Trials@uspto.gov
`571-272-7822
`
`
`Paper 9
`Entered: April 9, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`____________
`
`Case IPR2014-00031
`Patent 6,771,290 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 9
`Entered: April 9, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`____________
`
`Case IPR2014-00031
`Patent 6,771,290 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Case IPR2014-00031
`Patent 6,771,290 B1
`
`
`I. INTRODUCTION
`Petitioner, Google Inc., filed a petition requesting an inter partes
`review of claims 2 and 3 of U.S. Patent No. 6,771,290 B1 (Ex. 1001, “the
`’290 patent”). Paper 1 (“Pet.”). Patent Owner, B.E. Technology, L.L.C., did
`not file a preliminary response. We have jurisdiction under 35 U.S.C.
`§ 314(a), which provides that an inter partes review may not be instituted
`“unless . . . the information presented in the petition . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.”
`Upon consideration of the petition, we conclude that there is a
`reasonable likelihood that Petitioner would prevail in challenging claims 2
`and 3 as unpatentable. Accordingly, under 35 U.S.C. § 314(a), we authorize
`an inter partes review to be instituted as to claims 2 and 3 of the ’290 patent.
`
`A. Related Proceedings
`Petitioner states that the ’290 patent is involved in B.E. Technology,
`L.L.C. v. Google, Inc., No. 2:12-cv-02830 (W.D. Tenn.), and numerous
`district court cases filed by Patent Owner against other defendants. Pet. 1.
`Petitioner also indicates it has filed concurrently another petition for inter
`partes review of the ’290 patent (IPR2014-00033). Pet. 2. In addition, the
`’290 patent is the subject of these inter partes reviews: IPR2014-00029,
`IPR2014-00040, and IPR2014-00044.
`In IPR2014-00038, Petitioner requests inter partes review of related
`U.S. Patent No. 6,628,314 B1 (“the ’314 patent”), also at issue in B.E.
`Technology, LLC v. Google, Inc., No. 2:12-cv-02830 (W.D. Tenn.). The
`2
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`Patent 6,771,290 B1
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`’314 patent is also the subject of these inter partes reviews: IPR2014-
`00039, IPR2014-00052, and IPR2014-00053.
`
`B. The ’290 Patent (Ex. 1001)
`The ’290 patent describes a system that provides remote storage of
`user-specific files and resources that can be accessed over a network, such as
`the Internet. Ex. 1001, 5:43-50, 12:45-50. The disclosed system includes
`client computers, each running a client software application that provides
`access via a network to an advertising and data management (ADM) server.
`Id. at 11:42-49. The server includes a user database that stores a user profile
`and a user library for each user. Id. at 12:45-13:12. The user profile is
`accessed by the client software application using a unique identifier for the
`user via a login. Id. at 12:52-56. The user profile may contain user-specific
`customized settings for the operating system used by the client computer.
`Id. at 12:56-58. Additionally, the user profile may contain “bookmarks,
`shortcuts, and other such links to files and information resources accessible
`via” the network. Id. at 12:67-13:3. The user library “enables the user to
`store files (documents, executable programs, email messages, audio clips,
`video clip, or other files) that can then be accessed from any client
`computer.” Id. at 13:4-7. By storing user profiles and user libraries on the
`server, users “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. at 13:9-12.
`The ’290 patent further describes a user interface on a client
`computer, provided by a graphical user interface (GUI) module. Id. at
`3
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`13:441-43. Thee user inter
`ith
`window wpplication wface comprises an ap
`
`
`
`
`
`selecctable itemms such as iicons. Id. at 13:43-5
`
`
`
`
`3. As showwn in Figuure 5b,
`
`
`
`
`
`
`
`
`
`varioous files annd links to informatioon resourcees.” Id. at
`
`
`
`
`15:48-53.
`
`reprooduced bellow, the appplication wwindow mmay includee “icons thaat represennt
`
`
`
`
`
`
`Figgure 5b illuustrates an applicationn window
`
`with iconss
`files and l
`
`reppresenting
`
`
`inks to infformation rresources.
`
`
`s a library
`5b includeThe applicationn window in Figure 5
`
`
`
`
`icon, whicch, when
`low.
`
`
`
`
`
`seleccted, provides a displlay as showwn in Figurre 5c, repr
`oduced be
`
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`ndow ication wines an appliFigure 55c illustrate
`
`
`
`
`
`
`
`dissplaying files in a useer library.
`
`
`
`The
`user files contaained in a u
`
`a list of all display in Figure 5c provides a
`
`
`
`
`
`
`
`
`
`
`libraary. Id. at 15:55-56. From this window, ““the user ccan access
`any of the
`
`files containedd in his or hher user libbrary.” Id.
`
`
`
`
`at 15:56-557.
`
`
`C.. Claims
`
`
`Petitioneer challengges claims 2 and 3, wwhich read:
`
`
`
`
`
`2.
`
`
`
`
`
`A commputer-reaadable memmory for uuse by a cclient
`
`
`
`
`
`computeer in conjuunction witth a serverr that is acccessible b
`y the
`
`
`
`
`
`
`client coomputer viia a networrk, the serrver storingg a user prrofile
`
`
`
`
`
`
`and userr library for each of aa number oof differentt users, witth the
`
`
`user librrary containing one
`
`
`
`or more ffiles and tthe user prrofile
`ne of
`
`
`
`
`containinng at leastt one user llink that pprovides a[
`] link to on
`
`
`
`
`
`
`the filess in the uuser libraryy, the commputer-reaadable memmory
`
`comprisiing:
`
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`
`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 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 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;
`
`said program being operable upon execution to receive
`from [the] server one of the user profiles and to display a user-
`selectable item for user links contained within the user profile,
`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.
`
`A computer-readable memory as defined in claim
`3.
`
`2, 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 using a
`browser.
`Id. at 39:1-40:16.
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`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 2 and 3 of the ’290 patent are
`unpatentable under 35 U.S.C. §§ 102 and 103 based on the following
`specific grounds:
`
`Reference[s]
`Kikinis1
`Kikinis
`Subrahmanyam2 and Admitted Prior
`Art in the ’290 Patent
`Subrahmanyam and Kikinis
`
`Basis
`§ 102(b)
`§ 103
`§ 103
`§ 103
`
`Challenged Claims
`2 and 3
`2 and 3
`2 and 3
`2 and 3
`
`II. ANALYSIS
`
`A. Claim Construction
`As a step in our analysis for determining whether to institute a review,
`we determine the meaning of the claims for purposes of this decision. In an
`inter partes review, we construe claim terms in an unexpired patent
`according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug.
`14, 2012). Consistent with the broadest reasonable construction, claim terms
`are presumed to have their ordinary and customary meaning, as understood
`
`
`1 PCT International Publication Number WO 97/09682, published Mar. 13,
`1997 (Ex. 1002) (“Kikinis”).
`2 U.S. Patent No. 5,732,214, issued Mar. 24, 1998 (Ex. 1003)
`(“Subrahmanyam”).
`
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`by a person of ordinary skill in the art, in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). An inventor may provide a meaning for a term that is different from
`its ordinary meaning by defining the term in the specification with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`
`1. Claim Terms Defined in the ’290 Patent
`As Petitioner notes, the ’290 patent recites explicit definitions for
`many terms. See Pet. 6 (citing Ex. 1001, 3:65-5:5). In the table below, we
`construe the claim terms that are relevant to our decision in accordance with
`the definitions provided in the ’290 patent, which are set forth in the ’290
`patent with reasonable clarity, deliberateness, and precision.
`
`Claim Term
`
`file
`
`information resource
`
`Construction
`“Any digital item, including information,
`documents,
`applications,
`audio/video
`components, and the like, that is stored in
`memory and
`is accessible via a file
`allocation
`table or other pointing or
`indexing structure.” Ex. 1001, 4:25-28.
`“A source of information stored on a
`server or other computer that is accessible
`to other computers over a network.”
`Ex. 1001, 4:33-35.
`
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`Claim Term
`
`link
`
`non-volatile data storage
`device
`
`profile
`
`Construction
`“A data item that identifies the location or
`address of a program or
`information
`resource.” Ex. 1001, 4:39-40.3
`“A memory device that retains computer-
`readable data or programming code in the
`absence of externally-supplied power,
`including such things as a hard disk or a
`floppy disk, a compact disk read-only
`memory (CDROM), digital versatile disk
`[(]DVD), magneto-optical disk, and so
`forth.” Ex. 1001, 4:46-51.
`“User-specific information relating to an
`individual using a computer.” Ex. 1001,
`4:52-53.
`
`2. “user library”
`In addition to the claim terms discussed above, we construe the claim
`term “user library” for purposes of this decision. Claim 2 recites a “server
`storing a . . . user library for each of a number of different users, with the
`user library containing one or more files.” Ex. 1001, 39:3-5 (emphasis
`added). Claim 2 further provides that files in the user library are accessed
`via user links in a user profile. Id. at 39:6-7, 40:8-11.
`Although the ’290 patent does not provide an explicit definition of
`“user library,” it provides the following description: “[T]he User Database
`
`
`3 The ’290 patent further provides: “A URL [i.e., a uniform resource
`locator] is a link, as is a path and filename of an information resource.”
`Ex. 1001, 4:40-41. We consider these to be examples of a “link,” not part of
`the definition, and, therefore, not part of our construction of the claim term.
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`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.”
`Id. at 13:3-7 (emphasis added). The written description of the ’290 patent
`further explains that a user library is “used to store [a user’s] individual files
`and resources that the user wishes to be able to access from anywhere on the
`network.” Id. at 5:56-58.
`An ordinary meaning of “library” in the context of electronic
`document storage is a “collection of software or data files,”4 and, thus, a
`“user library” is a “collection of a user’s software or data files.” In view of
`this ordinary meaning and the claims and written description of the ’290
`patent, we determine that the broadest reasonable construction of “user
`library” consistent with its use in the ’290 patent is “a collection of an
`individual’s stored files.”
`
`B. Anticipation by Kikinis
`Petitioner contends that claims 2 and 3 are unpatentable under
`35 U.S.C. § 102(b) as anticipated by Kikinis. Pet. 14-30. To support its
`contention, Petitioner provides detailed claim charts explaining how each
`claim limitation is described in Kikinis. Pet. 21-30. Petitioner also cites the
`declaration of Mr. Stephen Gray for support. Pet. 15 (citing Ex. 1004
`¶¶ 116-29).
`
`
`4 See MICROSOFT COMPUTER DICTIONARY 309 (5th ed. 2002).
`10
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`1. Kikiinis (Ex. 10002)
`
`
`
`
`
`
`Kikinis ddescribes aa documennt managemment systemm that provvides for
`
`
`
`
`
`
`
`Abstract, Ex. 1002, Acuments. Ectronic doceval of elece and retrieremoote storage
`
`
`
`
`
`
`
`
`
`systeem.
`
`1:7-99. Figure 22, reproducced below,, illustratess Kikinis’ss electronicc documennt
`
`
`
`with a Weeb browserr
`
`As s
`
`
`igure 2, Kiikinis disclloses user
`station 53
`
`
`hown in F
`that
`
`
`
`
`ser to acceess, via the Internet, sservers proovided by aa remote
`allows a u
`
`
`
`
`
`
`
`
`Interrnet servicee provider (ISP), labeeled “Userr’s Provideer” in the fiigure.
`
`Id. aat 6:11-14,
`24-26. In
`
`
`
`
`
`
`
`
`
`
`
`
`incluudes Web sserver 67 aand a set off electronicc documennt servers 669, all of
`
`
`whicch have acccess to the Internet. IId. at 6:24
`
`
`-27.
`
`the emboddiment shoown in Figuure 2, the rremote ISPP
`
`11
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`Each electronic document server 69 runs software that supports a
`specific application. Id. at 6:27-29. As shown in Figure 2, examples include
`an e-mail program, a fax program, a voice-mail program, and other
`programs, including video and graphics. Id. at 6:29-31. Web server 67
`stores a set of databases 71, each of which is associated with a different user.
`Id. at 6:32-35. Each database 71 includes home page 73 that is
`individualized to a specific user and provides links to various databases
`maintained by electronic document server 69 for each user, such as e-mail
`database 89, fax database 91, voice-mail database 93, and other electronic
`documents in database 95. Id. at 6:35-7:4.
`A user who wishes to access electronic documents stored on an
`electronic document server invokes the Web browser at a user station. Id. at
`7:17-29. Figure 3 of Kikinis, reproduced below, illustrates a series of Web
`browser windows for accessing electronic documents.
`
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`ield 113. e page in fior his homes a URL fouser entershown in Figure 3, a u
`
`
`
`
`
`
`As s
`
`
`
`
`
`
`Id. aat 7:29-31. Home pagge 73 is rettrieved froom the remmote server
`and
`inations,
`
`
`
`
`
`
`displlayed as a graphical uuser interfaface to dataa and otherr Web desti
`the
`
`
`
`
`
`withh on-screenn links to thhe user’s ellectronic ddocuments
`stored on
`
`
`
`
`
`electtronic docuument servver. Id. at 77:31-8:1. FFor exampple, as showwn in
`
`
`
`
`
`
`Figuure 3, homee page 73 pprovides linnks to the
`
`
`user’s voicce-mail (buutton 117),
`,
`
`
`
`
`
`
`
`e-maail (button 118), faxees (button 1120), and oother electrronic docuuments
`
`
`
`(buttton 122). IId. at 8:2-113.
`
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`2. Analysis
`Petitioner contends that Kikinis discloses all the limitations of
`claim 2. Pet. 15-28. Beginning with the preamble, Petitioner asserts that
`Kikinis discloses a client computer (user station 53) and a server (the remote
`ISP) accessible by the client via a network (the Internet), the server storing a
`user profile (user’s home page 73) and a user library (user-specific
`databases, such as e-mail database 89, fax database 91, voice-mail database
`93, and electronic document database 95, all of which contain user-specific
`files) for each of a number of different users. Pet. 15 (citing Ex. 1002,
`Fig. 2); see also Pet. 21-22. Further, Petitioner asserts, Kikinis discloses a
`user profile (home page 73) that has links to the user’s files (electronic
`documents, including e-mail messages and faxes). Pet. 16 (citing Ex. 1002,
`7:34-8:13), see also Pet. 22-23. Although the embodiment shown in Figure
`2 of Kikinis maintains a user’s files on electronic document server 69 and a
`user’s home page on Web server 67, Kikinis also discloses that user profiles
`and user libraries can be stored on the same server. See Ex. 1002, 10:30-
`11:9 (claim 7, which provides a user’s home page interface and electronic
`document database stored at the same server); see also id. at 9:32-33
`(“Arrangement and nature of electronic document databases can vary
`considerabl[y], as well.”).
`Petitioner also contends that Kikinis discloses “a non-volatile data
`storage device” and “a program stored on said non-volatile storage device in
`a computer-readable format,” as recited in claim 2. Pet. 18. Specifically,
`Kikinis describes a Web browser that provides a user station with access to a
`
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`Web server via the Internet. Ex. 1002, Fig. 2. Citing Mr. Gray’s declaration
`for support, Petitioner contends that one of ordinary skill in the art would
`understand that at the time of the invention, browser software on a user’s
`computer necessarily would have been stored in computer-readable format
`on a non-volatile data storage device, such as a hard disk drive, a floppy disk
`drive, or a CD-ROM. Pet. 18 (citing Ex. 1004 ¶¶ 118, 125).
`Furthermore, Petitioner asserts that the Web browser in Kikinis
`provides “a graphical user interface comprising an application window
`having a number of user-selectable items displayed therein,” as recited in
`claim 2. Pet. 19, 24. As described above, a user of Kikinis’s system enters a
`URL to retrieve his home page, which includes links or buttons that can be
`selected by the user. Ex. 1002, 7:31-8:13, Fig. 3. Moreover, when a user
`selects a link, the browser accesses an associated information resource (e-
`mail, fax, voice-mail, or other electronic document) over the network, as
`recited in claim 2. Id. at 7:31-8:13.
`Finally, Petitioner asserts that Kikinis discloses receiving one of the
`user profiles (user’s home page 73) from the server, displaying a user-
`selectable item for user links within the user profile (links or buttons that can
`be selected by the user), and, in response to a user’s selection of a link,
`accessing the file (e.g., electronic document, e-mail, fax, or voice-mail)
`associated with a selected user link from the user library (user-specific
`database for e-mail, fax, voice-mail, or electronic documents). Pet. 20-21,
`26-28.
`
`15
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`Claim 3 depends from claim 2 and further recites that a browser is
`used for accessing an associated information resource over the network. As
`discussed, Petitioner asserts that Kikinis discloses a Web browser that
`provides a user station with access to user-specific files in databases stored
`on a server over a network, such as the Internet. See Pet. 29-30.
`On this record, we determine that Petitioner has made a sufficient
`showing that Kikinis discloses all of the limitations of claims 2 and 3.
`Accordingly, we conclude that the information presented shows a reasonable
`likelihood that Petitioner would prevail in demonstrating that claims 2 and 3
`are unpatentable as anticipated by Kikinis.
`
`C. Remaining Grounds of Unpatentability
`
`Having reviewed the other grounds of unpatentability asserted by
`Petitioner against claims 2 and 3, we exercise our discretion and determine
`that they are redundant to the ground of unpatentability on which we
`institute review for the same claims. See 37 C.F.R. § 42.108(a).
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the petition establishes that there is a reasonable likelihood that
`Petitioner would prevail in showing that claims 2 and 3 of the ’290 patent
`are unpatentable. At this stage of the proceeding, the Board has not made a
`final determination with respect to the patentability of these claims.
`
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`IV. ORDER
`
`
`
`Accordingly, it is:
` ORDERED that pursuant to 35 U.S.C. § 314(a), an 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;
`FURTHER ORDERED that no other grounds are authorized for inter
`
`partes review as to claims 2 and 3 of the ’290 patent;
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`commences on the entry date of this decision; and
`
`FURTHER ORDERED that an initial conference call with the Board
`is scheduled for 2:00 PM Eastern Time on May 6, 2014. The parties are
`directed to the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,765-66 (Aug. 14, 2012) for guidance in preparing for the initial
`conference call, and should be prepared to discuss any proposed changes to
`the Scheduling Order entered herewith and any motions the parties
`anticipate filing during the trial.
`
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`FOR PETITIONER:
`Clinton H. Brannon
`Brian A. Rosenthal
`Mayer Brown, LLP
`cbrannon@mayerbrown.com
`brosenthal@mayerbrown.com
`
`FOR PATENT OWNER:
`
`Jason S. Angell
`Robert E. Freitas
`Freitas Tseng & Kaufman LLP
`jangell@ftklaw.com
`rfreitas@ftklaw.com
`
`
`18
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