UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________________________________________
`
`SONY MOBILE COMMUNICATIONS (USA) INC.
`Petitioner
`
`
`
`Patent No. 6,771,290
`Issue Date: Aug. 3, 2004
`Title: COMPUTER INTERFACE METHOD AND APPARATUS WITH
`PORTABLE NETWORK ORGANIZATION SYSTEM AND TARGETED
`ADVERTISING
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`
`OF U.S. PATENT NO. 6,771,290
`
`No. IPR2014-00029
`
`__________________________________________________________________
`
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`

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`Table of Contents
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`I.  Mandatory Notices (37 C.F.R. § 42.8) .......................................................... 1 
`II.  Grounds for Standing (37 C.F.R. § 42.104(a)) .............................................. 2 
`III.  Identification of Challenge (37 C.F.R. § 42.104(b)(1)-(3)) and Relief
`Requested (37 C.F.R. § 42.22(a)(1)) ............................................................. 3 
`A.  Background of the ’290 Patent ..................................................................................... 3 
`B.  Prosecution History of the ’290 Patent ....................................................................... 5 
`C.  Priority Date of the ’290 Patent .................................................................................... 5 
`D. Patents and Printed Publications Relied On ............................................................... 8 
`E.  Statutory Grounds for Challenge................................................................................ 13 
`F.  Claim Construction ....................................................................................................... 13 
`IV.  How the Challenged Claims Are Unpatentable (37 C.F.R. § 42.104(b)(4)-
`(5)). .............................................................................................................. 17 
`A.  Kikinis Anticipates Claims 2 and 3 ............................................................................. 17 
`B.  Kikinis Renders Claims 2 and 3 Obvious Under 35 U.S.C. § 103(a). ................... 23 
`C.  Gardell Anticipates Claims 2 and 3 ............................................................................ 24 
`D. Gardell Renders Claims 2 and 3 Obvious Under 35 U.S.C. § 103(a). .................. 30 
`E.  The Grounds Related to Kikinis and Gardell Are Not Redundant. ..................... 31 
`V.  Conclusion .................................................................................................. 32 
`VI.  Appendix: Abridged Claim Charts ............................................................. 33 
`A.  Kikinis ............................................................................................................................. 33 
`B.  Gardell ............................................................................................................................ 40 
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`List of Exhibits
`
`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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`I. Mandatory Notices (37 C.F.R. § 42.8)
`
`Real Party-in-Interest: Sony Mobile Communications (USA) Inc. (“Sony” or
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`“Petitioner”).
`
`Related Matters: B.E. Technology, L.L.C. initiated lawsuits against nineteen
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`companies in the United States District Court for the Western District of Tennessee,
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`alleging infringement of U.S. Patent No. 6,771,290 and/or two related patents in the
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`same patent family. Eighteen cases remain pending. Accordingly, the following
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`pending matters may affect or be affected by the decision in this proceeding:
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`B.E. Technology, L.L.C. v. Amazon Digital Services, Inc., 12-cv-02767 (W.D.Tenn.);
`
`B.E. Technology, L.L.C. v. Apple Inc., 12-cv-02831 (W.D.Tenn.);
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`B.E. Technology, L.L.C. v. Barnes & Noble, Inc., 12-cv-02823 (W.D.Tenn.);
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`B.E. Technology, L.L.C. v. Facebook, Inc., 12-cv-02769 (W.D.Tenn.);
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`B.E. Technology, L.L.C. v. Google Inc., 12-cv-02830 (W.D.Tenn.);
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`B.E. Technology, L.L.C. v. Groupon, Inc., 12-cv-02781 (W.D.Tenn.);
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`B.E. Technology, L.L.C. v. LinkedIn Corp., 12-cv-02772 (W.D.Tenn.);
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`B.E. Technology, L.L.C. v. Match.com L.L.C., 12-cv-02834 (W.D.Tenn.);
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`B.E. Technology, L.L.C. v. Microsoft Corp., 12-cv-02829 (W.D.Tenn.);
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`B.E. Technology, L.L.C. v. Motorola Mobility Holdings LLC, 12-cv-02866 (W.D.Tenn.);
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`B.E. Technology, L.L.C. v. Pandora Media, Inc., 12-cv-02782 (W.D.Tenn.);
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`B.E. Technology, L.L.C. v. People Media, Inc., 12-cv-02833 (W.D.Tenn.);
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`B.E. Technology, L.L.C. v. Samsung Electronics America, Inc., 12-cv-02825 (W.D.Tenn.);
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`B.E. Technology, L.L.C. v. Samsung Telecommunications America, LLC, 12-cv-02824
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`(W.D.Tenn.);
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`B.E. Technology, L.L.C. v. Sony Computer Entertainment America LLC, 12-cv-02826
`
`(W.D.Tenn.);
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`B.E. Technology, L.L.C. v. Sony Mobile Communications (USA) Inc., 12-cv-02827
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`(W.D.Tenn.);
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`B.E. Technology, L.L.C. v. Sony Electronics Inc., 12-cv-02828 (W.D.Tenn.); and
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`B.E. Technology, L.L.C. v. Twitter, Inc., 12-cv-02783 (W.D.Tenn.).
`
`Lead Counsel:
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`John Flock, Reg. No. 39,670.
`
`Backup Counsel: Paul Qualey, Reg. No. 45,027.
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`Electronic Service: SonyBETech@kenyon.com.
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`Post and Delivery: Kenyon & Kenyon LLP, One Broadway, New York, NY 10004.
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`Telephone: 212-425-7200
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`Facsimile: 212-425-5288
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`II. Grounds for Standing (37 C.F.R. § 42.104(a))
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`Petitioner certifies that the patent for which review is sought, U.S. Patent No.
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`6,771,290 (“the ’290 Patent,” Sony-1001), is available for inter partes review and that
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`Petitioner is not estopped from requesting an inter partes review challenging the patent
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`claims on the grounds identified in this Petition. Petitioner submits that, pursuant to
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`35 U.S.C. § 315(b), it is not barred from filing this Petition because Petitioner
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`(including any privies) was not served with a complaint asserting infringement of the
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`’290 Patent more than one year prior to the filing of this Petition.
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`III. Identification of Challenge (37 C.F.R. § 42.104(b)(1)-(3)) and Relief
`Requested (37 C.F.R. § 42.22(a)(1))
`
` Petitioner challenges claims 2 and 3 of the ’290 Patent under 35 U.S.C. §§ 102 and
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`103, and cancellation of those claims is requested.
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`A. Background of the ’290 Patent
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` The ’290 Patent states that its purported invention relates to user interfaces for
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`accessing computer applications and information resources, and user interfaces for
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`maintaining, organizing and communicating information accessible to a computer
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`network. ’290 Patent 1:14-22. The ’290 Patent then describes a number of different
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`purported inventions including, for example, a graphical user interface comprising a
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`window separated into regions, id. 5:7-61; an automatically upgradable software
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`application, id. 5:62-6:21; distributing software via a network, id. 6:22-61; supplying
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`demographically targeted advertising, id. 6:62-7:35; providing a computer user with
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`targeted information, id. 6:36-7:2; and an integrated, customized graphical user
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`interface for use in conjunction with a network, id. 8:3-50.
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`Much of the written description of the ’290 Patent is dedicated to the above
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`purported inventions, but the claims of the ’290 Patent for which inter partes review is
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`sought are directed to a “computer-readable memory” for use by a client computer in
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`conjunction with a network-accessible server, the “server storing a user profile and
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`user library for each of a number of different users.” Id. 39:1-40:17 (claims 2 and 3).
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`(The ’290 Patent specification explains that a user profile may include a variety of
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`user-specific information including “bookmarks, shortcuts, and other such links to
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`files and information resources.” Id. 12:56-13:2.) In particular, claim 2 recites a
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`“graphical user interface” that displays “user-selectable items” that allow a user to
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`access “information resources” via a network. See id. 39:12-40:2. In addition, the
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`client computer “receive[s] one of the user profiles” from the server and displays a
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`“user-selectable item for user links contained within the user profile.” Id. 40:3-11.
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`The user may then access files associated with the user links from the user library, id.
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`(thus allowing “the user to store files [in ADM server 22] . . . that can then be
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`accessed from any client computer 40.” Id. 13:3-7; Fig. 3.)
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`Claim 3, which depends from claim 2, further claims accessing an information
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`resource over the network using a “browser.” See id. 40:12-16.
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`B. Prosecution History of the ’290 Patent
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`The ’290 Patent issued without a single adverse office action. See Public PAIR
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`Transaction History for U.S. Pat. App. 09/744,033, Sony-1002. In issuing the notice
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`of allowance, the Examiner found that the two closest pieces of prior art were U.S.
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`Pat. No 5,977,970 to Amro and U.S. Pat. No 5,963,208 to Dolan, neither of which are
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`relied upon in the instant Petition. See U.S. Pat. App. 09/744,033, Notice of
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`Allowability (Mar. 19, 2004), Sony-1003.
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`C. Priority Date of the ’290 Patent
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`“In order to gain the benefit of the filing date of an earlier application under
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`35 U.S.C. § 120, each application in the chain leading back to the earlier application
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`must comply with the written description requirement of 35 U.S.C. § 112.” Lockwood
`
`v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997). To satisfy the written
`
`description requirement, the specification must convey with reasonable clarity to one
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`of skill in the art that the applicant was in possession of the claimed invention as of
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`the filing date being sought. See, e.g., PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d
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`1299, 1306 (Fed. Cir. 2008); Lockwood, 107 F.3d at 1572. All of the claim limitations
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`must be disclosed in the specification, either expressly or inherently; it is insufficient
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`for a limitation to be obvious in view of what is described. See Lockwood, 107 F.3d at
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`1571-72 (“Entitlement to a filing date does not extend to subject matter which is not
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`disclosed, but would be obvious over what is expressly disclosed. It extends only to
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`that which is disclosed.”); see also PowerOasis, 522 F.3d at 1306.
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`While a petitioner bears the initial burden of coming forward with invalidating
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`prior art, when a dispute arises concerning whether a continuation-in-part patent is
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`entitled to the priority date of the original application, the burden of proof rests with
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`the party claiming priority to the date of the original application. Id. at 1303 (citations
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`omitted); Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1328-29 (Fed. Cir. 2008);
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`Research Corp. Tech., Inc. v. Microsoft Corp., 627 F.3d 859, 870 (Fed. Cir. 2010) (“The
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`challenger has the burden of going forward with invalidating prior art. The patentee
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`then has the burden of going forward with evidence to the contrary, i.e. . . . that it is
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`not prior art because the asserted claim is entitled to the benefit of an earlier filing
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`date.”). Here, the issue of the ’290 Patent’s priority date is only relevant if the Patent
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`Owner attempts to prove a conception date (and subsequent diligence) earlier than
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`the filing date of Petitioner’s section 102(e) prior art reference (U.S. Patent No.
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`6,049,831).
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`Claims 2 and 3 are entitled to a priority date no earlier than July 16, 1999, which is
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`the filing date of the application for the ’290 Patent. The ’290 Patent is a
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`continuation-in-part of U.S. Pat. App. 09/118,351, filed July 17, 1998, now U.S. Pat.
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`No. 6,141,010 (“the ’010 Patent,” Sony-1004). The ’290 Patent’s specification
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`overlaps somewhat with the ’010 Patent’s specification but adds a significant amount
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`of new material. See Comparison of ’290 Patent and ’010 Patent Specifications, Sony-
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`1005. Claims 2 and 3 of the ’290 Patent are not entitled to the priority date of the
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`’010 Patent at least because the ’010 Patent does not describe all of the limitations of
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`claims 2 and 3. See Lockwood, 107 F.3d at 1572; PowerOasis, 522 F.3d at 1306.
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`In particular, the ’010 Patent does not describe the limitations of claims 2 and 3
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`related to a “user library” (e.g., the limitations of “the server storing a user profile and
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`user library for each of a number of different users, with the user library containing
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`one or more files”; “the user profile containing at least one user link that provides
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`a,[sic] link to one of the files in the user library”; and “said program further being
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`operable in response to selection by a user of one of the user links to access the file
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`associated with the selected user link from the user library associated with the received
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`user profile”). ’290 Patent 39:1-40:16 (claims 2 and 3) (emphasis added).
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`The ’290 Patent specification describes a user library that “enables the user to store
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`files (documents, executable programs, email messages, audio clips, video clips, or
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`other files)” and that by storing the “user library” on a server connected to a network,
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`e.g., the Internet, “the user can have world-wide access to their preferences, addresses,
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`bookmarks, email, and files without having to physically transport them from one
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`place to another.” Id. 13:3-12.1 Other portions of the ’290 Patent specification
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`contain similar descriptions of the “user library” and its use and function. See, e.g., id.
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`
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`1 See Section III.F.9 and III.F.12 below for constructions of “profile” and “user
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`library,” respectively.
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`5:50-58, 15:48-60, 16:34-39, 27:1-5, 35:62-36:15, 36:34-50, 36:55-59, 37:28-43, and
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`Figs. 5b, 5c. None of these descriptions or figures from the ’290 Patent specification
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`are present in the ’010 Patent (see, e.g., Comparison of ’290 Patent and ’010 Patent
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`Specifications at p. 6, 16-17, 28, 37-39), nor does the specification of the ’010 Patent
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`inherently describe a user profile and user library stored on a server where the user
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`profile contains a link to access a file from the associated user library. Expert Decl. of
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`Eric Burger ¶¶ 13-15, Sony-1006 (“Burger Decl.”). Accordingly, because the
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`specification of the ’010 Patent does not describe, either expressly or inherently, the
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`“user library” limitations of claims 2 and 3, the priority date of claims 2 and 3 of the
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`’290 Patent is the ’290 Patent’s PCT filing date of July 16, 1999.
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`D. Patents and Printed Publications Relied On
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`Petitioner relies on the following publication and patent:
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`1. Sony-1008: International PCT App. Pub. WO 97/09682 (“Kikinis”)
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`International PCT App. Pub. WO 97/09682 to Kikinis was published on March
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`13, 1997, and is prior art to the ’290 Patent under 35 U.S.C. § 102(b) regardless of
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`whether the Board finds that the ’290 Patent is entitled to the July 17, 1998, filing date
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`of the ’010 Patent. Kikinis was not considered during the prosecution of the ’290
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`Patent.
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`Kikinis discloses a system for providing a user with “an Internet home page
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`interface” that includes “an on-screen active selection area for access to an electronic
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`document data base containing electronic documents addressed specifically to the
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`home page owner.” Kikinis 3:1-6. Kikinis thus allows “an Internet user to access
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`electronic documents over the Internet, such as e-mail and [] specifically addressed to
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`the user, even though access to the Internet user’s usual Internet Service Provider is
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`not available.” Id. 3:22-25. In particular, Kikinis describes a web server 67 providing
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`“a set of data bases 71,” where “[e]ach data base belongs to (or is assigned to or
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`associated with) a different client [i.e., user].” Id. 6:32-35, Fig 2. The data base
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`“includes a home page 73, individualized to a specific client [i.e., user], that provides
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`software links to various lower-order data bases,” such as an e-mail, fax, voicemail,
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`and other document data bases. Id. 6:35-7:4.
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`Kikinis Fig. 2
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`
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`Using a “graphical on-screen interface” that displays “screen buttons,” a user may
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`access the “electronic database containing documents addressed specifically to the
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`home page owner.” Id. 1:28-29, 3:5-6, Fig. 3. The user may also “retrieve home page
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`73 and display it as an interface to data and other Web destinations.” Id. 7:31-32. The
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`user may then access the documents using “on-screen links to electronic documents
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`reserved for the home page ‘owner,’” “from anywhere on Earth.” Id. 7:35-36, 7:18.
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`Kikinis further discloses “accessing [the] electronic documents by using the
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`facilities of a Web browser such as Web browser 109 . . . .” Id. 7:27-28, Fig. 3.
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`Kikinis Fig. 3
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`2. Sony-1009: U.S. Pat. No. 6,049,831 (“Gardell”)
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`U.S. Patent No. 6,049,831 to Gardell et al. was filed on Feb. 13, 1997 and is prior
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`art to the ’290 Patent under 35 U.S.C. § 102(e) even if the Board finds that the ’290
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`Patent is entitled to the July 17, 1998, filing date of the ’010 Patent. Gardell was not
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`considered during the prosecution of the ’290 Patent.
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`Gardell discloses a television set top box (“STB”) for use in conjunction with a
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`“web browser server 114” that can “support multiple users simultaneously.” Gardell
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`3:8-9, 3:35-38, 6:27-31. The server 114 is comprised of a “session manager 154,”
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`which manages “[u]ser service information 350 . . . necessary for tracking each user of
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`the system.” Id. 4:55-58, Fig. 1.
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`Gardell Fig. 1
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`11
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`The user service information contains information for each user, including
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`“account information 326, an e-mail box 330, user preferences 334, bookmarks 338,
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`and session information 340.” Id. 4:61-67, Fig. 3.
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`Gardell Fig. 3
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`
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`Gardell also discloses a “user interface 150” that allows a user to input selections
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`to a graphics display in order to “retrieve[] the [Internet] page using Internet access
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`158.” Id. 4:18-19. The user may also “retrieve user service information,” such as
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`email, in response to user selection using a “user interface.” Id. 7:63-8:6. Gardell
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`further discloses accessing the user service information using “browser clients 822.”
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`Id. 7:64.
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`E. Statutory Grounds for Challenge
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`Cancellation of claims 2 and 3 is requested on the following grounds:
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`A. Kikinis anticipates claims 2 and 3 under 35 U.S.C. § 102(b).
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`B. Kikinis renders claims 2 and 3 obvious under 35 U.S.C. § 103(a).
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`C. Gardell anticipates claims 2 and 3 under 35 U.S.C. § 102(e).
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`D. Gardell renders claims 2 and 3 obvious under 35 U.S.C. § 103(a).
`
`F. Claim Construction
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`The claim terms should be given their “broadest reasonable construction in light
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`of the specification.” 37 C.F.R. § 42.100(b). The ’290 Patent specification expressly
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`defines many of the claim terms. Trintec Industries, Inc. v. Top-U.S.A. Corp., 295 F.3d
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`1292, 1295 (Fed. Cir. 2002) (“the inventor may act as his own lexicographer”).
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`1. “browser” (claim 3)
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`“Browser” is expressly defined in the ’290 Patent as “[a] program that can
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`communicate over a network using http or another protocol and that can display html
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`information and other digital information.” ’290 Patent 3:65-67.
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`2. “client computer” (claim 2)
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`“Client computer” is expressly defined in the ’290 Patent as “[a] computer that is
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`connected to a network (including computers that are connected only occasionally to
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`the network such as, for example, by a modem and telephone line) and that can be
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`used to send requests for information to other computers over the network.” Id. 4:1-
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`6.
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`3. “computer” (claim 2)
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`“Computer” is expressly defined in the ’290 Patent as “[a]n apparatus having a
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`processing device that is capable of executing instructions, including devices such as
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`personal computers, laptop computers, and personal digital assistants, as well as set
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`top television boxes, televisions, radios, portable telephones, and other such devices
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`having a processing capability.” Id. 4:7-12.
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`4. “file” (claim 2)
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`“File” is expressly defined in the ’290 Patent as “[a]ny digital item, including
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`information, documents, applications, audio/video components, and the like, that is
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`stored in memory and is accessible via a file allocation table or other pointing or
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`indexing structure.” Id. 4:25-28.
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`5. “information resource” (claim 2)
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`“Information resource” is expressly defined in the ’290 Patent as “[a] source of
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`information stored on a server or other computer that is accessible to other
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`computers over a network.” Id. 4:33-35.
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`6. “link” (claim 2)
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`“Link” is expressly defined in the ’290 Patent as “[a] data item that identifies the
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`location or address of a program or information resource. A URL is a link, as is a
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`path and filename of an information resource.” Id. 4:39-41.
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`7. “network” (claim 2)
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`“Network” is expressly defined in the ’290 Patent as “[a] system having at least
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`two computers in communicable connection, including intranets, personal networks,
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`virtual private networks, and global public networks such as the Internet.” Id. 4:42-
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`45.
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`8. “non-volatile data storage device” (claim 2)
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`“Non-volatile data storage device” is expressly defined in the ’290 Patent as “[a]
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`memory device that retains computer-readable data or programming code in the
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`absence of externally-supplied power, including such things as a hard disk or a floppy
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`disk, a compact disk read-only memory (CDROM), digital versatile disk DVD) [sic],
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`magneto-optical disk, and so forth.” Id. 4:46-51.
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`9. “profile” (claim 2)
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`“Profile” is expressly defined in the ’290 Patent as “[u]ser-specific information
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`relating to an individual using a computer.” Id. 4:52-53.
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`10. “program” (claim 2)
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`“Program” is expressly defined in the ’290 Patent as “[o]ne or more related
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`program modules.” Id. 4:62. “Program module” is expressly defined as “[o]ne or
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`more related program components.” Id. 4:60-61. “Program component” is expressly
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`defined as “[a] set of instructions stored in a file in computer-readable format,
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`whether as object code or source code, and whether written in a compiled language, in
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`byte code (such as JavaTM), or in a scripting or other interpreted language.” Id. 4:55-
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`59.
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`11. “server” (claim 2)
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`“Server” is expressly defined in the ’290 Patent as “[a] computer on a network that
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`stores information and that answers requests for information.” Id. 4:66-67.
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`12. “user library” (claim 2)
`
`“User library” is not expressly defined in the ’290 Patent but is inherently defined
`
`by the descriptions of the user library and its associated functionality in the
`
`specification. For example, the specification describes that:
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`Furthermore, the 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. As will be appreciated, by
`storing the user profile and user library on server 22, the user can have
`world-wide access to their preferences, addresses, bookmarks, email, and
`files without having to physically transport them from one place to
`another.
`Id. 13:3-11. The specification further describes how access to the “user library” (and
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`“user profile”) is based on the identity of the user:
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`Preferably, this is accomplished by storing a user profile and user library
`on a server connected to the network. Then, when a user runs the first
`program module, it identifies the user and connects to the server to
`access that user’s profile and library, with the profile being used to
`specify that individual’s user-selected links to be displayed in the first
`
`16
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`region and the library being used to store these individual files and
`resources that the user wishes to be able to access from anywhere on the
`network.
`Id. 5:50-58.
`
`In view of the description in the specification, the broadest reasonable
`
`construction of “user library” is “a collection of an individual’s stored files that can be
`
`accessed by that user from a client computer on the network.” See, e.g., id. 5:50-58,
`
`13:4-11, 15:53-60, 27:1-5.
`
`IV. How the Challenged Claims Are Unpatentable (37 C.F.R. § 42.104(b)(4)-
`(5)).
`
`The challenged claims are invalid for the reasons discussed below. An abridged set
`
`of claim charts is provided for the Board’s convenience in Section VI, infra.
`
`A. Kikinis Anticipates Claims 2 and 3
`
`As shown in the Appendix (Section VI, infra) and described below, Kikinis
`
`anticipates claims 2 and 3 of the ’290 Patent; thus, claims 2 and 3 are unpatentable
`
`under at least 35 U.S.C. § 102(b).
`
`1. Kikinis Discloses Each Limitation of Claim 2
`i. A computer-readable memory for use by a client computer in
`conjunction with a server that is accessible by the client computer via a
`network,
`
`Kikinis discloses a “a Web server 67” (i.e., server) that is accessible by a “user
`
`station 53” or “kiosk 55” (i.e., client computers which contain computer-readable
`
`memories) over the Internet 99 (i.e., via a network) by means of Internet ports 97 and
`
`
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`17
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`

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`101 using point-to-point protocol (PPP) or serial-line interface protocol (SLIP).
`
`Kikinis 6:11-27, Fig. 2. Accordingly, Kikinis discloses this element (IV.A.1.i).
`
`ii. the server storing a user profile and user library for each of a number of
`different users, with the user library containing one or more files and
`the user profile containing at least one user link that provides a, link to
`one of the files in the user library,
`
`The web server 67 stores a “home page 73, individualized to a specific client,” (i.e.,
`
`a user profile for each of a number of different users) that provides “software links”
`
`(i.e., user link) to various “lower-order data bases” (i.e., user libraries). Id. 6:35-7:1.
`
`The lower order data bases (i.e., user libraries for each of a number of different users)
`
`store e-mail, faxes, voice-mail and other electronic documents (i.e., files) “reserved for
`
`the home page ‘owner’, such as e-mail and faxes.” Id. 7:2-4; 7:34-8:1. While this
`
`description states that the lower order databases are maintained by “electronic
`
`document server 69” rather than “web server 67,” Kikinis describes embodiments
`
`where a single remote server stores both the home page interface and the electronic
`
`document database. Id. 11:34-12:2. Accordingly, this element (IV.A.1.ii) is disclosed.
`
`iii. 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;
`
`In Kikinis, the “user station 53 comprises . . . a computer system 63 having well-
`
`known elements of such a computer system . . . .” Id. 6:11-13. A person of ordinary
`
`skill in the art at the time Kikinis was published in 1997 would understand that “well-
`
`known elements” of a computer system at that time included various kinds of non-
`
`
`
`18
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`

`
`volatile data storage devices, such as hard-drives, optical drives, and floppy drives. See
`
`Burger Decl. ¶ 17. Thus, a non-volatile data storage device is at least inherently
`
`disclosed by Kikinis. (Kikinis further discloses the kiosk (i.e., client computer) having
`
`a “floppy drive . . . [for] the subscriber [to] make suitable copies of electronic
`
`documents.” Kikinis 7:22-25 (emphasis added). Thus, non-volatile data storage
`
`devices such as a floppy drive are also expressly disclosed by Kikinis.)
`
`Both the user station 53 and kiosk 55 of Kikinis are described as including
`
`programs that included a “Web-browser” and PPP or SLIP communication software.
`
`Id. 6:11-20. These programs would inherently need to be stored in a computer-
`
`readable format on a non-volatile data storage device local to the user station 53 and
`
`kiosk 55 in order for these devices to connect to the Internet. See Burger Decl. ¶ 17.
`
`Accordingly, Kikinis inherently and explicitly discloses this element (IV.A.1.iii) of
`
`claim 2.
`
`iv. said program being operable upon execution to display a graphical user
`interface comprising an application window having a number of user-
`selectable items displayed therein, wherein each of said items has
`associated with it a link to an information resource accessible via the
`network and
`
`Kikinis describes that a home page created with hypertext markup language
`
`(“HTML”) and displayed in a web browser provides a “graphical interface” with
`
`“active selection areas (buttons)” that can link to other webpages and information
`
`resources. Kikinis 2:1-10, 1:26-31. Kikinis further describes that the home page 73 of
`
`Kikinis’ invention is created with HTML and provides a graphical interface including
`
`
`
`19
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`

`
`a window with links to other Web destinations (i.e., information resources accessible
`
`via the network). Id. 7:4-5, 7:24-32; Fig. 3; see also Burger Decl. ¶ 18. Accordingly, this
`
`element is disclosed.
`
`Kikinis Fig. 3. (cropped)
`
`
`
`v. wherein said program is operable upon execution and in response to
`selection by a user of one of said items to access the associated
`information resource over the network;
`
`Kikinis further describes that “[b]uttons and the like on one web page also can
`
`cause control to jump to another web page.” Id. 2:8-9. Thus, selection of one of
`
`Kikinis’ “active selection areas (buttons)” causes the browser program to access the
`
`information resource of another webpage over the network. Id. 2:6; see also Burger
`
`Decl. ¶ 18. Accordingly, this element is disclosed.
`
`vi. said program being operable upon execution to receive from server
`one of the user profiles and to display a user-selectable item for user
`links contained within the user profile,
`
`Kikinis also describes that home page 73 is “individualized to a specific client” and
`
`provides “on-screen links to electronic documents reserved for the home page
`
`
`
`20
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`

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`‘owner’ such as e-mail and faxes.” Id. 6:35-7:1, 7:34-8:1. Thus a user’s home page
`
`includes user-specific information relating to the individual using the kiosk or user
`
`station (i.e., a user profile). In particular, the kiosk (i.e., client computer) “retrieve[s]
`
`home page 73 and display[s] it as an interface to data and other Web destinations”
`
`(i.e., receives from the server one of the user profiles). Id. 7:20-32. The kiosk then
`
`displays “on-screen links to electronic documents reserved for the home page
`
`‘owner’” (i.e., displays a user-selectable item for user links contained within the user
`
`profile). Id. 7:35-36; see also Burger Decl. ¶ 18. As a further example, Kikinis
`
`describes “button 117 labeled v-mail, for voice mail” that provides a link to a user’s
`
`voice mail data base and that “[s]imilarly . . . subscribers, using the link buttons 118,
`
`120, and 122 access their email, fax, and other electronic documents.” Id. 8:2-13, Fig.
`
`3. Accordingly, this element is disclosed.
`
`vii. said program further being 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.
`
`Kikinis discloses a user “us[ing] the link features in the home page [(i.e., user links
`
`in a user’s profile)] to access the electronic document data bases [(i.e., files in the
`
`user’s user library)].” Id. 7:17-19; see also id. 8:2-4 (“As an example, home page 73 [(i.e.,
`
`user profile)] in Fig. 3 has a button 117 labeled v-mail, for voice mail. By selecting
`
`button 117 a user is linked to data base 93 (Fig. 2) through CGI 80 and voice mail
`
`program 87.”), Fig. 3. Access to emails, faxes and other documents is accomplished
`
`
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`21
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`

`
`similarly. Id. 8:11-13. (The ’290 Patent lists “email messages” and “audio clips” (e.g.,
`
`voicemails) as examples of files stored in a user library. ’290 Patent 13:3-7.)
`
`While Kikinis does not expressly disclose that these