IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`Examiner: Unassigned
`
`Group Art Unit: Unassigned
`
` Tuesday, October 02, 2012
`
`))))))))))
`
`
`)
`
`In re: Gary B. Rohrabaugh and
`
`Scott A. Sherman
`
`Patent No.: 7,461,353
`
`
`
`Issued: December 2, 2008
`
`
`
`For: Scalable Display
`
`of
`
`Internet Content on Mobile Devices
`
`
`
`MOTION TO WAIVE PETITION PAGE LIMIT
`
`UNDER 37 C.F.R. §42.24(a)(2)
`
`Petitioner requests permission to file a Petition in excess of the 60 page limit set forth in
`
`37 C.F.R. § 42.24(a)(1)(i).
`
`Petitioner has submitted a Petition for Inter Partes Review of U.S. Patent No. 7,461,353
`
`("the '353 patent") that meets the 60 page limit (the "Page Limited Petition"). Because of space
`
`constraints, the Page Limited Petition includes single column claim charts. Those claim charts
`
`are not as easy to read as a two-column claim chart.
`
`Petitioner encloses a copy of a proposed petition exceeding the 60 page limit as required
`
`by 37 C.F.R. § 42.24(a)(2) ("the Proposed Petition"). The sole difference between the Page
`
`Limited Petition and the Proposed Petition is the formatting of the claim charts. Although
`
`Petitioner believes that no fee is required for this Motion, the Commissioner is hereby authorized
`
`to charge any additional fees which may be required for this Motion to Deposit Account No. 50-
`
`
`
`

`
`
`
`1214. Therefore, it is respectfully requested that this motion to waive the 60 page limit for a
`
`Petition requesting Inter Partes review be granted.
`
`Respectfully submitted,
`
`
`
`
`PATENT ADMINISTRATOR
`Katten Muchin Rosenman LLP
`2900 K Street NW - Suite 200
`Washington, DC 20007-5118
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Richard P. Bauer/
`Richard P. Bauer
`Reg. No. 31,588
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Examiner: Unassigned
`
`Group Art Unit: Unassigned
`
` Tuesday, October 02, 2012
`
`))))))))))
`
`
`)
`
`In re: Gary B. Rohrabaugh and
`
`Scott A. Sherman
`
`Patent No.: 7,461,353
`
`
`
`Issued: December 2, 2008
`
`
`
`For: Scalable Display
`
`of
`
`Internet Content on Mobile Devices
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 7,461,353
`
`
`
`
`Sir:
`
`Pursuant to 35 U.S.C. § 311 et seq. and 37 CFR § 42.1 et seq., Kyocera
`
`Corporation (“Petitioner”) hereby petitions for an Inter Partes Review (the
`
`“Petition”) of U.S. Patent No. 7,461,353 (the “‘353 Patent”). As a point of
`
`information, Petitioner has also filed a petition for Inter Partes Review of U.S.
`
`Patent No. 7,831,926 (the “‘926 Patent”), which claims common priority patent
`
`applications. The undersigned is authorized to act in a representative capacity for
`
`
`
`Petitioner.
`
`
`
`

`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Introduction......................................................................................................1
`
`Standing to File Petition Under 37 CFR §§ 42.101 – 103 ..............................3
`
`III. Petition Requirements Under 37 CFR § 42.104..............................................4
`
`IV. The ‘353 Patent................................................................................................7
`
`A.
`
`B.
`
`C.
`
`Priority Date of ‘353 Patent ..................................................................7
`
`The Written Specification and Figures .................................................7
`
`Prosecution History .............................................................................11
`
`V.
`
`Statements Showing a Reasonable Likelihood That Petitioner Will
`Prevail With Respect to at Least One Claim of the ‘353 Patent ...................14
`
`A.
`
`B.
`
`C.
`
`Expert Declarations .............................................................................14
`
`State of the Art ....................................................................................15
`
`Scope and Content of the Prior Art Forming the Basis for the
`Proposed Rejections Under and 35 U.S.C. § 103 ...............................18
`
`1.
`
`2.
`
`3.
`
`4.
`
`Nokia 9000 Communicator (“Nokia”) (Exhibit PX1003)........18
`
`Sharp Zaurus (“Zaurus”) (Exhibit PX1004) .............................19
`
`Japanese Application No. H10-21224 to Tsutsumitake et
`al. (“Tsutsumitake”) (Exhibit PX1005) ....................................20
`
`Pad++ (“Pad++”) (Exhibit PX1006).........................................20
`
`5. W3C Scalable Vector Graphics Requirements (SVG)
`(Exhibit PX1007) ......................................................................21
`
`6.
`
`7.
`
`Japanese Application Publication H10-326169 to Masao
`Hara (“Hara”) (Exhibit PX1008) ..............................................21
`
`Specification for the Simple Vector Format (SVF) v 1.1,
`(the “SVF References”) (Exhibit PX1009)...............................22
`
`- i -
`
`

`
`
`
`8. Matthews, et al., Vector Markup Language (“VML”)
`8.
`Matthews, et a1., Vector Markup Language (“V1\/[L”)
`(Exhibit PX1010) ......................................................................22
`(Exhibit PX1010) .................................................................... ..22
`
`D.
`D.
`
`E.
`E.
`
`Summary of Invalidity Arguments......................................................24
`Summary of Invalidity Arguments .................................................... ..24
`
`Listing of RLPs ...................................................................................24
`Listing of RLPs ................................................................................. ..24
`
`1.
`
`1.
`
`2.
`
`2.
`
`3.
`
`3.
`
`4.
`
`4.
`
`5.
`
`5.
`
`6.
`
`6.
`
`RLP Issue # 1:...........................................................................25
`
`RLP Issue# 1: ......................................................................... ..25
`
`RLP Issue # 2:...........................................................................47
`
`RLP Issue#2: ......................................................................... ..47
`
`RLP Issue # 3:...........................................................................49
`
`RLP Issue#3: ......................................................................... ..49
`
`RLP Issue # 4:...........................................................................71
`
`RLP Issue#4: ......................................................................... ..71
`
`RLP Issue # 5:...........................................................................76
`
`RLP Issue#5: ......................................................................... ..76
`
`RLP Issue # 6:...........................................................................77
`
`RLP Issue# 6: ......................................................................... ..77
`
`VI. Conclusion .....................................................................................................78
`
`Conclusion ................................................................................................... ..78
`
`VI.
`
`- ii -
`
`

`
`
`
`TABLE OF EXHIBITS
`
`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 1004
`
`PX 1005
`
`PX 1006
`
`- iii -
`
`

`
`
`
`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
`
`- iv -
`
`

`
`
`
`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-I”)
`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
`
`- v -
`
`

`
`
`
`PX 1023
`
`PX 1024
`
`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 1025
`
`PX 1026
`
`PX 1027
`
`- vi -
`
`

`
`
`
`I. INTRODUCTION
`This petition for Inter Partes Review demonstrates a reasonable likelihood
`
`that the Petitioner will prevail (“RLP”) with respect to at least one of claims 1, 33,
`
`36, 43, 48, 51, 52, 58, 59, 66, 118, 138, 139, 149, 183, 252, 283, and 317 (“Subject
`
`Claims”) challenged in the petition. 35 U.S.C. § 314(a). Petitioner asserts that the
`
`Subject Claims are obvious over the asserted prior art, and should be found
`
`unpatentable and be cancelled.
`
`Real Party-In-Interest: 37 CFR 42.8(b)(1). Pursuant to 35 U.S.C.
`
`312(a)(2), the real party-in-interest is Kyocera Corporation, a Japanese Corporation
`
`located in Kyoto, Japan.
`
`Related Matters: 37 CFR 42.8(b)(2). In 2010, SoftView LLC, the patent
`
`owner, sued Apple, Inc. and ATT Mobility for infringement of the ‘353 Patent and
`
`‘926 Patent (the “Patents-in-Suit”).1 On September 30, 2011, SoftView filed an
`
`amended complaint,2 which, for the first time alleged that Petitioner and 16 new
`
`
`
` 1
`
` SoftView LLC v. Apple Inc., and AT&T Mobility LLC, Case No. 10-389-LPS (D.
`DE) (“the Underlying Litigation”).
`2 See Plaintiff SoftView LLC’s Second Amended Complaint for Patent
`Infringement dated September 30, 2011, Case 1:10-cv-00389-LPS, Doc. 108-3
`(Exhibit PX1018).
`
`
`
`

`
`
`
`defendants infringed the ‘926 Patent and the ‘353 Patent. A copy of SoftView’s
`
`Second Amended Complaint is attached as Exhibit PX1018. Petitioner was not
`
`served with the complaint. See note 3, infra.
`
`The ‘353 Patent is subject to three reexamination proceedings (the “Prior
`
`Reexaminations”), including: (i) Inter Partes Reexamination No. 95/000,634;
`
`(ii) Ex Parte Reexamination No. 90/009,994; and (iii) Inter Partes Reexamination
`
`No. 95/002,132. Neither Petitioner nor any party in privity with Petitioner filed the
`
`requests for the Prior Reexaminations.
`
`Lead and Back-up Counsel (37 CFR 42.8(b)(3))
`SoftView (Patent Owner)
`Kyocera (Petitioner)
`Richard Bauer (Lead) / Michael Tomsa
`Morgan Chu / Samuel K. Lu
`Katten Muchin Rosenman LLP
`Irell & Manella LLP
`2900 K Street NW - Suite 200
`1800 Avenue of the Stars, Suite 900
`Washington, DC 20007-5118
`Los Angeles, CA 90067-4276
`
`
`Service Information: 37 CFR 42.8(b)(4)
`SoftView (Patent Owner)
`Kyocera (Petitioner)
`Richard P. Bauer
`Morgan Chu
`Katten Muchin Rosenman LLP
`Irell & Manella LLP
`2900 K Street NW - Suite 200
`1800 Avenue of the Stars, Suite 900
`Washington, DC 20007-5118
`Los Angeles, CA 90067-4276
`
`
`- 2 -
`
`
`
`

`
`
`
`II. STANDING TO FILE PETITION UNDER 37 CFR §§ 42.101 – 103
`Pursuant to 37 CFR § 42.101, Petitioner has not filed a civil action
`
`challenging the validity of a claim of the ‘353 Patent. Petitioner was first named as
`
`a defendant in the Underlying Litigation on September 30, 2011 (See PX1018).
`
`Thus, this petition is within one year from the date on which the complaint was
`
`filed.3 Petitioner is not estopped from challenging the claims on the grounds
`
`identified in the Petition. Pursuant to 37 CFR § 42.102(a), the timing for this
`
`Petition is proper. The ‘353 Patent was granted on December 2, 2008, which is
`
`more than nine months ago and, as of the present filing, a post-grant review has not
`
`been initiated.
`
`Pursuant to 37 CFR § 42.103, the Patent Office is authorized to charge
`
`Deposit Account No. 50-1214 the $27,200 review fee set forth in § 42.15(a).
`
`
`
` 3
`
`
`
`Kyocera Corporation agreed to waive service of SoftView LLC’s Second
`Amended Complaint on October 26, 2011, which constitutes effective
`service. See Joint Stipulation And Proposed Order Extending Time To
`Respond To Complaint filed May 10, 2010 in the case of SoftView LLC v.
`Apple Inc., and AT&T Mobility LLC, Case No. 10-389-LPS Dkt. No. 125
`
`- 3 -
`
`
`
`

`
`
`
`Further, Petitioner authorizes a debit from Deposit Account No. 50-1214 for
`
`whatever additional payment is necessary in granting this Petition.
`
`PETITION REQUIREMENTS UNDER 37 CFR § 42.104
`
`III.
`Standing. Petitioner certifies that the patent for which review is sought is
`
`available for Inter Partes Review and that the Petitioner is not barred or estopped
`
`from requesting an Inter Partes Review challenging the patent claims on the
`
`grounds identified in the Petition. 37 CFR § 42.104(a).
`
`Claims challenged, 37 CFR § 42.104(b)(1). Petitioner petitions for review
`
`of claims 1, 33, 36, 43, 48, 51, 52, 58, 59, 66, 118, 138, 139, 149, 183, 252, 283,
`
`and 317 (“Subject Claims”), of the ‘353 Patent.
`
`Specific Statutory Grounds: 37 CFR § 42.104(b)(2). Petitioner submits
`
`that the Subject Claims are obvious under 35 U.S.C. § 103 in view of the cited
`
`prior art. A statement pointing out each showing of a reasonable likelihood that
`
`Petitioner will prevail (“RLP”) with respect to at least one claim of the ‘353 Patent
`
`can be found below at Section V(E).
`
`Claim Construction: 37 CFR § 42.104(b)(3). For purposes of this review,
`
`a claim in an unexpired patent shall be given its broadest reasonable construction
`
`in light of the specification of the patent in which it appears. See 37 CFR
`
`42.100(b). While the Examiner will construe the claim terms in accordance with
`- 4 -
`
`
`
`

`
`
`
`Patent Office guidelines, Petitioner submits SoftView’s proposed construction in
`
`the Underlying Litigation for purposes of completeness of disclosure only. See
`
`Exhibits PX1019a, 1019b and 1020, which are reproduced below in part.
`
`SoftView’s Claim Construction
`“graphic content capable of being rendered at multiple
`zoom levels”
`“capable of being rendered at multiple zoom levels /
`rendering at multiple zoom levels / rendered at multiple
`zoom levels”
`
`“processing [the] HTML-based Web content to produce
`content capable of being zoomed in or out”
`
`“graphic content that includes one or more vectors”
`“‘scalable vector-based content’: graphic content that (1)
`is capable of being rendered at multiple zoom levels and
`(2) includes one or more vectors”
`“A mathematical expression representing a length and a
`direction in a two dimensional space. In an X, Y
`coordinate system, a vector is represented by a value X2,
`Y2 relative to an origin point, represented by X1, Y1.”
`“an origin point defined at an X,Y coordinate”
`“reference point for an object”
`
`- 5 -
`
`Claim Term
`
`scalable content
`
`/ scaling
`
`/
`
`scalable
`scaled
`
`[the]
`processing
`Web
`HTML-based
`produce
`content
`to
`scalable content
`vector-based content
`
`vector-based
`
`scalable
`content
`
`vector
`
`primary datum
`object datum
`
`
`
`

`
`
`
`Claim Term
`
`layout location datum
`
`SoftView’s Claim Construction
`“one or more points corresponding to the location of the
`object”
`
`to
`the user
`enabling
`zoom and pan a view
`of the Web page
`
`machine-readable
`medium
`
`“enabling the user to zoom and move around the Web
`page”
`
`“The machine-readable medium may include, but is not
`limited to, floppy diskettes, optical disks, ROMs, RAMs,
`EPROMs, EEPROMs, magnetic or optical cards, flash
`memory, or other
`type of media/machine-readable
`medium suitable for storing electronic instructions.”
`
`
`
`Petitioner does not acquiesce to SoftView’s proposed claim construction, but
`
`submits that it would be appropriate for the Patent Trial and Appeal Board
`
`(“PTAB”) to consider Softview’s arguments in connection with the determination
`
`of the broadest reasonable construction of the claim terms.
`
`Invalidity under 37 CFR § 42.104(b)(4)-(5). For the reasons set forth in
`
`detail below in Section V(E), a reasonable likelihood that Petitioner will prevail
`
`exists with respect to each of the Subject Claims based on obviousness under 35
`
`U.S.C. § 103 in view of the various combinations of prior art. A complete copy of
`
`every patent and printed publication relied upon in this Petition is attached and
`
`discussed in Section V(C).
`
`- 6 -
`
`
`
`

`
`
`
`IV.
`
`THE ‘353 PATENT
`
`Priority Date of ‘353 Patent
`
`A.
`The ‘353 Patent is a Division of U.S. Patent No. 7,210,099, which is a
`
`continuation-in-part of abandoned U.S. Patent Application Serial No. 09/828,511,
`
`which claims Priority from Provisional Applications 60/217,345, filed 07-11-2000,
`
`and 60/211,019, filed 06-12-2000. Thus, the effective filing date for purposes of 35
`
`U.S.C. §§ 102(a) and 102(b) would appear to be June 12, 2000.
`
`The Written Specification and Figures
`
`B.
`The ‘353 Patent was filed on January 28, 2005, and issued on December 8,
`
`2008. The named inventors are Gary B. Rohrabaugh and Scott A. Sherman. The
`
`‘353 Patent is assigned to SoftView LLC. The ‘353 Patent is subject to a terminal
`
`disclaimer, and the term of the patent is adjusted by 376 days.
`
`The ‘353 Patent relates generally to a system and method for translating web
`
`pages from a native file format—typically HTML—into a “scalable vector
`
`representation,” also referred to as “vectorized content,” or “scalable content.” See
`
`the ’353 Patent at 1:42-50, 1:61-65, 2:21-34, 6:60-64, 7:38-44, 7:56-8:19, 8:57-61,
`
`9:8-10, 12:12-14, Abstract. According to the ‘353 Patent, it was familiar in the
`
`prior art Computer Aided Design (“CAD”) field for graphics in a “vector” format
`
`to be magnified and moved around in real time. Id. at 4:67-5:17. Likewise, in
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`accordance with the “present invention,” the specification alleges that scale factors
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`and offsets may be applied to the translated web content to simplify zooming and
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`panning of the web page, or to more easily scale a page designed for a single,
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`target resolution (typically, a desktop monitor) for display at different sizes or
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`resolutions, such as a small PDA or a large, “billboard”-style display. Id. at 2:4-26,
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`4:64-5:24, 5:3-24, 9:1-13, 17:42-45, 20:49-67, Figs. 7A-9B.
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`According to the ‘353 Patent, translating web content from HTML into a
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`scalable vector representation or scalable content includes a “pre-rendering”
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`process that was performed by prior art web browsers. Id. at 17:31-34. In the prior
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`art, and still today, the layout of a HTML web page is not typically defined by
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`designating specific coordinate locations for objects on a web page; instead,
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`HTML usually defines layout by spatial relationships between objects (e.g.,
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`requiring text to be placed below an image). Id. at 16:55-58. In a prior art “layout”
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`process, browsers would retrieve, parse (i.e., separate and identify the constituent
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`parts of the page), and process the HTML to define a page layout based on the
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`location of a “bounding box” for each object on the page. Id. at 15:43-16:38,
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`17:16-30, Fig. 5 (blocks 150-154). In prior art browsers, such as those using the
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`“Mozilla” rendering engine, a data structure called a “render tree” would store, for
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`each object on the page, the X,Y location of the object relative to a previously-
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`defined object, called a “container.” Id. at 17:16-41; Ex. A, U.S. App. No.
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`11/868,124, Applicant Remarks at 26-30 (Nov. 24, 2010). The ‘353 Patent refer to
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`this process as “pre-rendering.” Id. at 15:43-17:41, Fig. 5 (blocks 150-154). Such
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`prior art browsers would calculate the X,Y location of an object relative to the top-
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`left corner of the page by “walking the render tree,” or adding together the stored
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`X,Y coordinates in the render tree for the object, its container, its container’s
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`container, and so forth. See PX1026 at Ex. A pp. 27, 29-30; see also ’353 patent at
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`17:53-56.
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`Generating a scalable vector representation from the pre-rendered layout
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`information begins by defining a datum point for the entire page and additional
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`datum points for each object on the page. See ’353 patent at 17:42-18:32, Fig. 5
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`(blocks 156-160). The page datum for the entire page, or “primary datum,” may be
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`at any point on the page, so long as that point is used consistently in calculating the
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`coordinates of objects on the page. Id. at 17:47-56, Fig. 4C (item 262), claim 5.
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`Likewise, the “object datum” may be at any point on an object (e.g., the top-left
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`corner of the bounding box for the object), so long as that location is used
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`consistently across all objects. Id. at 17:57-64, Fig. 4C (items ending in “C”).
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`After datum points are defined, a “vector” for each object is generated from
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`the page datum to each object datum. Id. at 17:65-67, Fig. 5 (block 158), Fig. 4C
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`(items ending in “D”). If the page datum is chosen to be at coordinate 0,0, the
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`vector for an object may simply be stored as the X,Y value of that object’s datum
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`point. Id. at 17:67-18:8, Fig. 4D. The scalable vector representation is completed
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`by creating a reference that associates an object’s content and attributes to its
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`vector. Id. at 18:17-26, Fig. 5 (block 160).
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`The scalable vector representation can then be used to scale the web page for
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`displays of various sizes and resolutions and to zoom and pan the page at various
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`user-selectable scaled resolutions and pan offsets. Id. at 5:3-24, 9:4-13, 18:47-19:3.
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`According to the ‘353 Patent, a page can be scaled simply by manipulating the
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`vectors and resizing the bounding boxes for each object to be displayed, and then
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`scaling the content. Id. at 19:32-56, 20:18-32, Fig. 6. More specifically, for each
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`object to be zoomed or panned, the vector is offset and has a scale factor applied to
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`it, and the bounding box is scaled by the same scale factor, as shown in Figure 4G
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`of the Patents. Id. at 19:57-20:17. Thus, for example, zooming the web page in
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`Figure 4A into the broken rectangle in Figure 4F results in the page displayed in
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`Figure 4E. Id. at 3:31-46.
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`Prosecution History
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`C.
`The ‘353 Patent was filed on January 28, 2005, and was assigned serial
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`application No. 11/045,757 (“the ‘757 application”). On March 31, 2007, the
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`Applicants filed a preliminary amendment. The preliminary amendment included
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`amendments to the claims 1-14, 16, and newly added claims 17-39. A second
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`preliminary amendment was filed on June 6, 2007, in which claims 1-39 were
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`canceled, and new claims 40-141 were added. A third preliminary amendment was
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`filed on July 19, 2007, in which claims 142-150 added.
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`On August 15, 2007, the Patent Office issued a restriction requirement
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`between claims 40-70 and claims 71-150. On August 31, 2007, the Applicants
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`elected to prosecute claims 71-50, amended certain claims, added new claims
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`151-179, and canceled claims 40-70 and 93. On October 23, 2007, the Patent
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`Office issued a Non-Final Office Action. The Examiner rejected certain claims
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`under 35 U.S.C. § 112, second paragraph as being indefinite, while claims 71-92
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`and 94-179 were rejected under 5 U.S.C. § 101. The Examiner also issued a
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`provisional double-patenting rejection of independent claims 71, 99, 128, 143, and
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`174 as being unpatentable over claims 1-50 of U.S. Patent No. 7,210,099. The
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`Examiner recited that claims 88-91, 118-121, 125-126, and 158-159 would be
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`allowable if a terminal disclaimer was filed and rewritten in independent form to
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`overcome the 35 U.S.C. § 112 rejection.4 Further, claims 71-87, 92, 95-117,
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`122-123, 127-157, and 160-179 were rejected under 35 U.S.C. § 103(a) as being
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`unpatentable over Chithambaram, et al. US6,674,445, Provisional No. 60/159,069
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`in view of Roy US2006/64292582.5
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`On December 9, 2007 and January 12, 2008, Applicant filed a response
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`amending the claims to clarify the subject matter and adding new claims 180-364.
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`On May 5, 2008, a personal interview was conducted with the Examiner, but no
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`agreement was reached.6 The interview was followed by an amendment on
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`May 20, 2008, in which claims were amended. Thereafter, a terminal disclaimer
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`was filed on June 8, 2008, and accepted on June 30, 2008.
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` 4
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` Id., at page 17.
`5 Id., at page 17.
`6 The interview was made of record in an Examiner Interview Summary Record
`entered into the record on June 2, 2008.
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`On August 8, 2008, a Notice of Allowance, a Notice of Allowability
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`containing reasons for allowance, and a Determination of Patent Term Adjustment
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`were mailed.
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`V. STATEMENTS SHOWING A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF THE ‘353
`PATENT
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`The prior art references cited herein constitute effective prior art and
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`establish a reasonable likelihood that Petitioner will prevail with respect to at least
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`one claim of the ‘353 Patent under 35 U.S.C. § 103.
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`A. Expert Declarations
`Petitioner hereby submits the January 20, 2012 (“Grimes-1”) and April 2,
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`2012 (“Grimes-2”) Declarations of Jack D. Grimes, Ph.D., which were also
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`submitted by Apple in the Apple Inter Partes request and explain that Pad++
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`teaches scalable vectors, as claimed. For example, as stated by Dr. Grimes, “the
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`Pad++ references define object[s] and the transformation of objects with respect to
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`a coordinate system (e.g., using XY coordinates relative to an origin, which gives
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`the magnitude and direction that defines vectors).” Grimes-1, ¶ 29. Moreover,
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`“Pad++ describes the default origin as the center of the screen. [Bederson-4, p.
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`1129; See also, p. 4, Pad++; Programmer’s Guide]. However, in other examples,
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`Pad ++ describes the origin elsewhere: ‘0.0 [the origin (0, 0)] represents the left or
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`bottom side of the window.’ [p. 22, Reference Manual].” Grimes-1, ¶ 26. “All
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`locations or ‘places’ of objects are the locations of the anchor for each object,
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`relative to this origin.” Grimes-1, ¶¶11-46. Additionally, Dr. Grimes states “[w]e
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`know that the vector is stored by Pad++ for the rectangle called “rect2” because
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`there is another command that can be used to determine the location of the
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`rectangle “rect2.” Grimes-1, ¶¶ 55-56. Adding that “[w]e know that a “vector” for
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`each object is generated and stored because otherwise, the -place command would
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`not return a resulting location for the object relative to the primary datum. A -place
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`of X, Y only makes sense if the coordinate X, Y is known to be relative to a known
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`reference point, i.e., the origin at the center of the Pad++ surface. Since we have an
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`origin and a place, then we have necessarily defined a vector. Using the common
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`shorthand used in the ‘353 and ‘926 Patents, one of ordinary skill in the art would
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`understand that this vector in Pad++ is from the known origin of the Pad++ surface
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`to the “-anchor” of the object.” Id.
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`B.
`the
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`At
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`State of the Art
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`time of
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`the
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`‘353 Patent’s
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`filing
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`(i.e.