`
`
`
`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 IPR2014-00033
`Patent 6,771,290
`___________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`PATENT OWNER’S RESPONSE TO PETITION
`(37 C.F.R. § 42.120)
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`
`I.
`
`II.
`
`INTRODUCTION .......................................................................................... 1
`
`RELIEF REQUESTED .................................................................................. 1
`
`III. SUMMARY OF B.E.’S ARGUMENT .......................................................... 1
`
`IV. TECHNOLOGY BACKGROUND AND THE INVENTOR’S
`SOLUTION .................................................................................................... 3
`
`V. GOOGLE BEARS A HIGH BURDEN TO PROVE FOLEY
`RENDERS OBVIOUS CLAIMS 2 AND 3 OF THE ’290 PATENT............ 5
`
`A.
`
`B.
`
`Legal Standards .................................................................................... 5
`
`Summary of the Institution Decision ................................................... 7
`
`VI. FOLEY DOES NOT DISCLOSE CLAIM 2 OF THE ’290 PATENT .......... 8
`
`A.
`
`B.
`
`C.
`
`Foley Does Not Disclose A Separate “User Profile” From A
`“User Library.” ..................................................................................... 8
`
`Foley Does Not Disclose Anything Comparable to A “User
`Profile.” .............................................................................................. 13
`
`Foley Does Not Disclose A “Said Program Being Operable
`Upon Execution.” ............................................................................... 17
`
`1.
`
`2.
`
`3.
`
`Foley’s “JWS Program” And “JWS Browser” Are
`Separate Programs, Not Related Program Modules ................ 17
`
`The JWS Program Is Not Operable Upon Execution To
`Receive From Server A User Profile Or Access Files
`Associated With A Selected User Link From The User
`Library Via A Network ............................................................ 21
`
`The JWS Browser Is Not Operable Upon Execution To
`Display A Graphical User Interface Comprising An
`Application Window Having A Number of User-
`Selectable Items Displayed Therein ........................................ 23
`
`
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`-i-
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`TABLE OF CONTENTS
`(continued)
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`Page
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`VII. FOLEY DOES NOT DISCLOSE CLAIM 3 OF THE ’290 PATENT ........ 26
`
`VIII. GOOGLE HAS FAILED TO SUBMIT ADMISSIBLE EXPERT
`TESTIMONY ............................................................................................... 26
`
`IX. THE ADOPTION OF THE “BROADEST REASONABLE
`CONSTRUCTION” RULE EXCEEDED THE PTO’S RULE
`MAKING AUTHORITY ............................................................................. 26
`
`X.
`
`CONCLUSION ............................................................................................. 28
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`-ii-
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`TABLE OF AUTHORITIES
`
`
`Page
`
`
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`Federal Cases
`
`ATD Corp. v. Lydall, Inc.,
`159 F.3d 534 (Fed. Cir. 1998) .............................................................................. 7
`
`CFMT, Inc. v. YieldUp Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ............................................................................ 6
`
`In re Dembiczak,
`175 F.3d 994 (Fed. Cir. 1999) .............................................................................. 6
`
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) ............................................................................ 5
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................. 6
`
`Richardson v. Suzuki Motor Co.,
`868 F.2d 1226 (Fed. Cir. 1989) ............................................................................ 7
`
`In re Rijckaert,
`9 F.3d 1531 (Fed. Cir. 1993) ................................................................................ 5
`
`Federal Statutes
`
`U.S.C. § 101 ............................................................................................................. 27
`
`28 U.S.C. § 1746 ...................................................................................................... 26
`
`35 U.S.C. § 103 ...................................................................................................... 5, 6
`
`35 U.S.C. § 103(a) ..................................................................................................... 5
`
`35 U.S.C. §§ 311-319 ................................................................................................ 1
`
`35 U.S.C. § 316 .......................................................................................................... 1
`
`35 U.S.C. § 316(e) ..................................................................................................... 1
`
`Title 35 of the United States Code ............................................................................. 5
`
`
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`-iii-
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`TABLE OF AUTHORITIES
`(continued)
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`Page
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`
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`State Statutes
`
`pre-America Invents Act. ........................................................................................... 5
`
`Regulations
`
`37 C.F.R. § 1.68 ....................................................................................................... 26
`
`37 C.F.R. § 42.53 ..................................................................................................... 26
`
`37 C.F.R. § 42.104(b)(4) ............................................................................................ 3
`
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`Other Authorities
`Garmin Int’l, Inc. v. Patent of Cuozzo Speed Techs. LLC,
`Case No. IPR2012-00001, slip op. (P.T.A.B. Jan. 9, 2013) ................................. 6
`
`
`
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`-iv-
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`
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`2001
`
`2002
`
`2003
`
`LIST OF EXHIBITS
`
`
`
`Declaration of Cory Plock
`
`Curriculum Vitae of Cory Plock
`
`Deposition Transcript of Stephen Gray,
`Volume I taken June 25, 2014, and Volume II taken June 26,
`2014
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`- v -
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`I.
`
`INTRODUCTION.
`
`Patent Owner B.E. Technology, L.L.C. (hereafter “B.E.”) respectfully
`
`submits this response to petitioner Google Inc.’s (“Google”) Petition for Inter
`
`Partes Review. This filing is timely under 35 U.S.C. §§ 311-319 and 37 C.F.R. §
`
`42.120.
`
`Google contends that U.S. Patent No. 6,771,290 (hereinafter “the ’290
`
`patent”) is unpatentable over U.S. Patent No. 5,706,502 (hereinafter “Foley”). “In
`
`an inter partes review instituted under this chapter, the petitioner shall have the
`
`burden of proving a proposition of unpatentability by a preponderance of the
`
`evidence.” 35 U.S.C. § 316(e). Google fails to meet this burden as to claims 2 and
`
`3 of the ’290 patent.
`
`II. RELIEF REQUESTED.
`Pursuant to 35 U.S.C. § 316, B.E. respectfully requests that the Board
`
`determine that originally issued claims 2 and 3 of the ’290 patent are valid and
`
`patentable in view of Foley.
`
`III. SUMMARY OF B.E.’S ARGUMENT.
`It is proposed that claims 2 and 3 of the ’290 patent are unpatentable because
`
`all but one of the elements are anticipated by Foley and the remaining element
`
`would have been obvious to a person of ordinary skill in the art. There are
`
`differences, however, between the ’290 patent and Foley that would not have been
`
`obvious at the time the invention was made to a person of ordinary skill in the art.
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`- 1 -
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`As set forth in detail below, and the Declaration of Cory Plock filed herewith as
`
`Exhibit 2001, Foley lacks at least the following claim elements:
`
`The server storing a “user profile” and “user library.” Claim 2 of the ’290
`
`patent claims 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. Ex. 1001, Col. 39:1-8. Foley fails to teach a “user profile,” however,
`
`because no user-specific information relating to the individual using the computer
`
`is found in the creation or naming of portfolio files, as alleged by Google. Foley
`
`also fails to teach a “user library” separate and apart from a “user profile,” because
`
`the compared “set of projects” cannot be separate and apart from the corresponding
`
`“portfolio.” Because Foley fails to identify adequate user-specific information and
`
`separate user libraries from user profiles, Foley does not disclose a number of
`
`required elements in claim 2 of the ’290 patent.
`
`A “program stored on [a] non-volatile data storage device” capable of
`
`performing the various functions disclosed in claim 2. Claim 2 of the ’290 patent
`
`claims “a program stored on [a] non-volatile data storage device” that is “operable
`
`upon execution” to perform a series of functions, including displaying a graphical
`
`user interface comprising an application window having a number of user-
`
`selectable items displayed therein, receiving from server one of the user profiles,
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`- 2 -
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`
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`and accessing files associated with selected user links from the user library. See
`
`Ex. 1001, Col. 39:12-40:11. Foley fails to teach a program stored on a non-volatile
`
`data storage device that can perform all of these functions. The first program
`
`alleged in Foley by Google – the JWS program – cannot receive or access remote
`
`files in response to the selection of associated user-selectable items. The second
`
`program in Foley alleged by Google – the JWS browser – cannot display a
`
`graphical user interface comprising an application window having a number of
`
`user-selectable items displayed therein. Thus, Foley does not disclose further
`
`elements in claim 2 of the ’290 patent.
`
`For these reasons, the Petition’s ground of unpatentability is deficient. See
`
`37 C.F.R. § 42.104(b)(4).
`
`IV. TECHNOLOGY BACKGROUND AND THE INVENTOR’S
`SOLUTION.
`
`The ’290 patent discloses an apparatus configured with a program that is
`
`operable to, among other things, access files stored in a remote user library. See
`
`Ex. 1001, Col. 5:7-10 (“In accordance with one aspect of the present invention
`
`there is provided an apparatus for use by a computer to provide a user of the
`
`computer with access to information resources via the Internet or otherwise.”).
`
`The remotely accessible files of the user library include such things as documents
`
`and e-mail. Id., Col. 13:3-7 (“[T]he User Database 46 of ADM server 22 can
`
`include a user library that enables the user to store files (documents, executable
`
`- 3 -
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`
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`programs, email messages, audio clips, video clips, or other files) that can then be
`
`accessed from any client computer 40.”).
`
`At the time of the invention, computer users enjoyed limited ability to access
`
`remote information through web browsers. See id., Col. 3:41-43, 49-52 (“Internet
`
`users typically employ browser applications and related technologies in order to
`
`access the WWW; and to locate and view files, documents and audio/video clips. .
`
`. . Browsers are useful for accessing desired files and web sites, and also have the
`
`capability of storing information regarding visited and favorite web sites on the
`
`user’s computer.”). But “the usefulness and flexibility of such systems are
`
`severely limited, because each browser installation traditionally has been
`
`independent of other browser installations to which a user has access. Thus,
`
`information within one browser is not easily transportable to the other browser.”
`
`Id., Col. 3:56-62.
`
`The ’290 patent claims an improvement over these conventional browser
`
`systems by providing a program operable to receive a user profile to any computer
`
`on the network and to utilize user-selectable links contained within the profile to
`
`directly access associated files in a user library. See Ex. 1001, Abstract; Claim 2.
`
`Consequently, “multiple users of the same computer can possess Internet web
`
`resources and files that are personalized, maintained and organized.” Id.
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`- 4 -
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`V. GOOGLE BEARS A HIGH BURDEN TO PROVE FOLEY RENDERS
`OBVIOUS CLAIMS 2 AND 3 OF THE ’290 PATENT.
`A. Legal Standards.
`The Board’s Institution Decision identifies the question presented as whether
`
`Foley discloses or suggests all of the limitations of claims 2 and 3 of the ’290
`
`patent. See Paper 9 at 16 (“[A]n inter partes review is hereby instituted as to
`
`claims 2 and 3 of the ’290 patent on the ground that they are unpatentable under 35
`
`U.S.C. § 103 over Foley.”).
`
`Under 35 U.S.C. § 103(a)1, an invention is not patentable “if the differences
`
`between the subject matter sought to be patented and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the invention was
`
`made to a person of ordinary skill in the art.” Obviousness cannot be predicated on
`
`what was unknown at the time of the invention. In re Rijckaert, 9 F.3d 1531, 1534
`
`(Fed. Cir. 1993) (reversing obviousness rejection where prior art combination did
`
`not teach or suggest all claim limitations). “A critical step in analyzing the
`
`patentability of claims pursuant to section 103(a) is casting the mind back to the
`
`time of invention, to consider the thinking of one of ordinary skill in the art, guided
`
`only by the prior art references and the then-accepted wisdom in the field.” In re
`
`Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000). These fundamental principles
`
`
`1 Unless specifically noted, all references to Title 35 of the United States Code
`refer to code pre-America Invents Act. See, e.g., 35 U.S.C. § 103 (2011).
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`- 5 -
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`prohibit hindsight reconstruction of the claimed invention. See In re Dembiczak,
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`175 F.3d 994, 998-99 (Fed. Cir. 1999) (“the phrase ‘at the time of the invention
`
`was made’ . . . guards against entry into the ‘tempting but forbidden zone of
`
`hindsight’”).
`
`Section 103 builds upon the novelty bars of section 102 and extends them
`
`even further. The Supreme Court described the factual inquiries necessary to
`
`determine whether an invention is obvious. See KSR Int’l Co. v. Teleflex Inc., 550
`
`U.S. 398 (2007). First, the scope and content of the prior art must be assessed.
`
`Second, the differences between the claimed invention and the prior art must be
`
`identified. Third, the level of ordinary skill in the pertinent art must be resolved.
`
`If a single element of the claim is absent from the prior art, the claim cannot be
`
`considered obvious because that element is wholly novel. See CFMT, Inc. v.
`
`YieldUp Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (“Obviousness requires
`
`a suggestion of all limitations in a claim.”); Garmin Int’l, Inc. v. Patent of Cuozzo
`
`Speed Techs. LLC, Case No. IPR2012-00001, slip op. at 15 (P.T.A.B. Jan. 9, 2013)
`
`(denying inter partes review request under 35 U.S.C. § 103 where prior art
`
`combination did not disclose all claim limitations).
`
`In order to establish that the ’290 patent is unpatentable, Google must
`
`establish that Foley in fact teaches all of the elements of the claims of the ’290
`
`patent. Foley “must describe the patented subject matter with sufficient clarity and
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`
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`detail to establish that the subject matter existed and that its existence was
`
`recognized by persons of ordinary skill in the field of the invention.” ATD Corp. v.
`
`Lydall, Inc., 159 F.3d 534, 545 (Fed. Cir. 1998). “The identical invention must be
`
`shown in as complete detail as is contained in the [ ] claim.” Richardson v. Suzuki
`
`Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).
`
`B.
`
`Summary of the Institution Decision.
`
`Google asserts that the ’290 patent was unpatentable in view of Foley.
`
`Paper 1. B.E. did not file a preliminary response and the Board ordered inter
`
`partes review. See Paper 9. Respectfully, as described in detail below, the Board
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`did not account for the details of the claim elements of the ’290 patent or the
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`disclosure of Foley when it concluded that Google demonstrated a reasonable
`
`likelihood that claims 2 and 3 would be found unpatentable.
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`For example, the Board recognized that in Foley, “because the portfolios [ ]
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`are created and named by users, a portfolio ‘necessarily represent[s] . . .
`
`information relating to the user’” and, thus, corresponds to the claimed user profile,
`
`defined as “[u]ser-specific information relating to an individual using a computer.”
`
`Paper 9 at 13-14.
`
`The Board further recognized “a collection of project files for which a
`
`portfolio provides links can be considered the claimed user library, which we have
`
`construed as a collection of a user’s stored files.” Id. at 14.
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`The Board also took note of Google’s argument that the JWS program
`
`accesses over the network “information resource (a project),” as recited in claim 2
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`of the ’290 patent. Id. at 15. The decision also relays Google’s contention that the
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`JWS browser displays “a user-selectable item for user links within the user profile
`
`(user-selectable references to project files), and accessing the file from the user
`
`library (collection of project files).” Id. at 15.
`
`For the following reasons, however, important distinctions were overlooked
`
`by the Board, and as a result, the ’290 patent must be found patentable over Foley.
`
`VI. FOLEY DOES NOT DISCLOSE CLAIM 2 OF THE ’290 PATENT.
`
`There are multiple characteristics that differentiate the claimed invention in
`
`the ’290 patent from the prior art in Foley. It is not possible to find an invention
`
`obvious when not all of the unobvious elements are within the prior art. There are
`
`still components missing even after addressing the admission that Foley does not
`
`state explicitly that the server stores a user profile and user library for each of a
`
`number of different users. See Paper 1 at 19-20. Given that critical things are
`
`missing in the prior art that are specifically recited in claim 2 and claim 3, Foley
`
`does not disclose or suggest the ’290 patent’s limitations.
`
`A.
`
`Foley Does Not Disclose A Separate “User Profile” From A “User
`Library.”
`
`One of the elements of the ’290 patent is that the server store “a user profile
`
`and user library for each of a number of different users.” Ex. 1001, Col. 39:3-5.
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`- 8 -
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`This means each user has (1) a “user profile” and (2) a “user library.” The “user
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`profile” and “user library” are two, separate things.
`
`Using the construction proposed by the Patent Trial and Appeal Board, a
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`“profile” is “[u]ser-specific information relating to an individual using a computer.
`
`Paper 9 at 9. Accordingly, as Google’s expert appears to agree, a “user profile” is
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`user-specific information relating to the individual using a computer.
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`Q. And just to clarify, would one of ordinary skill in the art understand
`
`there to be a difference between a profile, as defined in '290, versus a
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`user profile?
`
`A. There's not a difference to the term "profile." It is just the user
`
`profile is a – an adjective that describes whose profile it is.
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`Ex. 2003 at 345:25-356:6. See also id. at 345:9-24.
`
`Using the construction proposed by the Patent Trial and Appeal Board, a
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`“user library” is a collection of an individual’s stored files. Paper 9 at 9.
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`Foley does not disclose a separate “user profile” from a separate “user
`
`library.” Instead, Google attempts to sever the exact same thing in Foley – i.e., “a
`
`portfolio file” and “a collection of project files” – as two separate things, when in
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`fact they describe the same thing. See Ex. 2001, ¶¶ 22-25. Foley states that a
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`“portfolio file” represents one “portfolio” and includes respective references to
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`members of a set of project files. Ex. 1002, Col. 2:55-57. In other words, the set
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`of project files compose the portfolio. Id., Col. 3:4-7. Foley is explicit that project
`
`files always exist in the context of a portfolio. Id., Col. 9:9-10.
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`Foley analogizes portfolios to directories. Ex. 1002., Col. 2:49-51; see also
`
`Ex. 2003 at 271:21-272:1. And project files, as conceded by Google, are
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`analogized as files in those directories. Id.; see also Paper 1 at 17. In fact, every
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`embodiment and figure disclosed in Foley shows a project within a portfolio.
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`Google argues in one place that a “portfolio” in Foley corresponds to the
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`’290 patent’s “user profile,” and in another place that a “portfolio file” corresponds
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`to the ’290 patent’s “user profile.” See Paper 1 at 18, 20; Ex. 2003 at 304:6-23.
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`Goolge also argues that a “set of project files” in Foley corresponds to the
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`’290 patent’s “user library.” Paper 1 at 20. Google’s expert, Mr. Gray, further
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`testified that the “user library” identified in Foley is also the “portfolio.”
`
`Q. And what is it, in your opinion, in Foley that corresponds to the user
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`library of the identified '290 patent?
`
`A. So I think that -- well, I guess the user library that I would -- that I
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`would identify is the portfolio.
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`Ex. 2003 at 305:8-13.
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`Google similarly commingles the terms by calling the “user library” in its
`
`petition a “portfolio directory.” Paper 1 at 18. When asked if Mr. Gray had an
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`opinion as to what was a “portfolio directory,” he testified: “I don't know that -- I
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`don't know what that term "portfolio directory" -- I don't think I know -- I don't
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`think I have an idea what that means, "portfolio directory." I don't know what that
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`means.” Ex. 2003 at 306:4-11.
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`Although he admits he cannot think of any differences between the terms
`
`“project” and “project file” in Foley, Mr. Gray attempts to draw a distinction
`
`between a “portfolio” and a “portfolio file” in his deposition. See Ex. 2003 at
`
`275:8-276:10. Mr. Gray suggests that the difference is a “portfolio” is “the
`
`collection of projects” and that a “portfolio file” “points into that collection for the
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`various projects within the portfolio” and “contains the references into that
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`portfolio.” Id. He uses Figure 5 in Foley to demonstrate a difference between the
`
`terms.
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`Mr. Gray testified that the 160A1 box is a “portfolio file,” while a collection
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`of 170A1, 170A2, 170A3, 170A4, 170A5, 170A6, and 170B1 is a “portfolio.” Ex.
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`2003 at 281:7-9; 282:25-284:5. Drawing this distinction, however, is to no avail in
`
`separating a “user profile” and “user library.” No matter how one looks at a
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`“portfolio” and “portfolio file,” both terms refer to the same set of projects –
`
`whether by reference or .prj. See Ex. 2001, ¶ 24. Each member of the set of
`
`project files specifies the attributes of one member of a set of projects associated
`
`with one portfolio via the associated portfolio file. Ex. 1002, Col. 2:60-63. There
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`is no more, and no less, number of direct references from a project URL/Name to a
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`number of portfolio’s projects. See id., Col. 8:39-41. The projects that exist in the
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`portfolio are the same projects that are referenced in the portfolio file.
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`Because a separate “user profile” and “user library” are not within Foley, it
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`fails to disclose or suggest the limitations of the ’290 patent. See Ex. 2001, ¶ 25.
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`B.
`
`Foley Does Not Disclose Anything Comparable to A “User
`Profile.”
`
`In discussing its invention, the ’290 patent describes all of the following as
`
`items that can be copied to and included in a “user profile”:
`
` Application set up and preference information (Ex. 1001, Col. 8:32-33);
`
` User-specific customized settings for the operating system, including the
`desktop icons and shortcuts utilized by that particular user (Id., 12:56-
`59);
`
` User preferences for the interfaces provided by particular software
`applications such as browsers, spreadsheet programs and word
`processing programs (Id., Col. 12:62-67);
`
` Bookmarks, shortcuts, and other such links to files and information
`resources accessible via either the network or the Internet (Id., Col.
`12:67-13:3);
`
` Templates, macros, and other such custom files (Id., Col. 26:7-9);
`
` User identification data, user hyperlink bookmarks, user hyperlink
`categories, and user application shortcuts (Id., Col. 26:18-20);
`
` Information such as user identity, demographic information, a baseline
`on the user's computer usage, and the like (Id., Col. 34:8-11; Col. 34:24-
`26);
`
` User-specific information including home address, email address,
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`telephone number (Id., Col. 36:22-24); and
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` Credit card, mailing address, and other such information to enable the
`purchase of products (Id., Col. 37:18-20).
`
`The invention of the ’290 patent possesses the ability to incorporate these
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`components into the “user profile.” Id., Col. 26:22-26; Ex. 2001, ¶ 27. These
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`components are “[u]ser-specific information relating to an individual using a
`
`computer,” under the construction proposed by the Patent Trial and Appeal Board.
`
`Paper 9 at 9.
`
`The compared “portfolio file” of Foley, on the other hand, incorporates no
`
`such components. See Ex. 2001, ¶ 28. Google’s only argument in comparing the
`
`“portfolio file” of Foley to the “user profile” of the ’290 patent is that “portfolios”
`
`– presumably as Mr. Gray has distinguished the term from “portfolio file” –
`
`necessarily represent the information relating to the user because the “portfolios”
`
`are created and named by users. Paper 1 at 15. No other alleged user-specific
`
`information relating to the user of the computer is identified.
`
`The creation of a “portfolio file” is not user-specific information relating to
`
`an individual using a computer. The name of a “portfolio file” is not user-specific
`
`information relating to an individual using a computer. The invention of Foley
`
`simply does not disclose a “user profile.” See Ex. 2001, ¶ 30.
`
`A user of Foley’s Java Workshop Program 150A (“JWS program”) can
`
`create a new portfolio by selecting a “Create” option and then entering the name of
`
`- 14 -
`
`
`
`
`
`the portfolio to be created. Ex. 1002, Col. 7:66-8:1. In response, the JWS program
`
`creates the corresponding portfolio file and displays its name in the toolbar. Id.,
`
`Col. 8:1-6. The portfolio file’s creator can publish it on the Internet. Id., Col.
`
`8:11-13. Foley states that the Internet-awareness of its invention “enables users to
`
`publish their own portfolios so they can be accessed and used by others over the
`
`Internet.” Id., Col. 13:22-25. The portfolio files demonstrated in Foley are simply
`
`named “Portfolio 1,” “Portfolio 2,” and “Portfolio 3.” Ex. 1002, Figure 4. There is
`
`no user-specific information relating to the user of the JWS program associated
`
`with the name of the portfolio file. A portfolio file has no projects when it is
`
`newly-created and it exists simply as a named directory without any files. Id., Col.
`
`8:6-10.
`
`The only information a user needs to import a previously created portfolio
`
`file is its name. Id., Col. 8:14-28. A user simply enters into a name field a file
`
`name or URL of the portfolio file to be imported. Id. The portfolio file to be
`
`imported could be one that was originally created by the user, or one that was
`
`created by another individual who published it on the internet to be accessed by
`
`others. Entering “Portfolio 3,” for example, into a name field to import a portfolio
`
`file that another user created and named is not importing user-specific information
`
`relating to the individual using the computer. Ex. 2001, ¶ 30. The fact that one
`
`user can import a portfolio file created by a second user contradicts Google’s
`
`- 15 -
`
`
`
`
`
`argument that the name “Portfolio 3” given to a portfolio file is user-specific
`
`information relating to the individual using a computer.
`
`Google encounters the same problem if it now attempts to argue that the
`
`project files – not the portfolio files – contain the user-specific information relating
`
`to an individual using a computer. See Ex. 2001, ¶ 29. Foley goes into detail
`
`about how project files are created and named, and none of it includes user specific
`
`information:
`
`
`
`Ex. 1002, Col. 9:13-30.
`
`Project files, just like portfolio files, may be available for use by others. Ex.
`
`1002, Col. 12:7-12; Ex. 2001, ¶ 30. While one user may create a project, another
`
`user can import that project into a different portfolio. Id., Col. 10:8-14. Source
`
`code and file names do not compare to the “user profile.” See id., Col. 9:31-34.
`
`- 16 -
`
`
`
`
`
`Similarly, attributes associated with an image project do not compare to the “user
`
`profile.” Id., Col. 9:48-63. Lastly, publication attributes relevant to the
`
`publication of a project do not compare to “user profile” as they simply catalog
`
`submitters and control source files. Id., Col. 12:7-34. In sum, the “project file” of
`
`Foley, like the “portfolio file,” does not contain user-specific information relating
`
`to the individual using a computer.
`
`C.
`
`Foley Does Not Disclose A “Said Program Being Operable Upon
`Execution.”
`
`Google’s argument improperly conflates separate programs disclosed in
`
`Foley as one for purposes of attacking the program claimed in the ’290 patent.
`
`1.
`
`Foley’s “JWS Program” And “JWS Browser” Are Separate
`Programs, Not Related Program Modules.
`
`The invention of the ’290 patent identifies a program stored on a non-
`
`volatile data storage device being operable upon execution to:
`
`(1)
`
`(2)
`
`(3)
`
`(4)
`
`(5)
`
`display a graphical user interface comprising an application window
`having a number of user-selectable items displayed therein;
`
`access the associated information resource over the network in
`response to selection by a user of one of the user-selectable items
`wherein each of said items has associated with it a link to an
`information resource accessible via the network;
`
`receive from server one of the user profiles;
`
`display a user-selectable item for user links contained within the user
`profile; and
`
`access the file associated with the selected user link from the user
`library associated with the received user profile in response to
`
`- 17 -
`
`
`
`
`
`selection by a user of one of the user links.
`
`Ex. 1001, Col. 39:12-40:11.
`
`The ’290 patent provides a definition of a program. A program is one or
`
`more related program modules, which in turn are one or more related sets of
`
`instructions stored in a file in computer-readable format, whether as object code or
`
`source code, and whether written in a compiled language, in byte code (such as
`
`Java™), or in a scripting or other interpreted language (i.e., program components).
`
`Ex. 1001, Col. 4:54-61. Based on this definition, the JWS program and JWS
`
`browser described in Foley are not related program modules. See Ex. 2001, ¶¶ 31-
`
`33.
`
`In one place in its petition, Google identifies the “said program” as the “JWS
`
`program,” while in another place Google identifies the “said program” as the “JWS
`
`browser.” See Paper 1 at 21; 26; 32. This inconsistency is due to Google’s
`
`misplaced reliance on a single sentence in Foley: “[T]he JWS program 150A has
`
`an integrated JWS Browser 154A that allows a user seamlessly to create and work
`
`with portfolios that are remote (stored apart from the user’s machine or local
`
`network) or local.” Ex. 1002, Col. 4:4-8. But the disclosures of Foley make clear
`
`that the JWS program and JWS browser are separate programs, each with its own
`
`purpose and not interchangeable.
`
`A person of ordinary skill in the art would recognize that the JWS program
`
`- 18 -
`
`
`
`
`
`150A is a separate program from the JWS browser 154A. See Ex. 2001, ¶¶ 34-36.
`
`
`
`Referring to Figure 1, Foley describes the set of JWS files 110A that
`
`collectively compose the Java Workshop as: “[T]he JWS program 150 (hereinafter
`
`referred to as the ‘JWS’), JWS browser 154A and a group of interface files called
`
`the JWS toolbar specification 112A.” Ex. 1002, Col. 4:28-34. Thus, the JWS
`
`program and JWS browser are identified as two separate program files.2 This is
`
`repeated in the summary of the invention, where Foley describes its portfolio
`
`2 Google agrees that a browser is a program. See Paper 1 at 6. Fo
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