UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SONY MOBILE COMMUNICATIONS (USA) INC.
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`___________
`
`Case IPR2014-00029
`Patent 6,771,290
`___________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`PATENT OWNER’S RESPONSE TO PETITION
`(37 C.F.R. § 42.120)
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SONY MOBILE COMMUNICATIONS (USA) INC.
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`___________
`
`Case IPR2014-00029
`Patent 6,771,290
`___________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`PATENT OWNER’S RESPONSE TO PETITION
`(37 C.F.R. § 42.120)
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`
`I.
`
`II.
`
`RELIEF REQUESTED .................................................................................. 1
`
`SUMMARY OF B.E.’S ARGUMENT .......................................................... 1
`
`III. TECHNOLOGY BACKGROUND AND THE INVENTOR’S
`SOLUTION .................................................................................................... 4
`
`IV. SONY BEARS A HIGH BURDEN TO PROVE KIKINIS
`ANTICIPATES CLAIMS 2 AND 3 OF THE ’290 PATENT ....................... 5
`
`A.
`
`B.
`
`Legal Standards .................................................................................... 5
`
`Summary Of The Institution Decision ................................................. 7
`
`V. KIKINIS DOES NOT DISCLOSE “A PROGRAM STORED ON
`SAID NON-VOLATILE DATA STORAGE DEVICE” THAT
`PERFORMS THE FUNCTIONS CLAIMED IN CLAIM 2 ......................... 8
`
`A. Kikinis Teaches Remotely Stored Programs........................................ 9
`
`B.
`
`The Kikinis Browser Does Not Perform The Claimed Functions ..... 13
`
`VI. THE ’290 PATENT TEACHES A “ONE-CLICK” SYSTEM .................... 15
`
`VII. KIKINIS DOES NOT DISCLOSE A USER PROFILE .............................. 21
`
`VIII. CLAIM 3 OF THE ’290 PATENT IS PATENTABLE ............................... 23
`
`IX. THE ADOPTION OF THE “BROADEST REASONABLE
`CONSTRUCTION” RULE EXCEEDED THE PTO’S RULE
`MAKING AUTHORITY ............................................................................. 24
`
`X.
`
`CONCLUSION ............................................................................................. 26
`
`
`
`
`
`
`
`‐i‐
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`
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`Federal Cases
`Advanced Display Sys., Inc. v. Kent State University,
`212 F.3d 1272 (Fed. Cir. 2000) ............................................................................ 6
`
`ATD Corp. v. Lydall, Inc.,
`159 F.3d 534 (Fed. Cir. 1998) .......................................................................... 6, 7
`
`Cooper Techs. Co. v. Dudas,
`536 F.3d 1330 (Fed. Cir. 2008) .......................................................................... 24
`
`Lacavera v. Dudas,
`441 F.3d 1380 (Fed. Cir. 2006) .......................................................................... 24
`
`Richardson v. Suzuki Motor Co.,
`868 F.2d 1226 (Fed. Cir. 1989) ............................................................................ 7
`
`Tafas v. Doll,
`559 F.3d 134 (Fed. Cir. 2009) ............................................................................ 25
`
`Federal Statutes
`
`35 U.S.C. 2(b)(2)(A) ................................................................................................ 25
`
`35 U.S.C. § 2(b)(2) ................................................................................................... 24
`
`35 U.S.C. § 102(b) ................................................................................................. 5, 6
`
`35 U.S.C. §§ 311-319 ................................................................................................ 1
`
`35 U.S.C. § 316 .................................................................................................. 25, 26
`
`35 U.S.C. § 316, B.E. ................................................................................................. 1
`
`35 U.S.C. § 316(e) ................................................................................................. 1, 5
`
`35 U.S.C. §§ 326 and 316 ........................................................................................ 25
`
`
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`- ii -
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`
`
`
`
`Regulations
`
`37 C.F.R. 42.100(b) ................................................................................................. 24
`
`37 C.F.R. § 42.104(b)(4) ............................................................................................ 4
`
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`Other Authorities
`
`H.R. Rep. No. 112-98, pt. 1, at 46-47 ...................................................................... 25
`
`U.S. Patent No. 6,049,831 .......................................................................................... 7
`
`U.S. Patent No. 6,771,290 .................................................................................passim
`
`“View, Edit, Save, Compose or Deliver E-Dox Documents.” Ex. 1008, Fig. 4 ..... 19
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`- iii -
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`
`
`2001
`
`2002
`
`
`
`LIST OF EXHIBITS
`
`
`
`Declaration of Cory Plock
`
`Curriculum Vitae of Cory Plock
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`- iv -
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`Patent Owner B.E. Technology, L.L.C. (hereafter “B.E.”) respectfully
`
`submits this response to petitioner Sony Mobile Communications (USA) Inc.
`
`(“Sony”) Petition for Inter Partes Review. This filing is timely under 35 U.S.C. §§
`
`311-319 and 37 C.F.R. § 42.120.
`
`Sony contends that U.S. Patent No. 6,771,290 (the “’290 patent”) is
`
`unpatentable over PCT International Publication Number WO 97/09682 to Dan
`
`Kikinis (“Kikinis” or “the Kikinis Reference”). “In an inter partes review
`
`instituted under this chapter, Sony shall have the burden of proving a proposition
`
`of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). Sony
`
`fails to meet this burden as to any claim of the ’290 patent.
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 316, B.E. respectfully requests that the Board
`
`determine that originally issued claims 2 and 3 of the ’290 patent are valid and
`
`patentable in view of the Kikinis Reference.
`
`II.
`
`SUMMARY OF B.E.’S ARGUMENT
`
`It is proposed that claims 2 and 3 of the ’290 patent are unpatentable because
`
`they are anticipated by the Kikinis Reference. Kikinis does not anticipate the
`
`claims of the ’290 patent because it fails to teach each and every limitation. As set
`
`forth in detail below, and the Declaration of Cory Plock (“the Plock Declaration”
`
`or “Plock Decl.”) filed herewith, the Kikinis Reference lacks at least the following
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`- 1 -
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`
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`claim elements:
`
`A “program stored on [a] non-volatile data storage device” capable of
`
`performing the various functions disclosed in claim 2. Claim 2 of the ’290 patent
`
`claims “a program stored on [a] non-volatile data storage device” that is “operable
`
`upon execution” to perform a series of functions, including, accessing a file in
`
`response to selection of a user-selectable item that is associated with the file. See
`
`id. Claim 2, Col. 40:5-10. Kikinis fails to teach a program stored on a non-volatile
`
`data storage device that performs these functions because Kikinis utilizes programs
`
`stored on servers to perform these functions. Since the only program disclosed in
`
`Kikinis—a web browser—cannot access data sets or files in response to the
`
`selection of associated user-selectable items without initiating additional server-
`
`based programs, Kikinis does not anticipate the ’290 patent.
`
`A “file associated with [a] selected user link.” Claim 2 of the ’290 patent
`
`claims “a program” that is “operable upon execution” to receive a “user profile”
`
`from a server. Ex. 1001, Claim 2, Col. 40:3-4. The program is further operable to
`
`“display a user-selectable item for user links contained within the user profile.”
`
`Id., Claim 2, Col. 40:4-6. In addition, the program is operable, “in response to
`
`selection” of “one of the user links” to “access the file associated with the selected
`
`user link.” Id., Claim 2, Col. 40:6-11. Kikinis fails to teach a file associated with a
`
`selected user link because the document management system of Kikinis only
`
`- 2 -
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`
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`
`
`discloses buttons—user-selectable items—that are common to each user that link
`
`to data bases. Kikinis does not disclose user links that are associated with
`
`particular files. Because Kikinis fails to associate specific files with links of the
`
`Kikinis home page, Kikinis does not anticipate claim 2 of the ’290 patent.
`
`A “user profile.” Claim 2 of the ’290 patent claims a “user profile.”
`
`“Profile” is defined in the patent as “[u]ser-specific information relating to an
`
`individual using a computer.” Ex. 1001, 4:52-53. The Board adopted this
`
`construction in its institution decision. Paper 7 at 9. Kikinis fails to teach a “user
`
`profile” because the home page disclosed in Kikinis does not contain user-specific
`
`information. Kikinis states that the home page is “individualized to a specific
`
`user,” Ex. 1008, Col. 6:35-36, but there is no disclosure in the reference that
`
`identifies any user-specific information contained within the home page.
`
`Moreover, each of the home page buttons taught in Kikinis link to non-user
`
`specific “programs” that are utilized by all users before accessing electronic
`
`document data bases. While “[e]ach data base belongs to (or is assigned to or
`
`associated with) a different client,” the programs are not user-specific. Id., Col.
`
`6:34-35. There is nothing about the Kikinis home page that meets the definition of
`
`“profile,” and for that reason, Kikinis does not anticipate claims 2 and 3 of the ’290
`
`patent.
`
`For these reasons, the Petition’s sole ground of unpatentability is legally
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`- 3 -
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`
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`deficient. See 37 C.F.R. § 42.104(b)(4).
`
`III. TECHNOLOGY BACKGROUND AND THE INVENTOR’S
`SOLUTION.
`
`The ’290 patent discloses an apparatus configured with a program that is
`
`operable to, among other things, access files stored in a remote user library. See
`
`Ex. 1001, Col. 5:7-10 (“In accordance with one aspect of the present invention
`
`there is provided an apparatus for use by a computer to provide a user of the
`
`computer with access to information resources via the Internet or otherwise.”).
`
`The remotely accessible files of the user library include such things as documents
`
`and e-mail. Id., Col. 13:3-7 (“[T]he User Database 46 of ADM server 22 can
`
`include a user library that enables the user to store files (documents, executable
`
`programs, email messages, audio clips, video clips, or other files) that can then be
`
`accessed from any client computer 40.”).
`
`At the time of the invention, computer users enjoyed limited ability to access
`
`remote information through web browsers. See id., Col. 3:41-43, 49-52 (“Internet
`
`users typically employ browser applications and related technologies in order to
`
`access the WWW; and to locate and view files, documents and audio/video clips. .
`
`. . Browsers are useful for accessing desired files and web sites, and also have the
`
`capability of storing information regarding visited and favorite web sites on the
`
`user’s computer.”). But “the usefulness and flexibility of such systems are
`
`severely limited, because each browser installation traditionally has been
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`- 4 -
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`independent of other browser installations to which a user has access. Thus,
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`information within one browser is not easily transportable to the other browser.”
`
`Id., Col. 3:56-62.
`
`The ’290 patent claims an improvement over these conventional browser
`
`systems by providing a program operable to receive a user profile to any computer
`
`on the network and to utilize user-selectable links contained within the profile to
`
`directly access associated files in a user library. See Ex. 1001, Abstract, Claim 2.
`
`Consequently, “multiple users of the same computer can possess Internet web
`
`resources and files that are personalized, maintained and organized.” Id.
`
`IV. SONY BEARS A HIGH BURDEN TO PROVE KIKINIS
`ANTICIPATES CLAIMS 2 AND 3 OF THE ’290 PATENT.
`A. Legal Standards
`“In an inter partes review instituted under this chapter, the petitioner shall
`
`have the burden of proving a proposition of unpatentability by a preponderance of
`
`the evidence.” 35 U.S.C. § 316(e). The Board’s institution decision identifies the
`
`question presented as whether Kikinis anticipates claims 2 and 3 of the ’290 patent.
`
`See Paper 7 at 17 (“[A]n inter partes review is hereby instituted as to claims 2 and
`
`3 of the ’290 patent on the ground that they are unpatentable under 35 U.S.C. §
`
`102(b) as anticipated by Kikinis.”). Section 102(b) of the United States Patent Act
`
`provides that “a person shall be entitled to a patent unless the invention was
`
`patented or described in a printed publication . . . more than one year prior to the
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`- 5 -
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`date of the application.” 35 U.S.C. § 102(b).
`
`“A patent is invalid for anticipation when the same device or method, having
`
`all of the elements and limitations contained in the claims, is described in a single
`
`prior reference.” ATD Corp. v. Lydall, Inc., 159 F.3d 534, 545 (Fed. Cir. 1998)
`
`(citing Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989) and
`
`Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 894 (Fed. Cir. 1884)).
`
`“[I]nvalidity by anticipation requires that the four corners of a single, prior art
`
`document describe every element of the claimed invention, either expressly or
`
`inherently, such that a person of ordinary skill in the art could practice the
`
`invention without undue experimentation.” Advanced Display Sys., Inc. v. Kent
`
`State University, 212 F.3d 1272, 1282 (Fed. Cir. 2000) (citing Atlas Powder Co. v.
`
`Ireco Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999)); Advanced Display Sys., 212
`
`F.3d at 1283 (“Anticipation, put simply, requires that every element of the claimed
`
`invention was previously ‘described in a single reference.’”) (quoting Scripps
`
`Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir.
`
`1991) (emphasis in original).
`
`In order to establish that the ’290 patent is unpatentable, Sony must establish
`
`that the Kikinis Reference in fact teaches all of the elements of the claims. Kikinis
`
`“must describe the patented subject matter with sufficient clarity and detail to
`
`establish that the subject matter existed and that its existence was recognized by
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`- 6 -
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`
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`persons of ordinary skill in the field of the invention.” ATD, 159 F.3d at 545.
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`“The identical invention must be shown in as complete detail as is contained in the
`
`. . . claim.” Richardson, 868 F.2d at 1236. The failure to establish by a
`
`preponderance of the evidence that Kikinis teaches each element of the ’290 patent
`
`in “as complete detail” as the ’290 patent requires a finding that claims 2 and 3 of
`
`the ’290 patent are patentable over Kikinis.
`
`Summary Of The Institution Decision
`
`B.
`The original Petition asserted that the ’290 patent was unpatentable in view
`
`of Kikinis and U.S. Patent No. 6,049,831 (“Gardell”). See Petition at 17, 24. B.E.
`
`did not file a preliminary response. The Board ordered inter partes review on
`
`Kikinis but not Gardell. Paper 7 at 17. Respectfully, as described in detail below,
`
`the Board did not account for the details of the claim elements of the ’290 patent or
`
`the disclosure of Kikinis when it concluded that Sony demonstrated a reasonable
`
`likelihood that claims 2 and 3 would be found unpatentable.
`
`For example, the Board recognized that in Kikinis, “[e]ach electronic
`
`document server 69 runs software that supports a specific application.” Id. at 12.
`
`The decision gave examples such as “an e-mail program, a fax program, a voice-
`
`mail program, and other programs, including video and graphics.” Id. The
`
`decision also reproduced Figure 2 of Kikinis, which shows each of these programs
`
`residing on remote servers, separate and apart from the user station and kiosk. Id.
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`- 7 -
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`The Board also took note of Sony’s contention that the web browser of
`
`Kikinis meets the claim limitation of “a program stored on said non-volatile data
`
`storage device in a computer-readable format” that is operable to perform the
`
`functions claimed in the patent. Id. at 15 (“Kikinis describes a Web browser that
`
`provides a user station with access to a Web server via the Internet.”). But when
`
`the Board compared Kikinis to the claims of the ’290 patent, the Board appears to
`
`have ignored that the claim language requires the program stored on the non-
`
`volatile data storage device to perform the each of recited functions. The web
`
`browser of Kikinis does not, and cannot, perform those functions. The remotely
`
`stored email, voicemail, and fax programs are necessary to access the electronic
`
`document data bases shown in Kikinis. This important distinction, and several
`
`others, was overlooked by the Board, and as a result, the ’290 patent must be found
`
`patentable over Kikinis.
`
`V. KIKINIS DOES NOT DISCLOSE “A PROGRAM STORED ON SAID
`NON-VOLATILE DATA STORAGE DEVICE” THAT PERFORMS
`THE FUNCTIONS CLAIMED IN CLAIM 2.
`
`Claim 2 of the ’290 patent claims “[a] computer-readable memory for use by
`
`a client computer” comprising a “non-volatile data storage device” and “a program
`
`stored on said non-volatile data storage device in a computer-readable format.”
`
`Ex. 1001, Claim 2. In claim 2, the “program” is “operable upon execution to
`
`receive from server one of the user profiles and to display a user-selectable item
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`- 8 -
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`
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`for user links contained within the user profile.” Id., Col. 40:3-6. In addition, the
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`“program” is “operable in response to selection by a user of one of the user links to
`
`access the file associated with the selected user link from the user library
`
`associated with the received user profile.” Id., Col. 40:6-10.
`
`The claims of the ’290 patent clearly provide that the program that performs
`
`these functions is stored on the non-volatile data storage device of the client
`
`computer. Kikinis fails to disclose a program stored on the non-volatile data
`
`storage devices disclosed in Kikinis that are capable of performing the above-
`
`claimed functions. To the contrary, Kikinis discloses programs stored on remote
`
`servers that perform the disclosed functions. Consequently, Kikinis does not
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`anticipate claims 2 and 3 of the ’290 patent.
`
`A. Kikinis Teaches Remotely Stored Programs.
`Kikinis generally discloses a system that provides remote indirect access to
`
`electronic documents, such as e-mail. See Ex. 1008, Col. 1:1-3 (“The present
`
`invention cooperates with the conventional facilities of the World Wide Web to
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`realize real-time remote access to any kind of electronic document, including e-
`
`mail.”). But unlike the system claimed in the ’290 patent, Kikinis requires
`
`remotely stored programs to access the remotely stored electronic documents.
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`Kikinis states that “[e]ach server of electronic document servers 69 runs software
`
`that supports a specific application. Illustrated are an e-mail program 79, a fax
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`program 81, a voice-mail program 85 and various other programs 87
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`including video and graphics.” Ex. 1008, Col. 6:27-31 (emphasis added); see also
`
`id., Col. 7:13-16 (“Each link uses a common gateway interface (CGI) to translate
`
`HTML into a particular data base language. Shown in Fig. 2 are CGIs 77, 78, 80,
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`and 82 leading to programs 79, 81, 85, and 87, which in turn access data bases
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`89, 91, 93, and 95 respectively.”) (emphasis added).
`
`As shown below, Figure 2 of Kikinis “is a block diagram illustrating how
`
`Internet users may remotely retrieve an [sic] electronic documents of all sorts from
`
`their mailboxes using the facilities of the Web and system according to an
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`embodiment of the present invention.” Ex. 1008, Col. 6:7-10.
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`Figure 2 shows “[a] path from Web server 67 to data bases 89, 91, 93, and 95 by
`
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`means of software links programmed into a client’s home page [73].” Ex. 1008,
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`Col. 7:11-13. Thus in order to access the document data bases from the home
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`page, a user must initiate the yellow highlighted programs. Those programs are
`
`not stored on the client computers, which are identified in Figure 2 as “user station
`
`53” and “kiosk 55” (and outlined in orange). See Ex. 1008, Col. 6:11-14 (“In the
`
`system of Fig. 2, user station 53 comprises, a high-speed modem 61, and a
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`computer system 63 having well-known elements of such a computer system,
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`including a Web-browser 65 and PPP or SLIP communication software (not
`
`shown).”); see also id., Col. 6:14-18 (describing kiosk 55). The client computers
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`are connected to the remove servers storing the additional programs by the internet
`
`(highlighted in blue).
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`A person of ordinary skill in the art would know that a system utilizing
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`server-side CGI and remote server programs teaches a different system than the
`
`one disclosed in the ’290 patent. Ex. 2001 ¶ 22 (“A POSITA would therefore
`
`know that CGI is server-side technology in which programs reside and execute on
`
`the web-server—not the client computer.”).
`
`While the object of Kikinis is similar to that of the ’290 patent, the Kikinis
`
`system is the polar opposite of the’290 patent system. As discussed above, the
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`’290 patent discloses an apparatus that accesses remote files stored in a user
`
`library. See Ex. 1001, Col. 5:7-10. The user library “enables the user to store files
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`- 11 -
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`
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`(documents, executable programs, email messages, audio clips, video clips, or
`
`other files) that can then be accessed from any client computer 40.” Id., Col. 13:3-
`
`7. But the ’290 patent teaches that the remotely stored files are accessed using the
`
`program stored on the client computer. See e.g., Ex. 1001, Claim 2 (“A computer-
`
`readable memory for use by a client computer[;] . . . the computer-readable
`
`memory comprising: . . . a non-volatile data storage device; . . . a program stored
`
`on said non-volatile data storage device in a computer-readable format; . . . said
`
`program being operable upon execution to . . . access the file associated with the
`
`selected user link from the user library.”) (emphasis added); see also id., Claim 1.
`
`There is ample support in the patent that the program stored in non-volatile
`
`memory accesses the electronic files in the user library. First, the patent clearly
`
`claims that “said program” is “stored on” the non-volatile memory of the client
`
`computer. Second, the ’290 patent states that the “the server stor[es] a user profile
`
`and user library for each of a number of different users.” Ex. 1001, Col. 39:3-5.
`
`There is not mention that the server stores additional programs necessary to access
`
`the user’s files.
`
`Finally, the specification of the ’290 patent further evidences that the
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`claimed system does not utilize remote programs in the way that Kikinis does.
`
`[T]he apparatus further includes user specific maintenance and
`
`organization of that user’s individual files and resources
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`- 12 -
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`represented by the user-selectable links contained within the
`
`first program module, in order that an individual user can gain
`
`access to those files and resources from a computer having
`
`network access, or that multiple users can gain access to
`
`individual files stored on the same computer. Preferably, this is
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`accomplished by storing a user profile and user library on a
`
`server connected to the network. Then, when a user runs the
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`first program module, it identifies the user and connects to the
`
`server to access the user’s profile and library, with the profile
`
`being used to specify that individual’s user-selectable links to
`
`be displayed in the first region and the library being used to
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`store these individual files and resources that the user wishes to
`
`be able to access from anywhere on the network.
`
`Ex. 1001, Col. 5:43-58. The “first program module” is the program that accesses
`
`the user’s profile and library. The “first program module” is stored on the non-
`
`volatile memory. Because Kikinis fails to teach a program stored on the client
`
`computer that accesses files from a user library, Kikinis does not anticipate claims
`
`2 and 3 of the ’290 patent.
`
`The Kikinis Browser Does Not Perform The Claimed Functions.
`
`B.
`Sony contends that the “program” limitation of claim 2 of the ’290 patent is
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`- 13 -
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`satisfied by the “browser” described in Kikinis. See Petition at 19 (“Both the user
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`station 53 and kiosk 55 of Kikinis are described as including programs that
`
`included a ‘Web-browser’ and PPP or SLIP communication software.”); see also
`
`Ex. 1006, ¶ 18.e (“A person of ordinary skill in the art at the time the’290 Patent
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`was filed would understand that a browser that displays HTML necessarily
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`displays links.”). The Board’s institution decision also adopted this position. Paper
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`7 at 15. But as explained above, the browser disclosed in Kikinis does not perform
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`the functions of the program claimed in the ’290 patent and, consequently, the
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`Kikinis Reference does not anticipate claims 2 and 3 of the ’290 patent.
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`The web browser of Kikinis provides access to the user’s home page. See
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`Ex. 1008, Col. 7:17-19 (“A subscriber may use the facilities of the Web to access
`
`his or her home page on ISP 57 from anywhere on Earth, . . . .”); id, Col. 7:29-31
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`(“A user invokes browser 109 and enters a URL for his or her home page 73 in
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`field 113 of browser 109”). The browser does not access the electronic document
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`data bases without additional software programs stored on remote servers. See Ex.
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`1008, Col. 8:3-4 (“By selecting button 117 a user is linked to data base 93 (Fig. 2)
`
`through CGI 80 and voice mail program 87.”) (emphasis added); id., Col. 6:27-31
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`(“Each server of electronic document servers 69 runs software that supports a
`
`specific application. Illustrated are an e-mail program 79, a fax program 81, a
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`voice-mail program 85 and various other programs 87 including video and
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`- 14 -
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`graphics.”); id., Col. 6:35-7:1 (“A single data base of set 71 includes a home page
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`73, individualized to a specific client, that provides software links to various
`
`lower-order data bases maintained by electronic document server 69.”); id., Col.
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`7:4-7 (“Home page 73 . . . provides access to data bases 89, 91, 93, and 95 as
`
`described below through software links.”).
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`A person of ordinary skill in the art would understand that a web browser is
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`not capable of performing these functions. Ex. 2001 ¶ 21(“A POSITA would
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`understand that a web browser makes requests to a web server and receives
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`responses from the web server, the contents of which are subsequently displayed in
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`the browser window to the user. A POSITA would also understand that a web
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`browser cannot ‘access [a] file’ without the web server, since the web server must
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`execute programs to download the file to the browser, or otherwise format and
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`render the file in a format suitable for display on the web browser.”). The web
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`browser of Kikinis, therefore cannot perform the functions of the program
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`disclosed in the ’290 patent and, therefore, does not meet the “said program”
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`limitation in the ’290 patent.
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`VI. THE ’290 PATENT TEACHES A “ONE-CLICK” SYSTEM.
`The ’290 patent describes a “one-click” system whereby a user enjoys a
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`direct link from his or her user profile to the files stored in his or her user library.
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`Kikinis, on the other hand, discloses a system whereby a user links, through CGI
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`- 15 -
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`and other software programs, to data bases from which the user may then access
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`specific electronic documents. Because the Kikinis Reference fails to teach direct
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`file access like claim 2 of the ’290 patent, Kikinis fails to anticipate claim 2.
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`Claim 2 of the ’290 patent provides as follows:
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`said program being operable upon execution to receive from
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`server one of the user profiles and to display a user-selectable
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`item for user links contained within the user profile, said
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`program further being operable in response to selection by a
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`user of the user links to access the file associated with the
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`selected user link from the user library associated with the
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`received user profile.
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`Ex. 1001, Claim 2. The critical language is “to access the file associated with the
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`selected user link from the user library.” Id. (emphasis added). The claim plainly
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`requires a specific file (“the file”) to be associated with a specific user link (“the
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`selected user link”). Claim 2, therefore, specifically claims an association between
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`specific user-selectable links and specific files.
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`This one-to-one relationship between files and links is clearly taught in in
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`the specification: “[t]he user profile additionally contains bookmarks, shortcuts,
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`and other such links to files and information resources accessible via either
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`network 42 or the Internet 20.” Ex. 1001, Col. 12:67-13:3 (emphasis added). The
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`- 16 -
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`
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`ease with which a user may access files or initiate programs from the user profile is
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`an important part of the improvement claimed by the user profile. See id., Col.
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`14:51 (describing user profile icons that provide “single-click” initiation of
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`programs); id., Col. 15:13 (“The user has the ability to subscribe the channel by
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`making a direct link to a file, . . . .”) (emphasis added). The ’290 patent claims a
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`system that offers a single-click, direct link from an item in the user profile to a
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`specific file in the user library.
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`Unlike the ’290 patent, Kikinis teaches links to CGI, software programs, and
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`eventually data bases, not links to specific files in the data base. Sony contends
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`that the individualized home page of Kikinis satisfies the claim limitation of a user
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`profile in the ’290 patent. See Paper 7 at 14 (“Petitioner asserts that Kikinis
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`discloses . . . a user profile (home page 73) . . . .”). Sony also contends that the
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`lower-order electronic document data bases satisfy the claim limitation of a user
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`library. See id. (“Petitioner asserts that Kikinis discloses . . . a user library (user-
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`specific databases, such as e-mail database 89, fax database 91, voice-mail
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`database 93, and electronic document database 95, all of which contain user-
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`specific files).”). Finally, Sony contends that the files in the lower-order data bases
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`satisfy the claim limitation of files in the user library. Id. (referring to “the user’s
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`files (electronic documents, including e-mail messages and faxes)”). But, at best,
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`Kikinis only discloses common links to data bases (i.e., the user library), not files.
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`- 17 -
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`See Ex. 1008, Col. 7:18-19 (“[U]se the link feature in the home page to access the
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`electronic data bases.”); id., Col. 8:3-4 (“By selecting button 117 a user is linked to
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`data base 93 . . . .”).
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`The Kikinis Reference discloses that when a user links to the electronic
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`document data base, the user opens a window wherein the user can then select
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`certain files. Figure 4 of Kikinis shows that from the home page 131, a user links
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`only to a data base 133.
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`Kikinis, Fig. 4. At that point, the user may be required to enter a password or other
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`- 18 -
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`security identification to access the electronic document data base. Ex. 1008, Col.
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`9:17-18; Fig. 4 (block 135). Only once the user gains access to the data base, may
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`the user “View, Edit, Save, Compose or Deliver E-Dox Documents.” Ex. 1008,
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`Fig. 4; see also id., Col. 9:18-20 (“At step 137, the user may view, edit, save,
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`compose, forward or delivery electronic documents.”).
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`It is clear from Kikinis that the home page software links, at most, do no
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`more than access data bases, i.e., the user library. Ex. 1008, Claim 1 (“[W]herein
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`selecting the on-screen active selection area launches control routines connecting
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`the user through an on-screen window to an electronic document data base
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`containing documents addressed specifically to the home page owner, and wherein
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`the home page owner may activate the on-screen window and select and review
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`stored documents therethrough.”); Claim 7 (“[W]herein a home page owner may
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`remotely access the home page from the computerized station, display the home
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`page on the video monitor, launch the gateway, providing an on-screen window,
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`and retrieve and audit the specifically-addressed electronic documents from the
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`electronic document data base through the on-screen window.”). Kikinis does not
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`teach that a home page
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