Sound View '860 Reexam Request

Request for Ex Parte Reexamination, U.S.
Patent 8,135,860
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re patent of §
Michael Kenneth Brown et al. § Attorney Docket No.: SOU860
§
U.S. Patent 8,135,860 §
§
Issue Date: March 13, 2012 § Customer No.: 165774
§
Filing Date: July 20, 2000 §
§
For: CONTENT INTERPOLATING §
WEB PROXY SERVER §
§
REQUEST FOR EX PARTE REEXAMINATION OF

U.S. PATENT 8,135,860
Mail Stop “Ex Parte Reexam”

Attn: Central Reexamination Unit
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Dear Commissioner:
Pursuant to the provisions of 35 U.S.C. §§ 301-307, Unified Patents, LLC (“Requester”)

hereby requests an ex parte reexamination of claims 1-3, 5, 7, 8, 10, 13, and 18 (the “Challenged
Claims”) of U.S. Patent 8,135,860 (“the ’860 Patent,” Ex. 1001), which issued on March 13, 2012
to Michael Kenneth Brown et al., resulting from U.S. Patent Application 09/620,495, filed on July
20, 2000.1 The ’860 Patent is presently assigned to Sound View Innovations, LLC (“Sound View”
or “Patent Owner”). The assignment to Sound View is recorded in the U.S. Patent and Trademark
Office (“USPTO”) at reel/frame 033416/0763.
Requester submits that this Request presents prior art references and analyses that are
noncumulative of the prior art that was before the Examiner during the original prosecution of
1
The ’860 Patent’s earliest claimed priority date is before March 16, 2013. Accordingly, Pre-
America Invents Act (AIA) statutory framework applies.
Request for Ex Parte Reexamination, U.S. Patent 8,135,860
the ’860 Patent and that the Challenged Claims of the ’860 Patent are invalid over these references.
Requester therefore requests that an order for reexamination and an Office Action rejecting the
Challenged Claims be issued.
ii
Ex Parte Patent Reexamination Filing Requirements

Pursuant to 37 C.F.R. § l.510(b)(l), statements pointing out at least one substantial new
question of patentability based on material, non-cumulative reference patents and printed
publications for the Challenged Claims of the ’860 Patent are provided in Section I of this Request.
Pursuant to 37 C.F.R. § l.510(b)(2), reexamination of the Challenged Claims of the ’860
Patent is requested, and a detailed explanation of the pertinence and manner of applying the cited
references to the Challenged Claims is provided in Section II of this Request and the attached
Exhibit AA.
Pursuant to 37 C.F.R. § 1.510(b)(3), copies of every patent or printed publication relied
upon or referred to in the statement pointing out each substantial new question of patentability or
in the detailed explanation of the pertinence and manner of applying the cited references are
provided as Exhibits 1001-1025 and AA of this Request.
Pursuant to 37 C.F.R. §1.510(b)(4), a copy of the ’860 Patent is provided as Exhibit 1001
of this Request, along with a copy of any disclaimer, certificate of correction, and reexamination
certificate issued corresponding to the patent.
Pursuant to 37 C.F.R. § 1.510(b)(5), the attached Certificate of Service indicates that a
copy of this Request, in its entirety, has been served on Patent Owner at the following address of
record for Patent Owner, in accordance with 37 C.F.R. § l.33(c):
Botos Churchill IP Law LLP
430 Mountain Avenue, Suite 401
New Providence, NJ 07974
Also submitted herewith is the fee set forth in 37 C.F.R. § l.20(c)(1).
Pursuant to 37 C.F.R. § 1.510(b)(6), Requester hereby certifies that the statutory estoppel
provisions of 35 U.S.C. § 315(e)(l) and 35 U.S.C. § 325(e)(l) do not prohibit Requester from filing
this ex parte patent reexamination request.
iii
TABLE OF CONTENTS
I. SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY ............................................. 1
A. U.S. PATENT 8,135,860 ....................................................................................................... 1

1. Summary ......................................................................................................................... 1
2. Prosecution History ......................................................................................................... 5
B. PREVIOUS POST-GRANT PROCEEDINGS INVOLVING THE ’860 PATENT ................................. 7
1. The ’003 proceeding ....................................................................................................... 7
2. The ’005 proceeding ....................................................................................................... 8
C. CLAIM CONSTRUCTION ........................................................................................................ 9
1. Analysis of Certain Claim Terms ................................................................................. 10
2. Means-Plus-Function .................................................................................................... 14
D. LISTING OF PRIOR ART PATENTS AND PRINTED PUBLICATIONS ......................................... 14
E. SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY .......................................................... 16
1. Ground 1: XML Enabler in view of Pardi Presents Substantial New Questions of
Patentability (Claims 1-3, 5, 7, 8, 10) ................................................................................... 16
2. Ground 2: XML Enabler in view of Szlam Presents Substantial New Questions of
Patentability (Claim 13) ........................................................................................................ 24
3. Ground 3: XML Enabler in view of Pardi and Adams Presents Substantial New
Questions of Patentability (Claim 18)................................................................................... 29
4. Ground 4: XML Enabler in view of Pardi and Smith Presents Substantial New
Questions of Patentability (Claim 18)................................................................................... 33
II. DETAILED APPLICATION OF THE PRIOR ART TO EVERY CLAIM FOR WHICH
REEXAMINATION IS REQUESTED ........................................................................................ 37
A. PROPOSED REJECTIONS OF THE CLAIMS ............................................................................. 37

B. SECONDARY CONSIDERATIONS .......................................................................................... 38
III. DISCLOSURE OF CONCURRENT LITIGATION AND REEXAMINATION

PROCEEDINGS ........................................................................................................................... 38
IV. CONCLUSION ................................................................................................................. 38
APPENDIX A – LIST OF PRIOR AND CONCURRENT PROCEEDINGS ............................. 39
iv
TABLE OF EXHIBITS
Exhibit Description
Ex. 1001 U.S. Patent 8,135,860
Ex. 1002 File History of U.S. Patent 8,135,860
Ex. 1003 Declaration of Dr. Philip Greenspun
Ex. 1004 Web page from the www.alphaworks.ibm.com website describing

XML Enabler software, archived by the Internet Archive on May 8,
1999 (“XML Enabler”)
Ex. 1005 XML in Action by William Pardi (“Pardi”)
Ex. 1006 U.S. Patent 6,359,892 (“Szalm”)
Ex. 1007 Transcoding Internet Content for Heterogeneous Client Devices (May
1998) by John R. Smith et al. (“Smith”)
Ex. 1008 Excerpts from Microsoft Computer Dictionary (4th ed. 1999)
Ex. 1009 Web Publisher’s Construction Kit with HTML 3.2 (1996) by David Fox
et al. (“Fox”)
Ex. 1010 IPR2017-01003, Decision on Institution (Paper 14)
Ex. 1011 IPR2017-01003, Order Terminating Trial (Paper 38)
Ex. 1012 IPR2017-01005, Decision on Institution (Paper 13)
Ex. 1013 Declaration of Christopher Butler, Office Manager at Internet Archive,

IPR2017-01003
Ex. 1014 Excerpts from InfoWorld Magazine discussing XML Enabler (April 5,
1999)
Ex. 1015 InfoWorld article entitled “XML tools to relieve Web pains” dated
April 5, 1999, retrieved from LexisNexis
Ex. 1016 Date stamp (Library of Congress) - Pardi
Ex. 1017 Date stamp (University of California, Davis Library) - Smith
Ex. 1018 Sound View Innovations, LLC v. Facebook, Inc., 1:16-CV-00116, Joint
Claim Construction Brief, Docket No. 82
Ex. 1019 Sound View Innovations, LLC v. Facebook, Inc., 1:16-CV-00116,

Claim Construction Memorandum Opinion, Docket No. 100
v
Exhibit Description
Ex. 1020 Linux Journal - Diff, Patch, and Friends (August 1, 1996) by Michael
K. Johnson
Ex. 1021 Excerpts from Running Linux by Matt Walsh et al. (3rd Edition 1999)
Ex. 1022 U.S. Patent 6,950,857
Ex. 1023 U.S. Patent 6,457,030
Ex. 1024 Hypertext Transfer Protocol – HTTP/1.0, Network Working Group,

Request for Comments (May 1996)
Ex. 1025 Apache: The Definitive Guide, Second Edition (February 1999)
Ex. AA Claim chart comparing challenged claims to cited prior art references
vi
I. SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY
Prior to describing the substantial new questions of patentability presented in this Request,
provided below is an overview of the ’860 Patent and its file history, a discussion of claim
construction, and a summary of the prior art cited in the present Request.
A. U.S. Patent 8,135,860
1. Summary
The ’860 patent is directed to “techniques for communicating information” over the
Internet and other computing networks, and in particular, “processing retrieved web content so as
to place it in a format suitable for presentation on a particular client device.” Ex. 1001, Abstract,
1:6-9. Copies of the ’860 patent and its file history are provided as Exhibits 1001 and 1002,
respectively.
For reference, all of the claims for which reexamination is requested are reproduced below.
In general, independent claim 1 recites an apparatus comprising at least one server that alters
retrieved web content, identified in a client request generated by a client device, in accordance
with one or more augmentation files, where the server parses the retrieved web content into one or
more component structures and applies a pattern matching process to recognize designated
component structure subject to alteration in accordance with the one or more augmentation files.
Independent claim 13 recites an apparatus having similar recitations to claim 1, but where a client
device comprises a virtual client device. Independent claim 18 recites a processing system having
similar recitations to claim 1, but includes a web server operative to store web content and specifies
that an interpolating proxy server performs the altering of the web content.
1. An apparatus for use in a computer network, the apparatus comprising:

at least one server within the network, the server being operative to process a client
request generated by a client device to determine a particular client type associated with
the client device, to retrieve web content identified in the client request, to retrieve one or
more augmentation files associated with at least one of the web content and the particular
client type, and to alter the retrieved web content in accordance with the one or more
augmentation files, wherein the altered web content is delivered to the client device;
1
wherein the server parses the retrieved web content into one or more component
structures, and subsequently applies a pattern matching process to recognize designated
component structure subject to alteration in accordance with the one or more augmentation
files; and
wherein the pattern matching process comprises comparing a given one of the
component structures of the retrieved web content to predetermined component structures
represented by respective tokens in the one or more augmentation files.
2. The apparatus of claim 1 wherein the client device comprises at least one of a computer,
a personal digital assistant, a wireless telephone and a voice browser-equipped device.
3. The apparatus of claim 1 wherein the web content is at least partially in at least one of
an HTML format and an XML format.
5. The apparatus of claim 1 wherein at least one of the augmentation files comprises a patch
file.
7. The apparatus of claim 1 wherein the server determines the client type using at least one
of an HTTP header element, a client-identifying cookie, and an HTTP GET request
QUERY_STRING attribute.
8. The apparatus of claim 1 wherein the pattern matching process utilizes a pattern
matching expression comprising context, pattern, precedence and replacement elements.
10. The apparatus of claim 8 wherein the precedence element specifies an order of
application of the instructions associated with the context element.
13. An apparatus for use in a computer network, the apparatus comprising:

at least one server within the network, the server being operative to process a client
request generated by a client device to determine a particular client type associated with
the client device, to retrieve web content identified in the client request, to retrieve one or
2
more augmentation files associated with at least one of the web content and the particular
client type, and to alter the retrieved web content in accordance with the one or more
augmentation files, wherein the altered web content is delivered to the client device;
wherein the client device comprises a virtual client device having a combination of
a plurality of different sets of features provided by multiple distinct physical client devices.
18. A processing system comprising:

a web server operative to store web content; and
an interpolating proxy server at least temporarily coupled to the web server and
operative to process a client request generated by a client device to determine a particular
client type associated with the client device, to retrieve web content identified in the client
request and stored on the web server, to retrieve one or more augmentation files associated
with the web content and the particular client type, and to alter the retrieved web content
in accordance with the one or more augmentation files, wherein the altered web content is
delivered to the client device;
the interpolating proxy server being further operative to parse the retrieved web
content into one or more component structures, and subsequently to apply a pattern
matching process to recognize designated component structure subject to alteration in
accordance with the one or more augmentation files;
wherein the pattern matching process comprises comparing a given one of the
represented by respective tokens in the one or more augmentation files.
3
Figure 1 of the ’860 patent, reproduced below, shows an illustrative web-based processing
system 100 that implements the concepts recited in the Challenged Claims.
Ex. 1001, Fig. 1

Web-based processing system 100 includes interpolating proxy server 102 “configured to
support communications between a set of client devices 104 and a web server 106.” Ex. 1001,
3:11-15, 26-27. Client devices 104 can be, for example, PDA 110, wireless telephone 112, and
personal computer 114. Id., 3:15-18, 21-25. Web server 106 can include “a number of web content
databases, including HyperText Mark-up Language (HTML) database 120, a voice-augmented
HTML (VHTML) database 122, and a PDA database 124.” Id., 3:18-25.
Interpolating proxy server 102 “is able to identify the type of client with which it is
communicating, and to interpolate web content to be delivered from the web server 106 to that
client such that the content is presented in a format appropriate to the particular client device.” Ex.
1001, 3:53-58. For example, HTML content can be interpolated “in accordance with PDA-
augmented information so as to provide an appropriate PDA interface to the web content via the
PDA 110.” Id., 3:58-64. The ’806 patent explains that the term “interpolating” is “intended to
4
include operations such as transcoding or translation, as well as other types of processing

operations involving web content.” Id., 3:30-33. In operation, interpolating proxy server 102
performs “editing and other interpolation processes” using “a manner similar to the patch facility
commonly used in updating UNIX source code, for which many supporting tools are known in the
art.” Id., 4:31-36. Here, for example, when an input pattern in a target file (e.g., web content such
as a web page) matches a certain character string, a corresponding output script can be inserted
into the target file as a replacement for the input pattern. Id., 4:36-40. The target file can be parsed
into “component structures,” where pattern matching is used to compare the component structures
to known structures. Id., 5:12-25. When a match occurs, the matching parsed component structures
can be replaced. Id., 5:26-32.
2. Prosecution History
The ’860 patent issued on March 13, 2012 from U.S. Patent Application 09/620,495, filed
on July 20, 2000.2 Ex. 1001, Cover Page. A brief overview of salient events during prosecution is
provided below.
a. Independent Claims 1 and 18
During prosecution, the applicant amended independent claim 1 to recite:
“wherein the server parses the retrieved web content into one or more
component structures, and subsequently applies a pattern matching process to
recognize designated component structure subject to alteration in accordance with
the one or more augmentation files;” and
“wherein the pattern matching process comprises comparing a given one of
the component structures of the retrieved web content to predetermined component
structures represented by respective tokens in the one or more augmentation files.”
2
The ’860 patent’s bibliographic information claims the patent is subject to 3777 days of patent
term adjustment. Ex. 1001, Cover Page.
5
Ex. 1002, 79-84 (Amendment dated December 4, 2003), 146-152 (Amendment dated June 27,
2005). Independent claim 18 was similarly amended. Id.
The applicant argued that U.S. Patent 6,626,958 (McCauley) did not disclose or suggest
these amended recitations, stating that McCauley’s “dispatcher 40 of the server application
program 17 simply determines page renderers based on browser capabilities or other
characteristics of the requesting clients” and does not perform a pattern matching process as
claimed. Ex. 1002, 127 (Response dated October 6, 2004), 154-155 (Amendment dated June 27,
2005), 286 (Appeal Brief dated September 5, 2006). The applicant further distinguished the
claimed pattern matching over McCauley’s “matching of HTML characteristics of a client to
HTML characteristics of a pane renderer.” Id., 329-330 (Reply Brief dated February 14, 2007).
The Examiner maintained his rejection of claims 1 and 18 over McCauley, but the Board found
the Applicant’s argument persuasive on appeal and the Examiner subsequently allowed the claims.
Id., 348-356 (Appeal Decision), 357-364 (Notice of Allowance dated November 10, 2011).
But the pattern matching process recited in independent claims 1 and 18, as well as the
other recited elements, is disclosed or at least suggested by the prior art references relied upon in
this Request. See, e.g., Ex. AA, claim 1, claim 18. This raises substantial new questions of
patentability with respect to the ’860 patent.
b. Independent Claim 13
Independent claim 13 includes the following recitation:
“wherein the client device comprises a virtual client device having a

combination of a plurality of different sets of features provided by multiple distinct
physical client devices.”
Regarding the term “virtual,” the applicant explained during prosecution that it “means
something other than a physical device” and that it is “something that is simulated or artificially
created.” Ex. 1002, 110 (Response dated April 8, 2004), 153-154 (Amendment dated June 27,
2005). For these reasons, the applicant distinguished the claimed “virtual client device” over the
“actual physical devices” of U.S. Patent 6,421,733 (“Tso”) and U.S. Patent 6,167,441 (“Himmel”),
6
and the “actual client device” of McCauley and U.S. Patent 6,216,159 (“Chintakrindi”). Ex. 1002,
110, 128 (Response dated October 6, 2004), 153-154.
The Examiner maintained his rejection of claim 13 over McCauley alone, but the Board
found the Applicant’s argument persuasive on appeal and the Examiner subsequently allowed the
claims. Id., 348-356 (Appeal Decision), 357-364 (Notice of Allowance dated November 10, 2011).
But the “virtual client device” recited in independent claim 13, as well as the other recited
elements, is disclosed or at least suggested by the prior art references relied upon in this Request.
See, e.g., Ex. AA, claim 13. This raises substantial new questions of patentability with respect to
the ’860 patent.
B. Previous Post-Grant Proceedings involving the ’860 Patent
The ’860 patent has been the subject of two previous inter partes review proceedings:
IPR2017-01003 (“the ’003 proceeding”) and IPR2017-01005 (“the ’005 proceeding”). Requester
was not a party or otherwise involved in any of these proceedings.
1. The ’003 proceeding
The ’003 proceeding included the same references in unpatentability grounds as Grounds
1, 2, and 4 of this Request, challenging claims 1-3, 5, 7, 8, 10, 13, and 18 (the Challenged Claims)
of the ’860 patent. See IPR2017-01003, Decision on Institution (Paper 14), p. 3 (Ex. 1010).
However, the ’003 proceeding was terminated before the Patent Trial and Appeal Board (PTAB
or the “Board”) issued a final written decision. See IPR2017-01003, Order Terminating Trial
(Paper 38), pp. 3-4 (Ex. 1011). Accordingly, the “same question[s] of patentability as to the claim[s]
[] [have] not been decided by the Office in an earlier concluded examination or review of the patent”
because the ’003 proceeding was terminated before its conclusion – the issuance of a final written
decision. Id.; MPEP 2242. And none of the references in this Request were before the Office during
prosecution of the ’860 patent. Accordingly, the references cited herein have not been involved in
an earlier concluded examination or review of the ’860 patent by the Office, and substantial new
questions of patentability exist. MPEP 2242.
Regarding claims 1-3, 5, and 7, the Board instituted trial in the ’003 proceeding, finding
there was a reasonable likelihood the petitioner would prevail in showing those claims are
unpatentable using the same references as Ground 1 of this Request. See Ex. 1010, pp, 2, 28. This
7
determination by the Board supports a finding that substantial new questions of patentability exist
with respect to claims 1-3, 5, and 7 in Ground 1 of this reexamination.
The Board, however, declined to institute trial on claims 8 and 10 in the ’003 proceeding
because the petitioner’s declarant, Dr. Chatterjee, was found to have provided conflicting
testimony in his district court declaration and ’003 proceeding declaration with respect to the terms
“context element,” “pattern element,” and “replacement element” in claims 8 and 10, and the
petitioner relied on the conflicting testimony. Ex. 1010, p. 22. Requester has submitted a
declaration of Dr. Philip Greenspun (Ex. 1003) (“Greenspun”) with this Request, which discusses
“context element,” “pattern element,” and “replacement element” in claims 8 and 10 and how the
prior art of this Request discloses or at least suggests those terms. See Greenspun, ¶¶70-82. Dr.
Greenspun’s supporting testimony is well-reasoned and consistent with the remainder of
Requester’s positions presented herein. Accordingly, the issues associated with Dr. Chatterjee’s
declaration that were identified by the Board in the ’003 proceeding are not present here and
substantial new questions of patentability exist with respect to claims 8 and 10 in Ground 1.
The Board also declined to institute trial on claims 13 and 18, determining that the
petitioner had not “explained sufficiently how Szlam teaches a virtual client having a combination
of different sets of features” for claim 13 and not “explained adequately how XML Enabler, Pardi,
and Smith teaches a server operative to retrieve the XSL stylesheet associated with the XML
document” for claim 18. Ex. 1010, pp. 24, 28 (italics in original). Exhibit AA of this Request
provides a detailed analysis that explains how Szlam teaches a virtual client having a combination
of different sets of features for claim 13 and how XML Enabler, Pardi, and Smith teach a server
operative to retrieve the XSL stylesheet associated with the XML document for claim 18, and these
references have been cast in a new light by Requester. See Ex. AA, claims 13 and 18 (Grounds 2,
4). Accordingly, substantial new questions of patentability exist with respect to claims 13 and 18
in Grounds 2 and 4.
2. The ’005 proceeding
The ’005 proceeding did not include any of the unpatentability grounds used in this Request.
See IPR2017-01005, Decision on Institution (Paper 13), pp. 2-3 (Ex. 1012). The PTAB declined
to institute trial in the ’005 proceeding. Id.
8
C. Claim Construction
The ’860 patent is subject to 3777 days of PTA and has not yet expired. Thus, the claims
must be given their “broadest reasonable interpretation consistent with the specification.” See
MPEP § 2258; In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984). This Request
presents the following claim analysis in a manner that is consistent with the broadest reasonable
interpretation of the claims.
The table below contains the ’860 patent claim terms that were analyzed by the court for
construction under the narrower Phillips standard during district court litigation. See Ex. 1019, p.
2. While the analysis and/or ordered constructions is not binding on the patent office, it is
nonetheless informative in determining the proper scope of the claims. See, e.g., Power
Integrations, Inc. v. Lee, 797 F.3d 1318, 1143 (Fed. Cir. 2007) (“[T]he board is not generally
bound by a prior judicial construction of a claim term”); see also In re Trans Texas Holding Corp.,
498 F.3d 1290, 1298 (Fed. Cir. 2007). The analysis and ordered construction is consistent with the
broadest reasonable interpretation of the claims, or at least fall within the scope of the broadest
reasonable interpretation. A copy of the claim construction order that issued during the litigation
is included as Exhibit 1019. See Ex. 1019, pp. 25-29. The cited prior art discloses or at least
suggests the terms, whether they are construed or not. Greenspun, ¶¶41-42.
Litigation Term Construed Construction Ordered

Sound View Innovations, LLC “server” (claims 1 and 13) No construction necessary
v. Facebook, Inc., 1:16-cv- “virtual client device” (claim “simulated or artificially
00116, D.Del 13) created client device”
“interpolating proxy server” No construction necessary
(claim 18)
The Board also made preliminary claim construction rulings for certain terms in the ’003
proceeding and the ’005 proceeding institution decisions, shown in the below table. See Ex. 1010,
pp. 8-9; Ex. 1012, pp. 6-7. There, terms of the ’860 patent were analyzed under the broadest
reasonable interpretation standard, which is the same standard as this reexamination. See, e.g., Ex.
1010, p. 8. Again, this analysis is not binding on the patent office, but it is informative in
9
determining the proper scope of the claims. The cited prior art discloses or at least suggests the
terms, whether they are construed or not. Greenspun, ¶¶41-42.
IPR Proceeding Term Construed Preliminary Construction

Facebook, Inc. v. Sound View “web content” (claims 1, 3, 13, “one or more documents, files,
Innovations, LLC (IPR2017- 18) web pages, or any other type or
01003) (IPR2017-01005) arrangement of information
(Patent Trial and Appeal accessible over the World
Board) Wide Web, over other portions
of the Internet, or over other
types of communication
networks”
“augmentation file” (claims 1, “an interpolation script,
5, 13, 18) auxiliary content file, patch file
or any other type of
information which defines a
translation, alteration or other
type of interpolation for at
least a portion of a requested
pieced of web content”
Requester provides further analysis of claim terms below that do not necessarily require
construction but are discussed in the ’860 patent as having exemplary usages that fall under a
broadest reasonable interpretation. The cited prior art discloses or at least suggests the terms,
whether they are construed or not. Greenspun, ¶¶41-42.
1. Analysis of Certain Claim Terms
a. “patch file” (claim 5)
Dependent claim 5 recites “at least one of the augmentation files comprises a patch file.”
Ex. 1001, claim 5. The patent does not provide an explicit definition of “patch file.” But the ’860
patent describes a “patch file” as serving substantially the same purpose as the claimed
10
“augmentation file,” discussed above. For example, the following passage from the specification
suggests that the two terms are synonymous:
“The interpolating proxy server 102 can identify the client device type using any of a
number of different techniques, such as, e.g., HyperText Transfer Protocol (HTTP)
User_Agent and Content_Type protocol headers, client-identifying “cookies,” or HTTP
GET request QUERY_STRING attributes. Once identified, a particular client type is
associated with an auxiliary content file type that is designated by a file name extension.
These auxiliary content files are also referred to herein as patch files or more generally as
augmentation files.”
Ex. 1001, 3:65-4:7 (underlining and boldface added).
The ’860 patent goes on to describe a “patch file” by reference to a “patch facility” used in
the UNIX operating system. Ex. 1001, 4:32-51. The term “patch” in the context of UNIX refers to
a feature that allows the content of a document to be changed based on the differences between
that document and a second document, such as an updated version of the document. Greenspun,
¶¶43-45. As further explained in the specification of the ’860 patent:
“Server-side editing and other interpolation processes implemented by the interpolating
proxy server 102 may be performed in a manner similar to the patch facility commonly
used in updating UNIX source code, for which many supporting tools are known in the art.
The basic patch facility operates by identifying target file line numbers and input patterns
to be searched. When an input pattern matches a character string, a corresponding output
script is inserted as replacement. This approach is suitable for source code patching, and
could be used for an editing process implemented in the interpolating proxy server.
In addition to the above-described patching capability that replaces a pattern with a new
string, transformations on the text can be computed using any one of variety of suitable
programming languages to create patching functions. Such patching functions can modify
a target web page and aggregate content from several other pages of HTML or other web
content to produce a single virtual page. Possible uses of the patching functions include
summarization of a web site, or subset of a web site, into a single summary page.”
’860 patent, 4:32-51 (underlining added).
11
The first paragraph above suggests that a “patch file” facilitates a string match-and-replace
feature, but the second paragraph indicates that the term, under its broadest reasonable
construction, is not so limited and encompasses more general transformations to documents. In
light of the passages of the specification quoted above, the broadest reasonable construction of
“patch file” encompasses a file that specifies a replacement or transformation of an input pattern.
Greenspun, ¶¶42, 45-46. The cited prior art discloses or at least suggests this term, whether it is
construed or not. Id.
b. “interpolating proxy server” (claim 18)
The term “interpolating proxy server” is recited in independent claim 18. Ex. 1001, claim
18. The concept of a “proxy server” (sometimes just called a “proxy”) was well known to persons
of ordinary skill in the art long before the ’860 patent. Greenspun, ¶¶47-49. Generally speaking, a
proxy is a computer or process that sits “between” a client device and a particular server (such as
a web server) on the network. Id. When the client device issues a request to access a resource on
the server, the proxy receives that request and can respond in a number of ways. For instance, the
proxy can retrieve requested content from a server and deliver it in original or modified form to
the requesting client device. Id. As such, a proxy can be used to perform content filtering by
removing harmful or otherwise undesirable content before delivery to a requesting client. Id. The
Background of the ’860 patent also acknowledges that proxy servers, including proxy servers that
perform transformations on web content, existed in the prior art. Ex. 1001, 1:13-19. Thus, an
explicit construction of “proxy server” itself is unnecessary. Greenspun, ¶49.
The term “interpolating proxy server,” however, appears to have been coined for purposes
of the ’860 patent. Greenspun, ¶50. The ’860 patent provides an express definition of the term
“interpolating” as follows:
“The proxy server 102 is referred to in conjunction with the illustrative embodiments as an
‘interpolating’ proxy server. It should be understood that the term “interpolating” as used
herein is intended to include operations such as transcoding or translation, as well as other
types of processing operations involving web content.”
Ex. 1001, 3:28-33 (underlining added).
Thus, based on this express definition, the term “interpolating proxy server” under its
broadest reasonable construction encompasses a proxy server that performs transcoding,
12
translation, or other types of processing operations involving web content. Greenspun, ¶¶42, 50-
51. The cited prior art discloses or at least suggests this term, whether it is construed or not. Id.
c. “virtual client device” (claim 13)
The ’860 patent specification does not disclose an express definition of “virtual client
device,” recited in claim 13. Ex. 1001, claim 13. The specification provides an example of “a
‘virtual client’ type that may be a combination of different sets of features provided by multiple
distinct physical client devices, such as the PhoneBrowser 204 and the WAP telephone 210.” Id.,
7:67-8:4. The specification further states that a client request can be treated “as originating in a
single virtual device incorporating features of multiple distinct physical devices.” Id., 8:42-45.
As noted above, during the prosecution of the ’860 patent, the applicant stated that a virtual
client device “means something other than a physical device” and is “something that is simulated
or artificially created.” Ex. 1002, 110 (Response dated April 8, 2004), 153-154 (Amendment dated
June 27, 2005). The broadest reasonable interpretation of “virtual client device,” in light of the
intrinsic record, therefore encompasses a simulated or artificially created client device, consistent
with the statements from the file history noted above.3 Greenspun, ¶¶42, 52-54. The cited prior art
discloses or at least suggests this term, whether it is construed or not. Id.
d. “one or more augmentation files associated with at least one of

the web content and the particular client type” (claims 1, 13)
Claims 1 and 13 include this recitation and the applicant explained its meaning during
prosecution. Ex. 1001, claims 1, 13; Ex. 1002, 153. First, the applicant stated that the phrase “at
least one of the web content and the particular client type” is in a form of “at least one of A and
B” and therefore has a meaning of “A alone, B alone, or both A and B.” Id. Referring to the claim
language, the applicant explained that the recitation therefore refers to “association with either the
web content, the particular client type, or both the web content and the particular client type.” Id.
Second, the applicant stated that the phrase “associated with” is “indeed broad” and that there is
not “any reasonable ground upon which it should be narrowly construed as ‘stored with.’” Id. The
3
In district court litigation involving the ’860 patent, the court adopted the same construction. See
Sound View Innovations, LLC v. Facebook, Inc., 1:16-CV-00116, Memorandum, Docket No. 100,
pp. 26-27.
13
applicant noted that the phrase encompasses “augmentation files and web content [] stored
remotely from one another, but with appropriate linkage via identifiers, tables, etc.” Id. The
broadest reasonable interpretation of ““one or more augmentation files associated with at least one
of the web content and the particular client type,” in light of the intrinsic record, therefore
encompasses one or more augmentation files associated with either web content, the particular
client type, or both the web content and the particular client type, consistent with the statements
from the file history noted above. Greenspun, ¶¶55-56. The cited prior art discloses or at least
suggests this term, whether it is construed or not. Id.
2. Means-Plus-Function
In district court litigation involving the ’860 patent, the Defendant asserted that the terms
“server” and “interpolating proxy server” should receive means-plus-function treatment. See
Sound View Innovations, LLC v. Facebook, Inc., 1:16-CV-00116, Joint Claim Construction Brief,
Docket No. 82, pp. 89-93, 96-100 (Ex. 1018). The court, however, declined to treat those terms as
means-plus-function terms. Ex. 1019, pp. 25-29.
A term is not presumed to be a means-plus-function term when it does not employ the word
“means.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (quoting Watts v. XL Sys., Inc.,
232 F.3d 877, 880 (Fed. Cir. 2000)) (When a claim term lacks the term “means,” §112, sixth
paragraph will apply only if “the claim term fails to ‘recite[] sufficiently definite structure’ or else
recites ‘function without reciting sufficient structure for performing that function.’”). The
Challenged Claims do not recite the term “means,” so their terms are not presumed to be means-
plus-function terms. And the terms in the Challenged Claims do not fail to recite sufficiently
definite structure or recite function without sufficient structure for performing that function.
Greenspun, ¶57. Accordingly, terms of the Challenged Claims should not be treated as means-
plus-function terms.
D. Listing of Prior Art Patents and Printed Publications
Reexamination of the Challenged Claims is requested in view of the following references:

• Ex. 1004 (“XML Enabler”), a web page from www.alphaworks.ibm.com describing XML
Enabler software archived by the Internet Archive on May 8, 1999, which therefore qualifies
as prior art to the ’860 patent under at least 35 U.S.C. §§ 102(a) and 102(b). XML Enabler’s
14
public availability as of at least May 8, 1999 is corroborated by Exhibits 1013 (Declaration of

Christopher Butler, Office Manager at Internet Archive), 1014 (Excerpts from InfoWorld
Magazine discussing XML Enabler, dated April 5, 1999), and 1015 (InfoWorld article
discussing XML Enabler retrieved from LexisNexis, dated April 5, 1999), which were filed in
IPR2017-01003 to corroborate this public availability, and which the PTAB credited as
establishing the public availability of XML Enabler when instituting trial. See Ex. 1010, 13-
14.
• Ex. 1005 (“Pardi”), XML in Action by William Pardi, a textbook publicly available as of at
least May 1999, which therefore qualifies as prior art to the ’860 patent under at least 35 U.S.C.
§§ 102(a) and 102(b). Pardi’s public availability of at least May 1999 is corroborated by
Exhibit 1016, which shows a Library of Congress date stamp of “May 05 1999” on the Pardi
textbook’s cover page and was filed in IPR2017-01003 to corroborate this public availability.
The PTAB concluded that Pardi qualified as prior art when instituting trial in IPR2017-01003
because it instituted grounds using Pardi as a reference. See Ex. 1010, 21, 29.
• Ex. 1006 (“Szlam”), U.S. Patent 6,359,892 to Alexsander Szlam, which was filed on
November 24, 1997 and claims priority to a U.S. Provisional Patent Application 60/064,251,
filed November 4, 1997, and which published on March 19, 2002. Szalm qualifies as prior art
to the ’860 patent under at least 35 U.S.C. § 102(e) as of its November 24, 1997 filing date, as
well as its claimed priority date of November 4, 1997.
• Ex. 1007 (“Smith”), Transcoding Internet Content for Heterogeneous Client Devices by John
R. Smith et al., a paper that was publicly available as of at least May 1998, published in the
Proceedings of The IEEE 1998 International Symposium on Circuits and Systems. Smith
qualifies as prior art to the ’860 patent under at least 35 U.S.C. §§ 102(a) and 102(b) as of its
May 1998 publication date. Smith further qualifies as prior art to the ’860 patent under at least
35 U.S.C. §§ 102(a) and 102(b) as of its September 10, 1998 date stamp from the University
of California, Davis Library. Ex. 1017.
• Ex. 1023 (“Adams”), U.S. Patent 6,457,030 to Samuel S. Adams et al., which was filed on
January 29, 1999 and published on September 24, 2002. Adams qualifies as prior art to the
’860 patent under at least 35 U.S.C. § 102(e) as of its January 29, 1999 filing date.
15
None of the references listed above were cited during prosecution of the ’860 Patent. A
Form SB-08 and copies of the cited references are submitted herewith.
This request is also supported by the declaration of Dr. Philip Greenspun (Ex. 1003)
(“Greenspun”). To the extent that additional references are discussed in the declaration, copies of
these additional references are also being submitted, and are included on Form SB-08.
E. Substantial New Questions of Patentability
As shown below, Requester submits that the prior art references cited herein raise a new
“substantial question of patentability” because “the teaching of the (prior art) patents and printed
publications is such that a reasonable examiner would consider the teaching to be important in
deciding whether or not the claim is patentable.” See MPEP 2242. For example, the references
discussed below and in further detail in the attached charts, when considered as an ordered
combination, teach each element of the claims.
Further, the references are new because the “same question of patentability as to the claim
has not been decided by the Office in an earlier concluded examination or review of the patent”
for at least two reasons. First, none of the references in this request were before the Office during
prosecution of the ’860 patent. Second, while the references cited herein were used in IPR2017-
01003, a prior post-grant proceeding challenging claims of the ’860 patent, that prior proceeding
was terminated before its conclusion – the issuance of a final written decision. See Ex. 1011, pp.
3-4. Accordingly, the references cited herein have not been involved in an earlier concluded
examination or review of the ’860 patent by the Office, and substantial new questions of
patentability exist. See MPEP 2242. Greenspun, ¶58.
All prior post-grant proceedings challenging any claim of the ’860 Patent that are known
to Requester have been listed in Appendix A.
1. Ground 1: XML Enabler in view of Pardi Presents Substantial New

Questions of Patentability (Claims 1-3, 5, 7, 8, 10)
a. XML Enabler
XML Enabler is a 1999 article published on IBM’s alphaWorks web site describing a
“servlet” developed by IBM. Ex. 1004, p. 1. The term servlet refers to a program that runs on a
server. Microsoft Computer Dictionary (4th ed. 1999) (Ex. 1008), p. 404; Greenspun, ¶¶63-64.
16
The servlet utilizes XML and XSL technology to process client requests for web pages by
converting the web content into the appropriate format based on a client type of the requesting
client. Ex. 1004, 1. For instance, XML Enabler states that “any kind of browser” can “send requests
to a servlet and as the servlet responds, it formats the data using different XSL stylesheet” and
allows “any user of any browser to view and use XML data.” Id.; see also, id. (“the servlet gets
XML data from a data source, then formats that data using an XSL stylesheet”).
In operation, an HTTP request from a client device is received by the XML Enabler servlet.
Ex. 1004, p. 1. The servlet “[g]ets the XML document requested by the client” using “the URL of
that document” and “[l]ooks at the client type” associated with the document request by “using the
user-agent field of the HTTP header” in the request. Id. An XSL style sheet is then selected that
corresponds to the user-agent type, and the retrieved XML document and XSL style sheet are
“combined” such that the XML document has appropriate formatting for the client’s browser. Id.
The output XML document is then “returned to the client.” Id.
XML Enabler is analogous art to the ’860 patent; it is from the same field of endeavor as
the ’860 patent (techniques for communicating information between a client and server) and
reasonably pertinent to the particular problem the ’860 patent was trying to solve (addressing
compatibility issues when providing web content for various different client types). Ex. 1004, p.
1; Ex. 1001, 1:6-9, 1:45-49; Greenspun, ¶62.
XML Enabler qualifies as prior art to the ’860 patent under at least pre-AIA 35 U.S.C. §§
102(a) and 102(b). Indeed, it was published more than one year before the ’860 patent’s earliest
claimed priority date. XML Enabler is properly considered a printed publication under §§ 102(a)
and 102(b) because it was disseminated or otherwise made available so persons of ordinary skill
in the art, exercising reasonable diligence, could locate it. As noted above in the listing of prior art
section (Section I.D), XML Enabler was published on an on-line IBM resource known as
alphaWorks and the accompanying “Affidavit of Christopher Butler” from the Internet Archive
(Ex. 1013) explains that XML Enabler was publicly available for download from the alphaWorks
website by no later than May 8, 1999.4 Ex. 1013, p. 6. Because this date is more than one year
4
The “Internet Archive” provides a service known as the “Wayback Machine” that has
archived more than 450 billion web pages that were available on the Web, preserving them as they
existed at the time of capture. Ex. 1013, p. 1. The Wayback Machine records the date and time of
17
before the earliest filing date for the ’860 patent (July 20, 2000), XML Enabler qualifies as prior
art under pre-AIA 35 U.S.C. § 102(b). XML Enabler also qualifies as prior art under pre-AIA 35
U.S.C. § 102(a) as it was published before the ’860 patent’s July 20, 2000 filing date.
Other evidence corroborates that XML Enabler was publicly available by at least May
1999. For instance, an article from the April 5, 1999 issue of InfoWorld Magazine discusses XML
Enabler and directs its reader to the IBM alphaWorks website to view the publication. Ex. 1014,
p. 4; EX. 1015.
Thus, XML Enabler is a printed publication and qualifies as prior art to the ’860 patent
under at least pre-AIA 35 U.S.C. §§ 102(a) and 102(b).
b. Pardi
Pardi is a 1999 reference book titled “XML in Action” that describes practical applications
involving XML and the use of XSL stylesheets. See, e.g., Ex. 1005, pp. 23-24, 166-173. Pardi
explicitly explains many of the known concepts and implementation details discussed by XML
Enabler. For instance, Pardi describes that processing of an XML document parses the document
into constituent parts before an XSL stylesheet is used to apply formatting to the document. Id.,
pp. 81, 24. Pardi describes that the parsing process “creates a treelike structure of all the elements
included in the document.” Id., p. 84. Pardi further explains that “XSL style sheets describe the
process by which the output structure should be created,” and that “[a] style sheet consists of one
or more templates that contain patterns…templates provide a structure for the output document.”
Id., pp. 165-166. In the context of altering XML data (e.g., formatting it), Pardi explains that “XSL
uses patterns to specify the XML elements to which the XSL template applies” and [t]his method
of pattern matching makes XSL a declarative language as opposed to a procedural language…the
patterns describe the specific ‘branch’ in the document tree to match by identifying its hierarchical
structure within that tree.” Id., p.167.
Pardi further provides an example that illustrates code that implements pattern matching.
An XML document, XSL stylesheet, and resulting HTML output after processing are provided as
reproduced below:
capture and encodes it into the document’s Internet Archive URL. Id. Here, the Internet Archive
captured the webpage for XML Enabler on May 8, 1999. Id., 6 (showing “19990508” in the URL).
18
XML document input:
XSL stylesheet:
HTML output:
Ex. 1005, pp.167-168.

Pardi explains the pattern-matching process behind converting the XML document into
HTML using the XSL stylesheet, where “[e]ach template comprises one or more patterns.” Ex.
1005, p. 168. The two patterns included in the XSL stylesheet in this example are the
“CATALOG/PLANT” element and “COMMON” element provided in the excerpt below:
19
Regarding these two patterns, Pardi explains “[t]he first pattern specifies any Plant element that is
a child of the Catalog element…[t]he second pattern for this rule specifies the Common element.
The rule puts whatever data is found in the pattern element into a Span element and applies the
style ‘font-weight:bold; font-size:20’ to that Span element.” Id. Pardi explains that this rule directs
to “[r]epeat the following for every Plant element that is a child of the Catalog element: get the
value of its Common element and put that value into a Span element with a font weight of bold
and a font size of 20.” Id.; see also id., pp. 169-170.
Pardi is analogous art to the ’860 patent; it is from the same field of endeavor as the ’860
patent (techniques for processing data for presentation on a client device) and reasonably pertinent
to the particular problem the ’860 patent was trying to solve (addressing how to process data
content into a specified structure). Ex. 1005, pp. 165-167; Ex. 1001, 1:45-49, 3:30-33; Greenspun,
¶68.
c. Motivation to Combine XML Enabler and Pardi
Referring to Ex. AA, XML Enabler discloses, or at least suggests, claim 1’s elements
[1.pre]-[1.5]. See Ex. AA, elements [1.pre]-[1.5]. For claim 1’s elements, [1.6]-[1.8], XML
Enabler and Pardi are combined as follows. For element [1.6], to the extent XML Enabler does not
explicitly describe details of its transformation processing, Pardi describes those details, including
the parsing of “retrieved web content into one or more component structures.” See Ex. AA, element
[1.6]. For element [1.7], to the extent XML Enabler does not explicitly describe it, Pardi describes
to subsequently apply “a pattern matching process to recognize designated component structure
subject to alteration in accordance with the one or more augmentation files.” See Ex. AA, element
[1.7]. For element [1.8], to the extent XML Enabler does not explicitly describe it, Pardi discloses
or at least suggests “the pattern matching process comprises comparing a given one of the
20
represented by respective tokens in the one or more augmentation files.” See Ex. AA, element
[1.8].
For claim 5, to the extent XML Enabler does not explicitly disclose or suggest it, Pardi
discloses or at least suggests “wherein at least one of the augmentation files comprises a patch
file.” See Ex. AA, claim 5.
discloses or at least suggests “the pattern matching process utilizes a pattern matching expression
comprising context, pattern, precedence and replacement elements.” See Ex. AA, claim 8.
discloses or at least suggests “wherein the precedence element specifies an order of application of
the instructions associated with the context element.” See Ex. AA, claim 10.
For claim 18, element [18.4], to the extent XML Enabler does not explicitly disclose or
suggest it, Pardi discloses or at least suggests “augmentation files associated with web content.”
See Ex. AA, element [18.4].
A POSITA would have been motivated to combine the teachings of XML Enabler with
Pardi for at least the following reasons. Greenspun, ¶¶83-89.
(1) Teaching, suggestion or motivation (TSM)
As discussed, XML Enabler discloses that an HTTP request from a client device is received
by the XML Enabler servlet. Ex. 1004, p. 1. The servlet obtains the requested XML document,
determines a “client type” of the requesting client device, and selects an XSL stylesheet in
accordance with the client type for transforming the XML document so that the client device can
view the document in its browser. Id. After the XML document is transformed using the selected
stylesheet, it is output to the client device. Id.; Greenspun, ¶90.
XML Enabler describes parsing and pattern matching using XSL and describes the use of
standard XML and XSL technology. Ex. 1004, p. 1. To the extent XML Enabler does not explicitly
describe a tutorial regarding parsing and pattern matching that occurs in its transformation
processing using XSL stylesheets (in relation to elements [1.6]-[1.8], claims 8 and 10), an XSL
stylesheet (augmentation file) comprising a patch file (claim 5), or an XSL stylesheet
(augmentation file) associated with web content (claim 18), XML Enabler would have suggested
to and motivated a POSITA to look for implementation details regarding these concepts, at least
based on XML Enabler’s teachings of its content transformation process using XSL stylesheets.
21
Ex. 1001, p. 1; Greenspun, ¶91. A POSITA would have looked to Pardi in particular for
implementation details and characteristics regarding XSL stylesheets due to the significant overlap
in disclosure regarding XSL stylesheets in XML Enabler and Pardi, and the similarities between
the references. Greenspun, ¶91. For example, XML Enabler explains that it uses XSL stylesheets
to transform retrieved web content into an appropriate format for a client device. Ex. 1001, p. 1.
Pardi also describes the use of XSL stylesheets to transform web content and explicitly explains
further details of the process, including how the use of XSL stylesheets involves parsing content
into certain structures and pattern matching by comparing templates of the stylesheets to the parsed
structures to determine which parts of content need to be replaced. Ex. 1005, pp. 24, 81, 84, 165-
170. Pardi provides further details as to what the pattern matching entails and also that XSL
stylesheets are patch files that specify a replacement or transformation of an input pattern found in
web content. Id., pp. 165-170, 172, 175. Thus, XML Enabler’s teachings describing the use of
XSL stylesheets in manipulating web content would have motivated a POSITA to look for
implementation details in Pardi, a reference that also uses stylesheets and further explains their use
when transforming content and association with web content. Greenspun., ¶91.
At least due to the similarities between the references – both deal with the use of XSL
stylesheets to transform web content – and because the combination of XML Enabler and Pardi
would merely include programming the already existing server of XML Enabler with the
functionality of Pardi using Pardi’s explicitly described coding to process content, a POSITA
would have had a reasonable expectation of success in combining their teachings. Greenspun, ¶92;
supra, Section I.E.1.b. A POSITA would have known to consider applying Pardi’s functionality
for using XSL stylesheets (e.g., parsing content and using pattern matching) to XML Enabler’s
system that uses stylesheets to transform content, and so motivated, a POSITA would have looked
specifically to Pardi, in particular, because Pardi’s similar system provides details on how to
implement the functionality of using the XSL stylesheets described by XML Enabler. Greenspun,
¶92.
(2) Combining prior art elements according to
known methods to yield predictable results
A POSITA would have been further motivated to combine the teachings of XML Enabler
and Pardi by known methods to meet the claimed elements due to the substantial overlap of
teachings and improvements provided by the combination. Greenspun, ¶93.
22
As discussed above for the previous motivation, there is substantial overlap between XML
Enabler and Pardi because both describe the use of XSL stylesheets to transform web content into
a specific format. See Section I.E.1.c.(1). Pardi simply provides further explanation about the XSL
stylesheets and transformation process already described by XML Enabler. Id. Due to this overlap,
a POSITA would have readily been motived to enhance XML Enabler with the details discussed
by Pardi. Greenspun, ¶94.
Further, a POSITA would have combined XML Enabler’s teachings with the teachings of
Pardi due to the implementation efficiency that the combination would have provided. Greenspun,
¶95. This is because Pardi explains many of the implementation details associated with using XSL
stylesheets to transform web content into a specified format and also provides explicit code
examples and samples. Ex. 1005, p. 162-170. Pardi explains how content is parsed and pattern
matching occurs when stylesheets are used to transform the content. Ex. 1005, pp. 24, 81, 84, 165-
170. Pardi’s disclosure enhances XML Enabler because it provides explicit details as to how XML
Enabler’s system operates when using stylesheets, and how content requested by a client device is
transformed. Ex. 1004, p. 1. A POSITA would have readily combined the teachings of XML
Enabler and Pardi using known programming methods, at least because both references use the
same type of XSL stylesheets that are implemented using the “text-based” XML programming
language that “can be read and worked with easily in relatively nontechnical situations” and is also
“ideal for use in highly technical applications.” Ex. 1005, ix; Greenspun, ¶95.
The elements from XML Enabler and Pardi would further have performed the same
function in combination as they would have separately. Greenspun, ¶96. This is because both
references describe the use of XSL stylesheets to transform web content. See Section I.E.1.c.(1).
In combination, XML Enabler is enhanced by Pardi’s explanation as to how XSL stylesheets are
implemented and used to transform web content. Id. Both reference function in the same way in
combination as they do separately because they provide content transformation using XSL
stylesheets together or alone. Id.; Greenspun, ¶96.
Finally, a POSITA would have recognized that the result of combining XML Enabler and
Pardi would have been predictable and had a reasonable expectation of success. Greenspun, ¶97.
XML Enabler already describes using XSL stylesheets to transform content. Ex. 1001, p. 1. Pardi
enhances XML Enabler by explicitly describing how XSL stylesheets perform the transformation
via parsing and pattern matching. Ex. 1005, pp. 24, 81, 84, 165-170. Thus, the combination would
23
provide a predictable result of a system that simply performs content transformation using XSL
Stylesheets as already described by XML Enabler. Greenspun, ¶97. Moreover, the combination
would have had a reasonable expectation of success because it involves providing the explicitly
described implementation details of XSL stylesheets, described by Pardi, with XML Enabler’s
described XSL stylesheets. See Section I.E.1.c.(1); Greenspun, ¶97.
2. Ground 2: XML Enabler in view of Szlam Presents Substantial New

Questions of Patentability (Claim 13)
a. Szlam
Szlam is directed to providing remote access to services using “virtual” devices. See, e.g.,
Ex. 1006, 1:9-12, 14:27-61. Szlam describes a “portable communications device 10” which may
be a computer. Id., 6:61-7:43, 10:64-67, Fig. 1. When out remote from their office, an office worker
can use portable communications device 10 to remotely access and use office devices such as
telephones and computers that may be loaded with an “application or software package” or “a
standards-based Internet/Intranet browser such as the Netscape Navigator™ or the Microsoft
Explorer™.” Id., 7:18-24, 7:59-67, 8:46-51, 15:66-16:5. Indeed, a “virtual voice and data
environment” or “virtual corporate facility” is provided to device 10 for display to a user, and
“[w]hatever the user can do from his desk in his office using the office telephone or a computer in
the office, the user can do” with device 10, including “[v[oice conversations, web browsing,
Internet access, e-mail, [and] database access and updating….” Id., 16:6-14; see also id., 16:14-24
(“…the user sees a virtual corporate facility which operates exactly as if the user was in the office
and the virtual corporate facility displays, in the same manner, the same information that the user
would see if the user was in the office.”).
Figure 3 of Szlam shows an example of this virtual corporate facility displayed by device
10, where folders (or alternatively, icons or other representations) representing available
virtualized implementations of physical devices (e.g., virtual client devices) such as those at a
“main office,” a user’s “office computer,” an “assistant’s computer,” “telephone,” “facsimile
machine,” and “corporate server” are displayed. Ex. 1006, 11:19-35, Fig. 3.
24
Szalm, Fig. 3
Szalm describes that the virtual corporate facility includes a “user’s office computer []
represented by folder 303.” Ex. 1006, 11:22. Szalm explains that this office computer is part of the
“office equipment that the user has at the office” and when a user selects the folder 303, “whatever
the user can do from his desk in his office using the…computer in the office, the user can do with
the laptop device 10…[including] web browsing, Internet access, e-mail….” Id., 13:57-14:8, 16:6-
24. Accordingly, Szalm describes that the virtual corporate facility has a set of features including
virtualized office computer features of web browsing and email, which are the same features
provided by a distinct physical client device that is the user’s physical office computer at the office.
Id.
Szalm further describes that the virtual corporate facility includes “an office computer,
such as the computer of the user’s assistant” that “is represented by folder 311.” Ex. 1006, 11:26-
27, Fig. 3. As noted above, Szalm explains an office computer is part of the “office equipment that
the user has at the office” and when a user selects folder 303, representing a user’s computer,
“whatever the user can do from his desk in his office using the…computer in the office, the user
25
can do with the laptop device 10…[including] web browsing, Internet access, e-mail….” Id.,
13:57-14:8, 16:6-24. Thus, a POSITA would have understood that when a user selects folder 311,
representing an office computer of the user’s assistant, the user can also use a virtualized version
of the assistant’s computer via laptop device 10 to perform “web browsing, Internet access, [and]
e-mail….” Id. This understanding would have been apparent at least because the user’s office
computer (represented by folder 303) and the assistant’s office computer (represented by folder
311) are both office computers. Id. Accordingly, Szalm describes that the virtual corporate facility
has a set of features including virtualized assistant office computer features of web browsing and
email, which are the same features provided by a distinct physical client device that is the physical
office computer of the user’s assistant located at the office. Id.
Szalm also describes that the virtual corporate facility includes a “main office 13
represented by a folder 301” that a user may select to “access some equipment or features” located
at the physical office 13 from a remote location. Ex. 1006, 11:21-22, 11:36-39, Fig. 3. Exemplary
features include “exchang[][ing] electronic documents” and to “store, retrieve, transfer, modify,
manipuylate, etc. different types of information on servers, such as audio, video, facsimile, text,
data, spreadsheets, drawings, etc.” Id., 8:46-51. Accordingly, Szalm describes that the virtual
corporate facility has a set of features including virtualized main office equipment features, which
include the same features provided by a distinct physical client device that is the physical main
office equipment located at the main office 13. Id., 11:21-22, 11:36-39, Fig. 3.
Szalm also describes that the virtual corporate facility includes a “user’s telephone []
represented by folder 305” and that when “the user wants to place a call using the main office
telephone equipment” the “user selects the folder 305.” Ex. 1006, 11:19-23, 12:12-25, Fig. 3. The
virtual telephone provided by folder 305 includes “all functions that were previously executed
using the physical telephone set,” including features such as the ability to make a phone call,
receive a phone call, and connect to a voicemail system. Id., 12:12-34, 12:47-65, 14:41-51 (“The
laptop 10 therefore presents, to the user, via a visual representation, a ‘virtual’ telephone 505 which
represents the same telephone 217 that the user has at the office”). Accordingly, Szalm describes
that the virtual corporate facility has a set of features including telephone features of the virtual
telephone, which are the same features provided by a distinct physical client device that is a
physical telephone. Id.
26
Szlam is analogous art to the ’860 patent; it is from the same field of endeavor as the ’860
patent (accessing content in client/server systems) and reasonably pertinent to the particular
problem the ’860 patent was trying to solve (addressing how to improve content access for a
device). Ex. 1006, 15:66-16:35; Ex. 1001, 1:6-10, 1:53-61; Greenspun, ¶99.
b. Motivation to Combine XML Enabler and Szlam
Referring to Ex. AA, XML Enabler discloses, or at least suggests, elements [13.pre]-[13.5].
See Ex. AA, elements [13.pre]-[13.5].
For element [13.6], to the extent XML Enabler does not explicitly disclose or suggest it,
Szlam discloses or at least suggests “the client device comprises a virtual client device having a
combination of a plurality of different sets of features provided by multiple distinct physical client
devices.” See Ex. AA, element [1.6].
A POSITA would have been motivated to combine the teachings of XML Enabler with
Szlam for at least the following reasons. Greenspun, ¶¶100-102.
As discussed, XML Enabler discloses that an HTTP request from a client device is received
by the XML Enabler servlet. Ex. 1004, p. 1. The servlet obtains the requested XML document,
determines a “client type” of the requesting client device, and selects an XSL stylesheet in
accordance with the client type for transforming the XML document so that the client device can
view the document in its browser. Id. After the XML document is transformed using the selected
stylesheet, it is output to the client device. Id.
In combination with Szlam, XML Enabler’s client device would have included the virtual
corporate facility that provides virtual implementations of physical devices such as devices at a
“main office,” a user’s “office computer,” an “assistant’s computer,” and a “telephone,” where the
virtual corporate facility is provided to and displayed by the device. Ex. 1006, 11:19-35, Fig. 3.
Accordingly, XML Enabler’s client device would have had the capability to send requests for
content using the “web browsing, Internet access” and “database access and updating” capabilities
of the virtual devices implemented by Szlam’s virtual corporate facility. Id., 16:11-12. This
capability would have enhanced XML Enabler’s system, at least because content accessible by the
remote physical devices, implemented by the virtual devices of the virtual corporate facility (e.g.,
27
virtual implementations the user’s office computer, assistant’s office computer, and telephone),
would have been accessible from the client device, and the user would not need to individually
access the various remote physical devices. Id., 15:66-16:35. Greenspun, ¶104.
Moreover, system security and practical access would have been improved by the
combination. Szlam states that “database access and updating” can be provided by using virtual
corporate facility of device 10. Ex. 1006, 16:6-18. Thus, a POSITA would have understood that
Szlam’s system at least suggests that a user of device 10 may use device 10 to access an office
computer using the virtual corporate facility, and via the office computer, access and update an
office database. Id.; see also id., 15:66-16:35. This type of system was common in the 1990s and
provided access security. Id.; Greenspun, ¶105. Combining Szlam with XML Enabler, XML
Enabler’s client would have had the ability to access content from a remote database via the virtual
corporate facility and had the advantage of authorized access to the database even if the client were
located remote from the database. Greenspun, ¶105. Such a system would have improved system
security and practical access. Id. Thus, a POSITA would have been motivated to enhance XML
Enabler with the details discussed by Szlam, and XML Enabler’s system would have benefitted
from the combination due to the increased flexibility in accessing content for the client device. Id.,
¶106.
A POSITA would have readily combined the teachings of XML Enabler and Szlam using
known programming techniques and would have therefore had a reasonable expectation of success
in making the combination. Greenspun, ¶107. Szlam describes that its software can be
implemented on a conventional client device such as a laptop and in combination. Ex. 1006,
Abstract, 7:24-29, 22:28-43. In combination, the client device of XML Enabler would have simply
been programmed with Szlam’s described software that provides access to Szlam’s virtual
corporate facility. Ex. 1004, p. 1; Ex. 1006, Abstract, 7:24-29, 11:19-35, 15:66-16:35, Fig. 3. The
resulting system would have provided expanded access to content as discussed by Szlam – a
predictable result from the combination that a POSITA would have readily appreciated. Id. And
by providing such access, the client device of XML Enabler would have been able to request
content that would have otherwise been accessible only by other remote physical devices, which
is a benefit that corresponds to XML Enabler’s goal of providing access to content that otherwise
would not be accessible. Id.; Ex. 1004, p. 1. Thus, for at least these reasons, the combination would
have had a reasonable expectation of success. Greenspun, ¶107.
28
The elements from XML Enabler and Szlam would further have performed the same
function in combination as they would have separately. Greenspun, ¶108. In combination, the
XML Enabler and Pardi client device that requests content would have been enhanced by Szlam’s
virtual corporate facility implemented at a client device. Ex. 1004, p.1; Ex. 1006, 11:19-35, Fig.
3. All references would have functioned in the same way in combination as they do separately
because they would have provided their respective content accessing together or alone. Id.;
Greenspun, ¶108.
3. Ground 3: XML Enabler in view of Pardi and Adams Presents

Substantial New Questions of Patentability (Claim 18)
a. Adams
Adams is directed to a system having a web server that stores web content, a proxy server,
and a client device (also referred to as a “pervasive device”). Ex. 1023, 7:38-61. Adams discloses
the use of “transcoder/transformer logic” that can be implemented by the proxy server, and that
modifies requested web content for display by a client device requesting the content. Id., 5:59-
6:47, 7:52-61, 8:5-12. Like the XML Enabler servlet, Adams discloses that the content transcoding
system implemented by the proxy server “receives requests” from a client device “using HTTP”
and “retrieves content from the Web site using standard HTTP protocols.” Id., 7:52-58. After the
proxy server receives the content, it “applies modifications to convert that content into a form that
is appropriate for delivery” to a client device and “display” on the client device. Id., 7:43-52.
Adams explains that web content can be stored on a “Web server” that is separate from its
proxy server. Id., 1:16-19 (discussing “server-hosting computers (Web servers) connected to the
Internet that have Web content files (referred to as Web pages) stored therewithin), 1:47-54
(describing that a Uniform Resource Locator (URL) provides an address at which a file is stored
in a Web server, and that a Web server sends a file located at a requested URL to a requesting
client), 7:38-8:12 and Fig. 2 (discussing a proxy server implementing processing system 9 rather
than a web server, and showing that the system 9 is separate from “Web site 5” which represents
stored content in the web server).
And because Adams explains that its transcoding system, implemented at the proxy server,
performs transcoding to modify retrieved content into a form appropriate for viewing on a client
device, Adams’ proxy server corresponds to the ’860’s explanation of the term “interpolating” as
“intended to include operations such as transcoding or translation, as well as other types of
29
processing operations involving web content,” as well as a construction of “interpolating proxy

server” as a proxy server that performs transcoding, translation, or other types of processing
operations involving web content. Ex. 1001, 3:30-33; see also Request, Section I.C.1.b.
In operation of the proxy server transcoding system, Adams explains that “[w]hen the
HTML file is requested by the pervasive computing device (Block 100), the HTML file is analyzed
to identify a link to a content modification file (also referred to as a ‘meta file’) that contains
information about modifying elements within the HTML file so as to be displayable within the
pervasive computing device (Block 200).” Id., 7:59-64; see also id., 6:65-7:9. Adams discloses
that the content modification file, like XML Enabler’s XSL stylesheet, is used to “modify selected
elements of the HTML file for display” such as by replacing elements in the HTML file with
replacement elements. Id., 6:33-47; Ex. 1001, p. 1. The content modification file may reference
“content-specific parameters” that specify, for example, replacement elements of the requested
HTML file content having different color and/or file size compared to original elements of the
requested content. Ex. 1023, 8:45-9:15, 9:30-34. Adams also explains that the content modification
file may reference “client-specific parameters” such as replacement elements of the requested
HTML file content having dimensionality that corresponds to the display of the specific client
device that requested content. Id., 9:15-34 (stating “[t]hese image files…are client specific because
each is designed for display via a specific type of pervasive computing device requesting an HTML
file”). Adams states that “various combination of client-specific and content-specific parameters
may be utilized.” Id., 9:30-34.
Adams is analogous art to the ’860 patent; it is from the same field of endeavor as the ’860
patent (accessing content in client/server systems) and reasonably pertinent to particular problems
the ’860 patent was trying to solve (addressing compatibility issues when providing web content
for client devices). Ex. 1023, 5:59-6:47, 7:38-8:12, 8:45-9:34; Ex. 1001, 1:6-9, 1:45-49;
Greenspun, ¶110.
b. Motivation to Combine XML Enabler, Pardi, and Adams
Referring to Ex. AA, XML Enabler or XML Enabler in view of Pardi discloses, or at least
suggests, elements [18.pre]-[18.9]. See Ex. AA, analysis of elements [18.pre]-[18.9].
For elements [18.1], [18.3], to the extent XML Enabler or XML Enabler in view of Pardi
do not explicitly disclose or suggest it, Adams discloses or at least suggests “a web server operative
30
to store web content” and “web content…stored on the web server.” See Ex. AA, elements [18.1],
[18.3].
For elements [18.2], [18.3], [18.4], [18.5], [18.7], and [18.8], to the extent XML Enabler
or XML Enabler in view of Pardi do not explicitly disclose or suggest it, Adams discloses or at
least suggests an “interpolating proxy server at least temporarily coupled to the web server.” See
Ex. AA, elements [18.2], [18.3], [18.4], [18.5], [18.7], and [18.8].
For element [18.4], to the extent XML Enabler or XML Enabler in view of Pardi do not
explicitly disclose or suggest it, Adams discloses or at least suggests to “retrieve one or more
augmentation files associated with the web content and the particular client type.” Ex. AA, element
[18.4].
A POSITA would have been motivated to combine the teachings of XML Enabler, Pardi,
and Adams for at least the following reasons. Greenspun, ¶¶119-123.
A POSITA would have combined XML Enabler and Pardi for the reasons discussed in the
Section I.E.1.c. See supra, Section I.E.1.c. A POSITA would have further combined XML Enabler,
Pardi, and Adams for at least the reasons below. Greenspun, ¶124.
The combination of XML Enabler and Pardi describes a system where requests for content
are transmitted from a client device to a server that obtains content and transforms it into a format
acceptable for viewing by the client device. See supra, Section I.E.1.c. In combination with
Adams, the XML Enabler and Pardi system would have been enhanced by treating XML Enabler’s
server as a proxy server (as in Adams), and including Adam’s separate web content server. Id.; Ex.
1023, 1:16-19, 1:47-54, 5:59-6:47, 7:38-8:12; Ex. AA, elements [18.1]-[18.5]. The proxy server
would have received a client request from the client device of the XML Enabler and Pardi system,
obtained content for transformation from the separate web content server, and implemented the
transformation processing of XML Enabler and Pardi on the obtained content such that it is
formatted into an appropriate form for the client device. Id. Greenspun, ¶125.
Use of Adams’ proxy server and web content server teachings with the XML Enabler and
Pardi system would have improved system performance and flexibility. Using the proxy server
and separate web content server of Adams would have distributed the required content processing
in the XML Enabler-Pardi system to a proxy server rather than the same server storing content,
31
which would have enhanced efficiency and reduced computational power required at the server
storing content. Greenspun, ¶126. Moreover, use of a proxy server implementing content
transformation would have allowed third part companies to modify content format without
necessarily requiring cooperation, input, or any other action by the content’s publisher (i.e., the
source of the content). See, e.g., Ex. 1023, 6:3-20; Greenspun, ¶126. Thus, with Adams, the XML
Enabler and Pardi system would have been more flexible and had the ability to modify content
into a wider variety of formats. Greenspun, ¶126. Thus, in my opinion, a POSITA would have
therefore enhanced the XML Enabler and Pardi system with Adams’ teachings. Greenspun, ¶126.
Adams also explains that its system allows “content modification into a form suitable for
presentation on pervasive computing devices” and “facilitate[s] the modification of Web content
without requiring modification to existing HTML standards.” Ex. 1023, 3:26-32. The Adams
system has the ability to modify web-content on demand “for immediate display within virtually
any type of computing devices that requests the Web content file” Ex. 1023, 3:63-67. These
benefits associated with Adams’ system directly support a goal of XML Enabler, which is to
similarly allow different client devices using various browsers to have access content they
otherwise may not have been able to access. See XML Enabler, p. 1 (“XML Enabler makes XML
real by allowing any user of any browser to view and use XML data”) (“Most developers in the
XML space are concerned with the heavy client. In other words, ‘you can use XML as soon as you
move to Internet Explorer 4.0 or higher.’ The XML Enabler technology removes this impediment
and allows the system administrator to focus on using XML-tagged data intelligently without
worrying about the types of browsers that might be used to view that data”). For this additional
reason, a POSITA would have enhanced the XML Enabler and Pardi system with Adams’
teachings. Greenspun, ¶127.
A POSITA would have readily combined the teachings of XML Enabler and Pardi with
Adams using routine techniques that would have been straightforward, predictable, and have had
a reasonable expectation of success. Greenspun, ¶128. This is at least because the combination
would have simply involved incorporating a separate web content server into the XML Enabler
and Pardi system, and treating the XML Enabler server as a proxy server described by Adams. See
supra, Section I.E.1.c; Ex. 1023, 1:16-19, 1:47-54, 5:59-6:47, 7:38-8:12; Greenspun, ¶128. XML
Enabler already discloses that a client device passes the URL of the requested content to the XML
Enabler servlet and that it processes XML content. Ex. 1004, p. 1. Adams’ system utilizes and
32
proxy server and separate web content server, and describes that XML data can form the content.
Ex. 1023, 1:16-19, 1:47-54, 5:45-53, 5:59-6:47, 7:38-8:12. Accordingly, in the combination, the
XML Enabler servlet executing on a proxy server (instead of the web server on which the content
is stored) would have involved using the received URL to obtain content from the separate web
content server – a routine application of known proxy server functionality. Id.; Ex. 1023, 1:16-19,
1:47-54, 5:59-6:47, 7:38-8:12; Greenspun, ¶128 Moreover, a POSITA would have readily
implemented the XML Enabler servlet that performs transformation processing at content in a
proxy server in view of Adams because Adams makes clear that transcoding systems can be
deployed at a finite number of places: a content server, client device (pervasive computing device),
or proxy server. Ex. 1023, 17:52-8:4. Thus, the resulting system of the combination would have
been predictable and had a reasonable expectation of success. Greenspun, ¶128.
The elements from XML Enabler, Pardi, and Adams would further have performed the
same function in combination as they would have separately, at least because they would have
provided their respective content accessing and transformation processing together or alone. Ex.
1004, p.1; Ex. 1005, pp. 166-173; Ex. 1023, 1:16-19, 1:47-54, 5:59-6:47, 7:38-8:12; Greenspun,
¶129. Accordingly, a POSITA would have been motivated to combine XML Enabler, Pardi, and
Adams. Greenspun, ¶129.
4. Ground 4: XML Enabler in view of Pardi and Smith Presents

Substantial New Questions of Patentability (Claim 18)
a. Smith
Smith is directed to an “Internet content transcoding system.” Ex. 1007, pp. 1-2, Figs. 1, 6.
In operation, “the system retrieves” Internet content from a web server and analyzes the Internet
content” by “ingest[][ing] it into the InfoPyramid format.” Id. A “policy engine gathers the
capabilities of the client, the network conditions and the transcoding preferences of the user and
publisher.” Id., 1. Then, “the system [] selects the output versions of the content and uses a library
of content analysis, filtering, translation and manipulation routines to generate the content to be
delivered to the client device.” Id. Smith states that the Internet content transcoding system “may
be deployed at the server, proxy or client,” and that “[d]eployed at a proxy, the system is able to
retrieve the Internet content, analyze and transcode it, and deliver the results to the client, on-the-
fly.” Id., pp. 1-2. A POSITA would have understood that Smith’s discussion of a “proxy” refers to
33
a proxy server because proxy is known a shorthand way of referring to a proxy server. Greenspun,
¶¶132-133.
Smith, Figure 1
Smith is analogous art to the ’860 patent; it is from the same field of endeavor as the ’860
patent (accessing content in client/server systems) and reasonably pertinent to the particular
problem the ’860 patent was trying to solve (addressing compatibility issues when providing web
content for various different client types). Ex. 1007, pp. 1-4; Ex. 1001, 1:6-9, 1:45-49; Greenspun,
¶131.
b. Motivation to Combine XML Enabler, Pardi, and Smith
Referring to Ex. AA, XML Enabler or XML Enabler in view of Pardi discloses, or at least
suggests, elements [18.pre]-[18.9]. See Ex. AA, elements [18.pre]-[18.9].
For elements [18.1], [18.3], to the extent XML Enabler or XML Enabler in view of Pardi
do not explicitly disclose or suggest it, Smith discloses or at least suggests “a web server operative
to store web content” and “web content…stored on the web server.” See Ex. AA, elements [18.1],
[18.3].
For elements [18.2], [18.3], [18.4], [18.5], [18.7], and [18.8], to the extent XML Enabler
or XML Enabler in view of Pardi do not explicitly disclose or suggest it, Smith discloses or at least
suggests an “interpolating proxy server at least temporarily coupled to the web server.” See Ex.
AA, elements [18.2], [18.3], [18.4], [18.5], [18.7], and [18.8].
34
For element [18.4], to the extent XML Enabler or XML Enabler in view of Pardi do not
explicitly disclose or suggest it, Smith discloses or at least suggests to “retrieve one or more
augmentation files associated with the web content and the particular client type.” Ex. AA, element
[18.4].
A POSITA would have been motivated to combine the teachings of XML Enabler, Pardi,
and Smith for at least the following reasons. Greenspun, ¶¶138-142.
A POSITA would have combined XML Enabler and Pardi for the reasons discussed in
section I.E.1.c. See Section I.E.1.c. A POSITA would have further combined XML Enabler, Pardi,
and Smith for at least the reasons below. Greenspun, ¶143.
The combination of XML Enabler and Pardi describes a system where requests for content
are transmitted from a client device to a server that obtains content and transforms it into a format
acceptable for viewing by the client device. See Section I.E.1.c. In combination with Smith, the
XML Enabler and Pardi system would be enhanced by treating XML Enabler’s server as a proxy
server (as in Smith), and including Smith’s separate web content server. Id.; Ex. 1007, pp. 1-4; Ex.
AA, elements [18.1]-[18.5]. The proxy server would receive a client request from the client device
of the XML Enabler and Pardi system, obtain content for transformation from the separate web
content server, and implement the transformation processing of XML Enabler and Pardi on the
obtained content such that it is formatted into an appropriate form for the client device. Id.; Ex.
1007, pp. 1-4; Ex. AA, elements [18.1]-[18.5]; Greenspun, ¶144.
Use of Smith’s intermedia proxy and web content server teachings with the XML Enabler
and Pardi system would have improved system performance. Ex. 1007, p. 4; Greenspun, ¶145.
Smith explains that proxy servers may have a “low bandwidth connection” to a client but a “high
bandwidth connection” to a content provider, and “compression and transcoding at the proxy
results in faster delivery [to a client], even when accounting for the added time for content analysis,
selection, and transcoding.” Ex. 1007, p. 4 (bracketing added). A POSITA would have therefore
enhanced the XML Enabler and Pardi system with Smith’s teachings. Greenspun, ¶145. Moreover,
Smith explicitly explains that its system allows “a wide range of client devices [to] gain access to
the large amounts of content on the Internet that is otherwise beyond their capabilities.” Ex. 1007,
p. 4. This benefit of Smith’s system directly supports a goal of XML Enabler, which is to similarly
35
allow different client devices using various browsers to have access content they otherwise may
not have been able to access. See XML Enabler, p. 1 ( “XML Enabler makes XML real by allowing
any user of any browser to view and use XML data”) (“Most developers in the XML space are
concerned with the heavy client. In other words, ‘you can use XML as soon as you move to Internet
Explorer 4.0 or higher.’ The XML Enabler technology removes this impediment and allows the
system administrator to focus on using XML-tagged data intelligently without worrying about the
types of browsers that might be used to view that data”). For this additional reason, a POSITA
would have enhanced the XML Enabler and Pardi system with Smith’s teachings. Greenspun,
¶146.
A POSITA would have readily combined the teachings of XML Enabler and Pardi with
Smith using routine techniques that would have been straightforward, predictable, and have had a
reasonable expectation of success. Greenspun, ¶147. This is at least because the combination
would have simply involved incorporating a separate web content server into the XML Enabler
and Pardi system and treating the XML Enabler server as a proxy server described by Smith. See
Section I.E.1.c; Ex. 1007, pp. 1-4; Greenspun, ¶147. XML Enabler already discloses that a client
device passes the URL of the requested content to the XML Enabler servlet. Ex. 1001, p. 1.
Accordingly, in the combination, the XML Enabler servlet executing on a proxy server (instead of
the web server on which the content is stored) would have involved using the received URL to
obtain content from the separate web content server – a routine application of known proxy server
functionality. Id.; Ex. 1007, pp. 1-4; Greenspun, ¶147. Moreover, a POSITA would have readily
implemented the XML Enabler servlet that performs transformation processing at content in a
proxy server in view of Smith because Smith makes clear that transcoding systems can be deployed
at a finite number of places – namely, a content server, client device, or proxy server. Ex. 1007, p.
1. Thus, the resulting system of the combination would have been predictable and had a reasonable
expectation of success. Greenspun, ¶147.
The elements from XML Enabler, Pardi, and Smith would further have performed the same
function in combination as they would have separately, at least because they would have provided
their respective content accessing and transformation processing together or alone. Ex. 1004, p.1;
Ex. 1005, pp. 166-173; Ex. 1007, pp. 1-4; Greenspun, ¶148.
36
II. DETAILED APPLICATION OF THE PRIOR ART TO EVERY CLAIM FOR

WHICH REEXAMINATION IS REQUESTED
A. Proposed Rejections of the Claims
This Request presents multiple proposed obviousness rejections based on XML Enabler,
Pardi, Szlam, Adams, and Smith. These proposed rejections raise substantial new questions of
patentability for the Challenged Claims.
Requester notes that the proposed rejections below are based on obviousness under 35
U.S.C. § 103(a). Requester notes that, even if there are minor differences between cited disclosures
of the prior art and the claimed concepts, the claims are still obvious, as a POSITA would not have
appreciated some new synergy or unexpected results from the elements given the disclosures of
the prior art and the general knowledge of a POSITA. When compared with the prior art described
below and in light of the knowledge of a POSITA, any “differences between the subject matter
sought to be patented and the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill in the art.” 35 U.S.C.
§ 103. The proposed rejections are listed below and are described in further detail in the attached
claim chart. See Exhibit AA; Greenspun, ¶¶150-154.
Proposed Rejection 1: Claims 1-3, 5, 7, 8, and 10 are unpatentable under 35 U.S.C. § 103(a)
over XML Enabler in view of Pardi.
Proposed Rejection 2: Claim 13 is unpatentable under 35 U.S.C. § 103(a) over XML

Enabler in view of Szlam.

Enabler in view of Pardi and Adams.

Enabler in view of Pardi and Smith.
The claim chart provided as Exhibit AA provides a detailed analysis and application
mapping each and every element of the above-listed claims to the prior art. See Ex. AA.
Requester further notes that other rejections that raise substantial new questions of
patentability may also exist based on different combinations of the art cited herein.
37
B. Secondary Considerations
This Request demonstrates that the Challenged Claims of the ’860 Patent are unpatentable
as obvious in view of the prior art references. The Applicant did not identify any evidence of
secondary considerations during prosecution, and the clear teachings in the prior art cannot be
overcome by any supposed secondary considerations. Greenspun, ¶149.
III. DISCLOSURE OF CONCURRENT LITIGATION AND REEXAMINATION
PROCEEDINGS
To Requester’s knowledge, the ’860 Patent has been the subject of one prior District Court
litigation and two prior post-grant proceedings before the Patent Trial and Appeal Board, listed in
the table in Appendix A. To Requester’s knowledge, the ’860 Patent has not been the subject of a
prior reexamination.
IV. CONCLUSION
The Commissioner is hereby authorized to charge Deposit Account 50-6990 under Order
No. SOU860 the Ex Parte Reexamination fee of $12,600 under 37 C.F.R. § 1.20(c)(1). Requester
believes no other fee is due with this submission, however the Commissioner is hereby authorized
to charge any fee deficiency or credit any over-payment to Deposit Account 50-6990.
Please direct all correspondence in this matter to the undersigned.
Dated: March 30, 2021 Respectfully submitted,
By: /Ellyar Y. Barazesh/

Ellyar Y. Barazesh (Reg. No. 74,096)
Unified Patents, LLC
P.O. Box 53345
Washington, D.C., 20009
ellyar@unifiedpatents.com
Attorney for Requester Unified Patents, LLC
38
APPENDIX A – LIST OF PRIOR AND CONCURRENT PROCEEDINGS
To Requester’s knowledge, the following is a list of prior or pending District Court

litigations, reexaminations, or post-grant proceedings involving the ’860 Patent.
Civil Action/Post Grant

Title Proceeding # Court Filed On Terminated
Sound View
Innovations, LLC v. 1:16-cv-00116 D.Del 2016-02-29 2018-01-09
Facebook, Inc.
2018-01-25
(post-
Facebook, Inc. v. Patent Trial
institution,
Sound View IPR2017-01003 and Appeal 2017-03-03
prior to final
Innovations, LLC Board
written
decision)
Facebook, Inc. v. Patent Trial 2017-09-01
Sound View IPR2017-01005 and Appeal 2017-03-01 (trial not
Innovations, LLC Board instituted)
39

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Request for Ex Parte Reexamination, U.S.

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

REQUEST FOR EX PARTE REEXAMINATION OF

Mail Stop “Ex Parte Reexam”

Pursuant to the provisions of 35 U.S.C. §§ 301-307, Unified Patents, LLC (“Requester”)

Ex Parte Patent Reexamination Filing Requirements

A. U.S. PATENT 8,135,860 ....................................................................................................... 1

A. PROPOSED REJECTIONS OF THE CLAIMS ............................................................................. 37

III. DISCLOSURE OF CONCURRENT LITIGATION AND REEXAMINATION

IV. CONCLUSION ................................................................................................................. 38

APPENDIX A – LIST OF PRIOR AND CONCURRENT PROCEEDINGS ............................. 39

Ex. 1001 U.S. Patent 8,135,860

Ex. 1002 File History of U.S. Patent 8,135,860

Ex. 1003 Declaration of Dr. Philip Greenspun

Ex. 1004 Web page from the www.alphaworks.ibm.com website describing

Ex. 1006 U.S. Patent 6,359,892 (“Szalm”)

Ex. 1010 IPR2017-01003, Decision on Institution (Paper 14)

Ex. 1011 IPR2017-01003, Order Terminating Trial (Paper 38)

Ex. 1012 IPR2017-01005, Decision on Institution (Paper 13)

Ex. 1013 Declaration of Christopher Butler, Office Manager at Internet Archive,

Ex. 1017 Date stamp (University of California, Davis Library) - Smith

Ex. 1019 Sound View Innovations, LLC v. Facebook, Inc., 1:16-CV-00116,

Ex. 1022 U.S. Patent 6,950,857

Ex. 1023 U.S. Patent 6,457,030

Ex. 1024 Hypertext Transfer Protocol – HTTP/1.0, Network Working Group,

I. SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY

A. U.S. Patent 8,135,860

1. An apparatus for use in a computer network, the apparatus comprising:

13. An apparatus for use in a computer network, the apparatus comprising:

18. A processing system comprising:

Ex. 1001, Fig. 1

include operations such as transcoding or translation, as well as other types of processing

a. Independent Claims 1 and 18

During prosecution, the applicant amended independent claim 1 to recite:

Independent claim 13 includes the following recitation:

“wherein the client device comprises a virtual client device having a

B. Previous Post-Grant Proceedings involving the ’860 Patent

1. The ’003 proceeding

2. The ’005 proceeding

Litigation Term Construed Construction Ordered

IPR Proceeding Term Construed Preliminary Construction

1. Analysis of Certain Claim Terms

a. “patch file” (claim 5)

b. “interpolating proxy server” (claim 18)

c. “virtual client device” (claim 13)

d. “one or more augmentation files associated with at least one of

D. Listing of Prior Art Patents and Printed Publications

Reexamination of the Challenged Claims is requested in view of the following references:

public availability as of at least May 8, 1999 is corroborated by Exhibits 1013 (Declaration of

E. Substantial New Questions of Patentability

1. Ground 1: XML Enabler in view of Pardi Presents Substantial New

XML document input:

Ex. 1005, pp.167-168.

c. Motivation to Combine XML Enabler and Pardi

2. Ground 2: XML Enabler in view of Szlam Presents Substantial New

b. Motivation to Combine XML Enabler and Szlam

3. Ground 3: XML Enabler in view of Pardi and Adams Presents

processing operations involving web content,” as well as a construction of “interpolating proxy

b. Motivation to Combine XML Enabler, Pardi, and Adams

4. Ground 4: XML Enabler in view of Pardi and Smith Presents

b. Motivation to Combine XML Enabler, Pardi, and Smith

II. DETAILED APPLICATION OF THE PRIOR ART TO EVERY CLAIM FOR

A. Proposed Rejections of the Claims

Proposed Rejection 2: Claim 13 is unpatentable under 35 U.S.C. § 103(a) over XML

Sound View '860 Reexam Request

Sound View '860 Reexam Request