`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`GOOGLE INC.
`Petitioner
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`v.
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`B.E. TECHNOLOGY, LLC
`Patent Owner
`____________
`
`Case IPR2014-00031
`Patent 6,771,290 B1
`____________
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`PETITIONER GOOGLE INC.’S REPLY TO PATENT OWNER’S
`RESPONSE TO PETITION
`(INTER PARTES REVIEW OF U.S. PATENT NO. 6,771,290 B1)
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`
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`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and LYNNE E.
`PETTIGREW, Administrative Patent Judges.
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`
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Petitioner’s Reply
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`Cases IPR2013-00031
`Patent 6,771,290 B1
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`TABLE OF CONTENTS
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`Page
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`TABLE OF AUTHORITIES .................................................................................... ii
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`I.
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`Introduction ...................................................................................................... 1
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`II. Kikinis Discloses a “Program Stored on Said Non-Volatile Data
`Storage Device” ............................................................................................... 1
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`A. Kikinis’ Browser Accesses Remotely Stored Files ............................... 1
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`B. All Servers Require Software to Answer Requests .............................. 3
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`III. Kikinis Discloses a “File Associated with [a] Selected User Link” ............... 6
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`IV. Kikinis’ Home Page Includes User-Specific Information ............................... 9
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`V. Kikinis Anticipates Claim 3 of the ’290 Patent ............................................. 11
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`VI. Mr. Gray’s Testimony is Admissible ............................................................ 11
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`VII. The PTO’s Rulemaking Authority is Not Before the Board ......................... 11
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`VIII. Conclusion ..................................................................................................... 12
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`Petitioner’s Reply
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`TABLE OF AUTHORITIES
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`Patent 6,771,290 B1
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`STATUTES, RULES AND REGULATIONS
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`Page(s)
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`37 C.F.R. § 1.68 ....................................................................................................... 11
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`28 U.S.C. 1746 ......................................................................................................... 11
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`35 U.S.C. § 102 .......................................................................................................... 1
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`35 U.S.C. § 103 .......................................................................................................... 9
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`35 U.S.C. § 313 .......................................................................................................... 2
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`35 U.S.C. § 316 ........................................................................................................ 12
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`77 Fed. Reg. 157 .................................................................................................. 2, 12
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`MPEP § 2111.01 .................................................................................................... 2, 6
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`OTHER AUTHORITIES
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`Merriam Webster’s Collegiate Dictionary ............................................................. 3, 8
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`In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) ........................................................... 2, 6
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`Cordis Corp. v. Medtronic Ave, Inc., 511 F.3d 1157 (Fed. Cir. 2008) ................... 5
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`ii
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`Petitioner’s Reply
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`I.
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`Introduction
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`Patent 6,771,290 B1
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`In its Institution Decision of April 9, 2014, the Board determined that there
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`is a reasonable likelihood that claims 2 and 3 of the ’290 Patent are anticipated
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`under 35 U.S.C. § 102 over Kikinis. Paper 9 (“Institution Decision”) at 16. In
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`response, Patent Owner BE Tech alleges that Kikinis does not disclose (1) “a
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`program stored on said non-volatile data storage device” that performs the
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`functions of claim 2; (2) “[a] file associated with [a] selected user link;” and (3) a
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`“user profile.” Paper 23 (“Response”) at pp. 1-3. BE Tech misinterprets Google
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`and the Board’s positions, misreads Kikinis, and misstates the scope of the claims
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`of the ’290 Patent. Accordingly, the Board should cancel claims 2 and 3 of the
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`’290 Patent.
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`II. Kikinis Discloses a “Program Stored on Said Non-Volatile Data Storage
`Device”
`BE Tech argues that Kikinis does not disclose a “‘program stored on [a] non-
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`volatile data storage device’ capable of … accessing a file in responses to selection
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`of a user-selectable item that is associated with the file” because “Kikinis utilizes
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`programs stored on servers to perform these functions.” Response at p. 2. BE
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`Tech’s arguments fail for at least the following reasons.
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`A. Kikinis’ Browser Accesses Remotely Stored Files
`While BE Tech concedes that the web browser of Kikinis provides access to
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`the user’s home page, it argues that “[t]he browser does not access the electronic
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`document data base without additional software programs stored on remote
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`servers.” Response at 15. BE Tech’s rationale is that the browser “cannot access
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`data sets or files in responses to the selection of associated user-selectable items
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`without initiating additional server-based programs[.]” Id. at 2.
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`By making this argument, BE Tech appears to be improperly importing
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`additional features into the claim. See, e.g., MPEP 2111.01(II); Ir re Zletz, 893
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`F.2d 319, 321 (Fed. Cir. 1989). For example, BE Tech appears to be incorporating
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`“directly access” or “accessing without any intermediate steps whatsoever” into the
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`feature of “program further being operable … to access[.]”1 In fact, BE Tech’s
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`expert, Dr. Cory Plock, admitted that his opinion that Kikinis’ browser cannot
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`correspond to the claimed “program” is because Kikinis’ browser does not
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`“directly access” the data bases. Ex. 1015 (“Cross-Examination of Plock”) at 24:3-
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`1 Because BE Tech did not file a preliminary response nor set forth any alternative
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`construction of the claimed features in its response, it cannot later argue or advance
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`alternative constructions. See, e.g., 35 U.S.C. §§ 313, 316(a)(8); 77 Fed. Reg. 157
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`(August 14, 2012) at 48766 (“The [patent owner] response should identify all the
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`involved claims that are believed to be patentable and state the basis for that
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`belief.”)
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`2
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`23.2 However, BE Tech and Dr. Plock’s readings go against the ordinary meaning
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`of “access” and against how client-server systems work.
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`“Access” is defined by the Merriam Webster’s Collegiate Dictionary means
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`“to get at, [or] permission , liberty, or ability to enter, approach, communication
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`with, or pass to and from.” Ex. 1016 at p. 3. Kikinis’ browser clearly fits this
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`definition. Kikinis’ browser is launched to “interpret[] the Web’s hypertext
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`markup language and provides a graphical on-screen interface including screen
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`buttons and data-entry and display field.” Paper 1 (“Petition”) at 18; Ex. 1002 at
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`1:26-32. After the browser is launched, the user can receive his/her home page 73
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`“having on-screen links to electronic documents reserved for the home page
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`‘owner’[.]” Ex. 1002 at 7:35-36. The user can select links to view, edit, save,
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`compose or deliver electronic documents. Ex. 1002, Fig. 4; 8:2-13; 9:11-20.
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`Accordingly, Kikinis’ browser accesses the document.
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`B. All Servers Require Software to Answer Requests
`By improperly importing features into the claims, BE Tech is also ignoring
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`the functions and features of the claimed “server” defined by the ’290 Patent. For
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`2 “Access” in claim 2 does not include before it any modifiers. Rather, the claim
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`requires “said program further being operable in response to selection by a user of
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`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.” (Emphasis added).
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`example, the ’290 specification states that a “server” is “[a] computer on a network
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`that stores information and that answers requests for information.” Ex. 1001,
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`4:63-64 (emphasis added). Because Kikinis’ application program (79, 81, 85, 87)
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`answers requests for information (i.e., retrieves files from databases), they fall
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`within the definition of the claimed “server.”
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`BE Tech’s expert, Dr. Plock, agrees that server software is necessarily
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`required for client-server systems. For example, when asked if it is true that “there
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`is no way for a web server to serve a file in response to a request without having
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`some software that resides on that web server,” Dr. Plock confirmed “Yes, yes. On
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`a server, software would be required[.]” Ex. 1015 (“Cross-Examination of Plock”)
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`at 54:13-18.
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`Kikinis’ server is implemented in a similar way as testified to by Dr. Plock
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`and also previously discussed by Google’s expert, Mr. Stephen Gray. See, e.g., Ex.
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`1004, ¶¶61-67. Kikinis’ Web server 67 retrieves home pages 73 that are unique to
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`the users. Ex. 1002 at Fig. 2, reproduced below. Based on the links on the home
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`page selected by users, Common Gateway Interface modules (77, 78, 80, 82) and
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`the various programs (79, 81, 85, 87), which together comprise the software,
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`provide access to the files stored in the database server (69) which maintains the
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`various databases (89, 91, 93, 95). Id. at Fig. 2; 6:32-7:10. Accordingly, the various
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`programs and modules described in Kikinis are server software that is part of the
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`claimed “server” and are used to answers requests for information.
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`To follow BE Tech’s improper reading of claim 2 would mean that a
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`“server” would only have hardware components. As discussed, this reading
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`contradicts the disclosure of the ’290 Patent as well as Google and BE Tech’s
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`expert testimony. Accordingly, BE Tech’s reading would render a server,
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`including the one in ’290 Patent’s claim 2, inoperable for its intended purpose. See
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`Cordis Corp. v. Medtronic Ave, Inc., 511 F.3d 1157, 1174 (Fed. Cir.2008) (stating
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`that a construction that renders the claimed invention inoperable should be viewed
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`with extreme skepticism). For at least the above reasons, claim 2 is anticipated by
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`Kikinis.
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`III. Kikinis Discloses a “File Associated with [a] Selected User Link”
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`BE Tech asserts that the “’290 patent describes a ‘one-click’ system
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`whereby a user enjoys a direct link from his or her user profile to the files stored in
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`his or her user library.” Response at 16. To support its position, BE Tech notes that
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`the “critical language [of claim 2] is ‘to access the file associated with the selected
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`user link from user library’”(id. at 17, emphasis in original), and cites to the
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`specification for additional support. Id. at 17-18. BE Tech is improperly trying to
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`import specific limitations from the specification because nothing in the claims
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`requires either a “direct link” or a “one-click” system. See, e.g., MPEP 2111.01(II);
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`Ir re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
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`Despite this claim construction problem, which will be addressed below,
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`Kikinis actually discloses a direct link. For example, Kikinis discloses and Dr.
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`Plock agrees that Kikinis discloses a “[h]ome page 73 … having on-screen links to
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`electronic documents reserved for the home page ‘owner’, such as e-mails and
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`faxes.” Ex. 1002 at 7:34-8:1 (emphasis added); Ex. 1015 (“Cross-Examination of
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`Plock”) at 66:6-20. This disclosure alone demonstrates by a preponderance of the
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`evidence that Kikinis discloses a “file associated with [a] selected user link” as
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`required by claim 2 of the ’290 Patent.
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`In any event, BE Tech’s position that the ’290 specification supports a
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`“direct link” or a “one-click” system in the context of claim construction is
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`rendered inconsequential by the fact that the specification also discloses indirect
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`links. For example, in the same sentence cited by BE Tech as supporting “direct
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`link,” the specification also describes that “[t]he user has the ability to subscribe
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`the channel by making a direct link to a file, or by combining various files under
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`some category, or by providing a drop down list to a subscriber channel.” Ex.
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`1001, 15:12-15 (emphasis added). Further, the ’290 Patent also discloses
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`“bookmark category icons 80” that when selected, provides “a separate application
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`window containing the related links is opened on the screen. Id. at 14:63-67.
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`Figures 5b and 5c, reproduced below, illustrate an example of this indirect
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`link.
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`Fig. 5b shows a window “including icons that represents various files and links to
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`information resources.” Id. at 15:48-50. When the library icon is selected, a display
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`as shown in Fig. 5c is provided so “the user can access any of the files contained in
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`his or her user library[.]” Id. at 15:54-57.
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`Going back to the BE Tech’s alleged “critical language” of “to access the
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`file associated with the selected user link from user library,” the meaning of
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`“access” as defined by the Merriam Webster’s Collegiate Dictionary, means “to
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`get at, [or] permission , liberty, or ability to enter, approach, communication with,
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`or pass to and from.” (Ex. 1016 at p. 3) has already been discussed and is in
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`commensurate in scope with the disclosure of Kikinis.
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`“Associated” also has a broad definition and means “to bring together or into
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`relationship in any of various intangible ways[.]”Ex. 1016 at p. 4. Similarly in this
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`definition, there is no requirement of any “one-click” system, “direct link,” or
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`“one-to-one correspondence”3 to documents.
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`As already discussed, Kikinis discloses that a user launches a browser,
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`receives his/her home page, and can select links on the home page via the browser
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`to view, edit, save, compose or deliver electronic documents. Ex. 1002, Fig. 4;
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`3 During his deposition, Dr. Plock opines that the term “associated” means a “one-
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`to-one correspondence.” Ex. 1015 (“Cross-Examination of Plock”) at 67:3-5.
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`7:34-36; 8:2-13; 9:11-20. As such, Kikinis discloses “access[ing] the file associated
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`with the selected user link from user library,” as required by claim 2.4
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`Google notes that BE Tech’s readings have been addressed by the 35 U.S.C.
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`§ 103 ground in view of Kikinis as outlined in Google’s Petition. See Petition at
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`30-33; Ex. 1004, ¶¶ 116-29. To the extent the Board adopts a restricted reading of
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`the phrase “to access the file associated with the selected user link from user
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`library,” Google respectfully requests that the Board revive Google’s Section 103
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`ground. See Petition at 30-33.
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`IV. Kikinis’ Home Page Includes User-Specific Information
`BE Tech alleges that Kikinis’ individual users’ home pages cannot
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`correspond to the claimed “user profile” because “there is no mention of any ‘user-
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`specific information’ found within the home page.” Response at 23. This is
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`incorrect.
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`As BE Tech correctly acknowledges, “profile” as defined in the ’290 Patent
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`and confirmed by the Board means “[u]ser-specific information relating to an
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`4 Dr. Plock does not appear to disagree that Kikinis discloses at least an “indirect
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`access” of a home page owner’s files. Dr. Plock opined that in order for a home
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`page owner’s to access his/her files, he would have to click on one of the buttons
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`117, 118, 120, 122 on his/her home page. Ex. 1015 (“Cross-Examination of
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`Plock”) at 71:19-72:13.
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`individual using a computer.” Id. at 23; Ex. 1001 at 4:52-53; Institution Decision at
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`9. Kikinis explicitly discloses that “[a] home page is a graphical interface unique to
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`an individual user, and [] functions in part as a table of contents.” Ex. 1002 at 2:3-
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`5. Indeed, Kikinis explains that its home page interface comprises “indicia
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`identifying the home page owner[.]” Id. at 3:2-4. Accordingly, these unique indicia
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`corresponds to “user-specific information relating to an individual using a
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`computer.” Dr. Plock does not disagree with this conclusion but rather makes the
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`strained argument that Kikinis’ user accessing a home page is not necessarily the
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`home page’s owner. Ex. 1015 (“Cross-Examination of Plock”) at 41:15-42:1.
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`However, a person of ordinary skill in the art would understand that a home page
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`owner activating an on-screen window is the same person to whom the on-screen
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`window was first presented to. See Ex. 1002 at 3:6-11.
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` BE Tech also takes issue with the links provided on Kikinis’ home page
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`because these links are not “user-specific” but rather “software links” used by
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`every user of the Kikinis system. Response at 24. While it is true that Kikinis
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`discloses the links using CGI to translate HTML into particular data base language
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`(Ex. 1002 at 7:13-14), these links are still “user-specific” as they contain specific
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`information unique to a user that allows access to his/her own electronic
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`documents. Ex. 1002 at 7:34-8:1. That is, the CGI is the translation medium that
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`translates user-specific requests to data base language.
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`For at least the above reasons, Kikinis’ home page corresponds to the
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`claimed “user-profile.”
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`V. Kikinis Anticipates Claim 3 of the ’290 Patent
`As discussed in the Petition, Kikinis’ browser is used to access the associated
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`information resource over the network. Petition at 29-30. BE Tech does not
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`provide additional arguments outside of the ones addressed above. Accordingly,
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`for the same reasons Kikinis anticipates claim 2, it also anticipates claim 3.
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`VI. Mr. Gray’s Testimony is Admissible
`While not an issue in this proceeding, BE Tech alleges that Mr. Gray’s
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`testimony in a related proceeding (IPR2014-00033) is not admissible in because it
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`does not include an oath or affidavit sufficient under 37 C.F.R. § 1.68 or 28 U.S.C.
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`1746. See IPR2014-00033, Paper 23 (“Response”) at 26. BE Tech fails to
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`acknowledge that Mr. Gray testified under oath during his depositions that the
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`opinions contained in his declarations are his own. See Ex. 2003, pp. 89-92, 295-
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`96, 352-53. Out of an abundance of caution, Mr. Gray has submitted a new
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`declaration confirming the same. Ex. 1017. Accordingly, Mr. Gray’s testimony is
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`admissible.
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`VII. The PTO’s Rulemaking Authority is Not Before the Board
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`BE Tech concludes its Response by advancing the argument that the PTO
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`does not have substantive rulemaking authority to adopt the Broadest Reasonable
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`Interpretation (“BRI”) standard commonly used by the Board. Response at 25-27.
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`Yet this issue is not before the Board in this proceeding and acknowledged by BE
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`Tech as pending before the Federal Circuit. Id. at 25.
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`Petitioner notes that BE Tech failed to provide a proposed claim
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`construction standard that would change the application of Kikinis to the claims of
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`the ’290 Patent. In fact, BE Tech failed to explicitly provide any claim construction
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`at all. Accordingly, BE Tech cannot later advance alternative claim constructions
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`and its BRI argument is irrelevant to this proceeding. See, e.g., 35 U.S.C. §
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`316(a)(8); 77 Fed. Reg. 157 (August 14, 2012) at 48766.
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`VIII. Conclusion
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`For at least the above reasons, the Board should cancel claims 2 and 3 of the
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`’290 Patent as being anticipated by Kikinis.
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`Dated: September 10, 2014
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`Respectfully submitted,
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`By: /Clinton H. Brannon/
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`Clinton H. Brannon
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`Reg. No. 57,887
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`MAYER BROWN LLP
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`1999 K Street, NW
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`Washington, DC 20006
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`Counsel for Google Inc.
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`UPDATED EXHIBIT LIST
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`Cases IPR2013-00031
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`Exhibit #
`1001
`1002
`1003
`1004
`1005
`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
`1015
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`1016
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`1017
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`Reference Name
`U.S. Patent No. 6,771,290
`International Publication No. WO 97/09682 to Kikinis
`U.S. Patent No. 5,732,214 to Subrahmanyam
`Declaration of Stephen Gray
`Prosecution History of U.S. Patent No. 6,771,290
`Barry M. Leiner et al., Brief History of the Internet, Internet
`Society (Oct. 15, 2012),
`http://www.internetsociety.org/sites/default/files/Brief_Histor
`y_of_the_Internet.pdf
`“Hypertext Markup Language,” Network Working Group
`Request for Comments 1866, November 1995
`September 2012 Web Server Survey, Netcraft.com,
`http://news.netcraft.com/archives/2012/09/10/september-
`2012-web-server-survey.html (last visited Sep. 28, 2013)
`“The Common Gateway Interface (CGI) Version 1.1,”
`Network Working Group Request for Comments 3875,
`October 2004
`Application Server Product Vendors, Service-
`Architecture.com, http://www.service-
`architecture.com/products/application_servers.html (last
`visited Sep. 28, 2013)
`“HTTP State Management Mechanism,” Network Working
`Group Request for Comments 2109, February 1997
`“HTTP State Management Mechanism,” Network Working
`Group Request for Comments 6265, April 2011
`“Specification of Internet Transmission Control Program,”
`Network Working Group Request for Comments 675,
`December 1974
`Stephen Gray Curriculum Vitae
`Deposition Transcript of Cory Plock , August 19-20, 2014
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`Merriam-Webster’s Collegiate Dictionary, selected pages,
`(10th ed. 1996)
`Supplemental Declaration of Stephen Gray
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`Petitioner’s Reply
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`CERTIFICATE OF SERVICE
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`Cases IPR2013-00031
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`Pursuant to 37 C.F.R. §§ 42.6(e), I, Clinton Brannon, hereby certify that a
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`copy of the foregoing PETITIONER GOOGLE INC.’S REPLY TO PATENT
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`OWNER’S RESPONSE TO PETITION has been served via electronic mail
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`transmission on the Attorney of Record for related inter partes review petitions of
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`U.S. Patent No. 6,771,290 (No. IPR2014-00031) at the following address:
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`Jason S. Angell
`Robert E. Freitas
`Daniel J. Weinberg
`Jessica N. Leal
`FREITAS ANGELL & WEINBERG LLP
`350 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`jangell@fawlaw.com
`rfreitas@fawlaw.com
`dweinberg@fawlaw.com
`jleal@fawlaw.com
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`Dated: September 10, 2014
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`Respectfully submitted,
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`By: /Clinton H. Brannon/
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`Clinton H. Brannon
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`Reg. No. 57,887
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`Counsel for Petitioner
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