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 CLAIM CONSTRUCTION BRIEF
`
`____________
`
`CASE IPR2013-00007
`CASE IPR2013-00256
`Patent 7,461,353
`
`____________
`
`CASE IPR2013-00004
`CASE IPR2013-00257
`Patent 7,831,826
`
`____________
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`KYOCERA CORPORATION, and
`MOTOROLA MOBILITY LLC
`Petitioners,
`v.
`
`SOFTVIEW LLC
`Patent Owner.
`____________
`
`PETITIONERS’ CONSOLIDATED CLAIM CONSTRUCTION BRIEF
`
`____________
`
`CASE IPR2013-00007
`CASE IPR2013-00256
`Patent 7,461,353
`
`____________
`
`CASE IPR2013-00004
`CASE IPR2013-00257
`Patent 7,831,826
`
`____________
`
`
`
`I.
`
`INTRODUCTION
`
`In its Oppositions, Patent Owner argued,
`
`Pad++ does not preserve “the original page layout, functionality and
`design” of a Web page's HTML-based content even upon initial
`rendering, much less when panning and zooming. . . . Simply
`maintaining the layout after a web page has been initially rendered
`does not meet these claim limitations if that initial rendering does
`not preserve the original layout, functionality, and design of the
`HTML content.
`Opp. at 19-20 (emphasis added). This is a claim construction argument, which
`
`Patent Owner relies upon to distinguish Pad++ from the claims-at-issue. Id. at 20-
`
`21, citing Reinman Decl. ¶¶ 22-24. Patent Owner’s newly proposed construction
`
`was surprising for three reasons: (1) it is flatly contradicted by the definition the
`
`inventors gave to the examiner during prosecution; (2) it is inconsistent with how
`
`one skilled in the art would understand the phrase; and (3) it is inconsistent with
`
`the context in which this limitation appears in the claims.
`
`II.
`
`CLAIM CONSTRUCTION
`
`The limitation “preserv[] the original page layout . . .” is not found anywhere
`
`in the specification of either the ‘353 or ‘926 patents. It was added for the first time
`
`in an amendment dated May 20, 2008, during prosecution of the ‘353 patent. ‘353
`
`Patent File History, IPR2013-00007, PX 1002 at 144-45.
`
`In that amendment,
`
`Patent Owner explicitly defined the meaning of the phrase:
`
`- 1 -
`
`
`
`“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, as opposed
`to rendering the content
`identically to how it
`is rendered by a
`particular desktop browser
`that may interpret
`the page design
`differently.
`Id. at 233 (emphasis added). The same definition was supplied by Patent Owner in
`
`the prosecution of the ‘926 patent. IPR2013-00004, PX 1002 at 34-35 (“[T]he
`
`page layout (to be preserved) is determined as interpreted by rendering/layout
`
`engine components, rather than as a comparison to how the page might be rendered
`
`by a particular desktop browser.”) and at 38 (“[P]reservation is relative to the
`
`interpretation of the page by the browser implementation itself, as opposed to
`
`preservation of the original layout, functionality and design based on some rigid
`
`construction of a ‘perfect’ interpretation of the page.”). The inventors also made
`
`clear that variations of this phrase should be construed in the same manner. IPR
`
`2013-00007, PX 1002 at 234-35. A full discussion of the relevant prosecution
`
`history is set forth in Petitioners’ Reply Briefs and the Grimes Reply Declaration
`
`and will not be repeated here. Paper No. 28, Reply Br., at 2-5; PX 1030, Grimes
`
`Rep. Decl. ¶¶ 24-55.
`
`In litigation, when a claim limitation not found in the specification is added
`
`during prosecution, and when the meaning of that term is explained during
`
`prosecution by the inventors, the Federal Circuit has given substantial weight to the
`
`- 2 -
`
`
`
`inventors’ explanation. E.g., Sunovion Pharm., Inc. v. Teva Pharm. USA, Inc., __
`
`F.3d __, 2013 WL 5356823 at *3, *4 (Fed. Cir. 2013) (term “essentially free,”
`
`appeared only in the claims; “applicants repeatedly and consistently defined their
`
`claimed invention [during prosecution] to be as exhibited by Example 1;” term
`
`construed to be limited to less than 0.25% in accordance with Example 1);
`
`Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374-75 (Fed. Cir.
`
`2008) and cases cited therein.
`
`A fortiori, in a proceeding before the PTAB, the broadest reasonable
`
`construction of a term that appears only in the claims should at least include the
`
`inventors’ definition. Cf., 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.”); 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”). This is especially true where, as here, the inventors explained that their
`
`definition was consistent with the understanding of a person skilled in the art.
`
`IPR2013-00007, PX 1002 at 218-36 (explaining that the web page layout is
`
`defined by the browser, and that page layouts of the same web page by Internet
`
`Explorer 7, Netscape Navigator 9, and Mozilla Firefox 2.0 are different from one
`
`another); IPR2013-00004, PX 1002 at 23-43 (same).
`
`- 3 -
`
`
`
`In this case, the prosecution history definition is consistent with how a
`
`person skilled in the art would understand the limitation. PX 1030, Grimes Rep.
`
`Decl. ¶¶ 24-55. In fact, as explained by Dr. Grimes, the phrase “preserv[] the
`
`original page layout […]” cannot be limited to preserving a “pre-rendered page
`
`layout” because one skilled in the art would have understood that HTML code has
`
`no layout until it is processed by the rendering engine of the browser and rendered.
`
`Id. at ¶ 28; PX 1052, Supplemental Grimes Decl. at ¶ 9. Instead, it was well known
`
`in the art that the popular browsers of the time (Netscape Navigator, etc.) would
`
`render the same HTML-based pages differently. PX 1030, Grimes Rep. Decl. ¶ 34.
`
`For instance, Netscape Navigator for DOS and for the Macintosh used different
`
`default text fonts, Times Roman and Helvetica, respectively. Id.
`
`The prosecution history definition is also supported by the context in which
`
`the “preserv[]” limitation appears. Claims 1 and 118 of the ‘353 patent recite the
`
`“preserv[] the original page layout . . .” phrase “defined by its original format when
`
`scaled and rendered.” Similarly, claims 36, 149, and 252 recite “re-render the
`
`display . . . to enable the Web page to be browsed at various zoom levels and
`
`panned views while preserving the original page layout. . . .” The claims at issue in
`
`the ‘926 patent recite “preserv[] . . . original page layout, functionality and design,”
`
`either “when scaled and rendered” (claim 30), or “as interpreted by a rendering
`
`engine” while zooming (claim 52). Given this context, a person skilled in the art
`
`- 4 -
`
`
`
`would conclude that what is being preserved is the layout of the web page after it
`
`has been processed by the browser. Phillips v. AHW Corp., 415 F.3d 1303, 1313
`
`(Fed. Cir. 2005) (en banc) (skilled person “deemed to read the claim term . . . in
`
`the context of the particular claim”).
`
`The District Court’s claim constructions, including the agreed claim
`
`construction regarding the term “original,” are irrelevant. “In patent litigation,
`
`district courts do not apply the broadest reasonable interpretation standard and the
`
`parties may agree to the construction of certain terms for reasons unrelated to the
`
`broadest reasonable interpretation.” Paper No. 32, at 4. Moreover, the present
`
`dispute concerning construction of the phrase “preserv[] the original page layout . .
`
`.” was not before the District Court during claim construction. Instead, during
`
`litigation, Defendants did not object to SoftView’s proposed construction of the
`
`word “original” to mean “as designed for a desktop computer” (SoftView Ex 2074-
`
`1) because the construction establishes for litigation purposes only that the claims
`
`do not cover scaling of Web pages designed specifically for mobile devices.
`
`III. CONCLUSION
`
`Under the broadest reasonable construction, the phrase “preserv[] the
`
`original page layout […]” should be construed to include at least preserving the
`
`layout as interpreted by the browser while at different zoom levels and panned
`
`views, as the phrase was defined during prosecution.
`
`- 5 -
`
`
`
`Respectfully submitted,
`
`Date: October 18, 2013
`
`KATTEN MUCHIN ROSENMAN LLP
`
`BY: ___/Richard P. Bauer/ _____
`Richard P. Bauer (Reg. No. 31,588)
`KATTEN MUCHIN ROSENMAN LLP
`2900 K Street NW - Suite 200
`Washington, DC 20007-5118
`Richard.Bauer@kattenlaw.com
`
`Eric C. Cohen (Reg. No. 27,429)
`Michael S. Dorfman (Reg. No. 46,669)
`Michael S. Tomsa (Reg. No. 64,264)
`KATTEN MUCHIN ROSENMAN LLP
`525 W. Monroe Street
`Chicago, IL 60661-3693
`Eric.Cohen@kattenlaw.com
`Michael.Dorfman@kattenlaw.com
`Michael.Tomsa@kattenlaw.com
`Attorneys For Petitioner Kyocera Corp.
`
`John C. Alemanni (Reg. No. 47,384)
`KILPATRICK TOWNSEND & STOCKTON, LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`JAlemanni@KilpatrickTownsend.com
`
`David A. Reed (Reg. No. 61,226)
`KILPATRICK TOWNSEND & STOCKTON, LLP
`Suite 2800, 1100 Peachtree Street NE
`Atlanta, GA, 30309-4528
`DAReed@KilpatrickTownsend.com
`Attorneys For Petitioner
`Motorola Mobility LLC
`
`- 6 -
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.6, I hereby certify that on Friday, October 18,
`
`2013, a true copy of the accompanying PETITIONERS’ CONSOLIDATED
`
`CLAIM CONSTRUCTION BRIEF was served by electronic mail, as agreed to
`
`by the parties, upon the following:
`
`Babak Redjaian
`bredjaian@irell.com
`Ben Yorks
`byorks@irell.com
`Morgan Chu
`mchu@irell.com
`Alan J. Heinrich
`aheinrich@irell.com
`Samuel K. Lu
`slu@irell.com
`IRELL & MANELLA LLP
`840 Newport Center Drive, Suite 400
`Newport Beach, CA 92660
`
`Respectfully submitted,
`
`___ /Michael S. Tomsa/_____
`Katten Muchin Rosenman LLP
`Michael S. Tomsa (Reg. No. 64,264)
`
`- 7 -
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