IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`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
`
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`Examiner: Unassigned
`
`Group Art Unit: Unassigned
`
`Monday, April 29, 2013
`
`
`
`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 C.F.R. § 42.1 et seq., Motorola
`
`Mobility LLC (“Petitioner”) hereby petitions for Inter Partes Review (the
`
`“Petition”) of U.S. Patent No. 7,461,353 (the “‘353 Patent”). On March 29, 2013,
`
`the Patent Trial and Appeal Board granted-in-part the petition of Kyocera
`
`Corporation for Inter Partes Review of the ‘353 patent in Case IPR2013-00007
`
`(“Kyocera IPR”). Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and
`
`42.122(b), Petitioner submits concurrently herewith a request for joinder with the
`
`Kyocera IPR. 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, accompanied by a request for joinder. The undersigned is authorized
`
`to act in a representative capacity for Petitioner.
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION .....................................................................................................................1
`
`STANDING TO FILE PETITION UNDER 37 C.F.R. §§ 42.101 – 42.103 ...................................3
`
`PETITION REQUIREMENTS UNDER 37 C.F.R. § 42.104 ..........................................................4
`
`THE ‘353 PATENT .................................................................................................................7
`
`A.
`
`B.
`
`Priority Date of ‘353 Patent .....................................................................................7
`
`The Written Specification and Figures ....................................................................7
`
`V.
`
`STATEMENTS SHOWING A REASONABLE LIKELIHOOD THAT PETITIONER WILL
`PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF THE ‘353 PATENT ...........................11
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Expert Declarations ................................................................................................12
`
`State of the Art .......................................................................................................13
`
`Scope and Content of the Prior Art Forming the Basis for the Proposed
`Rejections Under 35 U.S.C. § 103 .........................................................................15
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Sharp Zaurus (“Zaurus”) (Exhibit PX1004) ..............................................15
`
`Japanese Application No. H10-21224 to Tsutsumitake et al.
`(“Tsutsumitake”) (Exhibit PX1005) ..........................................................16
`
`Pad++ (“Pad++”) (Exhibit PX1006) ..........................................................16
`
`W3C Scalable Vector Graphics Requirements (SVG) (Exhibit
`PX1007) .....................................................................................................17
`
`Japanese Application Publication H10-326169 to Masao Hara
`(“Hara”) (Exhibit PX1008) ........................................................................17
`
`Summary of Invalidity Arguments ........................................................................18
`
`Listing of RLPs ......................................................................................................19
`
`1.
`
`2.
`
`3.
`
`4.
`
`RLP Issue # 1: ............................................................................................19
`
`RLP Issue # 2: ............................................................................................36
`
`RLP Issue # 3: ............................................................................................37
`
`RLP Issue # 4: ............................................................................................51
`
`
`
`i
`
`

`

`VI.
`VI.
`
`CONCLUSION .......................................................................................................................52
`CONCLUSION ....................................................................................................................... 52
`
`
`
`ii
`ii
`
`

`

`TABLE OF EXHIBITS
`
`DESCRIPTION
`
`PX 1004
`
`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
`PX 1005
`(“Tsutsumitake”) (including English translation)
`PX 1006 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”)
`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”)
`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)
`
`PX 1008
`
`PX 1009
`
`Intentionally omitted.
`
`PX 1010
`
`Intentionally omitted.
`
`
`
`iii
`
`

`

`PX 1012
`
`PX 1013
`
`PX 1016
`
`PX 1017
`
`PX 1018
`
`PX 1019a
`
`PX 1019b
`
`DESCRIPTION
`EXHIBIT
`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 1014 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 April 26, 2013
`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”)
`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
`PX 1025 Plaintiff SoftView LLC’s Technology Tutorial filed September 21, 2012 in the case
`
`PX 1020
`
`PX 1021
`
`PX 1022
`
`PX 1023
`
`PX 1024
`
`
`
`iv
`
`

`

`EXHIBIT
`
`DESCRIPTION
`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 Motorola Mobility, Inc.’s First Set of Interrogatories
`(No. 1) with Exhibits, served July 26, 2012 in the case of SoftView LLC v. Apple Inc.
`et al., 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 1026
`
`PX 1027
`
`
`
`v
`
`

`

`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 C.F.R. § 42.8(b)(1). Pursuant to 35 U.S.C.
`
`§ 312(a)(2), the real party in interest, Motorola Mobility LLC (formerly Motorola
`
`Mobility Inc.), is a limited liability company chartered in the state of Delaware
`
`with its headquarters and principal business address at 600 N. U.S. Highway 45,
`
`Libertyville, Illinois 60048. Motorola Mobility LLC is a wholly-owned subsidiary
`
`of Motorola Mobility Holdings, Inc. Motorola Mobility Holdings, Inc. is a
`
`Delaware corporation. Effective May 22, 2012, more than 10% ownership of
`
`Motorola Mobility LLC (formerly, Motorola Mobility, Inc.) was acquired by
`
`Google Inc., which trades on NASDAQ under the ticker symbol GOOG.
`
`Related Matters: 37 C.F.R. § 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
`
`
`1 SoftView LLC v. Apple Inc., and AT&T Mobility LLC, Case No. 10-389-LPS (D.
`
`
`
`
`
`

`

`filed an amended complaint,2 alleging for the first time that Petitioner and 16 new
`
`defendants infringe the Patents-in-Suit. A copy of SoftView’s Second Amended
`
`Complaint is attached as Exhibit PX1018.3 That Underlying Litigation remains
`
`pending in the District of Delaware.
`
`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. Petitioner filed the request for Inter Partes Reexamination No.
`
`95/002,132. All three Prior Reexaminations are presently stayed in view of the
`
`Kyocera IPR.
`
`Designation of Lead Counsel and Request for Authorization: 37 C.F.R.
`
`§ 42.8(b)(3). Lead counsel for Petitioner is John C. Alemanni, U.S. Patent and
`
`Trademark Office Registration No. 47,384, of Kilpatrick Townsend and Stockton
`
`LLP. Back-up counsel for Petitioner is Candice C. Decaire of Kilpatrick
`
`Townsend & Stockton LLP. Petitioner hereby requests authorization to file a
`
`motion for Candice C. Decaire to appear pro hac vice, as Ms. Decaire is an
`
`experienced litigation attorney, and is counsel for Petitioner in the related
`
`Del.) (“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).
`3 For ease of reference, Petitioner’s exhibit numbers correspond to the same or
`corresponding exhibits submitted by Kyocera Corporation in the Kyocera IPR.
`
`
`
`2
`
`

`

`Underlying Litigation and as such has established familiarity with the subject
`
`matter at issue in this proceeding. Petitioner intends to file such a motion once
`
`authorization is granted.
`
`Service Information: 37 C.F.R. § 42.8(b)(4). As identified in the attached
`
`Certificate of Service, a copy of the present petition in its entirely is being served
`
`to the address of the attorney or agent of record for SoftView LLP as well as to the
`
`address of the attorney or agent of record for Kyocera Corporation, Petitioner in
`
`the related inter partes review for which joinder is requested. Petitioner may be
`
`served at its counsel, Kilpatrick Townsend & Stockton LLP.
`
`II.
`
`STANDING TO FILE PETITION UNDER 37 C.F.R. §§ 42.101 – 42.103
`
`Pursuant to 37 C.F.R. § 42.101, Petitioner has not filed a civil action
`
`challenging the validity of a claim of the ‘353 Patent and Petitioner is not estopped
`
`from challenging the claims on the grounds identified in the Petition. Pursuant to
`
`37 C.F.R. § 42.102(a), the timing for this Petition is proper. The ‘353 Patent was
`
`granted more than nine months ago on December 2, 2008, and, as of the present
`
`filing, a post-grant review has not been initiated. The timing for this Petition also
`
`is proper under 37 C.F.R. § 42.122(b). The Kyocera IPR for which joinder is
`
`requested was instituted one month ago on March 29, 2013, and this Petition is
`
`accompanied by a request for joinder filed as a motion under 37 C.F.R. § 42.22.
`
`
`
`3
`
`

`

`Pursuant to 37 C.F.R. §§ 42.15(a) and 42.103, this petition for inter partes
`
`review is accompanied by payment of $24,200.00, which includes the $9,000.00
`
`inter partes review request fee, the $14,000.00 inter partes review post-institution
`
`fee, and the $400.00 inter partes review post-institution fees for each of the three
`
`claims requested in excess of 15. Further, Petitioner authorizes a debit from
`
`Deposit Account No. 20-1430 for whatever additional payment is necessary in
`
`granting this Petition.
`
`III. PETITION REQUIREMENTS UNDER 37 C.F.R. § 42.104
`
`Standing, 37 C.F.R. § 42.104(a): 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.
`
`Claims challenged, 37 C.F.R. § 42.104(b)(1): Petitioner petitions for inter
`
`partes 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 C.F.R. § 42.104(b)(2): Petitioner submits
`
`that the Subject Claims are invalid as 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).
`
`
`
`4
`
`

`

`Claim Construction: 37 C.F.R. § 42.104(b)(3): For purposes of inter
`
`partes 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. 37
`
`C.F.R. § 42.100(b). In the decision instituting the Kyocera IPR, SoftView’s
`
`proposed constructions in the Underlying Litigation were determined to be
`
`consistent with the broadest reasonable construction and adopted for purposes of
`
`the Kyocera IPR. Accordingly, Petitioner hereby submits SoftView’s proposed
`
`construction in the Underlying Litigation. See Exhibits PX1019a, 1019b and 1020,
`
`which are reproduced below in part.
`
`Claim Term
`scalable content
`
`scalable / scaling / scaled
`
`processing [the] HTML-
`based Web content to
`produce scalable content
`vector-based content
`scalable vector-based
`content
`
`vector
`
`
`
`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
`
`5
`
`

`

`Claim Term
`
`primary datum
`object datum
`layout location datum
`
`enabling the user to zoom
`and pan a view of the Web
`page
`
`machine-readable
`medium
`
`SoftView’s Claim Construction
`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”
`“one or more points corresponding to the location of the
`object”
`“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 agree to SoftView’s proposed claim constructions, but
`
`submits that it would be appropriate for the Patent Trial and Appeal Board
`
`(“PTAB”) to adopt SoftView’s proposed constructions as the broadest reasonable
`
`construction of the claim terms in this inter partes review.
`
`Invalidity under 37 C.F.R. § 42.104(b)(4)-(5). For the reasons set forth in
`
`detail below in Section V(E), there is a reasonable likelihood that Petitioner will
`
`succeed in showing that each of the Subject Claims is invalid as obvious 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
`
`A.
`
`Priority Date of ‘353 Patent
`
`The ‘353 Patent is a Divisional 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.
`
`B.
`
`The Written Specification and Figures
`
`The ‘353 Patent, assigned to SoftView LLC, was filed on January 28, 2005,
`
`and issued on December 8, 2008, with named inventors Gary B. Rohrabaugh and
`
`Scott A. Sherman. It 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 well-known in the
`
`prior art Computer Aided Design (“CAD”) field that graphics in a “vector” format
`
`could be magnified and moved around in real time. Id. at 4:67-5:17. The ‘353
`
`Patent specification describes
`
`the “present
`
`invention”
`
`in
`
`terms of such
`
`magnification and manipulation of graphics in a “vector” format – describing that
`
`
`
`7
`
`

`

`scale factors and offsets may be applied to translated web content to simplify
`
`zooming and panning of the web page, or more easily to scale a page designed for
`
`a single, target resolution (typically, a desktop monitor) for display at different
`
`sizes or resolutions, such as a small PDA or a large, “billboard”-style display. Id. at
`
`2:4-26, 4:64-5:24, 5:3-24, 9:1-13, 17:42-45, 20:49-67, Figs. 7A-9B.
`
`
`
`
`
`According to the ‘353 Patent, translating web content from HTML into a
`
`scalable vector representation or scalable content includes a “pre-rendering”
`
`process that was performed by prior art web browsers. Id. at 17:31-34. In the prior
`
`art, and still today, the layout of a HTML web page is not typically defined by
`
`designating specific coordinate locations for objects on a web page. Instead,
`
`HTML typically defines layout by spatial relationships between objects (e.g.,
`
`requiring text to be placed below an image). Id. at 16:55-58. In a prior art “layout”
`
`process, browsers would retrieve, parse (i.e., separate and identify the constituent
`
`
`
`8
`
`

`

`parts of the page), and process the HTML to define a page layout based on the
`
`location of a “bounding box” for each object on the page. Id. at 15:43-16:38,
`
`17:16-30, Fig. 5 (blocks 150-154). In prior art “pre-rendering,” browsers such as
`
`those using the “Mozilla” rendering engine4 used a data structure called a “render
`
`tree” to store, for each object on the page, the X,Y location of the object relative to
`
`a previously-defined object, called a “container.” Id. at 15:43-17:41, Fig. 5 (blocks
`
`150-154), 17:16-41; Ex. A, U.S. App. No. 11/868,124, Applicant Remarks at 26-
`
`30 (Nov. 24, 2010). Such prior art browsers would calculate the X,Y location of
`
`an object relative to the top-left corner of the page by “walking the render tree,” or
`
`adding together the stored X,Y coordinates in the render tree for the object, its
`
`container, its container’s container, and so forth. See PX1026 at Ex. A pp. 27, 29-
`
`30; see also ‘353 patent at 17:53-56.
`
`
`4 The ‘353 Patent describes and makes admissions concerning the prior art Mozilla
`rendering engine, which was in public use in the United States more than one year
`prior to the effective filing date of the ‘353 Patent and thus qualifies as prior art
`under 35 U.S.C. § 102(b).
`
`
`
`9
`
`

`

`
`Generating a scalable vector representation from the pre-rendered layout
`
`information begins by defining a datum point for the entire page and additional
`
`datum points for each object on the page. See ‘353 patent at 17:42-18:32, Fig. 5
`
`(blocks 156-160). The page datum for the entire page, or “primary datum,” may be
`
`at any point on the page, so long as that point is consistently used to calculate the
`
`coordinates of all objects on the page. Id. at 17:47-56, Fig. 4C (item 262), claim 5.
`
`Likewise, the “object datum” may be at any point on an object (e.g., the top-left
`
`corner of the bounding box for the object), so long as that location is used
`
`consistently across all objects on the page. Id. at 17:57-64, Fig. 4C (items ending in
`
`“C”).
`
`After datum points are defined, a “vector” for each object is generated from
`
`the page datum to each object datum. Id. at 17:65-67, Fig. 5 (block 158), Fig. 4C
`
`(items ending in “D”). If the page datum is chosen to be at coordinate 0,0, the
`
`
`
`10
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`

`vector for an object may simply be stored as the X,Y value of that object’s datum
`
`point. Id. at 17:67-18:8, Fig. 4D. The scalable vector representation is completed
`
`by creating a reference that associates an object’s content and attributes to its
`
`vector (the line between the page datum and the object datum). Id. at 18:17-26,
`
`Fig. 5 (block 160).
`
`The scalable vector representation can then be used to scale the web page for
`
`displays of various sizes and resolutions and to zoom and pan the page at various
`
`user-selectable scaled resolutions and pan offsets. Id. at 5:3-24, 9:4-13, 18:47-19:3.
`
`According to the ‘353 Patent, a page can be scaled simply by manipulating the
`
`vectors and resizing the bounding boxes for each object to be displayed. Id. at
`
`19:32-56, 20:18-32, Fig. 6. The vector for each object to be zoomed or panned is
`
`offset and multiplied by a scale factor; the bounding box for each object is scaled
`
`by the same scale factor, as shown in Figure 4G of the Patents. Id. at 19:57-20:17.
`
`Thus, for example, zooming the web page in Figure 4A into the broken rectangle
`
`in Figure 4F results in the page displayed in Figure 4E. Id. at 3:31-46.
`
`V.
`
`STATEMENTS SHOWING A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF THE ‘353
`PATENT
`
`The prior art references cited herein constitute effective prior art and
`
`establish a reasonable likelihood that Petitioner will prevail with respect to at least
`
`one claim of the ‘353 Patent under 35 U.S.C. § 103.
`
`
`
`11
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`

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`A.
`
`Expert Declarations
`
`Petitioner hereby submits the January 20, 2012 (“Grimes-1”) and April 2,
`
`2012 (“Grimes-2”) Declarations of Jack D. Grimes, Ph.D. (also submitted by
`
`Apple in the Apple Inter Partes request), which explain that Pad++ teaches
`
`scalable vectors, as claimed in the ‘353 Patent. For example, “the Pad++ references
`
`define object[s] and the transformation of objects with respect to a coordinate
`
`system (e.g., using XY coordinates relative to an origin, which gives the magnitude
`
`and direction that defines vectors).” Grimes-1, ¶ 29. Moreover, “Pad++ describes
`
`the default origin as the center of the screen. [Bederson-4, p. 1129; See also, p. 4,
`
`Pad++; Programmer’s Guide]. In other examples, Pad ++ describes the origin
`
`elsewhere: ‘0.0 [the origin (0, 0)] represents the left or bottom side of the window.’
`
`[p. 22, Reference Manual].” Grimes-1, ¶ 26. “All locations or ‘places’ of objects
`
`are the locations of the anchor for each object, relative to this origin.” Grimes-1,
`
`¶¶ 11-46. Additionally:
`
`We know that the vector is stored by Pad++ for the rectangle called
`“rect2” because there is another command that can be used to
`determine the location of the rectangle “rect2.” We know that a
`“vector” for each object is generated and stored because otherwise,
`the -place command would not return a resulting location for the
`object relative to the primary datum. A -place of X, Y only makes
`sense if the coordinate X, Y is known to be relative to a known
`reference point, i.e., the origin at the center of the Pad++ surface.
`Since we have an origin and a place, then we have necessarily defined
`a vector. Using the common shorthand used in the ‘353 and ‘926
`Patents, one of ordinary skill in the art would understand that this
`
`
`
`12
`
`

`

`vector in Pad++ is from the known origin of the Pad++ surface to the
`“-anchor” of the object.
`
` Grimes-1, ¶¶ 55-56.
`
`B.
`
`State of the Art
`
`At the time of the ‘353 Patent’s filing (i.e., 1999-2000), Internet-equipped
`
`portable communicators, personal digital assistants (“PDAs”), and the like, were
`
`rapidly growing in popularity. These devices generally included web browsers that
`
`permitted magnification and manipulation of displayed webpages and were capable
`
`of supporting Scalable Vector Graphics (SVG, below). Such devices included, for
`
`example, the Nokia 9000 Communicator, which enabled users to send and receive
`
`faxes, e- mail/short messages, access Internet services and voice calls.5
`
`Mobile Internet and Browsers. Mobile browsers optimize the display for
`
`presenting Web content on a portable device’s small, low-resolution screen. The
`
`Apple Newton’s PocketWeb, an early mobile browser, was created at TecO in
`
`1994.6 The PocketWeb was followed by the first commercial product, NetHopper,
`
`which was released in August 1996.7 With time, other browsers were developed
`
`and multiple companies offered browsers for the Palm OS platform. Released in
`
`5See e.g., ”Nokia Unveils World’s First All-In-One Communicator For The Americas,”
`September 19, 1996 (Exhibit PX1003)
`6 See e.g., Gessler, S., Kotulla, A., “PDAs as mobile WWW browsers.” Proc. of Mosaic and the
`Web Conference, Chicago, October 1994 (Exhibit PX1011) & Markus Lauff, Markus, and
`Gellersen, Hans-Werner, “Multimedia client implementation on Personal Digital Assistants,”
`Interactive Distributed Multimedia Systems and Telecommunication Services, 1997 (Exhibit
`PX1012).
`7 “NetHopper 2.0 First true Web browser for Newton,” PenComputing Magazine, 1996,
`Retrieved September 21, 2012. (Exhibit PX1013)
`
`
`
`13
`
`

`

`1997, the first HTML browser was HandWeb by Smartcode. In February of 1996,
`
`Access Co. Ltd. of Tokyo, Japan (“Access”) introduced NetFront software for
`
`Internet browsing, which was initially installed in Internet TVs, word processors
`
`and, in February 1998, in mobile phones.8 Thus, it is clear that at the time of the
`
`alleged invention, multiple companies were offering Web browsers for devices
`
`with small, low-resolution displays.
`
`Scalable Vector Graphics. Scalable Vector Graphics are a family of
`
`specifications of a file format for two-dimensional vector graphics, both static and
`
`dynamic (i.e., interactive or animated). The specification is an open standard that
`
`has been under development by the World Wide Web Consortium (“W3C”) since
`
`1999. The Tsutsumitake and Hara references, further discussed below at Parts
`
`V(C)(2) and V(C)(5), teach translating HTML content to vector-based format that
`
`permits resizing of webpages.
`
`Zooming. Zooming and panning functionality was well known in the art at
`
`the time of the ‘353 Patent’s filing. Pad++ is "an interface system based on
`
`zooming and panning. Pad++ workspaces are large high resolution areas, allowing
`
`the viewing of complex collections of information at multiple scales. Zooming and
`
`panning are the primary methods of navigation in Pad++."9 See infra Part V(C)(3).
`
`The Zaurus references, further discussed below at Part V(C)(1), further teach a
`
`8 See id. at p. 2
`9 PX-1006 at 1.
`
`
`
`14
`
`

`

`mobile device available in the early 1990’s with a functional webbrowser that
`
`could render HTML web pages and included zooming functionality. The
`
`Tsutsumitake and Hara references, further discussed below at Parts V(C)(2) and
`
`V(C)(5), teach translating HTML content to permit resizing and zooming of
`
`webpages in accordance with display screen resolution.
`
`C.
`
`Scope and Content of the Prior Art Forming the Basis for the
`Proposed Rejections Under 35 U.S.C. § 103
`
`As described in Section V(E), the following prior art references teach each
`
`of the elements of the ‘353 Patent’s claims.
`
`1.
`
`Sharp Zaurus (“Zaurus”) (Exhibit PX1004)
`
`Zaurus (Zaurus_1 - Zaurus_6, collectively, “Zaurus”) teaches an early PDA
`
`made by Sharp Corporation. The Zaurus, a popular touch screen PDA marketed in
`
`Japan in the early 1990’s, accessed the Internet through either a wired or cellular
`
`connection. Zaurus’ fully functional webbrowser could render HTML web pages
`
`and