`Trials@uspto.gov
`571-272-7822 Entered: April 9, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`
`
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`____________
`
`Case IPR2014-00040
`Patent 6,771,290 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`Case IPR2014-00040
`Patent 6,771,290 B1
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`I. INTRODUCTION
`Petitioner, Microsoft Corporation, filed a corrected petition requesting
`an inter partes review of claims 1-3 of U.S. Patent No. 6,771,290 B1 (Ex.
`1001, “the ’290 patent”). Paper 5 (“Pet.”). Patent Owner, B.E. Technology,
`L.L.C., did not file a preliminary response. We have jurisdiction under 35
`U.S.C. § 314(a), which provides that an inter partes review may not be
`instituted “unless . . . the information presented in the petition . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.”
`Upon consideration of the petition, we conclude that there is a
`reasonable likelihood that Petitioner would prevail in challenging claims 1-3
`as unpatentable. Accordingly, under 35 U.S.C. § 314(a), we authorize an
`inter partes review to be instituted as to claims 1-3 of the ’290 patent.
`
`A. Related Proceedings
`Petitioner states that the ’290 patent is involved in B.E. Technology,
`L.L.C. v. Microsoft Corp., No. 2:12-cv-02829 (W.D. Tenn.). Pet. 1. We
`also note that the ’290 patent is involved in numerous district court cases
`filed by Patent Owner against other defendants. In addition, the ’290 patent
`is the subject of these inter partes reviews: IPR2014-00029, IPR2014-
`00031, IPR2014-00033, and IPR2014-00044.
`In IPR2014-00039, Petitioner requests inter partes review of related
`U.S. Patent No. 6,628,314 B1 (“the ’314 patent”), also at issue in B.E.
`Technology, L.L.C. v. Microsoft Corp., No. 2:12-cv-02829 (W.D. Tenn.).
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`The ’314 patent is also the subject of these inter partes reviews: IPR2014-
`00038, IPR2014-00052, and IPR2014-00053.
`
`B. The ’290 Patent (Ex. 1001)
`The ’290 patent describes a system that provides remote storage of
`user-specific files and resources that can be accessed over a network, such as
`the Internet. Ex. 1001, 5:43-50, 12:45-50. The disclosed system includes
`client computers, each running a client software application that provides
`access via a network to an advertising and data management (ADM) server.
`Id. at 11:42-49. The server includes a user database that stores a user profile
`and a user library for each user. Id. at 12:45-13:12. The user profile is
`accessed by the client software application using a unique identifier for the
`user via a login. Id. at 12:52-56. The user profile may contain user-specific
`customized settings for the operating system used by the client computer.
`Id. at 12:56-58. Additionally, the user profile may contain “bookmarks,
`shortcuts, and other such links to files and information resources accessible
`via” the network. Id. at 12:67-13:3. The user library “enables the user to
`store files (documents, executable programs, email messages, audio clips,
`video clip, or other files) that can then be accessed from any client
`computer.” Id. at 13:4-7. By storing user profiles and user libraries on the
`server, users “can have world-wide access to their preferences, addresses,
`bookmarks, email, and files without having to physically transport them
`from one place to another.” Id. at 13:9-12.
`The ’290 patent further describes a user interface on a client
`computer, provided by a graphical user interface (GUI) module. Id. at
`3
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`13:441-43. Thee user inter
`ith
`window wpplication wface comprises an ap
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`selecctable itemms such as iicons. Id. at 13:43-5
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`3. As showwn in Figuure 5b,
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`varioous files annd links to informatioon resourcees.” Id. at
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`15:48-53.
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`reprooduced bellow, the appplication wwindow mmay includee “icons thaat represennt
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`Figgure 5b illuustrates an applicationn window
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`with iconss
`files and l
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`reppresenting
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`inks to infformation rresources.
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`s a library
`5b includeThe applicationn window in Figure 5
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`icon, whicch, when
`low.
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`seleccted, provides a displlay as showwn in Figurre 5c, repr
`oduced be
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`ndow ication wines an appliFigure 55c illustrate
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`dissplaying files in a useer library.
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`The
`user files contaained in a u
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`a list of all display in Figure 5c provides a
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`libraary. Id. at 15:55-56. From this window, ““the user ccan access
`any of the
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`files containedd in his or hher user libbrary.” Id.
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`at 15:56-557.
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`C. Illusstrative Claaims
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`Indeependent cllaims 1 andd 2 are illuustrative:
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`Petitioneer challengges all claimms (claimss 1-3) of thhe ’290 pattent.
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`1.
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`A commputer-reaadable memmory for uuse by a cclient
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`computeer to providde a user oof the commputer withh an integrrated,
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`customizzed, graphhical user iinterface too a pluraliity of commputer
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`resourcees, the commputer-readdable memoory comprrising:
`
`
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`a non-volatile data sto
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`rage devicce;
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`a program stored on said non-volatile data storage device
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`in a computer-readable format;
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`said program being operable upon execution to display a
`graphical user interface comprising an application window
`separated into a number of regions;
`
`a first one of said regions including a number of
`graphical objects, at least some of which are each representative
`of a different software application and are selectable by the user
`via an input device, wherein said program is operable upon
`selection of one of said graphical objects to initiate execution of
`the software application associated therewith;
`
`a second one of said regions including a number of user-
`selectable items, at least some of which are each associated
`with a different data set, said data sets each comprising a
`number of links to different information resources, wherein said
`program is operable in response to selection of at least one of
`said items to provide the user with access to its associated data
`set;
`said program including a login module that is operable
`
`upon execution to identify the user of the computer; and
`
`said program being operable following execution of said
`login module to provide an identification of the user to the
`server and to receive from the server a user profile containing
`one or more user data sets and user links to information
`resources, with said program further being operable to display
`in one of said regions a user-selectable item for each of said
`user data sets and each of said user links.
`
`A computer-readable memory for use by a client
`2.
`
`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
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`the files in the user library, the computer-readable memory
`comprising:
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`a non-volatile data storage device;
`
`a program stored on said non-volatile data storage device
`in a computer-readable format;
`
`said program being operable upon execution to display a
`graphical user interface comprising an application window
`having a number of user-selectable items displayed therein,
`wherein each of said items has associated with it a link to an
`information resource accessible via the network and wherein
`said program is operable upon execution and in response to
`selection by a user of one of said items to access the associated
`information resource over the network;
`
`said program being operable upon execution to receive
`from [the] server one of the user profiles and to display a user-
`selectable item for user links contained within the user profile,
`said program further being operable in response to selection by
`a user of one of the user links to access the file associated with
`the selected user link from the user library associated with the
`received user profile.
`Id. at 38:30-40:11.
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`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1-3 of the ’290 patent are unpatentable
`under 35 U.S.C. § 102 based on the following specific grounds:
`
`Reference[s]
`Kikinis1
`AOL2
`
`Basis
`§ 102(b)
`§ 102(b)
`
`Challenged Claims
`1-3
`1-3
`
`II. ANALYSIS
`
`A. Claim Construction
`As a step in our analysis for determining whether to institute a review,
`we determine the meaning of the claims for purposes of this decision. In an
`inter partes review, we construe claim terms in an unexpired patent
`according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug.
`14, 2012). Consistent with the broadest reasonable construction, claim terms
`are presumed to have their ordinary and customary meaning, as understood
`by a person of ordinary skill in the art, in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). An inventor may provide a meaning for a term that is different from
`its ordinary meaning by defining the term in the specification with
`
`1 PCT International Publication Number WO 97/09682, published Mar. 13,
`1997 (Ex. 1005) (“Kikinis”).
`2 JOHN KAUFELD, AMERICA ONLINE FOR DUMMIES (3d ed. 1996) (Ex. 1006)
`(“AOL”).
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`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`
`1. Claim Terms Defined in the ’290 Patent
`The ’290 patent recites explicit definitions for many terms. In the
`table below, we construe the claim terms that are relevant to our decision in
`accordance with the definitions provided in the ’290 patent, which are set
`forth in the ’290 patent with reasonable clarity, deliberateness, and precision.
`
`Claim Term
`
`data set
`
`file
`
`information resource
`
`link
`
`Construction
`“A group of data items; for example, links,
`keywords, or entries in an address book.”
`Ex. 1001, 4:18-19.
`“Any digital item, including information,
`documents,
`applications,
`audio/video
`components, and the like, that is stored in
`memory and
`is accessible via a file
`allocation
`table or other pointing or
`indexing structure.” Ex. 1001, 4:25-28.
`“A source of information stored on a
`server or other computer that is accessible
`to other computers over a network.”
`Ex. 1001, 4:33-35.
`“A data item that identifies the location or
`address of a program or
`information
`resource.” Ex. 1001, 4:39-40.3
`
`
`3 The ’290 patent further provides: “A URL [i.e., a uniform resource
`locator] is a link, as is a path and filename of an information resource.”
`Ex. 1001, 4:40-41. We consider these to be examples of a “link,” not part of
`the definition, and, therefore, not part of our construction of the claim term.
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`Claim Term
`
`non-volatile data storage
`device
`
`profile
`
`Construction
`“A memory device that retains computer-
`readable data or programming code in the
`absence of externally-supplied power,
`including such things as a hard disk or a
`floppy disk, a compact disk read-only
`memory (CDROM), digital versatile disk
`[(]DVD), magneto-optical disk, and so
`forth.” Ex. 1001, 4:46-51.
`“User-specific information relating to an
`individual using a computer.” Ex. 1001,
`4:52-53.
`
`2. “user library”
`In addition to the claim terms discussed above, we construe the claim
`term “user library” for purposes of this decision. Claim 2 recites a “server
`storing a . . . user library for each of a number of different users, with the
`user library containing one or more files.” Ex. 1001, 39:3-5 (emphasis
`added). Claim 2 further provides that files in the user library are accessed
`via user links in a user profile. Id. at 39:6-7, 40:8-11.
`Although the ’290 patent does not provide an explicit definition of
`“user library,” it provides the following description: “[T]he User Database
`46 of ADM server 22 can include a user library that enables the user to store
`files (documents, executable programs, email messages, audio clips, video
`clips, or other files) that can then be accessed from any client computer 40.”
`Id. at 13:3-7 (emphasis added). The written description of the ’290 patent
`further explains that a user library is “used to store [a user’s] individual files
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`and resources that the user wishes to be able to access from anywhere on the
`network.” Id. at 5:56-58.
`An ordinary meaning of “library” in the context of electronic
`document storage is a “collection of software or data files,”4 and, thus, a
`“user library” is a “collection of a user’s software or data files.” In view of
`this ordinary meaning and the claims and written description of the ’290
`patent, we determine that the broadest reasonable construction of “user
`library” consistent with its use in the ’290 patent is “a collection of an
`individual’s stored files.”
`
`B. Anticipation by Kikinis
`Petitioner contends that claims 1-3 are unpatentable under 35 U.S.C.
`§ 102(b) as anticipated by Kikinis. Pet. 7-18. To support its contention,
`Petitioner explains how each claim limitation is described in Kikinis, relying
`on the declaration of Dr. Henry Houh (Ex. 1003).
`
`1. Kikinis (Ex. 1005)
`Kikinis describes a document management system that provides for
`remote storage and retrieval of electronic documents. Ex. 1005, Abstract,
`1:7-9. Figure 2, reproduced below, illustrates Kikinis’s electronic document
`system.
`
`
`4 See MICROSOFT COMPUTER DICTIONARY 309 (5th ed. 2002).
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`with a Weeb browserr
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`hown in Figure 2, Kiikinis disclloses user
`station 53
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`As s
`allows a u
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`ser to acceess, via the Internet, sservers proovided by aa remote
`that
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`Interrnet servicee provider (ISP), labeeled “Userr’s Provideer” in the fiigure.
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`Id. aat 6:11-14,
`24-26. In
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`incluudes Web sserver 67 aand a set off electronicc documennt servers 669, all of
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`whicch have acccess to the Internet. IId. at 6:24
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`-27.
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`Each eleectronic doocument server 69 runns softwar
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`e that suppports a
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`ram, a fax program,
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`an e--mail prog
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`a voice-maail programm, and otheer
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`proggrams, incluuding videeo and grapphics. Id. aat 6:29-31.. Web servver 67
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`storees a set of ddatabases 771, each off which is
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`Id. aat 6:32-35. Each dataabase 71 inncludes homme page 733 that is
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`the emboddiment shoown in Figuure 2, the rremote ISPP
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`speccific application. Id. at 6:27-29. As showwn in Figurre 2, exampples includde
`
`associatedd with a diffferent userr.
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`indivvidualized to a speciffic user andd provides
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` links to vaarious dataabases
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`mainntained by electronic documentt server 69
`for each uuser, such aas e-mail
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`databbase 89, faax databasee 91, voicee-mail dataabase 93, annd other ellectronic
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`docuuments in ddatabase 955. Id. at 6::35-7:4. AA user may
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`be requireed to
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`provvide a passwword and uuser name to gain acccess to homme page 733 of an
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`electtronic docuument dataabase. Id. aat 8:21-24..
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`A user wwho wishess to access
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`electronicc documentts stored onn an
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`7:17-29. Figurre 3 of Kikkinis, reprooduced beloow, illustraates a seriees of Web
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`browwser windoows for acccessing electronic doccuments.
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`electtronic docuument servver invokess the Web bbrowser att a user stattion. Id. att
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`As shown in Figure 3, a user enters a URL for his home page in field 113.
`Id. at 7:29-31. Home page 73 is retrieved from the remote server and
`displayed as a graphical user interface to data and other Web destinations,
`with on-screen links to the user’s electronic documents stored on the
`electronic document server. Id. at 7:31-8:1. For example, as shown in
`Figure 3, home page 73 provides links to the user’s voice-mail (button 117),
`e-mail (button 118), faxes (button 120), and other electronic documents
`(button 122). Id. at 8:2-13. A user also may use home page 73 to link to
`other databases, “such as a personal multi-lingual dictionary featuring
`pronunciation, a spelling checker, or a thesaurus; or indeed, almost any other
`sort of digital data or control routines.” Id. at 8:14-18.
`
`2. Claim 1
`Petitioner contends that Kikinis discloses all the limitations of
`claim 1. Pet. 8-12. First, Petitioner contends that user station 53 in Kikinis
`is a computer system having well-known elements of such a computer,
`including Web browser 65, and, therefore, Kikinis discloses a non-volatile
`data storage device and a program stored on that device in a computer-
`readable format, as recited in claim 1. Pet. 9 (citing Ex. 1003 ¶¶ 118, 136-
`37).
`
`Next, Petitioner submits that user-specific home page 73 in Kikinis is
`a graphical user interface comprising an application window separated into a
`number of regions, as recited in claim 1. Pet. 9-10 (citing Ex. 1003 ¶¶ 122,
`124-28, 138-39); see Ex. 1005, Fig. 3. According to Petitioner, a section of
`the home page with user-selectable links, shown in Figure 3 of Kikinis,
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`corresponds to the claimed first region. Pet. 10. The user-selectable links
`for voice-mail and e-mail, for example, are graphical objects representative
`of different software applications. Pet. 10 (citing Ex. 1003 ¶¶ 119-21, 141-
`43). Claim 1 also requires a second region with user-selectable items
`associated with different data sets (which may be links, according to our
`claim construction), each of which comprises a number of links to different
`information resources. Furthermore, Petitioner submits that additional links
`not shown in Figure 3, such as links for a dictionary, spelling checker, and
`thesaurus, are user-selectable items in a second region. Pet. 11 (citing
`Ex. 1005, 8:14-18; Ex. 1003 ¶¶ 144-47).
`Petitioner also contends that Kikinis discloses a login module that
`identifies the user of the computer. Pet. 12; see Ex. 1005, 8:21-24
`(providing that a password and user name may be required for access to a
`home page). Further, Petitioner asserts that after execution of the login
`module provides a user’s identification to the server, the user’s computer
`receives from the server a user profile (home page 73) containing user data
`sets and links to information resources (user-selectable links to e-mail and
`voice-mail, for example), and displays a user-selectable item for each data
`set and link in one of the regions of the application window. Pet. 12 (citing
`Ex. 1003 ¶¶ 150-53); Ex. 1005, Fig. 3.
`On this record, we determine that Petitioner has made a sufficient
`showing that Kikinis discloses all of the limitations of claim 1. Accordingly,
`we conclude that the information presented shows a reasonable likelihood
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`that Petitioner would prevail in demonstrating that claim 1 is unpatentable as
`anticipated by Kikinis.
`
`3. Claims 2 and 3
`Petitioner contends that Kikinis discloses all the limitations of
`claim 2. Pet. 13-17. Beginning with the preamble, Petitioner asserts that
`Kikinis discloses a client computer (user station 53) and a server (electronic
`document servers 69) accessible by the client via a network (the Internet).
`Pet. 13-14 (citing Ex. 1003 ¶¶ 154-57). Petitioner also contends that Kikinis
`discloses a user library (user-specific databases, such as e-mail database 89,
`fax database 91, voice-mail database 93, and electronic document database
`95, all of which contain user-specific files) stored on the server for each of a
`number of different users. Pet. 13-14 (citing Ex. 1003 ¶¶ 160-61). Further,
`Petitioner asserts, Kikinis discloses a user profile (home page 73) that has
`links to the user’s files (electronic documents, including e-mail messages
`and faxes). 13-14 (citing Ex. 1003 ¶¶ 160-61). Although the embodiment
`shown in Figure 2 of Kikinis maintains a user’s files on electronic document
`server 69 and a user’s home page on Web server 67, Kikinis also discloses
`that user profiles and user libraries can be stored on the same server.
`Ex. 1005, 10:30-11:9 (claim 7, which provides a user’s home page interface
`and electronic document database stored at the same server); see also id. at
`9:32-33 (“Arrangement and nature of electronic document databases can
`vary considerabl[y], as well.”).
`Petitioner also contends that user station 53 in Kikinis is a computer
`system having well-known elements of such a computer, including Web
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`browser 65, and, therefore, Kikinis discloses a non-volatile data storage
`device and a program stored on that device in a computer-readable format,
`as recited in claim 2. Pet. 15 (citing Ex. 1003 ¶¶ 163-64).
`Furthermore, Petitioner asserts that the Web browser in Kikinis
`provides “a graphical user interface comprising an application window
`having a number of user-selectable items displayed therein,” as recited in
`claim 2. Pet. 15-16 (citing Ex. 1003 ¶¶ 165-69). As described above, a user
`of Kikinis’s system enters a URL to retrieve his home page, which includes
`links or buttons that can be selected by the user. Ex. 1005, 7:31-8:13, Fig. 3.
`Moreover, Petitioner notes that when a user selects a link, the browser
`accesses an associated information resource (e-mail, fax, voice-mail, or
`other electronic document) over the network, as recited in claim 2. Pet. 15
`(citing Ex. 1003 ¶¶ 167-68).
`Finally, Petitioner asserts that Kikinis discloses receiving one of the
`user profiles (user’s home page 73) from the server, displaying a user-
`selectable item for user links within the user profile (links or buttons that can
`be selected by the user), and, in response to a user’s selection of a link,
`accessing the file (e.g., electronic document, e-mail, fax, or voice-mail)
`associated with a selected user link from the user library (user-specific
`database for e-mail, fax, voice-mail, or electronic documents). Pet. 16-17
`(citing Ex. 1003 ¶¶ 170-74).
`Claim 3 depends from claim 2 and further recites that a browser is
`used for accessing an associated information resource over the network. As
`discussed, Petitioner asserts that Kikinis discloses a Web browser that
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`provides a user station with access to user-specific files in databases stored
`on a server over a network, such as the Internet. See Pet. 17-18 (citing
`Ex. 1003 ¶¶ 175-77).
`On this record, we determine that Petitioner has made a sufficient
`showing that Kikinis discloses all of the limitations of claims 2 and 3.
`Accordingly, we conclude that the information presented shows a reasonable
`likelihood that Petitioner would prevail in demonstrating that claims 2 and 3
`are unpatentable as anticipated by Kikinis.
`
`C. Anticipation by AOL
`Having reviewed this ground of unpatentability asserted by Petitioner
`against claims 1-3, we exercise our discretion and determine that it is
`redundant to the ground of unpatentability on which we institute review for
`the same claims. See 37 C.F.R. § 42.108(a).
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the petition establishes that there is a reasonable likelihood that
`Petitioner would prevail in showing that claims 1-3 of the ’290 patent are
`unpatentable. At this stage of the proceeding, the Board has not made a final
`determination with respect to the patentability of these claims.
`
`IV. ORDER
`
`
`
`Accordingly, it is:
` ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted as to claims 1-3 of the ’290 patent on the ground
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`that they are unpatentable under 35 U.S.C. § 102(b) as anticipated by
`Kikinis;
`FURTHER ORDERED that no other grounds are authorized for inter
`
`partes review as to claims 1-3 of the ’290 patent;
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`commences on the entry date of this decision; and
`
`FURTHER ORDERED that an initial conference call with the Board
`is scheduled for 3:00 PM Eastern Time on May 6, 2014. The parties are
`directed to the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,765-66 (Aug. 14, 2012) for guidance in preparing for the initial
`conference call, and should be prepared to discuss any proposed changes to
`the Scheduling Order entered herewith and any motions the parties
`anticipate filing during the trial.
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`FOR PETITIONER:
`Jeffrey P. Kushan
`Scott M. Border
`Sidley Austin LLP
`jkushan@sidley.com
`sborder@sidley.com
`
`FOR PATENT OWNER:
`
`Jason S. Angell
`Robert E. Freitas
`Freitas Tseng & Kaufman LLP
`jangell@ftklaw.com
`rfreitas@ftklaw.com
`
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