UNITED STATES PATENT AND TRADEMARK OFFICE
`
`U.S. Patent No. 6,771,290
`Petition for Inter Partes Review
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE, INC.
`Petitioner
`v.
`
`B.E. TECHNOLOGY, LLC
`Patent Owner
`
`IPR Case No.: To be Assigned
`
`
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,771,290
`UNDER 35 U.S.C §§ 311-319 AND 37 C.F.R. §§ 42.1-.80, 42.100-.123
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`
`INTRODUCTION .......................................................................................... 1
`I.
`II. MANDATORY NOTICES ............................................................................ 1
`A.
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ........................... 1
`B.
`Related Matters Under 37 C.F.R. § 42.8(b)(2) .................................... 1
`i.
`Current Litigation ....................................................................... 1
`ii.
`Administrative Proceedings ....................................................... 2
`Lead and Backup Counsel under 37 C.F.R. § 42.8(b)(3) ..................... 2
`C.
`Service of Information Under 37 C.F.R. § 42.8(b)(4) ......................... 3
`D.
`III. REQUIREMENTS FOR INTER PARTES REVIEW ................................... 3
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................ 3
`B.
`Identification of Challenge and Relief Requested ............................... 4
`i.
`How the Challenged Claims Are to Be Construed Under
`37 C.F.R. § 42.104(b)(3) ............................................................ 5
`1.
`“Browser” ........................................................................ 6
`2.
`“Client Computer” ........................................................... 6
`3.
`“Computer” ...................................................................... 6
`4.
`“File” ................................................................................ 7
`5.
`“Information Resource” ................................................... 7
`6.
`“Link” .............................................................................. 7
`7.
`“Network” ........................................................................ 7
`8.
`“Non-Volatile Data Storage Device” .............................. 7
`9.
`“Profile” ........................................................................... 8
`10.
`“Server” ........................................................................... 8
`How the Challenged Claims Are Unpatentable Under
`37 C.F.R. § 42.104(b)(4) ............................................................ 8
`Supporting Evidence Under 37 C.F.R. § 42.104(b)(5) .............. 9
`iii.
`IV. LEVEL OF SKILL IN THE ART .................................................................. 9
`
`ii.
`
`
`
`i
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`V. OVERVIEW OF THE ’290 PATENT ........................................................... 9
`A.
`Summary of the Alleged Invention of the ’290 Patent ........................ 9
`B.
`Summary of the Prosecution History of the ‘290 Patent ................... 12
`VI. DETAILED CHALLENGE ......................................................................... 13
`A.
`Foley Renders Obvious Claims 2 and 3 of the ’290 Patent ............... 13
`i.
`Brief Overview of Foley .......................................................... 13
`ii.
`Analysis of Unpatentability ..................................................... 14
`1.
`Foley Renders Claim 2 of the ’290 Patent Obvious ...... 14
`(a)
`“[a] computer-readable memory for
`use by a client computer in
`conjunction with a server that is
`accessible by the client computer via a
`network, the server storing a user
`profile and user library for each of a
`number of different users, with the
`user library containing one or more
`files and the user profile containing at
`least one user link that provides a, link
`to one of the files in the user library[.]” ... 14
`(b) “program stored on said non-volatile
`data storage device in a computer-
`readable format” ....................................... 21
`
`
`
`ii
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`(c)
`
`“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” ................................................... 21
`(d) “said program being operable upon
`execution to receive from server one of
`the user profiles and to display a user-
`selectable item for user links contained
`within the user profile, said program
`further being operable in response to
`selection by a user of ne of the user
`links to access the file associated with
`the selected user link from the user
`library associated with the received
`user profile” .............................................. 25
`Foley Discloses Claim 3 of the ’290 Patent .................. 42
`2.
`VII. CONCLUSION ............................................................................................. 43
`
`
`
`iii
`
`

`

`U.S. Patent No. 6,771,290
`Petition for Inter Partes Review
`
`TABLE OF AUTHORITIES
`
`
`CASES
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) ................... 5
`
`Page(s)
`
`In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984) .................................... 5, 10, 11, 12
`
`STATUTES
`
`35 U.S.C. § 102 (2011) .............................................................................................. 5
`
`35 U.S.C. §§ 102(a) and 102(e) ................................................................................. 5
`
`35 U.S.C. § 102(b) ..................................................................................................... 5
`
`35 U.S.C. § 103 .......................................................................................................... 5
`
`35 U.S.C. § 311 ........................................................................................................ 43
`
`35 U.S.C. §§ 311-319 ................................................................................................ 1
`
`35 U.S.C. § 315(e)(1) ................................................................................................. 3
`
`35 U.S.C. § 371 ........................................................................................................ 12
`
`35 U.S.C. § 371(c) ................................................................................................... 12
`
`OTHER AUTHORITIES
`
`37 C.F.R. §§ 42.1-.80 & 42.100-.123 ........................................................................ 1
`
`37 C.F.R. § 42.10 ....................................................................................................... 3
`
`37 C.F.R. § 42.10(b) .................................................................................................. 3
`
`37 C.F.R. § 42.63(e) ................................................................................................... 4
`
`37 C.F.R. § 42.101 ................................................................................................... 43
`
`37 C.F.R. §42.104 ...................................................................................................... 3
`
`42 C.F.R. § 42.100(b) ................................................................................................ 5
`
`
`
`iv
`
`

`

`
`
`
`
`List of Exhibits
`
`Exhibit 1001 – U.S. Patent No. 6,771,290
`
`Exhibit 1002 – U.S. Patent No. 5,706,502 to Foley
`
`Exhibit 1003 – Declaration of Stephen Gray
`
`Exhibit 1004 – Prosecution History of U.S. Patent No. 6,771,290
`
`Exhibit 1005 – Barry M. Leiner et al., Brief History of the Internet,
`INTERNET SOCIETY (Oct. 15, 2012),
`http://www.internetsociety.org/sites/default/files/Brief_Histo
`ry_of_the_Internet.pdf
`
`Exhibit 1006 – “Hypertext Markup Language,” Network Working Group
`Request for Comments 1866, November 1995
`
`Exhibit 1007 – 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)
`
`Exhibit 1008 – “The Common Gateway Interface (CGI) Version 1.1,”
`Network Working Group Request for Comments 3875,
`October 2004
`
`Exhibit 1009 – Application Server Product Vendors, Service-
`Architecture.com, http://www.service-
`architecture.com/products/application_servers.html (last
`visited Sep. 28, 2013)
`
`Exhibit 1010 – “HTTP State Management Mechanism,” Network Working
`Group Request for Comments 2109, February 1997
`
`Exhibit 1011 – “HTTP State Management Mechanism,” Network Working
`Group Request for Comments 6265, April 2011
`
`Exhibit 1012 – “Specification of Internet Transmission Control Program,”
`Network Working Group Request for Comments 675,
`December 1974
`
`Exhibit 1013 - Stephen Gray Curriculum Vitae
`
`v
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`On behalf of Google, Inc. (“Petitioner”) and in accordance with 35 U.S.C.
`
`§§ 311-319 and 37 C.F.R. §§ 42.1-.80 & 42.100-.123, inter partes review is
`
`respectfully requested for claims 2 and 3 of U.S. Patent No. 6,771,290 (“the ’290
`
`Patent”) (Google Exhibit 1001 “Ex. 1001”). This petition demonstrates that there
`
`is a reasonable likelihood that Petitioner will prevail on at least one of the claims
`
`challenged in the petition based on prior art references that the USPTO did not
`
`have before it during prosecution. Claims 2 and 3 of the ’290 Patent should
`
`therefore be cancelled as unpatentable.
`
`II. MANDATORY NOTICES
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Google, Inc. is the real party-in-interest.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`i.
`Current Litigation
`The ’290 Patent is presently the subject of litigation in the following cases
`
`which may affect or be affected by a decision in this proceeding: B.E. Technology,
`
`LLC v. Google, Inc., W.D. Ten., No 2:12-cv-02830; B.E. Technology, LLC v.
`
`Microsoft Corp., W.D. Ten., No 2:12-cv-02829; B.E. Technology, LLC v. Apple,
`
`Inc., W.D. Ten., No 2:12-cv-02831; B.E. Technology, LLC v. Amazon Digital
`
`Servs., Inc., W.D. Ten., No 2:12-cv-02767; B.E. Technology, LLC v. Sony
`
`Computer Entm’t, W.D. Ten., No 2:12-cv-02826; B.E. Technology, LLC v. Sony
`
`
`
`1
`
`

`

`
`
`Mobile Commc’ns, W.D. Ten., No 2:12-cv-02827; B.E. Technology, LLC v. Sony
`
`Elecs., Inc., W.D. Ten., No 2:12-cv-02828; B.E. Technology, LLC v. Samsung
`
`Telecomms. America, LLC, W.D. Ten., No 2:12-cv-02824; B.E. Technology, LLC
`
`v. Samsung Elecs.America, Inc., W.D. Ten., No 2:12-cv-02825; B.E. Technology,
`
`LLC v. Barnes & Noble, W.D. Ten., No 2:12-cv-02823; and B.E. Technology, LLC
`
`v. Motorola Mobility Holdings LLC, W.D. Ten., No 2:12-cv-02866.
`
`ii.
`Administrative Proceedings
`Petitioner is concurrently filing a second petition for inter partes review
`
`which is also directed to claims 2 and 3 of the ’290 Patent.
`
`Petitioner is also filing a petition for inter partes review directed to related
`
`U.S. Patent No 6,628,314, which is also at issue in B.E. Technology, LLC v.
`
`Google, Inc., W.D. Ten., No 2:12-cv-02830.
`
`C. Lead and Backup Counsel under 37 C.F.R. § 42.8(b)(3)
`
`Lead Counsel
`Clinton H. Brannon (Reg. No. 57,887)
`cbrannon@mayerbrown.com
`
`Mayer Brown, LLP
`1999 K Street, N.W.
`Washington, D.C. 20006-1101
`Telephone: (202) 263-3440
`Fax: (202) 263-3300
`
`Backup Counsel
`Brian A. Rosenthal (pro hac vice
`motion requested)
`brosenthal@mayerbrown.com
`
`Mayer Brown, LLP
`1999 K Street, N.W.
`Washington, D.C. 20006-1101
`Telephone: (202) 263-3446
`Fax: (202) 263-3300
`
`
`Petitioner respectfully requests authorization to file a motion for Brian A.
`
`Rosenthal to appear before the USPTO pro hac vice. Mr. Rosenthal is an
`
`
`
`2
`
`

`

`
`
`experienced litigating attorney and is currently serving as one of the lead counsels
`
`for Google, Inc. in related matter B.E. Technology, LLC v. Google, Inc., W.D.
`
`Ten., No 2:12-cv-02830. Mr. Rosenthal has established familiarity with the
`
`subject matter at issue in this proceeding. Petitioner intends to file a motion to
`
`appear pro hac vice under 37 C.F.R. § 42.10. Pursuant to 37 C.F.R. § 42.10(b), a
`
`power of attorney accompanies this Petition.
`
`Service of Information Under 37 C.F.R. § 42.8(b)(4)
`
`D.
`Service of any documents via hand-delivery may be made at the mailing
`
`address of lead and backup counsel designated above. Petitioner also consents to
`
`electronic service by email at: cbrannon@mayerbrown.com.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`Pursuant to 37 C.F.R. §42.104, each requirement for inter partes review of
`
`the ’290 Patent is satisfied.
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioners hereby certify that the ’290 Patent is available for inter partes
`
`review and that the Petitioners are not barred or estopped from requesting inter
`
`partes review. Specifically, Petitioner certifies that: Petitioner has not filed a civil
`
`action challenging the validity of a claim of the ’290 Patent; this Petition is filed
`
`less than one year from October 9, 2012, the date on which the Petitioner was
`
`served with a complaint alleging infringement of the ’290 Patent; the estoppel
`
`provisions of 35 U.S.C. § 315(e)(1) do not prohibit this inter partes review; and
`3
`
`
`
`

`

`
`
`this Petition is filed after the later of (a) the date that is nine months after the date
`
`of the grant of the ’290 Patent or (b) the date of termination of any post-grant
`
`review of the ’290 Patent.
`
`The required fees are submitted herewith. The Office is authorized to charge
`
`any fee deficiency, or credit overpayment, to Deposit Account No. 130019. A List
`
`of Exhibits is included in this paper pursuant to 37 C.F.R. § 42.63(e).
`
`Identification of Challenge and Relief Requested
`
`B.
`The precise relief requested by Petitioner is that claims 2 and 3 of the ’290
`
`Patent be cancelled in view of the following prior art references:
`
`Patent/Publication
`No.
`U.S. 5,706,502
`(“Foley”)
`
`Filing/Priority
`Date
`March 26, 1996
`
`Date of
`Publication/Issuance
`January 6, 1998
`
`Exhibit No.
`
`Ex. 1002
`
` The ’290 Patent is a national stage application of PCT/US99/16135, which
`
`is a continuation-in-part of application No. 09/118,351, filed on July 17, 1998, now
`
`U.S. Patent No. 6,141,010. Petitioner notes that claims 2 and 3 of the’290 Patent
`
`include subject matter that is not disclosed in parent application No. 09/118,351.
`
`For example, claim 2 of the ’290 Patent includes at least the limitations “user
`
`library” and “user link” that were not disclosed in application no. 09/118,351, and
`
`whose disclosure was added for the first time in the July 16, 1999 PCT application.
`
`See, e.g., Ex. 1001, col. 8: 3-50, col. 12:39 – col. 13:25. Therefore, claims 2 and 3
`
`of the ’290 patent are entitled to claim priority no earlier than July 16, 1999.
`
`
`
`4
`
`

`

`
`
`Accordingly, Foley qualifies as prior art to claims 2 and 3 of the ‘290 patent
`
`at least under 35 U.S.C. § 102(b).1 Even if the ’290 is entitled to claim priority to
`
`the July 17, 1998, filing date, which it is not, Foley would qualify as prior art at
`
`least under 35 U.S.C. §§ 102(a) and 102(e).
`
`Foley was not cited during the prosecution of the ’290 Patent. In the instant
`
`inter partes review, Petitioner asserts the following single ground of rejection:
`
`Claims Proposed Statutory Rejections for the ’290 Patent
`2, 3
`Obvious under 35 U.S.C. § 103 over Foley
`How the Challenged Claims Are to Be Construed Under
`37 C.F.R. § 42.104(b)(3)
`
`i.
`
`
`A claim subject to inter partes review receives the “broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” 42
`
`C.F.R. § 42.100(b). Under a broadest reasonable interpretation, the words of the
`
`claim must be given their plain meaning, unless the inventor, acting as a
`
`lexicographer, has set forth special meaning to certain terms. CCS Fitness, Inc. v.
`
`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002); see also In re Yamamoto,
`
`740 F.2d 1569, 1571 (Fed. Cir. 1984).
`
`
`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. § 102 (2011).
`
`
`
`5
`
`

`

`
`
`The ’290 Patent recites explicit definitions for 20 terms, including many that
`
`appear in claims 2 and 3. See Ex. 1001, col. 3: 65 - col. 5:5. Defined terms that
`
`appear in claims 2 and 3 include the following:
`
`1.
`The ’290 Patent explicitly provides that a “browser” is “[a] program that can
`
`“Browser”
`
`communicate over a network using http or another protocol and that can display
`
`html information and other digital information.” Ex. 1001, col. 3:65-67.
`
`2.
`The ’290 Patent explicitly provides that a “client computer” is “[a] computer
`
`“Client Computer”
`
`that is connected to a network (including computers that are connected only
`
`occasionally to the network such as, for example, by a modem and telephone line)
`
`and that can be used to send requests for information to other computers over the
`
`network.” Ex. 1001, col. 4:1-6.
`
`3.
`The ’290 Patent explicitly provides that a “computer” is “[a]n apparatus
`
`“Computer”
`
`having a processing device that is capable of executing instructions, including
`
`devices such as personal computers, laptop computers, and personal digital
`
`assistants, as well as set top television boxes, televisions, radios, portable
`
`telephones, and other such devices having a processing capability.” Ex. 1001, col.
`
`4:7-12.
`
`
`
`6
`
`

`

`
`
`4.
`The ’290 Patent explicitly provides that a “file” is “[a]ny digital item,
`
`“File”
`
`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, col. 4:24-27.
`
`5.
`The ’290 Patent explicitly provides that “information resource” is “[a]
`
`“Information Resource”
`
`source of information stored on a server or other computer that is accessible to
`
`other computers over a network.” Ex. 1001, col. 4:32-34.
`
`6.
`The ’290 Patent explicitly provides that a “link” is “[a] data item that
`
`“Link”
`
`identifies the location of a program or information resource. A URL is a link, as is
`
`a path and filename of an information resource.” Ex. 1001, col. 4:37-39.
`
`7.
`The ’290 Patent explicitly provides that a “network” is “[a] system having at
`
`“Network”
`
`least two computers in communicable connection, including intranets, personal
`
`networks, virtual private networks, and global public networks such as the
`
`Internet.” Ex. 1001, col. 4:40-43.
`
`8.
`The ’290 Patent explicitly provides that a “non-volatile data storage device”
`
`“Non-Volatile Data Storage Device”
`
`is “[a] memory device that retains computer-readable data or programming code in
`
`
`
`7
`
`

`

`
`
`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, col. 4:44-49.
`
`9.
`The ’290 Patent explicitly provides that a “profile” is “[u]ser-specific
`
`“Profile”
`
`information relating to an individual using a computer.” Ex. 1001, col. 4:52-53.
`
`10.
`The ’290 Patent explicitly provides that a “server” is “[a] computer on a
`
`“Server”
`
`network that stores information and that answers requests for information.” Ex.
`
`1001, col. 4:63-64.
`
`Petitioner submits that the broadest reasonable construction of the
`
`limitations of claims 2 and 3 must encompass these definitions, and therefore
`
`submits that the above definitions should apply to this proceeding. See Gray
`
`Declaration, Ex. 1003, ¶¶ 110-11.
`
`ii. How the Challenged Claims Are Unpatentable Under
`37 C.F.R. § 42.104(b)(4)
`
`
`An explanation of how claims 2 and 3 of the ’290 Patent are unpatentable
`
`under the statutory grounds identified above, including the identification of where
`
`each element of the claim is found in the prior art patents or printed publications, is
`
`provided below.
`
`
`
`8
`
`

`

`
`
`Supporting Evidence Under 37 C.F.R. § 42.104(b)(5)
`
`iii.
`
`The exhibit numbers of the supporting evidence relied upon and the
`
`relevance of the evidence to the challenged claims, including an identification of
`
`specific portions of the evidence that support the challenge, are provided below. A
`
`List of Exhibits identifying the exhibits is also included in this petition. The
`
`technical information and grounds for rejection explained in detail in the petition
`
`are further supported by the Declaration of Stephen Gray attached as Ex. 1003.
`
`IV. LEVEL OF SKILL IN THE ART
`A person of ordinary skill in the art (POSITA) of the ’290 Patent in 1998 or
`
`1999 would have been a person with good knowledge of computer networking and
`
`networking architecture. This person would also be familiar with client-server
`
`systems and information delivery systems. This person would have gained such
`
`knowledge through an undergraduate degree in electrical/computer engineering,
`
`computer science (or equivalent degree), or through two or more years of work
`
`experience in the relevant field, or through a combination thereof. See Ex. 1003,
`
`¶¶ 22; 25-26.
`
`V. OVERVIEW OF THE ’290 PATENT
`A.
`Summary of the Alleged Invention of the ’290 Patent
`The ’290 Patent describes a system that allows for the remote storage and
`
`retrieval of user-specific files. The disclosed system includes a plurality of client
`
`
`
`9
`
`

`

`
`
`computers 40 each having a client software application. See Ex. 1001 at col. 1:42-
`
`48. The client computer provides access, through Internet 20 or other local
`
`networks, to an advertising and data management (“ADM”) server 22. See, e.g.,
`
`id.; FIG. 3 (reproduced below).
`
`
`
`The ADM server includes a User/Demographics Database 46 that stores a
`
`“user profile” and a “user library” for a user. See id. at col. 12:50-52; col. 13:3-7.
`
`The user profile contains user-specific information, including “bookmarks,
`
`shortcuts, and other such links to files and information resources accessible via
`
`either network 42 or the Internet 20.” See id. at col. 13:1-3. The user library
`
`“enables the user to store files (documents, executable programs, email messages,
`
`audio clips, video clips, or other files) that can be accessed from any client
`10
`
`
`
`

`

`
`
`computer 40.” See id. at col. 13: 4-7. By storing the user profile and user library
`
`on the server 22, the ’290 Patent describes that a user can thus access his/her user
`
`library and the files associated therewith from any client computer 40 without the
`
`need to physically transport the files. See id. at col. 13:7-12.
`
`
`
`The ’290 Patent further describes how a user may access the user profile and
`
`user library from a client computer 40. For example, the client software
`
`application 10 includes a GUI module 52 which provides a user interface with an
`
`application window 24. See id. at col. 13:41-45; FIG. 5. The application window
`
`24 includes an URL field which is “an input box that can be used for entering
`
`URLs[.]” Id. at col. 14:40-41. The GUI module 52 “initiates operation of the
`
`user’s default browser and directs it to access and display the specified web page”
`
`after the user enters an URL. The application window also includes a linked icon
`
`88 that “can be used to bring up a window which includes a list of the files located
`
`in the user library.” See id. at col. 16:37-39. Specifically, when the user selects the
`
`“Library” icon, the application provides the user with a display as shown in FIG.
`
`5c, reproduced below.
`
`
`
`11
`
`

`

`
`
`
`
`As shown in Figure 5c, all of the files contained in the user’s user library are
`
`displayed, including Word and Excel files. See id. at col. 15:53-56. From this
`
`window, the user can access any of the files in his/her user library. See id. at col.
`
`15:56-60.
`
`Summary of the Prosecution History of the ‘290 Patent
`
`B.
`The ’290 Patent issued from U.S. Patent Application No. 09/744,033, filed
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`on April 11, 2001,2 which is a 35 U.S.C. § 371, national stage application of
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`International Application No. PCT/US99/16135, filed on July 16, 1999. See Ex.
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`1001, p. 1. PCT/US99/16135 is a continuation-in-part of U.S. Patent Application
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`No. 09/118,351, filed on July 17, 1998, now U.S. Patent No. 6,141,010. See id.
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`2 While the initial national stage application was filed with the USPTO on January
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`17, 2001, the required oath or declaration pursuant to 35 U.S.C. § 371(c) was not
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`received by the Office until April 11, 2001. See Ex. 1004, at p. 42, 154.
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`Prior to examination of the application for the ‘290 Patent, the applicant
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`submitted two preliminary amendments cancelling claims 1-5 of the application
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`and updating the specification. See Ex. 1004 at pp. 162-64. Applicants also
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`submitted an information disclosure statement citing certain U.S. patents and a
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`single non-patent literature document. See id. at pp. 165, 179, 180.
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`On March 16, 2003, the Examiner and Applicants’ representative conducted
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`a telephonic interview which resulted in the allowance of certain claims. Id. at p.
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`172. As a result of the interview, claims 6, 8, and 10 were cancelled, and claim 9
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`(issued as claim 2) was amended to delete the term “using the browser.” Id. at pp.
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`172-73. Further, new claim 11 (issued as claim 3) was added to depend from claim
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`9 (issued as claim 3). Id. As part of the Notice of Allowability, the Examiner
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`included two U.S. patents in the Notice of Reference Cited document that had
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`previously been included in Applicants’ information disclosure statement. Id. at p.
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`178. The ’290 Patent issued on August 3, 2004.
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`VI. DETAILED CHALLENGE
`A.
`Foley Renders Obvious Claims 2 and 3 of the ’290 Patent
`i.
`Foley is directed to a software development and file management system,
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`Brief Overview of Foley
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`and particularly directed to a “portfolio management system for portfolios of
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`software projects that are distributed over a set of networked computers connected
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`to the Internet.” See Ex. 1002, col. 2:47-49. The portfolio management system is a
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`software program resident on a computer on a network and includes a set of
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`portfolio files and project files, a portfolio manager, and a Web browser. Id. at col.
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`2:51-54.
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`Foley’s portfolio management system also includes a user interface that
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`allows a user at a first computer to manipulate portfolios and the projects contained
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`therein in a “consistent fashion that is independent of the location of the portfolios
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`being displayed and their constituent projects.” Id. at col. 3:4-8. As such, in the
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`time frame of 1996, Foley’s portfolio management system discloses and/or
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`suggests each claimed feature of claims 2 and 3 of the ’290 Patent.
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`Analysis of Unpatentability
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`ii.
`As provided by the detailed claim chart below as well as Stephen Gray’s
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`
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`declaration, Foley discloses and/or suggests all features of claims 2 and 3 of the
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`’290 Patent. See generally Ex. 1003 ¶¶ 117-130.
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`1.
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`Foley Renders Claim 2 of the ’290 Patent Obvious
`(a)
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`“[a] computer-readable memory for use by a
`client computer in conjunction with a server
`that is accessible by the client computer via a
`network, the server storing a user profile and
`user library for each of a number of different
`users, with the user library containing one or
`more files and the user profile containing at
`least one user link that provides a, link to one of
`the files in the user library[.]”
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`With respect to claim 2, Foley discloses each of the features in the preamble.
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`Specifically, it discloses a system including a portfolio management system
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`resident on a first computer connected to a set of networked computers. See id. at
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`col. 2:51-54.
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`The portfolio management system of Foley is implemented as a software
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`application called Java Workshop (JWS) program 150A and is stored in memory
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`106A of the first computer. See id. at col. 3:63-66; col. 4:28-31. This JWS
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`program 150A “allows users to organize executable programs (Java applets and
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`standalone executables) and non-executable files (images files and Java class
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`libraries) into collections called portfolios.” Id. at col. 3:66-4:3 (emphasis added).
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`Foley terms the components of the portfolios projects. See id. at col. 4:11-12. As
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`disclosed by Foley, “projects always exist in the context of a portfolio.” Id. at col.
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`9, ll. 9-10.
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`Foley’s JWS program 150A permits users to create and work with local or
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`remote portfolios and their projects. See id. at col. 4:4-8. For example, a user can
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`create a new portfolio, name the portfolio, or add or import projects to the
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`portfolio. See id. at col. 7:66-8:13. The creator of the portfolio can keep the
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`portfolio private or publish it online to be accessed by others. See id. at col. 8:11-
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`13. Because the portfolios are created and named by users, the portfolios
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`themselves necessarily represent the information relating to the user. Accordingly,
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`under the definition of “profile” set forth in the ‘290 patent, Foley’s user-created
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`portfolio files correspond to the claimed “user profile.” See Ex. 1003, ¶ 120.
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`Foley discloses that each portfolio file “represents one portfolio and includes
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`respective references to members of a set of project files.” Id. at col. 2:55-57
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`(emphasis added). Each of these references can be a “file name when the project
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`file member is local to the first computer or a Web page URL when the project file
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`member is remote from the first computer.” Id. at col. 2:57-60; see also col. 7:20-
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`28. Because the portfolio files reference project files and their contents via using a
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`file name or an URL, the links of the portfolio files correspond to the claimed
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`“user link” as the term “link” is defined in the ‘290 patent. See Ex. 1003, ¶ 121.
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`Foley describes the project file of a user-created portfolio as a file that
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`“describes the project and contains the project’s contents.” Id. at col. 8:38-40. The
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`project file includes information such as the name of the project, the project type,
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`project administrative information, project contents, and run page URL (only for
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`applet projects). See id. at col. 8:40-58. The preferred embodiments implement
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`each project file as a file on stored media with a file and path name with the
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`extension “.prj.” See, e.g., id. at FIG. 5; col. 7:35-45. As such, the project file
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`meets the definition of “file” set forth in the ’290 Patent. See Ex 1001, col. 4:24-
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`27.
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`Figure 5 of Foley, reproduced below, illustrates that a user can create and
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`store a portfolio file with stored projects at a local computer (Machine A 102A):
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`As shown above, portfolio file 160A1 includes links to its constituent
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`projects including locally stored “Applet,” “Standalone” program, Java “Package,”
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`and an “image” in the Machine A’s (102A) directory. See Ex. 1002 at col. 7:29-
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`35. Because Foley discloses that projects always exist in the context of a portfolio,
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`(id. at col. 9:9-10) and that portfolios and their constituent projects are
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`implemented as files in directories, (id. at col. 2:49-51), the collection of project
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`files for a particular user that are linked by a portfolio corresponds to the claimed
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`“user library.” See Ex. 1003, ¶¶ 122-23.
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`Foley also explicitly discloses that a server can store both the portfolio file
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`for a user (the claimed “user profile”) and the portfolio directory (the claimed “user
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`library”). Specifically, Figure 6, reproduced below, depicts a remote computer
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`(Machine C) connected via the Internet and houses a portfolio and all of the project
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`files linked by that portfolio.
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` In Figure 6, Machine C is a “computer on a network that answers requests for
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`information,” and thus meets the definition of “server” in the ’290 Patent. See Ex.
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`1001 at col. 4:66-67. Therefore, Figure 6 depicts a server that contains a user
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`profile (Portfolio 2) that links to files within a user library (P2a, P2b and P2c), also
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`stor