbols through printing of a hard copy
document with relevant code symbols in place. Id. at 4:31-45, see also id. at 1:44-
65, 3:3-41, Figs. 1A-1C. The encoded object identification can be a control code
request code for providing instructions for retrieving an electronic document. Id.
at Abstract, 3:32-4:15.
hand delivery, courier or other contract delivery service as well as any other means
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Similarly, Laszlo teaches distributing patterns of formatted digital data
through code symbols, such as bar codes, printed on paper documents, control
cards, or other tangible fixed work. Laszlo (EX1007) at 2:6-16, 2:42-44, 3:57-
government agency (the FDA) that is presented to a user with these printed code
scanner are decoded to yield an alphanumeric code that is then translated from an
object identification. Id. at 1:35-50, 2:66-3:2, Fig. 1A. Further, in the event that
the object identification is a control code invoking a function, the base 10 code is
decoding the code symbols pattern of formatted digital data. Reboulet Decl.
(EX1003) at 54.
[1(d)] activating the digital instructions for accessing data, whereby the data is
accessed.
As discussed, Laszlo teaches two types of functions that can be initiated
upon scanning and decoding the digital instructions encoded in the printed code
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(EX1007) at 1:45-65, 3:32-41. In the event of a control code, data is accessed
from memory to execute the associated function, such as start help, scroll down,
page left, print page, rotate image, etc. Id. at 1:45-65, 3:42-47, 3:57-4:3, See
and sent to a search engine residing in the computer system to execute and retrieve
the requested document and display the requested document on an output device.
application that uses the document request code to find the corresponding
database record or object which would typically include fields identifying the
location of the stored document (i.e., the storage device), the type of document (i.e.
ASCII file, raster image file, Wordperfect file etc.), and the identity of the specific
printer, or a plotter. Id. at 4:21-25, 4:35-37, Fig. 1D. Laszlo, therefore, teaches
activating the digital instructions for accessing data, whereby the data is accessed.
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ii) Claim 2:
Sec. III.C.
reference to an FDA new drug application, that its software allows for printed code
supporting data, graphs, studies, etc. relating to the text of the application
5:16, Fig. 3. While Laszlo does not expressly teach performing this linking using
encoded hyperlinks per se, these teachings would nonetheless have suggested to a
the form of encoded hypertext pointer values (i.e., hyperlinks) in electronic hypertext
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It would have been obvious to a PHOSITA to combine Zdybels encoded
documents that can be encoded in the printed code symbols of Laszlos printed
way to link to other documents at the time and Laszlos reference to linkages would
known way. Id. A PHOSITA would have appreciated that this method taught by Zdybel
of capturing data that would not otherwise appear in a printed version of an electronic
document would have furthered Laszlos goal of better linking hard copy documents
iii) Claim 3:
[3(pre)] A method for accessing information, the method comprising:
Laszlo teaches this preamble, to the extent it is limiting. See supra [1(pre)] in Sec.
IV.D.i.
computer file, batch file, script file, application file, audio file, video file,
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As also discussed above, Laszlo teaches that the invention described
and/or to retrieve electronic documents and display them for the operator. Laszlo
disk storage, including but not limited to written documents, articles, reports and
correspondence; graphic and video still and moving images, illustrations, charts,
tables, and graphs; audio records including narrative, speeches, music and other
Further, Laszlo teaches that a document request code would allow the
typically include fields identifying the location of the stored document (i.e., the
storage device), and, thus, teaches that a location of the program code (electronic
document) is encoded because the data contained in the code symbols is alone
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To the extent that Patent Owner argues to the contrary, it would have
into Laszlos code symbol, rather than in a linked database record as in Laszlo. See
Zdybel (EX1006) at 11:53-12:11; see also Reboulet Decl. (EX1003) at 59. This
would have been a simple substitution well within the skill of a PHOSITA,
because it would simply require substitution of one set of encoded data for another.
Reboulet Decl. (EX1003) at 59. It also would have provide predictable results in
that both methods would allow the scanning of the code symbols to cause the
furthered Laszlos goal of efficiently linking hard copy documents with their
Laszlo does not expressly teach using a two-dimensional pattern for its
dimensional machine readable glyphs. See supra Sec. IV.D. A PHOSITA would be
possible into a small printed area. Laszlo (EX1007) at 3:3-19; Zdybel (EX1006) at
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10:14-34 (describing two dimensional bar codes), Figs. 3-4; Reboulet Decl.
well known for their ability to provide higher density encoding than standard 1-D
bar codes. Reboulet Decl. (EX1003) at 55; Pavlidis (EX1014) (discussing 2-D bar
[3(b)] extracting the location of the first program code from the machine
readable indicia; and
accessing data files by reading code symbols with a reader to activate various
computer functions and/or to retrieve electronic documents and display them for
the operator. Laszlo (EX1007) at Abstract, 1:35-43, Fig. 1A. As discussed, Laszlo
scans and decodes the symbols to extract the encoded alphanumeric data that is
translated into the object identification, which can be a control code or document
request code. See supra IV.D.i at [1(c)]-[1(d)]. Laszlo teaches that a document
request code would allow the system to uniquely find a database record or object
which would typically include fields identifying the location of the stored
document. Laszlo (EX1007) at 4:10-15. For the same reasons as discussed above,
a PHOSITA would understand that Laszlo teaches extracting the location of the
first program code (embodied as an electronic document) because the data captured
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from the code symbols is alone sufficient to enable the computer to locate the
Also for the same reasons discussed above, the same also would have been obvious
over Laszlo in view of Zdybel. See supra IV.D.iii at [3(a)]; Reboulet Decl.
(EX1003) at 59.
[3(c)] retrieving the first program code according to the extracted location for
execution by a computer.
Laszlo teaches retrieving the requested document (first program code)
according to the location extracted from reading the code symbols and then
Further Laszlo teaches that the document request code causes the system to
output device. Id. at 4:56-60. Laszlo also teaches that the system permits
reader to thereby activate various computer functions such as open window, close
window, pull down menu, escape window, start help, increase window size, scroll
down, page up, page right, print window content, print document, tab left, previous
page, next document, and rotate image. Id. at 2:61-65, 3:57-4:3, Fig 2. A
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PHOSITA would understand each of the above disclosures to teach retrieving the
first program code according to the extracted location for execution by a computer.
iv) Claim 4:
electronic documents (i.e., program code). Laszlo (EX1007) at 4:4-14, 4:56-60. Laszlo
also teaches user interface functions executed upon scanning a control code, such
as open window, start help, etc. Id. at 3:62-4:3. Either of these teachings, alone
the electronic documents are displayed and the functions are executed without
further user input after scanning the symbols. Reboulet Decl. (EX1003) at 57.
iii) Claim 6:
reader to thereby activate various computer functions such as when the code
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symbol is for a control code for performing functions, such as open window,
close window, pull down menu, escape window, start help, increase window size,
scroll down, page up, page right, print window content, print document, tab left,
previous page, next document, and rotate image (i.e., second program codes). Id. at
file, batch file, script file, application file, audio file, video file, executable file,
visual image, word processing document, or functional parameter. See supra Sec.
III.C. Control codes for performing user interface functions, such as, e.g., start
help, open window, close window, scroll down, etc. would have been understood
(EX1003) at 53. Further, Laszlo teaches that these functional control codes are
linked to the native instruction set inherent to a graphic user interface software
to identify the location of the second program code. Reboulet Decl. (EX1003) at
60. Thus, based on any of these printed code symbols, Laszlo teaches encoding
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(EX1007) at 3:57-4:3, Fig. 2; Reboulet Decl. (EX1003) at 60.6 Further, the act of
scanning these printed control code symbols for the various control functions, as
for the functional parameter) from the symbols and retrieving the program code
according to that extracted location (i.e. when the function is executed). Reboulet
Claim 7:
program code that includes the functional parameters such as opening a window,
starting help, printing a page or document, etc. Laszlo (EX1007) at 3:57-4:3, Fig. 2;
required for the execution of a first program code comprising a document (and
Laszlo teaches retrieving the second program code provides parameters required
6
As discussed above, the use of indicia in this claim indicates that it may be
Sec. IV.A.v.
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for the execution of the first program code by the computer. Reboulet Decl.
(EX1003) at 60.
Claim 12:
Sec. IV.D.i.
readable indicia of digital data values formatted into a two dimensional pattern,
and a PHOSITA would have been motivated to make this combination to further
supra Sec. IV.D.iii at [3(a)]. Further, Laszlo teaches presenting human readable
indicia alongside the machine readable indicia. See Laszlo (EX1007) at Figs. 2-3;
5:10-13 (code symbols may be embedded in the text or printed on the facing
page of each page of the document). Zdybel also teaches that the machine
readable indicia of digital data values may be presented along with human readable
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[12(b)] means for extracting the digital data values from the substrate; and
As discussed above, the ordinary and customary meaning as understood by a
PHOSITA of means for extracting the digital data values from the substrate
would have required performing the recited function of extracting the digital data
values from the substrate and the corresponding structure would have at least
included a scanner and computer configured to perform the steps of scanning and
with an optical image reader for scanning a code symbol. Laszlo (EX1007) at 2:66-
3:2, Fig. 1. Laszlo teaches that the computer performs steps of reading-in an
alphanumeric code from a scanned code symbol, which is stored in a buffer, tested
for completion, and translated into a base-10 code with a preassigned object
alphanumeric code that can then be used by the computer. Reboulet Decl. (EX1003)
at 54.
computer that interprets input data from machine readable data patterns to
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symbolic encoded data into its electronic document form. Reboulet Decl. (EX1003)
at 54.
[12(c)] means for retrieving the information resource identified by the digital
data.
digital data would have required performing the recited function of retrieving the
information resource identified by the digital data and the corresponding structure
would have at least included a computer performing the steps of: (1) activating a
identified by digital data, and (3) presenting the information resource, and
sent to a search engine residing in the computer system to execute and retrieve the
requested document and display the requested document on an output device. Id.
at 4:4-14, 4:56-60. Therefore, Laszlo teaches the three-step process of (1) activating
identified by digital data, and (3) presenting the information resource. Id. at 2:35-
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Claim 13:
13. The system of claim 12 wherein the digital data comprises one or more
hyperlinks.
Laszlo in view of Zdybel renders this claim obvious. See supra Sec. IV.D.ii
at Claim 2.
15. The system of claim 12 wherein the human readable indicia provides an
indication of a composition of the digital data.
Zdybel teaches printing machine readable digital representations of electronic
documents and human readable renderings of the document on the same recording
medium (e.g. paper) using the same printing process. Zdybel at 5:13-33. A human
IV.D.i at [1(a)].
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[20(b)] extracting an address of the information resource from the machine
readable indicia; and
Laszlo teaches this limitation and, alternatively, Laszlo in view of Zdybel
renders obvious this limitation. See supra Sec. IV.D.iii at limitations [3(a)-3(b)].
Claims 22-23:
that claim 22 contains an obvious error, and should read The method of claim
control code to perform the function of printing the electronic document. Laszlo
(EX1007) at 3:57-4:3 (print document); see also id. at 3:20-61, 4:31-37, 4:23-25.
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V. CONCLUSION
Petitioner respectfully requests that claims 1-4, 6-18 and 20-24 of the 807
Patent be cancelled.
Respectfully submitted,
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VI. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(A)(1)
A. Real Party-In-Interest
participation in this proceeding, the filing of this petition, or the conduct of any
ensuing trial.
B. Related Matters
The 807 Patent has been the subject of the following patent infringement
lawsuits:
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Kaldren LLC v. Cigna Corporation 1-17-cv-01160 DED
Kaldren LLC v. The Northwestern Mutual 2-17-cv-00916 WIED
Life Insurance Company
Kaldren LLC v. Western States Envelope 2-17-cv-00917 WIED
Company
Kaldren LLC v. Woodway USA, Inc. 2-17-cv-00918 WIED
Kaldren LLC v. AbbVie Inc. 1-17-cv-04991 ILND
Kaldren LLC v. Allstate Insurance 1-17-cv-04992 ILND
Holdings LLC
Kaldren LLC v. Anixter Inc. 1-17-cv-04998 ILND
Kaldren LLC v. Medline Industries, Inc. 1-17-cv-05000 ILND
Kaldren LLC v. Signode Industrial Group 1-17-cv-05001 ILND
LLC
Kaldren LLC v. Marinette Marine 1-17-cv-00914 WIED
Corporation
Kaldren LLC v. PNY Technologies, Inc. 2-17-cv-04439 NJD
Kaldren LLC v. Kik US, Inc. 1-17-cv-00752 DED
Kaldren LLC v. Snap Inc. 1-17-cv-00753 DED
Kaldren LLC v. American Express 1-17-cv-03625 NYSD
Company
Kaldren LLC v. The Hain Celestial Group, 1-17-cv-03638 NYSD
Inc.
Kaldren LLC v. HSBC USA, Inc. 1-17-cv-03640 NYSD
Kaldren LLC v. JP Morgan Chase & Co. 1-17-cv-03641 NYSD
Kaldren LLC v. PNY Technologies, Inc. 1-17-cv-03644 NYSD
Kaldren LLC v. Citigroup Inc. 5-17-cv-00066 TXED
Kaldren LLC v. General Mills, Inc. 5-17-cv-00067 TXED
Kaldren LLC v. J.D. Power and 5-17-cv-00068 TXED
Associates, Inc.
Kaldren LLC v. NeilMed Pharmaceuticals, 5-17-cv-00069 TXED
Inc.
Kaldren LLC v. Pioneer Electronics 5-17-cv-00070 TXED
(USA), Inc.
Kaldren LLC v. The Proctor & Gamble 5-17-cv-00071 TXED
Company
Kaldren LLC v. SunTrust Banks, Inc. 5-17-cv-00072 TXED
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C. Lead and Back-Up Counsel Under 37 C.F.R. 42.8(b)(3)
lead and back-up counsel. 37 C.F.R. 42.8(b)(3) and (b)(4). Jason Mudd will serve
as lead counsel. Ashraf Fawzy will serve as first back-up counsel. Eric Buresh and
Roshan Mansinghani will serve as additional back-up counsel. Please direct all
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D. Payment of Fees Under 37 C.F.R. 42.103
this Petition authorizing the Office to charge fees required under 37 C.F.R.
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APPENDIX OF EXHIBITS
CERTIFICATE OF COMPLIANCE
Further, a complete and entire copy of this Petition for Inter Partes Review
and the accompanying exhibits were also served on Patent Owner by sending via
Federal Express to the below address, which Nixon Peabody LLP has represented
as the current address for recently merged operations of its San Francisco and Palo
Alto operations:
Further, a courtesy copy of this Petition for Inter Partes Review was sent via
e-mail to Patent Owners litigation counsel: