UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`PLAID TECHNOLOGIES INC.,
`Petitioner
`
`v.
`
`YODLEE, INC. and YODLEE.COM, INC.,
`Patent Owner
`_________________________
`
`Case No. IPR2015-______
`Patent 6,199,077
`_________________________
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,199,077
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Plaid Technologies Inc.
`Exhibit 1012
`
`Ex. 1012 Page 1
`
`

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`Petition for Inter Partes Review of US Patent No. 6,199,077
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST ........................................................................................................ I
`I.
`INTRODUCTION AND RELIEF REQUESTED ...................................... 1
`II. GROUNDS FOR STANDING ...................................................................... 1
`III. MANDATORY NOTICES ........................................................................... 1
`IV. BACKGROUND ............................................................................................ 2
`DESCRIPTION OF THE ’077 PATENT ......................................................... 2
`A.
`PROSECUTION HISTORY .......................................................................... 4
`B.
`STATE OF THE ART ................................................................................. 5
`C.
`
`V.
`
`A.
`B.
`
`PROPOSED GROUNDS OF UNPATENTABILITY ................................ 7
`SUMMARY OF GROUNDS OF REJECTION .................................................. 7
`PRIOR ART OFFERED FOR THE PRESENT UNPATENTABILITY
`CHALLENGES .......................................................................................... 7
`
`VI. CLAIM CONSTRUCTION .......................................................................... 8
`C.
`PROPOSED CLAIM CONSTRUCTIONS ....................................................... 9
`“Internet Portal (System)” (All claims) ................................................ 9
`“Gatherer Agent” and “Gathering Software Agents” (All claims) ... 10
`“Dedicated To Each Site” (All claims) ............................................... 10
`
`1.
`2.
`3.
`
`D.
`
`VII. THE PRIOR ART RENDERS OBVIOUS CLAIMS 1–12 OF THE ’077
`PATENT ....................................................................................................... 11
`CLAIMS 1–12 ARE RENDERED OBVIOUS BY FREISHTAT ALONE OR IN
`VIEW OF ZHAO ...................................................................................... 11
`Summary of Freishtat .......................................................................... 11
`Eligibility of Freishtat As Prior Art .................................................... 13
`Summary of Zhao................................................................................. 14
`
`4.
`5.
`6.
`
`Ex. 1012 Page 2
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`

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`Petition for Inter Partes Review of US Patent No. 6,199,077
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`E.
`
`Eligibility of Zhao As Prior Art ........................................................... 15
`7.
`The Proposed Combination of Freishtat and Zhao ............................ 16
`8.
`Motivation to Combine ........................................................................ 17
`a.
`Reasonable Expectation of Success .................................................... 19
`b.
`Claim 1 ................................................................................................ 21
`9.
`10. Claim 7 ................................................................................................ 34
`11. Claim 2 and Claim 8 ........................................................................... 34
`12. Claim 3 and Claim 9 ........................................................................... 35
`13. Claim 4 and Claim 10 ......................................................................... 36
`14. Claim 5 and Claim 11 ......................................................................... 37
`15. Claim 6 and Claim 12 ......................................................................... 37
`CLAIMS 1 THROUGH 12 ARE UNPATENTABLE UNDER 35 U.S.C. § 103 AS
`OBVIOUS OVER SUGIARTO IN VIEW OF BRANDT .................................... 40
`Sugiarto ............................................................................................... 40
`Brandt .................................................................................................. 41
`The Proposed Combination of Sugiarto and Brandt .......................... 42
`Claim 1 ................................................................................................ 46
`Claim 7 ................................................................................................ 54
`Claim 2 and Claim 8 ........................................................................... 55
`Claim 3 and Claim 9 ........................................................................... 56
`Claim 4 and Claim 10 ......................................................................... 56
`Claim 5 and Claim 11 ......................................................................... 57
`Claim 6 and Claim 12 ......................................................................... 58
`
`1.
`2.
`3.
`4.
`5.
`1.
`2.
`3.
`4.
`5.
`
`VIII. CONCLUSION ............................................................................................ 60
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`Ex. 1012 Page 3
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`
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`Petition for Inter Partes Review of US Patent No. 6,199,077
`
`
`EXHIBIT LIST
`
`Description
`
`
`Exhibit
`Number
`1001 U.S. Patent No. 6,199,077 (’077 Patent)
`Summons Returned as Executed , Yodlee, Inc. v. Plaid
`1002
`Technologies, Inc., Case No. 1:14-cv-01445-LPS-CJB (D. Del.
`filed December 1, 2014)
`1003 U.S. Patent No. 6,317,783 to Freishtat (the “’783 Patent” or
`“Freishtat”
`1004 Declaration of Dr. Todd Mowry
`1005
`Redline Comparison of U.S. Patent Appl. No. 09/323,598 and
`Application No. 09/208,740
`File History of U.S. Patent No. 6,199,077
`1006
`1007 U.S. Patent No. 6,278,449 (“Sugiarto”)
`1008 U.S. Patent No. 5,892,905 (“Brandt”)
`1009
`Zhao, “Technical Note, WebEntree: A Web Service Aggregator,”
`(1998) (“Zhao”)
`Claim Construction Briefing, Yodlee, Inc. v. Plaid Technologies,
`Inc., Case No. 1:14-cv-01445-LPS-CJB (D. Del. filed December
`1, 2014)
`Claim Construction Order, Yodlee, Inc. v. CashEdge, Inc., No. C
`05-01550 SI, slip op. (N.D. Cal., July 7, 2006)
`Provisional Appl. No. 60/105,917 (“the ’917 Application”)
`1012
`Redline Comparison of Provisional Appl. No. 60/105,917 and
`1013
`Screenshot of ACM Digital Library Page
`1014
`1015 U.S. Patent No. 6,029,175 (“Chow”)
`1016 U.S. Patent No. 6,401,118 (“Thomas”)
`1017 U.S. Patent No. 6,006,333 (“Nielsen”)
`1018
`Screenshots of ESPN Pages
`1019 U.S. Patent No. 6,041,362 (“Mears”)
`1020 U.S. Patent 6,243,816 (“Fang”)
`
`1010
`
`1011
`
`i
`
`Ex. 1012 Page 4
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`

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`
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`Petition for Inter Partes Review of US Patent No. 6,199,077
`
`
`INTRODUCTION AND RELIEF REQUESTED
`
`I.
`Plaid Technologies, Inc. (“Petitioner”) hereby petitions for institution of
`
`inter partes review of U.S. Patent No. 6,199,077 (the “’077 Patent”) (Ex. 1001).
`
`The ’077 Patent issued on March 6, 2001. Yodlee, Inc. contends that it is the
`
`assignee of all right, title and interest in the ‘’077 Patent, but USPTO assignment
`
`records show that the assignee is Yodlee.com, Inc. Thus, both parties have been
`
`named and are referred to collectively as Patent Owner. Petitioner respectfully
`
`requests cancellation of claims 1–12 of the ’077 Patent based on the grounds of
`
`unpatentability herein. The prior art and other evidence offered with this Petition
`
`establishes that all elements in the challenged claims of the ’077 Patent were well
`
`known as of the earliest alleged priority date, and that the claimed methods and
`
`systems recited in the ’077 Patent are obvious.
`
`II. GROUNDS FOR STANDING
`Petitioner certifies that the ’077 Patent is available for review under
`
`35 U.S.C. § 311(c) and that Petitioner is not estopped from requesting an inter
`
`partes review challenging claims 1–12 on the grounds identified herein.
`
`III. MANDATORY NOTICES
`Real Party in Interest: Petitioner Plaid Technologies, Inc.
`
`Related Matters: Petitioner has been charged with infringement of the ’077
`
`Patent in the parallel litigation styled Yodlee, Inc. v. Plaid Technologies, Inc., Case
`
`No. 1:14-cv-01445-LPS-CJB (D. Del.), filed December 1, 2014 (“Co-Pending
`
`1
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`Ex. 1012 Page 5
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`
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`Petition for Inter Partes Review of US Patent No. 6,199,077
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`District Court Action”). Petitioner was served with the complaint in that litigation
`
`on December 2, 2014. Ex. 1002. A petition for Inter Partes Review of another
`
`asserted patent, U.S. Patent No. 6,317,783 (“the ’783 Patent” or “Freishtat”) (Ex.
`
`1003), is to be filed contemporaneously with this petition.
`
`Designation of Counsel: Petitioner designates the following Lead and Back-
`
`up Counsel. Concurrently filed with this Petition is a Power of Attorney per 37
`
`C.F.R. § 42.10(b). Service via hand-delivery may be made at the postal mailing
`
`address below. Petitioner consents to electronic service by e-mail.
`
`Back-Up Counsel
`Omar Amin (Reg. No.60,885)
`Gibson, Dunn & Crutcher LLP
`1050 Connecticut Avenue, N.W.
`Washington, D.C. 20036-5306
`202.887.3710
`oamin@gibsondunn.com
`
`Lead Counsel
`Brian Buroker (Reg. No. 39,125)
`Gibson, Dunn & Crutcher LLP
`1050 Connecticut Avenue, N.W.
`Washington, D.C. 20036-5306
`202.955.8541
`bburoker@gibsondunn.com
`
`IV. BACKGROUND
` Description of the ’077 Patent
`A.
`The ’077 Patent relates to an Internet Portal system which provides access to
`
`previously identified Internet destinations, retrieves information from these
`
`destinations, and compiles and delivers the retrieved information for an end user.
`
`Ex. 1001, 2:59-67. The described system purports to allow users to “quickly
`
`access multiple WEB sites without lengthy log-in procedures” and to collect and
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`compile data from “a summary search.” Ex. 1001, 3:12-16.
`
`2
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`Ex. 1012 Page 6
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`Petition for Inter Partes Review of US Patent No. 6,199,077
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`As seen in Fig. 1, below, three Internet servers 23, 25, and 27 represent
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`Internet servers hosted by various enterprises, such as bank servers, investment
`
`servers, or airline/travel servers, and subscribed to by a user operating Internet-
`
`capable appliance 17. Id., 4:39–42. The user connects to portal system 11 by ISP
`
`15 and gains access to “a personalized, interactive WEB page, which in turn
`
`provides access to any one of a number of servers on Internet 13, such as servers
`
`23, 25, and 27.” Id., 4:51–58.
`
`Fig. 2, below, represents one of the personalized, interactive WEB pages as
`
`may be seen on a display monitor of a user. Id., 5:4–8.
`
`
`
`
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`3
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`Ex. 1012 Page 7
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`Petition for Inter Partes Review of US Patent No. 6,199,077
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`The user provides the system with his individual authentication information
`
`for a plurality of selected destinations, shown above as “LBC.com,” “My
`
`Bank.com,” etc. Id., 5:50–65. Thereafter, the system allows the user to access
`
`each of the plurality of pre-selected webpages without having to enter login
`
`information for each page. Id.
`
`The specification further discloses a particular aspect of the alleged
`
`invention called “Enhanced Agent for WEB Summaries.” See generally id., 9:53-
`
`17:50. According to the ’077 Patent, “a software agent, termed a gatherer by the
`
`inventors, is adapted to gather and return summary information about URL’s
`
`according to user request or enterprise discretion.” Id., 9:54–57. The software
`
`agent “may be programmed to perform certain tasks such as obtaining account
`
`information, executing simple transactions, returning user-requested notification
`
`information about upcoming events, and so on.” Id., 10:19–25. Furthermore, “[a]
`
`parsing engine 87 is provided and adapted to parse individual WEB sites according
`
`to a template created via scripting module 79.” Id., 12:35–37. Finally, “[a] data
`
`processing layer 75 is provided and adapted to store, process, and present returned
`
`data to users according to enterprise rules and client direction.” Id., 12:35–37.
`
`B.
`
` Prosecution History
`On June 1, 1999, the ’077 Patent was filed as Application No. 09/323,598
`
`(“the ’598 Application”) entitled “Method and Apparatus for Providing and
`
`4
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`Ex. 1012 Page 8
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`Petition for Inter Partes Review of US Patent No. 6,199,077
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`Maintaining a User-Interactive Portal System Accessible via Internet or other
`
`Switched-Packet-Network.” The ’598 Application was filed as a continuation-in-
`
`part of Application No. 09/208,740 (“the ’740 Application”), filed on Dec. 8, 1998.
`
`Petitioner contends that this priority claim does not apply to the issued claims of
`
`the ’077 Patent. See Ex. 1004, Declaration of Dr. Todd Mowry, ¶ 46 (citing Ex.
`
`1005, redline comparison between the ’598 Application and the ’740 Application).
`
`But, the grounds asserted apply equally to either priority date.
`
`As with the issued patent, the ’598 Application contained twelve claims. In
`
`the first office action, all twelve claims were rejected under 35 U.S.C. § 103(a) as
`
`being unpatentable over U.S. Patent No. 5,983,227 (“Nazem”) in view of U.S.
`
`Patent No. 6,029,182 (“Nahab”). ’077 Patent File History, Ex. 1006. In response,
`
`the Applicant narrowed the claims to require “(a) that the sites accessed are sites
`
`that store information specific to a person; (b) that the sites accessed are associated
`
`with the specific person by virtue of being sites on a list at the Portal, the list
`
`associated with the person; (c) the software suite comprising a set of gathering
`
`agents with at least one gatherer specific to each cite accessed; and (d) that the
`
`Portal authenticates to individual sites as the person.” Id. Shortly after the
`
`amendments were submitted, the Examiner conducted an interview with the
`
`Applicant and then allowed the claims. Id.
`
`C.
`
` State of the Art
`
`5
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`Ex. 1012 Page 9
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`Petition for Inter Partes Review of US Patent No. 6,199,077
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`With the spread of content on the World Wide Web in the early-to-mid
`
`1990s, software solutions that allowed for aggregation and delivery of data on the
`
`Web had become well known to those of ordinary skill in the art by the priority
`
`date of the ’077 Patent. For example, Freishtat discloses “an apparatus and process
`
`for automated aggregation and delivery of electronic personal information or data
`
`(PI).” Freishtat, Ex. 1003, 1:23–26. Moreover, U.S. Patent No. 6,278,449 to
`
`Sugiarto (“Sugiarto”) (Ex. 1007) describes an apparatus which “collect[s]
`
`information from various web pages from the worldwide web internet, configure[s]
`
`this various information in accordance with a predefined user configuration file,
`
`defined by a particular user, and transmit[s] the configured various information to a
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`highly portable internet access device.” Id., 2:10–17.
`
`Those of ordinary skill in the art further recognized that much of the
`
`personal information available on the WWW is only accessible after the user has
`
`been authenticated, e.g., by providing his or her credentials (username and
`
`password). To automate this process, skilled artisans developed simulated web
`
`clients that simulated the user providing his or her credentials. For example, U.S.
`
`Patent No. 5,892,905 to Brandt et al. (“Brandt”) (Ex. 1008) describes “the
`
`capability to easily access many different application programs over the WWW via
`
`a standardized [graphical user interface].” Id., 3:57–60. In Brandt, a gateway
`
`accesses a user library to obtain authentication data needed to access software
`
`6
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`Ex. 1012 Page 10
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`Petition for Inter Partes Review of US Patent No. 6,199,077
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`applications for the user. Id., 12:15–17. The gateway then logs the user onto a
`
`requested service using normal security procedures. Id., 12:28–28. Thus, there is
`
`nothing novel or nonobvious about the concepts disclosed in the ’077 Patent.
`
`V. PROPOSED GROUNDS OF UNPATENTABILITY
` Summary of Grounds of Rejection
`A.
`The following chart demonstrates the grounds of rejection and the prior art
`
`applied against the challenged claims. With the present grounds of obviousness
`
`and the evidence submitted herein, Petitioner has established a reasonable
`
`likelihood that it will prevail in establishing unpatentability of claims 1–12 and
`
`requests institution of inter partes review and cancellation of these claims.
`
`Ground 1:
`
`§ 103 in view of Freishtat
`
`Ground 2:
`
`Ground 3:
`
`§ 103 in view of Freishtat
`combined with Zhao
`§ 103 in view of Sugiarto
`combined with Brandt
`
`Renders claims 1-12 obvious
`under §103(a)
`Renders claims 1-12 obvious
`under § 103(a)
`Renders claims 1-12 obvious
`under § 103(a)
`
`
`
`B.
`
` Prior Art Offered for the Present Unpatentability Challenges
`The present petition states invalidity grounds under 35 U.S.C. § 103 using
`
`the following patents and printed publication prior art:
`
`• U.S. Patent No. 6,317,783 to Freishtat (the “’783 Patent” or “Freishtat,” Ex.
`
`1003), issued on November 13, 2001, claiming priority to Provisional
`
`Application No. 60/105,917 (“the ’917 Application”), filed October 28, 1998;
`
`this reference is prior art under pre-AIA 35 U.S.C. § 102(a).
`
`7
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`Ex. 1012 Page 11
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`• Y. Zhao, “Technical Note, WebEntree: A Web Service Aggregator,” 37 IBM
`
`Sys. J. 584 (1998) (“Zhao,” Ex. 1009), published October 1998; this reference
`
`is prior art under pre-AIA 35 U.S.C. § 102(a).
`
`• U.S. Patent No. 6,278,449 to Sugiarto et al. (“Sugiarto,” Ex. 1007), issued
`
`August 21, 2001, filed on September 3, 1998; this reference is prior art under
`
`pre-AIA 35 U.S.C. § 102(e).
`
`• U.S. Patent No. 5,892,905 to Brandt et al. (“Brandt,” Ex. 1008), issued April 6,
`
`1999, filed on December 23, 1996; this reference is prior art under pre-AIA 35
`
`U.S.C. § 102(e).
`
`VI. CLAIM CONSTRUCTION
`Under 37 C.F.R. § 42.100(b), a claim in inter partes review is given the
`
`“broadest reasonable construction” in light of the specification. In re Cuozzo
`
`Speed Techs., LLC., 793 F.3d 1268, 1276 (Fed. Cir. 2015). Because the standard
`
`for claim construction at the Patent Office is different (i.e., broader) from that used
`
`in a U.S. district court litigation, see In re American Academy of Science Tech
`
`Center, 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004), Petitioner expressly reserves
`
`the right to argue a different claim construction in the district court proceeding for
`
`any term of the ’077 Patent, as appropriate.
`
`Petitioner requests that the Board give all claim terms not specifically
`
`construed herein their broadest reasonable construction. Nonetheless, Patent
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`8
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`Ex. 1012 Page 12
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`Petition for Inter Partes Review of US Patent No. 6,199,077
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`Owner and Petitioner have submitted claim construction briefing in the Co-
`
`Pending District Court Action. See Ex. 1010, Parties Claim Construction Briefs,
`
`(providing a listing of constructions proposed by Petitioner and Patent Owner).1
`
`Petitioner contends that many of these terms do not require specific construction in
`
`this proceeding; nevertheless, out of an abundance of caution, Petitioner explains
`
`below how the proposed grounds render the claims obvious under either Patent
`
`Owner’s or Petitioner’s proposed construction from the Co-Pending District Court
`
`Action.
`
`C.
`
` Proposed Claim Constructions
`1. “Internet Portal (System)” (All claims)
`
`The terms “Internet Portal” and “Internet Portal system” were previously
`
`construed by a District Court in litigation involving the ’077 Patent and a related
`
`patent that included a claim to an “Internet Portal system.” Yodlee, Inc. v.
`
`CashEdge, Inc., No. C 05-01550 SI, slip op. (N.D. Cal., July 7, 2006) (Ex. 1011)
`
`(“the CashEdge Proceeding”). Yodlee argued, and the District Court agreed, that
`
`both terms should be construed to mean “a website, requiring user authentication,
`
`used to connect with Internet destination[s]2 on behalf of end users and retrieve
`
`1 The Court has not construed claims in the Co-Pending District Court Action.
`
`2 The CashEdge Court’s Claim Construction Order incorrectly states
`
`“destination,” but Patent Owner urged the court to adopt a construction that
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`9
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`Ex. 1012 Page 13
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`personal information.” Id., 3. Petitioner proposes that under the broadest
`
`reasonable interpretation standard, “Internet Portal” and “Internet Portal system”
`
`should be construed at least that broadly.
`
`2. “Gatherer Agent” and “Gathering Software Agents” (All
`claims)
`
`In the CashEdge Proceeding, Yodlee argued, and the District Court agreed,
`
`that the terms “gatherer” and “gathering software agents” should be construed to
`
`mean “a software component and/or related data that once processed can be
`
`employed to locate and retrieve information from Internet destinations based on
`
`user or enterprise request.” Ex. 1011, 3. Petitioner proposes that under the
`
`broadest reasonable interpretation standard, “gatherer agent” and “gathering
`
`software agents” should be construed at least that broadly.
`
`3. “Dedicated To Each Site” (All claims)
`
`All claims of the ’077 Patent recite the term “dedicated” as in “at least one
`
`gatherer agent dedicated to each of the Internet sites” from claim 1 and “the
`
`gathering agent dedicated to each site accessed” from claim 7. The iteration of the
`
`term in Claim 1 was previously construed in the CashEdge Proceeding. The
`
`District Court, adopting Yodlee’s proposal, explained: “in order to effectively
`
`
`included the plural form of the word and agrees that the construction should
`
`include the plural version. See Ex. 1010.
`
`
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`10
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`Ex. 1012 Page 14
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`locate and retrieve the desired information, a software agent is dedicated to each
`
`Internet site. This means an agent containing the necessary site logic or protocols
`
`needed to locate and retrieve the desired data from a given site is employed for
`
`each site or information provider.” Id., 5. The District Court found that
`
`“‘dedicated’ does not mean that one gatherer cannot be used for two separate
`
`sites.” Id. Petitioner proposes that, at a minimum, “dedicated” does not mean that
`
`one gatherer cannot be used for two separate sites if they use the same logic.
`
`VII. THE PRIOR ART RENDERS OBVIOUS CLAIMS 1–12 OF
`THE ’077 PATENT
`
`The discussion below identifies each challenged claim and where the prior
`
`art teaches or suggests each portion of the claim, as well as where each portion of
`
`the claim is further analyzed in the Mowry Decl., Ex. 1004, and why a person of
`
`ordinary skill would be motivated to modify the base reference as outlined in the
`
`relevant obviousness combinations.
`
`D.
`
` Claims 1–12 Are Rendered Obvious by Freishtat alone or in
`view of Zhao
`4. Summary of Freishtat
`
`Freishtat teaches “an apparatus and process for automated aggregation and
`
`delivery of electronic personal information or data (PI).” Freishtat, Ex. 1003,
`
`1:23–26. Fig. 5 from Freishtat, below, depicts the basic components used to
`
`implement the invention therein. In Freishtat, the end user 210 accesses a client
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`11
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`Ex. 1012 Page 15
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`computer 220 that connects to the Internet 230 to access a PI engine 240 running
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`on a PI host 290. Id., 4:29–34. The PI engine 240 examines stored PI 280 and
`
`refreshes it by directly reacquiring the PI from the particular information
`
`provider’s Web site 250 running on the provider’s computer system 260. Id.,
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`4:34–38.
`
`
`
`The PI engine further includes a “PI access/transact component,” which
`
`“supports the update, acquisition and transaction functionality of the PI engine.”
`
`Id. 9:30–32. “For each piece of PI requiring access or update,” the PI
`
`access/transact component “looks up the access procedure and information needed
`
`for the particular PI in the Provider store” as well as “verification and access data,”
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`which is found in the user store. Id. 9:38–41. “A simulated Web client could
`
`perform access or transaction processes automatically supplying access and
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`12
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`Ex. 1012 Page 16
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`verification data as necessary.” Id. 9:59–61. The PI engine 240 further stores the
`
`aggregated PI in its store 280 and delivers the PI to a selected destination, for
`
`example across the Internet 230 to the client computer 220 which displays the
`
`information to the end user 210 using the client software 270. Id., 4:39–46.
`
`5. Eligibility of Freishtat As Prior Art
`
`Freishtat is eligible to serve as prior art for the ’077 Patent under 35 U.S.C.
`
`§ 102(e)(2). Freishtat issued on November 13, 2001 on an application claiming
`
`priority to Provisional Appl. No. 60/105,917 filed in Oct. 1998 (“the ’917
`
`Application”). Moreover, Freishtat was not cited by the USPTO or considered by
`
`the Examiner during prosecution of the ’077 Patent.
`
`A provisional application can serve as the “application . . . filed in the
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`United States before the invention” under § 102(e). In re Giacomini, 612 F.3d
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`1380, 1383 (Fed. Cir. 2010). For a patent to serve as § 102(e) prior art as of its
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`provisional application’s filing date, the anticipating disclosure must be “contained
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`in substance in the [provisional] application.” Id., 1385 (quotation marks omitted).
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`Here, on Oct. 28, 1998, the ’917 Application, entitled, “Apparatus and Method for
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`Automated Delivery of and Transactions Involving Electronic Personal
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`Information or Data,” was filed. Ex. 1012. The disclosure in the ’917 Application
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`is substantially similar to the disclosure in the non-provisional application that
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`ultimately led to the Freishtat patent. In fact, the majority of the specification of
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`Petition for Inter Partes Review of US Patent No. 6,199,077
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`the Freishtat Patent is also contained in the ’917 Application. Compare Ex. 1012
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`with Ex. 1003. A redline showing the differences between the ’917 Application
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`and the Freishtat Patent is also attached as Ex. 1013. To further highlight the
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`similarity between the application, Petitioner has included citations herein to both
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`the Freishtat Patent and the ’917 Application.
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`6. Summary of Zhao
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`Zhao describes “WebEntree,” a “web service aggregator.” Zhao, Ex. 1009,
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`584. The system provides a single user interface, which allows the user to access
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`information from multiple information sources, called Web service components,
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`even if those sources require authentication for access. See id. In Zhao, the end
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`users access the WebEntree Portal through the Internet, which in turn extracts
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`information from various Web Servers across the Internet. See id., Fig. 1.
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`Zhao teaches a registration subsystem and service engine as can be seen in
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`Fig. 3, below. The registration system allows the user to configure the system for
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`his/her preferences and to select the desired web service components, or
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`information sources. Id., 588–90. End users are presented with a personalized
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`home page that includes hyperlinks to each user’s selected web service
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`components. Id., 587. Thereafter, “[w]hen the user clicks on a component's
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`hyperlink, the request is sent to the service engine.” The WebEntree service
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`engine then accesses the various sources and stores the information to be delivered
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`Petition for Inter Partes Review of US Patent No. 6,199,077
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`to the end user. Id., 591–93.
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`Zhao further discloses that the service engine includes a request dispatcher
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`that constructs a URL based on the parameter string passed by the user and the
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`server map information stored in the repository then “sends the constructed URL to
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`the corresponding Web service component, gets response content back, and sends
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`it to the Web service coordinator.” Id., 591. “After the Web service coordinator
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`gets the Web content from the Web service component, it sends the content to the
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`content editor. The content editor parses the content” for delivery to the end user.
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`Id., 591; see also id., 587.
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`7. Eligibility of Zhao As Prior Art
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`Zhao is eligible to serve as prior art for the ’077 Patent under 35 U.S.C.
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`Petition for Inter Partes Review of US Patent No. 6,199,077
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`§ 102(a). Zhao was accepted for publication on July 13, 1998, and was published
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`in a widely disseminated professional journal recognized to those of skill in the art
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`of the ’077 Patent in Oct. 1998. See Ex. 1009; see also Ex. 1004, Mowry Decl. ¶
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`70 (citing Ex. 1014, ACM digital library print out with Oct. 1998 publication date).
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`Moreover, Zhao was not cited by the USPTO or considered by the Examiner
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`during prosecution of the ’077 Patent.
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`8. The Proposed Combination of Freishtat and Zhao
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`Petitioner contends that Freishtat, alone, renders claims 1–12 of the ’077
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`Patent obvious. To the extent the Board disagrees, however, the proposed
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`combination of Freishtat and Zhao teaches all of the limitations of claims 1–12,
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`rendering them obvious. It would have been obvious to modify the PI engine in
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`Freishtat to incorporate the functionality of Zhao’s content editor and the disclosed
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`URLs. In the resulting system, a user’s PI record would contain URL addresses
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`for that user’s preferred content providers. Moreover, the “access links” send to
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`users with their PI would be URL hyperlinks to access the relevant provider sites.
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`Further, the access/transact component of the PI engine would incorporate the
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`parsing functionality of Zhao’s content editor before delivering PI to users. As
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`described below, one of ordinary skill in the art at the priority date of the ’077
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`Patent would have been motivated to make this modification and would have had a
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`reasonable expectation of success of doing so. See Ex. 1004, Mowry Decl. ¶¶ 71-
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`88. Petitioner provides further details about the proposed combination of Freishtat
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`and Zhao, as appropriate, in the sections that follow.
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`a. Motivation to Combine
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`As Dr. Mowry explains in his Declaration, in the years since the Internet and
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`World Wide Web were first developed in the late 1980s and early 1990s, the
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`amount of content available over the Internet grew exponentially. See id., ¶ 77;
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`Zhao, Ex.1007, at 584–85; Freishtat, Ex. 1003, at 1:27–3:2. By the mid-1990s,
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`web browser technology was developed that allowed users to efficiently navigate
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`to particular web sites (e.g., Netscape’s Navigator Web Browser). Ex. 1004,
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`Mowry Decl., ¶ 77 (citing U.S. Patent No. 6,029,175 to Chow et al. (“Chow”), Ex
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`1015, 2:7–13). These browsers, however, still required a user to manually navigate
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`to specific websites. See id., ¶¶ 77–78. Thus, those skilled in the art developed
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`various types of web aggregation technologies to automatically review websites
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`and extract content of interest. See id., ¶ 78–79. For example, Chow describes a
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`software agent known as a “Revision Manager” that automatically searched
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`specifically for content that had changed. See id., ¶ 79 (citing Chow, Ex. 1015,
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`3:60–64). In another example, an “online search engine” was developed that
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`allowed intellectual property owners to monitor the Internet for violations of their
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`intellectual property rights. See id., ¶ 80 (citing U.S. Patent No. 6,401,118 to Jason
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`B. Thomas (“Thomas”) (Ex. 1016), Abstract).
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`Those of ordinary skill in the art also recognized that as the proliferation of
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`content on the Web continued, so too would consumers’ demand for “services that
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`make their online experience simpler, easier to use, and more satisfying.”
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`Freishtat, Ex. 1003, 1:29–36; Ex. 1004, Mowry Decl., ¶¶ 81–82. Thus, by the time
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`of the priority date of the ’077 Patent, “destination sites and portals [were]
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`constantly seeking content and/or technologies which drive quality traffic to their
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`site and keep it there.” Freishtat, Ex. 1003, 1:58–66; Ex. 1004, Mowry Decl., ¶¶
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`81–82. Indee