UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`KYOCERA CORPORATION, and
`MOTOROLA MOBILITY LLC
`Petitioners,
`v.
`
`SOFTVIEW LLC
`Patent Owner.
`____________
`
`PETITIONERS’ CONSOLIDATED REPLY TO PATENT OWNER’S RESPONSE
`____________
`
`CASE IPR2013-00007
`CASE IPR2013-00256
`Patent 7,461,353
`
`____________
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`KYOCERA CORPORATION, and
`MOTOROLA MOBILITY LLC
`Petitioners,
`v.
`
`SOFTVIEW LLC
`Patent Owner.
`____________
`
`PETITIONERS’ CONSOLIDATED REPLY TO PATENT OWNER’S RESPONSE
`____________
`
`CASE IPR2013-00007
`CASE IPR2013-00256
`Patent 7,461,353
`
`____________
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Response To SoftView Statement Of Material Facts......................................1
`
`Pad++ And Zaurus Teach “Preserv[] The Original Page Layout”
`Under The Broadest Reasonable Construction................................................2
`
`III. Claims 1, 33, 36, 43, 48, 51, 52, 58, 59, 66, 118, 138, 139, 149, 183,
`252 And 283 Are Obvious Based On A Combination Of Zaurus And
`Pad++...............................................................................................................5
`
`A.
`
`B.
`
`Zaurus and Pad++ Teach All Of The Claim Limitations......................5
`
`The Skilled Person Would Combine Zaurus And Pad++ .....................7
`
`IV. Claims 48, 51, 52, And 317 Are Obvious Based On The Combination
`Of Zaurus And Pad++....................................................................................10
`
`V.
`
`VI.
`
`Claims 1, 33, 36, 43, 51, 52, 58, 59, 66, 118, 138, 139, 149, 183, 252,
`283 and 317 Of The ‘353 Patent Are Obvious Based On The
`Combination Of Zaurus, Hara And Tsutsumitake.........................................10
`
`SoftView’s Proffered “Secondary Considerations” Do Not Overcome
`The Prima Facie Case Of Obviousness .........................................................11
`
`VII. Conclusion .....................................................................................................15
`
`- i -
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Apple Inc. v. International Trade Comm’n,
`___ F.3d ___, 2013 WL 4007535 (Fed. Cir. 2013)..............................................15
`
`ArcelorMittal France v. AK Steel Corp.,
`700 F.3d 1314 (Fed. Cir. 2012)............................................................................11
`
`Beckman Instruments v. LKB Produkter AB,
`892 F.2d 1547 (Fed. Cir. 1989)..............................................................................9
`
`Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
`851 F.2d 1387 (1988) ...........................................................................................12
`
`Gambro Lundia AB v. Baxter Healthcare Corp.,
`110 F.3d 1573 (Fed. Cir. 1997)............................................................................12
`
`Hughes Tool Co. v. Dresser Industries, Inc.,
`816 F.2d 1549 (Fed. Cir. 1987)............................................................................12
`
`Impax Labs. Inc. v. Aventis Pharm.Inc.,
`468 F.3d 1366 (Fed. Cir. 2006)..............................................................................9
`
`In re Academy of Science-Tech Center,
`367 F.3d 1359 (Fed. Cir. 2004)..............................................................................4
`
`In re American Academy of Science-Tech Center,
`367 F.3d 1359 (Fed. Cir. 2004)..............................................................................4
`
`In re Antor Media Corp.,
`689 F.3d 1282 (Fed. Cir. 2012).............................................................................9
`
`In re Buchner,
`929 F.2d 660 (Fed. Cir. 1991) ................................................................................9
`
`In re Donohue,
`766 F.2d 531 (Fed. Cir. 1985) ................................................................................9
`
`In re Sneed,
`710 F.2d 1544 (Fed. Cir. 1983) .............................................................................8
`
`- ii -
`
`
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ..............................................................................................8
`
`McNeil-PPC, Inc. v. L. Perrigo Co.,
`337 F.3d 1362 (Fed. Cir. 2003)............................................................................13
`
`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed. Cir. 2006)..................................................................... 11, 13
`
`Rasmusson v. SmithKline Beecham Corp.,
`413 F.3d 1318 (Fed. Cir. 2005)..............................................................................9
`
`Richdel, Inc. v. Sunspool Corp.,
`714 F.2d 1573 (Fed.Cir.1983) ..............................................................................15
`
`Saffran v. Johnson & Johnson,
`712 F.3d 549 (Fed. Cir. 2013) ................................................................................4
`
`Symbol Techs. Inc. v. Opticon Inc.,
`935 F.2d 1569 (Fed. Cir. 1991)..............................................................................9
`
`Tokai Corp. v. Easton Enters.,
`632 F.3d 1358 (Fed. Cir. 2011)............................................................... 12, 13, 15
`
`Winner Intern. Royalty Corp. v. Wang,
`202 F.3d 1340 (Fed. Cir. 2000)............................................................................13
`
`Other Authorities
`Microsoft Corp. v. Proxyconn, Inc.
`IPR2012-00026, Paper 32 (PTAB, March 8, 2013).............................................11
`
`- iii -
`
`
`
`TABLE OF EXHIBITS
`
`PX 1004
`
`DESCRIPTION
`
`EXHIBIT
`RELEVANT PATENT MATERIALS ****
`PX 1001 U.S. Patent No. 7,461,353 (“the ‘353 Patent”)
`PX 1002 Prosecution History for the ‘353 Patent
`PRIOR ART ****
`PX 1003 Nokia Unveils World’s First All-In-One Communicator for the
`Americas, Nokia Press Release, September 19, 1996 (“Nokia”)
`Watanabe, Mituyoshi, How to Make the Most of the Power Zaurus,
`Computing Communication Multimedia Mobile - Computing
`Communication Multimedia, April 14, 1998 (“Zaurus_1”) (including
`partial English translation)
`Power Zaurus Specifications: User Manual - Mobile Business Tool –
`Model MI-106 / MI-106M / MI-110M, November 1997 (“Zaurus_2”)
`(including partial English translation)
`Power Zaurus MI-110 / M106 / M106 Brochure, December 1997
`(“Zaurus_3”)
`Power Zaurus MI-610/DC Brochure, June 1998 (“Zaurus_4”)
`Power Zaurus MI-504/ MI-506/ MI-506DC Brochure, July 1997
`(“Zaurus_5”)
`Power Zaurus Article, PCWatch, November 18, 1997 (“Zaurus_6”)
`Japanese Application No. H10-21224 to Tsutsumitake et al., January
`23, 1998 (“Tsutsumitake”) (including English translation)
`Bederson, Benjamin B. and Hollan James D., Pad++: A Zoomable
`Graphical Interface System, CHI ‘95 Mosaic of Creativity, May 1995
`(“Bederson-1”)
`Bederson, Benjamin B. and Furnas, George W, Space-Scale Diagrams:
`Understanding Multiscale Interfaces, CHI ‘95 Proceedings, 1995
`(“Bederson-2”)
`Bederson, Benjamin B., et al, A Zooming Web Browser, SPIE, Vol.
`2667, 260-271, May 1996 (“Bederson-3”)
`Bederson, Ben and Meyer, Jon, Implementing a Zooming User
`Interface: Experience Building Pad ++, Software-Practice and
`Experience, Vol. 28(1), 1101-1135, August 1998 (“Bederson-4”)
`
`PX 1005
`
`PX 1006
`
`- iv -
`
`
`
`EXHIBIT
`
`DESCRIPTION
`Bederson, Benjamin B., et al., Pad++: A Zoomable Graphical
`Sketchpad for Exploring Alternate Interface Physics, Journal of Visual
`Languages and Computing, Vol. 7, 3-31, 1996 (“Bederson-5”)
`Pad++ Reference Manual Version 0.2.7, published July 9, 1996
`(“Reference Manual”)
`
`PX 1008
`
`PX 1009
`
`Pad++ Programmer’s Guide Version 0.2.7, published June 10, 1996
`(“Programmer’s Guide”)
`PX 1007 Ferraiolo, Jon, Scalable Vector Graphics Requirements: W3C Working
`Draft, October 29, 1998 (“SVG”)
`Japanese Application Publication H10-326169 to Masao Hara,
`December 8, 1998 (“Hara”) (including English translation)
`Specification for the Simple Vector Format v. 1.1, January 16, 1995
`(“SVF”)
`“New CAD System Works With AutoCAD Drawings Without
`Translation,” June 17, 1996, retrieved from:
`http://web.archive.org/webI19961019052917/http://soft:source.cominet
`news.html, (“SVF Press 1”)
`“Bring New CAD Viewing Power to the Internet,” March 4, 1996,
`retrieved from:
`http://web.archive.org/webI19961019052917/http://softsource.cominet
`news.html, (“SVF Press 2”)
`Matthews, et al., Vector Markup Language, World Wide Web
`Consortium Note, Note-VML-19980513, May 13, 1998, retrieved
`from:
`http://www.w3.org/TRl1998/Note-VML 19980513 (“VML”)
`PX 1011 Gessler, S., Kotulla, A., “PDAs as mobile WWW browsers.” Proc. of
`Mosaic and the Web Conference, Chicago, October 1994
`Lauff, Markus, and Gellersen, Hans-Werner, “Multimedia client
`implementation on Personal Digital Assistants”, Interactive Distributed
`Multimedia Systems and Telecommunication Services, 1997
`“NetHopper 2.0 First true Web browser for Newton”. PenComputing
`Magazine, 1996, retrieved from:
`http://www.pencomputing.com/archive/PCM_11/nethopper.html
`
`PX 1010
`
`PX 1012
`
`PX 1013
`
`- v -
`
`
`
`EXHIBIT
`
`PX 1014
`
`PX 1016
`
`PX 1017
`
`PX 1018
`
`PX 1019a
`
`DESCRIPTION
`Kamada, Compact HTML for Small Information Appliances, February
`9, 1998, retrieved from: http://www.w3.org/TR/1998/NOTE-
`compactHTML-19980209/
`OTHER MATERIALS ****
`PX 1015 Power of Attorney, dated September 21, 2012
`Complaint for Patent Infringement filed May 10, 2010 in the case of
`SoftView LLC v. Apple Inc., and AT&T Mobility LLC, Case No. 10-
`389-LPS in the United States District court for the District of Delaware
`First Amended Complaint filed December 3, 2010 in the case of
`SoftView LLC v. Apple Inc., and AT&T Mobility LLC, Case No. 10-
`389-LPS in the United States District court for the District of Delaware
`Second Amended Complaint filed September 30, 2011 in the case of
`SoftView LLC v. Apple Inc., and AT&T Mobility LLC, Case No. 10-
`389-LPS in the United States District court for the District of Delaware
`Joint Claim Construction Chart (Volume 1 of 2) filed August 31, 2012
`in the case of SoftView LLC v. Apple Inc., and AT&T Mobility LLC,
`Case No. 10-389-LPS in the United States District court for the District
`of Delaware
`Joint Claim Construction Chart (Volume 2 of 2) filed August 31, 2012
`in the case of SoftView LLC v. Apple Inc., and AT&T Mobility LLC,
`Case No. 10-389-LPS in the United States District court for the District
`of Delaware
`SoftView LLC’s Opening Claim Construction Brief filed September
`21, 2012 in the case of SoftView LLC v. Apple Inc., and AT&T Mobility
`LLC, Case No. 10-389-LPS in the United States District court for the
`District of Delaware
`January 20, 2012 Declaration of Jack D, Grimes, Ph.D., submitted by
`Third Party Requester Apple in Inter Partes Reexamination Nos.
`95/000,634 and 95/000,635 (“Grimes-1”)
`April 2, 2012 Declaration of Jack D, Grimes, Ph.D., submitted by Third
`Party Requester Apple in Inter Partes Reexamination No. 95/000,634
`and 95/000,635 (“Grimes-2”)
`
`PX 1019b
`
`PX 1020
`
`PX 1021
`
`PX 1022
`
`- vi -
`
`
`
`PX 1023
`
`PX 1024
`
`PX 1025
`
`PX 1026
`
`PX 1027
`
`EXHIBIT
`
`DESCRIPTION
`Declaration Of Craig Johnson In Support Of Plaintiff SoftView LLC's
`Opening Claim Construction Brief (including Exhibits 1-14) filed
`September 21, 2012 in the case of SoftView LLC v. Apple Inc., and
`AT&T Mobility LLC, Case No. 10-389-LPS in the United States District
`court for the District of Delaware
`Declaration Of Glenn Reinman In Support Of Plaintiff SoftView LLC's
`Opening Claim Construction Brief (including Exhibits A-D) filed
`September 21, 2012 in the case of SoftView LLC v. Apple Inc., and
`AT&T Mobility LLC, Case No. 10-389-LPS in the United States District
`court for the District of Delaware
`Plaintiff SoftView LLC's Technology Tutorial filed September 21,
`2012 in the case of SoftView LLC v. Apple Inc., and AT&T Mobility
`LLC, Case No. 10-389-LPS in the United States District court for the
`District of Delaware
`Defendants’ Opening Claim Construction Brief (including Exhibits A-
`J) filed September 21, 2012 in the case of SoftView LLC v. Apple Inc.,
`and AT&T Mobility LLC, Case No. 10-389-LPS in the United States
`District court for the District of Delaware
`Softview LLC's Responses To Kyocera Corp. And Kyocera Wireless
`Corp.'S First Set Of Interrogatories (NO. 1) with Exhibits, filed July 23,
`2012 in the case of SoftView LLC v. Apple Inc., and AT&T Mobility
`LLC, Case No. 10-389-LPS in the United States District court for the
`District of Delaware
`PX 1028 Declaration of Hidekazu Takahashi, dated September 25, 2012.
`PX 1029 Declaration of Manabu Toda, dated September 28, 2012.
`PX 1030 September 13, 2013 Declaration of Jack D, Grimes, Ph.D.
`PX 1031 Opera Browser Documentation Submitted by SoftView during
`prosecution of the ‘353 Patent.
`Excerpts from the Deposition Transcript of Benjamin B. Bederson,
`dated February 13, 2012 in the Co-Pending Litigation, SoftView LLC v.
`Apple Inc., et al., Case No. 10-389-LPS.
`PX 1033 First iPhone commercial (Video File)
`PX 1034
`“There’s An App For That,” iPhone commercial (Video File)
`
`PX 1032
`
`- vii -
`
`
`
`PX 1035
`
`PX 1036
`
`EXHIBIT
`
`DESCRIPTION
`“Watch every Apple iPhone ad from the first ‘Hello’,” available at:
`http://www.phonearena.com/news/Watch-every-Apple-iPhone-ad-
`from-the-first-Hello_id27213 (accessed August 29, 2013)
`Apple's iPhone TV Ads: The Complete Campaign - All 89 TBWA
`spots so far, beginning with the first teaser by Tim Nudd, available at:
`http://www.adweek.com/adfreak/apples-iphone-tv-ads-complete-
`campaign-138229?page=1 (accessed August 29, 2013)
`PX 1037 U.S. Patent No. 6,211,856 to Choi
`PX 1038 U.S. Patent No. 6,466,203 to Van Ee
`PX 1039 U.S. Patent No. 6,133,916 to Bukszar
`PX 1040 U.S. Patent No. 6,724,403 to Santoro
`PX 1041 Publication, WEST: A Web Browser for Small Terminals
`PX 1042 Descy, Don E., “All Aboard the Internet,” TechTrends,
`January/February 1997, pp. 3-5.
`‘353 Patent Claim Chart (Claims 1 and 317) - (Zaurus / Pad++)
`PX 1043
`PX 1044
`‘926 Patent Claim Chart (Claim 30) - (Zaurus / Pad++)
`PX 1045 U.S. Patent No. 6,985,136 to Enmei
`PX 1046 Rossmann, Alain, “The AT&T EO Travel Guide,” (1993)
`Excerpts from the Deposition Transcript of Gary Rohrabaugh, dated
`February 16, 2013, in the Co-Pending Litigation, SoftView LLC v.
`Apple Inc., et al., Case No. 10-389-LPS.
`Excerpts from the Deposition Transcript of Robert Alan Burnett, dated
`May 3, 2013, in the Co-Pending Litigation, SoftView LLC v. Apple Inc.,
`et al., Case No. 10-389-LPS.
`PX 1049 September 17, 2013 Declaration of Richard J. Lutz, Ph.D.
`
`PX 1047
`
`PX 1048
`
`- viii -
`
`
`
`I.
`
`RESPONSE TO SOFTVIEW STATEMENT OF MATERIAL FACTS
`
`SoftView’s primary argument that Pad++ does not scale a Web page while
`
`“preserving the original page layout, functionality and design” (the “preserve
`
`limitation”) contradicts the inventors’ explicit definition of that limitation. PX
`
`1002 at 233-35. The broadest reasonable construction of this limitation must at
`
`least include the inventors’ definition, because (1) the limitation is not found in the
`
`specification, (2) the limitation was added and specifically defined during
`
`prosecution, and (3) the definition is consistent with the understanding of the
`
`skilled person. PX 1030, Reply Declaration of Jack D. Grimes, Ph.D. (“Grimes
`
`Rep. Decl.”) at ¶ 36. In the words of the inventors, “preserving the [overall layout,
`
`functionality, and] design” of the content . . . refers to preserving the design as
`
`interpreted by the browser while at different zoom levels and panned views. . .
`
`rather than in comparison to how it is rendered by a particular desktop browser”
`
`See PX 1002 at 233 (‘353 patent prosecution history).
`
`SoftView’s arguments in paragraphs A and B (Opp. at 3) fail under the
`
`correct construction of the preserve limitation and because none of the claims are
`
`limited to small screens, as SoftView incorrectly assumes throughout its brief. The
`
`combinations of Zaurus, Pad++, Hara, and/or Tsutsumitake under consideration in
`
`this proceeding teach all of the elements of the claimed inventions. SoftView’s
`
`arguments in paragraphs C – E (Opp. at 3) are misplaced because one skilled in the
`
`- 1 -
`
`
`
`art would have combined the teachings of Pad++ with the teachings of Zaurus. PX
`
`1030, Grimes Rep. Decl. ¶¶ 110-117. The skilled person would also have
`
`combined Zaurus with Hara and/or Tsutsumitake. Id. at ¶¶166-173. Finally,
`
`paragraph F of SoftView’s statement (Opp. at 3-4) is meritless, because tapping to
`
`zoom on a touchscreen, as recited in the claims, would have been obvious to one
`
`skilled in the art who was familiar with clicking on an image with a mouse. Grimes
`
`Rep. Decl. ¶¶ 118-165.
`
`II.
`
`PAD++ AND ZAURUS TEACH “PRESERV[] THE ORIGINAL PAGE LAYOUT”
`UNDER THE BROADEST REASONABLE CONSTRUCTION
`
`The inventors added the preserve limitation by amendment in response to an
`
`office action rejecting claims that had been added by a series of preliminary
`
`amendments following the introduction of the iPhone.1 E.g., Preliminary
`
`Amendment, PX 1002 at 661 (claim 71); see also id. at 773 (3-31-07), 731 (6-6-
`
`07), 699 (7-19-07), and 660 (8-31-07). Those claims recited “substantially retains
`
`the original page layout . . .” The Examiner rejected the claims under section 112
`
`because the word “substantially” rendered them indefinite. PX 1002 at 208
`
`(remarks section referring to Examiner’s action of 10/23/2007); at 547 (Office
`
`1 SoftView’s principal owner (Opp. at 4) and his patent attorney became aware of
`
`the iPhone in January 2007 (PX 1047, 290:13-18; PX 1048, 46:24-47:4).
`
`- 2 -
`
`
`
`Action of 10/23/2007). In response, on May 20, 2008, the inventors amended the
`
`claims as follows:
`
`“substantially retains preserves the original page layout, functionality
`and attributes design of the content defined by its original format
`when scaled and rendered.”
`PX 1002 at 144 -145.
`
`In a section spanning over 18 pages, the inventors explained the technology
`
`in order to justify their proposed definition of the scope of the amended claim
`
`limitation. PX 1002 at 218-236. They represented that a Web browser might not
`
`retrieve all content associated with a Web page because the browser might not be
`
`capable of supporting content such as Flash, Active-X or TIFF images. Id. at 225-
`
`226. Using several examples (id. at 225-231), they pointed out that Internet
`
`Explorer displayed the same Web page differently from Netscape and Firefox, and
`
`that “[e]ven when rendering the same Web page source content (i.e., the HTML
`
`code definition of the Web page), conventional Web browsers may not render the
`
`(non-scaled) Web page identically.” Id. at 226-231 (emphasis added). In addition,
`
`they represented that each browser determines how a hyperlink is activated, and
`
`that hyperlinks may not work on a zoomed-out view. Id. at 232.
`
`Based on their explanation of the technology, the inventors defined the
`
`scope of the “preserve” limitation as follows:
`
`- 3 -
`
`
`
`With respect to the scope of the terminology “preserving the [overall
`layout, functionality, and] design” of the content, this refers to
`preserving the design as interpreted by the browser while at different
`zoom levels and panned views, as opposed to rendering the content
`identically to how it is rendered by a particular desktop browser that
`may interpret the page design differently. . . . [T]he page layout (to
`be preserved) is determined as interpreted by the browser, rather
`than as a comparison to how it is rendered by a particular desktop
`browser.
`
`Id. at 233 (emphasis added). They also represented that all the claims with
`
`variations of the “preserve . . . original page layout” should be construed to have
`
`the same scope. PX 1002 at 234-235.
`
`When a claim limitation not found in the specification is added during
`
`prosecution and is defined by the inventors in the same amendment that added it,
`
`the broadest reasonable construction should include the inventors’ definition. This
`
`is especially true where, as here, there is evidence that the inventors’ definition is
`
`consistent with the understanding of a person skilled in the art. In re American
`
`Academy of Science-Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004) (broadest
`
`reasonable construction “must be consistent with the one that those skilled in the
`
`art would reach.”); cf., Saffran v. Johnson & Johnson, 712 F.3d 549, 559 (Fed. Cir.
`
`2013) (inventor’s unqualified assertion during prosecution provided an
`
`“affirmative definition for the disputed term”). In this case, the prosecution history
`
`- 4 -
`
`
`
`definition is consistent with how a person skilled in the art would understand the
`
`limitation. Grimes Rep. Decl. ¶¶ 24-55.
`
`III. CLAIMS 1, 33, 36, 43, 48, 51, 52, 58, 59, 66, 118, 138, 139, 149, 183, 252, 283
`AND 317 ARE OBVIOUS BASED ON ZAURUS AND PAD++
`
`A.
`
`Zaurus and Pad++ Teach All Of The Claim Limitations
`
`Under the correct construction, there can be no question that both Pad++ and
`
`Zaurus “preserves the original page layout, functionality, and design.” For
`
`example, section 3 of the Pad++ Tour describes an HTML browser that is capable
`
`of preserving a page layout when zooming. Compare, PX 1006 at 287 (full web
`
`page) with PX 1006 at 289 (zoomed web page). Grimes Rep. Decl. ¶¶ 72-78.
`
`Whether the Pad++ software downloaded by SoftView actually supported
`
`all HTML code (Opp. at 22-25) is not a factor in the obviousness calculation
`
`because the claims do not require it. Further, Pad++ discloses that its browser was
`
`“primitive” but that “you could imagine a much more advanced version.” PX 1006
`
`at 286. One skilled in the art seeking to develop a zoomable commercial browser
`
`consistent with the teachings of Pad++ would have been capable of either adding
`
`code to other, existing browser software to create a vector-based zoomable
`
`browser, or by adding additional code for Pad++ to support the remainder of
`
`HTML tags. Grimes Rep. Decl. ¶¶ 79-90.
`
`SoftView’s other arguments also are divorced from the claims at issue.
`
`SoftView’s “unattractive fonts” argument (Opp. at 25-27) is misplaced in view of
`
`- 5 -
`
`
`
`the prosecution history, where Mr. Rohrabaugh explained that fonts are a function
`
`of the browser and underlying operating system, PX 1002 at 431-432, an
`
`explanation recognized by those skilled in the art. Grimes Rep. Decl. ¶¶ 33-49. The
`
`fact that Pad++ supports semantic zooming (Opp. at 26-29) is irrelevant because
`
`Pad++ also supports pure geometric zooming (PX1006 at 106) and further in view
`
`of SoftView’s prosecution history explanation that hyperlinks might not work on a
`
`zoomed-out page. PX 1002 at 232. So, too, is the “missing hyperlink” argument
`
`concerning Fig. 5 of Bederson-5. SoftView’s reliance on Dr. Grimes’ deposition
`
`testimony to support its argument is misplaced because this issue was not covered
`
`by Dr. Grimes’ prior declarations. Grimes Rep. Decl. ¶¶ 50-54. Thus, SoftView’s
`
`cross-examination on this issue was improper under 37 C.F.R. § 42.53(d)(5)(D)(ii).
`
`There can be no dispute that Zaurus teaches a zoomable web browser.
`
`Grimes Rep. Decl. ¶¶ 99-104. Under a proper construction in light of SoftView’s
`
`prosecution definition, the Zaurus web browser preserves the original page layout,
`
`contrary to SoftView’s arguments at pages 27-29. Grimes Rep. Decl. ¶¶ 105-106.
`
`It does not matter that the Zaurus web browser did not support certain plug-ins,
`
`because, as SoftView explained during prosecution, its alleged invention includes
`
`browsers that do not support plug-ins. PX 1002 at 225-31. See Grimes Rep. Decl.
`
`¶¶ 103-104.
`
`- 6 -
`
`
`
`B.
`
`The Skilled Person Would Combine Zaurus And Pad++
`
`SoftView’s “lack of motivation” argument at pages 29-35 ignores the
`
`language of the claims and is contrary to law. None of the asserted claims of the
`
`‘353 patent are limited to devices with small screens. See claims 1, 33 (wireless
`
`device), 43, 48, 52, 58, 59, 66 (mobile hand-held device), 139 (method used on a
`
`“device”), 183 (method on a “hand-held device”), 283 (machine-readable
`
`medium), 317 (“hand held wireless device”). See also, e.g., claim 34 (“[t]he
`
`wireless device of claim 1, wherein the device comprises one of a desktop
`
`computer, notebook computer or laptop computer”) and 68 (“The mobile hand-
`
`held device of claim 36, wherein the device comprises one of a notebook computer
`
`or laptop computer.”). In addition, this Board recognized that “relevant references
`
`which teach zooming techniques are not limited to those which deal with small
`
`screens.” Decision at 22-23. Thus, there is no merit to SoftView’s argument that
`
`Pad++ “teaches away” from implementation on a small screen (Opp. at 35-38). See
`
`generally Grimes Rep. Decl. ¶¶ 65-69. Moreover, even if the claims were so
`
`limited, Pad++ indisputably suggests that it can be applied to PDAs. Grimes Rep.
`
`Decl. ¶¶ 65-69.
`
`The skilled person would not have been deterred from applying the
`
`teachings of Pad++ to Zaurus. SoftView’s argument is wrong on both the law and
`
`the facts when it assumes that the skilled person would have been deterred because
`
`- 7 -
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`
`
`Pad++ software was not optimized for Zaurus. “[I]t is not necessary that the
`
`inventions of the references be physically combinable to render obvious the
`
`invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). It is
`
`the teachings that are to be combined, not the specific devices disclosed in the prior
`
`art references. See also KSR Int’l Co. v. Teleflex, Inc. 550 U.S. 398, 425-26 (2007)
`
`(rejecting the argument that attaching a sensor to the prior art Asano pedal would
`
`not work because the Asano pedal was bulky, complex and expensive). The skilled
`
`person was capable of applying the teachings of Pad++ and developing a zoomable
`
`browser. Grimes Rep. Decl. ¶¶79-90.
`
`As this Board properly found, the motivation to combine the zooming
`
`features of Pad++ with Zaurus is provided in part by Pad++, which mentions that it
`
`may be applied to PDAs. Decision at 23. See also Grimes Rep. Decl. ¶¶ 110-117.
`
`The disclosure in Pad++ about the usefulness of zooming techniques that might
`
`apply to PDAs, plus the zoomable browser in Zaurus provide ample motivation to
`
`combine these references. Grimes Rep. Decl. ¶¶ 174-176.
`
`SoftView’s myopic focus on the Pad++ software ignores the fact that its own
`
`specification discloses no software for translating HTML into vector-based
`
`zoomable graphics. Because a patent need not teach, and preferably omits, what is
`
`well known in the art, the failure to disclose software in the specification must
`
`mean that the skilled person could have written code to apply the teachings of
`
`- 8 -
`
`
`
`Pad++ to Zaurus. In re Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991); see also In re
`
`Antor Media Corp., 689 F.3d 1282, 1290 (Fed. Cir. 2012) (“undue experimentation
`
`is determined based on both the nature of the invention and the state of the art”).
`
`SoftView’s arguments to the effect that Pad++ code written in Tcl/Tk script
`
`language would have run slowly on Zaurus is misplaced. "[P]roof of efficacy is not
`
`required.” Impax Labs. Inc. v. Aventis Pharm. Inc., 468 F.3d 1366, 1383 (Fed. Cir.
`
`2006). Neither is proof of utility. Rasmusson v. SmithKline Beecham Corp., 413
`
`F.3d 1318, 1326 (Fed. Cir. 2005); see also Beckman Instruments v. LKB Produkter
`
`AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989) (applying teachings of reference even
`
`though device was inoperative); Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569,
`
`1578 (Fed. Cir. 1991). If the reference teaches every claimed element of the article,
`
`secondary evidence, such as other patents or publications, can be cited to show
`
`public possession of the method of making and/or using. In re Donohue, 766 F.2d
`
`531, 533 (Fed. Cir. 1985). Dr. Grimes’ Reply Declaration establishes that one
`
`skilled in the art would have been able, given the teachings of Zaurus and Pad++,
`
`to write software for a full-featured zoomable browser that used vector-based
`
`graphics. Grimes Rep. Decl. ¶¶ 79-90.2
`
`2 Petitioners will move to strike the Forstall deposition, taken in the litigation,
`
`because they were not permitted under the protective order to attend. Ex. 2014.
`
`- 9 -
`
`
`
`Contrary to SoftView’s arguments at 38-40, Zaurus does not teach away.
`
`Zaurus was cited for disclosing the hardware elements (which SoftView does not
`
`dispute) and for having a zoomable browser. Dr. Grimes opines that one skilled in
`
`the art would have been motivated to combine Pad++ and Zaurus. Grimes Rep.
`
`Decl. ¶¶ 110-117.
`
`IV. Claims 48, 51, 52, And 317 Are Obvious Based On The Combination Of
`Zaurus And Pad++
`
`Contrary to SoftView’s arguments at 40-44, Pad++ discloses tapping on
`
`individual elements to fill a page. Grimes Rep. Decl. ¶¶ 118-135. One skilled in the
`
`art would have been able to substitute tapping a touch screen for clicking with a
`
`mouse. Id. at ¶¶ 123-135. Contrary to SoftView’s arguments at pages 40-44, “tap
`
`to zoom” was disclosed in Pad++ and was also well known in the art, as evidenced
`
`by several other prior art references. Id. Further, Zaurus teaches zooming on a user
`
`selectable portion of the web page. Id. at ¶¶ 106-109. A skilled person would have
`
`been motivated to combine Pad++ with Zaurus. Id. at ¶¶ 110-117. Moreover, at the
`
`time of the alleged invention, zooming on a part of a web page was well known in
`
`the art. Id. at ¶¶ 118-165.
`
`V.
`
`CLAIMS 1, 33, 36, 43, 51, 52, 58, 59, 66, 118, 138, 139, 149, 183, 252, 283
`AND 317 OF THE ‘353 PATENT ARE OBVIOUS BASED ON THE
`COMBINATION OF ZAURUS, HARA AND TSUTSUMITAKE
`
`Hara discloses resizing images on a web page. Grimes Rep. Decl. ¶ 122. As
`
`discussed above, Zaurus discloses zooming on the entire web page. Id. at ¶ 136.
`
`- 10 -
`
`
`
`One skilled in the art would have recognized that Hara disclosed additional
`
`functionality applicable to Zaurus. Id. at ¶¶ 136-143; 166-169. Tsutsumitake
`
`discloses conversion from HTML into a scalable vector representation. Grimes
`
`Rep. Decl. ¶¶ 177-178. Specifically, one of skill in the art would have recognized
`
`that Zaurus combined with Hara or Tsutsumitake renders obvious the claims at
`
`issue. Id. One skilled in the art would have combined those references because
`
`Zaurus, Hara and Tsutsumitake relate to zooming and panning, and the motivation
`
`to improve viewing of HTML content on a PDA existed in the prior art. Id. The
`
`combination would have yielded predictable results. Id.
`
`VI.
`
`SOFTVIEW’S PROFFERED “SECONDARY CONSIDERATIONS” DO NOT
`OVERCOME THE PRIMA FACIE CASE OF OBVIOUSNESS
`
`There is no evidence that SoftView, itself, ever sold a commercially
`
`successful product covered by the claims of the ‘353 patent. Instead, SoftView
`
`incorrectly relies on the commercial success of the Apple iPhone and to a lesser
`
`extent Android products, both of which are accused of infringement in the
`
`underlying litigation. Opp. at 51; Reinman Decl. ¶¶ 184-196. To establish
`
`commercial success, the patentee must show a nexus between the proven success
`
`and the claimed invention. E.g., ArcelorMittal France v. AK Steel Corp., 700 F.3d
`
`1314, 1326 (Fed. Cir. 2012); Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299,
`
`1311-12 (Fed. Cir. 2006). In Microsoft Corp. v. Proxyconn, Inc. IPR2012-00026,
`
`- 11 -
`
`
`
`paper 32 at 4 (PTAB, March 8, 2013)(Giannetti, APJ), the Board recited the well-
`
`established standard:
`
`Where, as here, the patent is said to cover a feature or component of a
`product, the patent owner has the additional burden of showing that
`the commercial success derives from the feature. Tokai Corp. v.
`Easton Enters., 632 F.3d 1358, 1369 (Fed. Cir. 2011). Further,
`especially where the feature is found in the product of another, there
`must be proof that it falls within the claims. E.g., Demaco Corp. v. F.
`Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392
`(1988)(infringer’s counsel stated at trial that the patent had been
`copied); Hughes Tool Co. v. Dresser Industries, Inc., 816 F.2d 1549,
`1552 (Fed. Cir. 1987) (patented O-ring seal copied by defendant).
`
`The only cases we have found in which an accused product was a basis for
`
`commercial success of the invention are those in which the accused product had
`
`been found to infringe by a court. See, e.g., Gambro Lundia AB v. Baxter
`
`Healthcare Corp., 110 F.3d 1573, 1579, 1582 (Fed. Cir. 1997). SoftView cites no
`
`authority to support the proposition that commercial success can be attributed to an
`
`accused product, absent a finding of infringement. Here, there has been no finding
`
`that the iPhone or any Android device infringes any claim of the ‘353 patent. The
`
`unverified claim charts SoftView submitted in this proceeding are nothing more
`
`than attorney argument.
`
`Where the purported secondary consideration actually results from
`
`something other than what is both claimed and novel in the claim, there is no nexus
`- 12 -
`
`
`
`to the merits of the claimed invention. Tokai Corp. v. Easton Enters., Inc., 632
`
`F.3d 1358, 1369 (Fed.Cir.2011) (“If commercial success is due to an element in the
`
`prior art, no nexus exists.”); Ormco, 463 F.3d at 1312 (“[I]f the feature that creates
`
`the commercial success was known in the prior art, the success is not pertinent.”)
`
`There is ample evidence that the commercial success of the iPhone and
`
`Android devices was not due to the Internet browser, but to other features, such as
`
`“advertising or superior workmanship.” See Grimes Rep. Decl. ¶¶ 183-189; P
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