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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________________________________________________________
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`SONY MOBILE COMMUNICATIONS (USA) INC.
`Petitioner
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`v.
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`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`
`Patent No. 6,771,290
`Issue Date: Aug. 3, 2004
`Title: COMPUTER INTERFACE METHOD AND APPARATUS WITH
`PORTABLE NETWORK ORGANIZATION SYSTEM AND TARGETED
`ADVERTISING
`__________________________________________________________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITION UNDER 37 C.F.R. § 42.23
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`No. IPR2014-00029
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`__________________________________________________________________
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2014-00029
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`List of Exhibits
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`Exhibit Name
`Ex. No.
`Sony-1001 U.S. Patent No. 6,771,290 (“the ’290 Patent”)
`Sony-1002
`Public PAIR Transaction History for U.S. Pat. App. 09/744,033
`Sony-1003 U.S. Patent App. 09/744,033, Notice of Allowability (Mar. 19, 2004)
`Sony-1004 U.S. Patent No. 6,141,010 (“the ’010 Patent”)
`Sony-1005 Comparison of ’290 Patent and ’010 Patent Specifications
`Sony-1006 Expert Declaration of Eric Burger
`Sony-1007 Curriculum Vitae of Eric Burger
`Sony-1008
`International PCT App. Pub. WO 97/09682 to Kikinis (“Kikinis”)
`Sony-1009 U.S. Patent No. 6,049,831 to Gardell et al. (“Gardell”)
`Sony-1010 Excerpt from B.E. Technology, L.L.C.’s Initial Infringement Contentions
`to Sony Mobile Communications (USA) Inc.
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`ii
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`Petitioner’s Reply to Patent Owner’s Response
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`TABLE OF CONTENTS
`I.
`Introduction ................................................................................................. 1
`II. Kikinis Discloses a Program on a Client Computer that Performs the
`Functionality Recited in Claim 2. ................................................................ 1
`III. The Claims Do Not Require a “One-Click” System. .................................. 5
`IV. Kikinis Discloses a User Profile. .................................................................. 8
`V. Claim 3 of the ’290 Patent Is Not Patentable. ............................................. 11
`VI. The Adoption of the Broadest Reasonable Interpretation Rule Did Not
`Exceed the PTO’s Rule Making Authority, and BET Has Not Shown that
`a Different Claim Construction Standard Would Alter the Outcome. ........ 11
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`iii
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`Petitioner’s Reply to Patent Owner’s Response
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`I.
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`Introduction
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`Patent Owner B.E. Technology, LLC (“BET”) attempts to distinguish claims 2
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`and 3 of U.S. Pat. No. 6,771,290 (the “’290 Patent”) over the prior art publication
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`WO 97/09682 (“Kikinis”) on three bases: (1) that Kikinis does not disclose a client
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`computer program that performs the functions recited in claim 2, see Patent Owner’s
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`Response, No. 21 at 8-15 (July 9, 2014) (the “Response”); (2) that Kikinis only
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`discloses “indirect access” to electronic documents and does not disclose “a ‘one-
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`click’ system,” id. at 15-21; and (3) that Kikinis does not disclose a user profile, id. at
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`21-23.
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`BET’s arguments are meritless because they mischaracterize Kikinis, the ’290
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`Patent, and the requirements of the challenged claims. BET’s argument that the PTO
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`has exceeded its rulemaking authority is also without merit.
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`II. Kikinis Discloses a Program on a Client Computer that Performs the
`Functionality Recited in Claim 2.
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`BET’s first argument is that Kikinis does not disclose a “program stored on said
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`non-volatile data storage device . . . [that is] operable in response to selection by a user
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`of one of the user links to access the file associated with the selected user link from
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`the user library associated with the received user profile.”1 Response at 8-9 (internal
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`1 BET also seems to imply that the program of Kikinis is not “operable upon
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`execution to receive from [sic] server one of the user profiles and to display a user-
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`1
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`citations omitted). BET argues that, in Kikinis, the programs which access the files
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`“are not stored on the client computers,” but rather, “[t]he client computers are
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`connected to remove [sic] servers storing the additional programs.” Id. at 11; see also
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`Expert Dec. of Cory Plock (“Ex. 2001”) at ¶ 20.
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`First, BET is attempting to improperly import negative limitations into the claims,
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`and its argument is incorrect as a matter of law. BET does not dispute that Kikinis
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`discloses a web-browser (i.e., a program) on a user station (i.e., on a non-volatile
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`memory on a client computer) that accesses the files stored in the databases on the
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`server. See e.g., Response at 11 (“Thus in order to access the document databases
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`from the home page, a user must initiate the [programs on the server].”); 14 (“The
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`browser does not access the electronic document data bases without additional
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`software programs stored on remote servers”). BET merely argues that because the
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`web browser of Kikinis does not access the files solely by itself, the web browser does
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`not meet the “program” limitation of claim 2. This argument is incorrect because
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`claim 2 uses “comprising” language. See ’290 Patent, claim 2. Where a claim utilizes
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`selectable item for user links contained within the user profile.” Response at 8-9.
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`However, BET then admits that “[t]he web browser of Kikinis provides access to the
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`user’s home page.” Response at 14. As explained in Sony’s Petition (at 18-21, 34-38)
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`and infra at 8, the user’s home page of Kikinis is the “user profile” of claim 2.
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`2
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`the term “comprising” in its transition, additional elements beyond those listed in the
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`claim (i.e., such as remote programs that provide files to the web-browser) do not
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`remove a prior art reference (or alleged infringing device) from being within the scope
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`of the claims. See, e.g., Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1319 (Fed.
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`Cir. 2009) (“[A] claim [that] uses the term ‘comprising,’ . . . is well understood in
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`patent law to mean including but not limited to.” (internal citations omitted)).
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`Accordingly, the fact that the web browser of Kikinis may interact with remote
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`programs to access the files in the user library does not bring it outside the scope of
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`claim 2 of the ’290 Patent.
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`Second, the ’290 Patent’s disclosure expressly contemplates utilizing remote
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`programs on the server to assist the program on the client computer in accessing files
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`in the user library, and claim 2 should not be read to exclude those embodiments. In
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`particular, similar to Kikinis, the ’290 Patent describes how the user profile and user
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`library are stored in a database, User Database 46. See, e.g., ’290 Patent at 12:45-53,
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`13:3-12, and Fig. 3 (depicting User/Demographics Database 46 stored on ADM
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`server 22). The ’290 Patent further describes that the server has a “database services
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`system 330” that includes multiple program modules that “[w]orking together . . . act
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`as a single software application that provides . . . a fully integrated interface to client
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`software 350 (e.g., software applications) on the user’s computer.” See id. at 30:61-
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`31:10; Fig 15. These program modules include a “user services module 340 [that]
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`provides the capabilities required to interact with the components of the client
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`software of the user’s computer in order to implement and manage the features and
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`benefits realized at the user’s computer.” See id. at 31:26-30.
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` Thus, BET’s argument that the “first program module” on the client computer of
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`the ’290 Patent is accessing the user’s profile and user library directly without using
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`additional software on server 22 (Response at 12-13) is incorrect. As described in the
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`specification and shown in Figure 15, the Client Software Application 10 (i.e., first
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`program module) accesses Database Services 330 (and thus the user profile and user
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`library stored in User Database 46) through User Services 340—a program module
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`stored on the server.
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`Finally, according to BET’s own expert, client/server systems that provide access
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`to remote files must have a program on the sever that operates in tandem with the
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`program on the client:
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`Q I understand that there are a lot of different variations, but is it
`true that, at a minimum, the web server, itself, must have some
`software to handle some part of the processing of an HTTP request?
`A Yes, that’s a fair characterization.
`See Ex. 2004 (“Plock Dep. II”) at 53:14-19.
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`Q Sure. Is it correct that there is no way for a web server to serve
`a file in response to a request without having some software that
`resides on that web server?
`A Yes, yes. On a server, software would be required in order to
`do that.
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`See id. at 54:13-18. Accordingly, BET’s attempt to distinguish Kikinis from the ’290
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`Patent merely because Kikinis utilizes server software in addition to client software is
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`belied by BET’s own expert.
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`BET’s argument that the ’290 Patent and claim 2 are different from Kikinis
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`because they describe a system where a program stored on the client computer
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`accesses the user library on the server without using additional software on the server
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`is without merit and should be rejected.
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`III. The Claims Do Not Require a “One-Click” System.
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`BET’s second argument is that claim 2 requires a “‘one-click’ system whereby a
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`user enjoys a direct link from his or her user profile to the files stored in his or her
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`user library” and that Kikinis fails to teach such “direct file access.” See Response at
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`15, 16. The requirement of “one-click” direct file access does not appear in the
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`language of claim 2 or in the ’290 Patent’s specification. Instead, BET argues that the
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`“critical language” in claim 2 that gives rise to the “one-click” limitation is: “to access
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`the file associated with the selected user link from the user library.” Id. at 16
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`(emphasis in original).
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`The cited language plainly does not require “one-click,” or “direct file access.”
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`BET’s basis for adding these limitations is cherry-picking language from the ’290
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`Patent’s specification in order to improperly import limitations into the claims; a
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`practice the Federal Circuit has described as a “cardinal sin.” See Response at 16-17;
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`see Philips v. AWH Corp., 415 F.3d 1303, 1320 (Fed. Cir. 2005) (“one of the cardinal
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`sins of patent law—reading a limitation from the written description into the claims”).
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`The plain meaning of the language “to access the file associated with the selected user
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`link from the user library” contains no requirement that such access be via a single
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`click. Furthermore, BET’s reliance on the reference in the specification to “making a
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`direct link to a file,” (Response at 17(emphasis in original); ’290 Patent 15:13-14)
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`omits the rest of the sentence which contemplates other, non-direct methods of
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`subscribing to a channel. ’290 Patent at 15:12-15 (“The user has the ability to
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`subscribe the channel by making a direct link to a file, or by combining various files
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`under some category, or by providing a drop down list to a subscriber
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`channel.” (emphasis added)). The ’290 Patent expressly contemplates methods of
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`accessing a file that are not by a direct, “one-click” link, and thus there is no basis for
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`limiting claim 2 to such direct links.
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`Furthermore, BET’s expert admitted that Kikinis discloses accessing a database via
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`links on the user’s home page and that a database meets the definition of a “file”
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`according to the ’290 Patent. In his declaration, Dr. Plock originally stated that
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`“Kikinis discloses, at most, user links associated with databases,” and that “‘data
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`bases’ are not synonymous with ‘files.’” See Ex. 2001 ¶¶ 24-25; see also Plock Dep. II
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`57:18-22. However, the ’290 Patent broadly defines a file as “[a]ny digital item . . .
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`that is stored in memory and is accessible via a . . . pointing or indexing structure.”
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`See ’290 Patent, 4:25-28; Decision entered on April 9, 2014, Paper 7 at 8 (“Institution
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`Decision”). During cross-examination, Dr. Plock admitted that a database stored in
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`memory is a digital item and is accessible via a pointing or indexing structure, thus
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`meeting the definition of “file,” according to the ’290 Patent’s specification. See Plock
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`Dep. II at 63:15-20 (“[databases are] stored in digital form, yes.”), 60:9-11 (database
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`can be accessed using a pointing or indexing structure), 62:21-24 (“data bases would
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`be stored in memory”); 63:2-7; 70:2-9 (databases can be accessed using a link); 71:19-
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`72:-8 (user files in user library can be accessed using a link). Accordingly, Dr. Plock’s
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`testimony, along with the definition of “file” in the ’290 Patent, support the
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`conclusion that Kikinis discloses the following limitation of claim 2 of the ‘290 Patent:
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`“to access the file associated with the selected user link from the user library . . . .”
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`’290 Patent, 40:9-10.
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`Finally, BET’s argument flies in the face of the plain and ordinary reading of one
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`section of Kikinis, which discloses accessing files using direct links: “Home page 73
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`. . . [has] on-screen links to electronic documents reserved for the home page ‘owner’,
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`such as e-mail and faxes.” Kikinis at 7:34-8:1. This section of Kikinis shows that
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`Kikinis discloses accessing a “file associated with the selected user link” as recited by
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`claim 2 of the ’290 Patent.
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`IV. Kikinis Discloses a User Profile.
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`BET’s third substantive argument is that Kikinis does not disclose a “user profile.”
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`See Response at 21-23. The ’290 Patent defines “profile” as “[u]ser-specific
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`information relating to an individual using a computer.” ’290 Patent 4:53-54. BET
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`argues that even though Kikinis discloses a home page that is “‘individualized to a
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`specific client’ . . . there is no mention of any ‘user-specific information’ found within
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`the home page.” Response at 22 (internal citation omitted). BET then argues that the
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`links on the user’s home page in Kikinis are not “user-specific,” and therefore, do not
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`sufficiently disclose the user profile limitation. See id. at 23 (“the links provide access
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`to programs which in turn provide access to user-specific electronic document data
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`bases”).
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`Notwithstanding BET’s improperly narrow interpretation of the links on the home
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`page in Kikinis,2 Kikinis explicitly discloses including user-specific information
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`directly on the home page: “an Internet home page is provided comprising indicia
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`identifying the home page owner.” Kikinis at 3:1-3; see also id. at 10:3-4 (claim 1: “1.
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`An Internet home page interface comprising: indicia identifying the home page owner
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`. . . .”). BET does not address either of these two passages in Kikinis anywhere in its
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`papers or expert declaration.
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`“[I]ndicia identifying the home page owner” is plainly user-specific information
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`and thus fits within the express definition of “user profile” from the ’290 Patent’s
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`specification. ’290 Patent at 4:52-53; Institution Decision at 9. The specification of
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`the ’290 Patent, while discussing the types of information which may be part of the
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`user profile, also includes “user identification data” as a specific example. ’290 Patent,
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`26:17-22; see also 34:6-11. Further, during cross-examination, Dr. Plock corroborated
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`this fact:
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`Q . . . So user identification data would also be user-specific
`information relating to an individual using a computer?
`A In the context of the present embodiment, yes. . . . .
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`2 See discussion above about how the home page of Kikinis includes “links to
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`electronic documents reserved for the home page ‘owner’, such as e-mail and faxes.”
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`Kikinis at 7:34-8:1.
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`See Plock Dep. I at 38:12-20.
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`When confronted with the passage that Kikinis’ home page includes “indicia
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`identifying the home page owner,” Dr. Plock argued that “indicia identifying the
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`home page owner” is “not necessarily” user-specific information relating to an
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`individual using a computer because “[t]he sentence in question is referencing a home
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`page owner rather than a user” and he could not conclude whether the home page
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`owner and user are the same person or not. See Plock Dep. I 39:12-40:16.
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` Dr. Plock’s strained reading of Kikinis is a new argument not presented in the
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`Patent Owner Response, is not supported by the Kikinis reference, and should be
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`rejected. Nearly all references to the “home page” in Kikinis are made in connection
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`with the home page’s “user,” “owner,” or “subscriber,” and the context (e.g., use of
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`possessive pronouns such as “his or her home page”) make clear that these terms are
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`referring to the same individual. See, e.g., Kikinis at 3:3-11 (discussing “the home page
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`owner”); 7:17-18 (“A subscriber may use the facilities of the Web to access his or her
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`home page . . . .”); id. 7:29-31 (“A user invokes browser 109 and enters a URL for his
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`or her home page 73 in field 113 of browser 109.”); 8:13-15 (“subscribers, using the
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`link buttons 118, 120, and 122 access their e-mail, fax, and other electronic
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`documents”); 9:13-15 (“the user may . . . enter a URL for his or her home page”);
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`9:16-17 (“If the user launches his home page . . . .”).
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`When asked to assume that the home page owner and user were the same, Dr.
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`Plock admitted that “[u]nder the assumption that the user and home page owner are
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`the same entity, then in that case I would agree” that the home page contains user-
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`specific information. See Plock Dep. II 41:19-42:1.
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`Accordingly, a plain reading of the Kikinis reference, along with the ’290 Patent
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`and Dr. Plock’s admission that user identification data is “user-specific information
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`relating to an individual using a computer,” shows that the Kikinis reference discloses
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`a user profile. See, e.g., Plock Dep. I at 38:12-20.
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`V. Claim 3 of the ’290 Patent Is Not Patentable.
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`BET offers no new arguments for the patentability of claim 3 of the ’290 Patent
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`over Kikinis other than those related to claim 2. Thus, for the reasons adopted by the
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`PTAB in their Institution Decision, claim 3 is also invalid over Kikinis. See Institution
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`Decision at 16; see also ’290 IPR Petition, Paper 2 at 22 (Oct. 8, 2013); see also Kikinis
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`7:27-28 (“accessing electronic documents by using the facilities of a Web browser
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`such as Web browser 109 at kiosk 55 (Fig. 2) according to an embodiment of the
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`[Kikinis] invention”).
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`VI. The Adoption of the Broadest Reasonable Interpretation Rule Did Not
`Exceed the PTO’s Rule Making Authority, and BET Has Not Shown that
`a Different Claim Construction Standard Would Alter the Outcome.
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`The PTAB, CCPA, and Federal Circuit have ruled that the PTO has authority to
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`apply the broadest reasonable interpretation (“BRI”) to claims in an unexpired patent.
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`See, e.g., CBM2012-00001, Paper 70, Final Decision at 19 (PTAB Jun. 11, 2013) (“the
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`broadest reasonable interpretation standard is the one correct standard for post grant
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`reviews.”); accord In re Reuter, 670 F.2d 1015 (CCPA 1981) (BRI applicable in reissue
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`proceedings); In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984) (BRI applicable in
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`reexamination proceeding); see also 35 U.S.C. § 316(a)(4), (c) (granting rule-making
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`authority to the PTO).
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`Furthermore, BET has not made any showing as to how claims 2 and 3 of the ’290
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`Patent would be valid over Kikinis if the PTAB were to not apply the BRI standard.
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`All but one of the constructions applied by the PTAB were taken verbatim from the
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`’290 Patent’s specification, which explicitly defined such terms. See In re Paulsen,
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`30 F.3d 1475, 1480 (Fed. Cir. 1994) (“an inventor is indeed free to define the specific
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`terms used to describe his or her invention”); Institution Decision at 8-9. The only
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`construed term that was not taken directly from the defined terms was “user library,”
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`and BET has not argued that a narrower construction of “user library” would have
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`been dispositive of any issue in this IPR proceeding. Id. at 9-10. Accordingly, even
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`assuming the PTAB adopted a narrower claim construction standard, BET has not
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`provided any argument that claims 2 and 3 of the ’290 Patent would be patentable
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`over Kikinis under such a standard.
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`Dated: September 24, 2014
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`_/s/ _John Flock_
`John Flock, Lead Counsel, Reg. No. 39,670
`jflock@kenyon.com
`Michael E. Sander, Reg. No. 71,667
`msander@kenyon.com
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Tel: 212-908-7200
`
`Paul Qualey, Backup Counsel, Reg. No. 45,027
`pqualey@kenyon.com
`KENYON & KENYON LLP
`1500 K Street, NW
`Washington, DC 20005-1257
`Tel: (202) 220-4200
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`13
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`Certificate of Service Under 37 C.F.R. § 42.6(e)(4)
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`I certify that I caused a true and correct copy of the forgoing to be served via
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`_/s/ Michael E. Sander __
`Michael E. Sander, Reg. No. 71,667
`msander@kenyon.com
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Tel: 212-425-7200
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`electronic mail on the following:
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`Jason S. Angell (Reg. No. 51,408)
`jangell@fawlaw.com
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`Robert E. Freitas (pro hac vice)
`rfreitas@fawlaw.com
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`Daniel J. Weinberg (pro hac vice)
`rfreitas@fawlaw.com
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`Jessica N. Leal (pro hac vice)
`jleal@fawlaw.com
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`BEIPR@fawlaw.com
`
`Freitas Angell & Weinberg LLP
`350 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`Telephone: (650) 593-6300
`Facsimile: (650) 593-6301
`
`
`Dated: _September 24, 2014___