Petition for Inter Partes Review of U.S. Patent No. 6,771,290
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`Paper No. 5
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`B.E. TECHNOLOGY, LLC,
`Patent Owner
`
`Patent No. 6,771,290
`Issued: August 3, 2004
`Filed: July 16, 1999
`Inventors: Martin David Hoyle
`Title: COMPUTER INTERFACE METHOD AND APPARATUS WITH
`PORTABLE NETWORK ORGANIZATION SYSTEM AND TARGETED
`ADVERTISING
`____________________
`
`Inter Partes Review No. IPR2014-00040
`__________________________________________________________________
`
`CORRECTED PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`

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`Petition for Inter Partes Review of U.S. Patent No. 6,771,290
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW ............................................................................ 1
`A.
`Certification the ’290 Patent May Be Contested by Petitioner ............ 1
`B.
`Fee for Inter Partes Review (§ 42.15(a)) .............................................. 1
`C. Mandatory Notices (37 CFR § 42.8(b)) ............................................... 1
`1.
`Real Party in Interest (§ 42.8(b)(1)) ........................................... 1
`2.
`Other Proceedings (§ 42.8(b)(2)) ............................................... 2
`3.
`Designation of Lead and Backup Counsel ................................. 2
`4.
`Service Information (§ 42.8(b)(4)) ............................................ 3
`Proof of Service (§§ 42.6(e) and 42.105(a)) ........................................ 3
`D.
`IDENTIFICATION OF CLAIMS BEING CHALLENGED
`(§ 42.104(B)) .................................................................................................. 3
`III. RELEVANT INFORMATION CONCERNING THE CONTESTED
`PATENT ......................................................................................................... 3
`A.
`Effective Filing Date and Prosecution History of the ’290 patent ....... 3
`B.
`Person of Ordinary Skill in the Art ...................................................... 4
`C.
`Construction of Terms Used in the Claims .......................................... 5
`1.
`“File” .......................................................................................... 7
`IV. PRECISE REASONS FOR RELIEF REQUESTED ..................................... 7
`A.
`Claims 1-3 Are Anticipated by Kikinis ................................................ 7
`1.
`Kikinis Anticipates Claim 1 ....................................................... 8
`2.
`Kikinis Anticipates Claim 2 ..................................................... 13
`3.
`Kikinis Anticipates Claim 3 ..................................................... 17
`Claims 1-3 Are Anticipated by AOL ................................................. 18
`1.
`AOL Anticipates Claim 1 ........................................................ 18
`2.
`AOL Anticipates Claim 2 ........................................................ 28
`3.
`AOL Anticipates Claim 3 ........................................................ 36
`CONCLUSION ............................................................................................. 37
`
`B.
`
`V.
`
`i
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`

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`Petition for Inter Partes Review of U.S. Patent No. 6,771,290
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`Attachment A. Proof of Service of the Petition
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`Attachment B. List of Evidence and Exhibits Relied Upon in Petition
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`
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`ii
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`Petition for Inter Partes Review of U.S. Patent No. 6,771,290
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`I.
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`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW
`A. Certification the ’290 Patent May Be Contested by Petitioner
`Petitioner certifies that U.S. Patent No. 6,771,290 (the ’290 patent) (Ex.
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`1001) is available for inter partes review. Petitioner certifies that it is not barred or
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`estopped from requesting inter partes review of the claims of the ’290 patent on
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`the grounds identified in this Petition. Neither Petitioner, nor any party in privity
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`with Petitioner, has filed a civil action challenging the validity of any claim of the
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`’290 patent. The ’290 patent has not been the subject of a prior inter partes review
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`by Petitioner or a privy of Petitioner.
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`Petitioner also certifies this petition for inter partes review is filed within
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`one year of the date of service of a complaint alleging infringement of a patent.
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`Petitioner was served with such a complaint on October 10, 2012, Ex. 1014, which
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`led to Civil Action No. 2:12-cv-02829-JPM in the Western District of Tennessee.
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`Ex. 1013. This petition thus complies with 35 U.S.C. § 315(b).
`
`Fee for Inter Partes Review (§ 42.15(a))
`
`B.
`The Director is authorized to charge the fee specified by 37 CFR § 42.15(a)
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`to Deposit Account No. 50-1597.
`
`C. Mandatory Notices (37 CFR § 42.8(b))
`Real Party in Interest (§ 42.8(b)(1))
`1.
`The real party of interest of this petition pursuant to § 42.8(b)(1) is
`
`
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`

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`Petition for Inter Partes Review of U.S. Patent No. 6,771,290
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`Microsoft Corporation (“Microsoft”) located at One Microsoft Way, Redmond,
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`WA 98052.
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`2. Other Proceedings (§ 42.8(b)(2))
`The ’290 patent is the subject of Civil Action No. 2:12-cv-02829-JPM,
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`served on Petitioner on October 10, 2012.
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`Designation of Lead and Backup Counsel
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`3.
`Lead Counsel
`Jeffrey P. Kushan
`Reg. No. 43,401
`jkushan@sidley.com
`(202) 736-8914
`
`Backup Lead Counsel
`Scott M. Border
`Pro Hac Vice authorization
`requested
`sborder@sidley.com
`(202) 736-8818
`
`Petitioner requests authorization to file a motion for Scott M. Border to
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`appear pro hac vice as backup lead counsel. Mr. Border is an experienced litigating
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`attorney in patent cases, admitted to practice law in Washington, DC, and Virginia,
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`and in numerous United States District Courts and Courts of Appeal, including the
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`Eastern District of Virginia and the United States Court of Appeals for the Federal
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`Circuit. Mr. Border has an established familiarity with the subject matter at issue in
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`the proceeding, having advised the Petitioner in this matter and having previously
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`represented Petitioner on related subject matter before the International Trade
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`Commission and in District Court litigation in the Eastern District of Texas.
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`Petition for Inter Partes Review of U.S. Patent No. 6,771,290
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`Service Information (§ 42.8(b)(4))
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`4.
`Service on Petitioner may be made by mail or hand delivery to: Sidley
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`Austin LLP, 1501 K Street, N.W., Washington, D.C. 20005. The fax number for
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`lead and backup counsel is (202) 736-8711.
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`Proof of Service (§§ 42.6(e) and 42.105(a))
`D.
`Proof of service of this petition is provided in Attachment A.
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`II.
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`Identification of Claims Being Challenged (§ 42.104(b))
`Claims 1-3 of the ’290 patent are unpatentable as being anticipated under 35
`
`U.S.C. § 102(b):
`
` (i) Claims 1-3 are anticipated under § 102(b) by International Publication
`No. WO 97/09682 to Dan Kikinis (“Kikinis”) (Ex. 1005);
`
` (ii) Claims 1-3 are anticipated under § 102(b) by America Online for
`Dummies, 3rd Edition by John Kaufeld (“AOL”) (Ex. 1006).
`Petitioner’s proposed construction of the contested claims, the evidence relied
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`upon, and the precise reasons why the claims are unpatentable are provided in
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`§ IV, below. The evidence relied upon in support of this petition is listed in
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`Attachment B.
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`III. Relevant Information Concerning the Contested Patent
`A. Effective Filing Date and Prosecution History of the ’290 patent
`The ’290 patent issued from U.S. Application No. 09/744,033. The ’033
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`application was a continuation-in-part of U.S. Application No. 09/118,351, filed
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`July 17, 1998, which became U.S. Patent No. 6,141,010.
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`Petition for Inter Partes Review of U.S. Patent No. 6,771,290
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`Claims 1 and 2 of the ’290 patent are independent claims. The effective
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`filing date of claim 1 of the ’290 patent is not earlier than July 17, 1998, the date
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`on which its parent was filed.
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`Claims 2 relies on information not found in the disclosure of any application
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`filed prior to the ’033 application on July 16, 1999. For example, claim 2 of the
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`’290 patent specifies “[a] computer-readable memory for use by a client computer
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`in conjunction with a server that is accessible by the client computer via a network,
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`the server storing a user profile and user library for each of a number of different
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`users, with the user library containing one or more files.” No application filed
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`prior to the ’033 application even mentions the phrase or “user library,” much less
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`provides a written description of a system corresponding to the ’290 patent claims.
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`Claim 3 depends directly from claim 2, and thus cannot enjoy an effective
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`filing date earlier than that of claim 2.
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`The effective filing date of claims 2 and 3 of the ’290 patent thus is not
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`earlier than July 16, 1999.
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`Person of Ordinary Skill in the Art
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`B.
`A person of ordinary skill in the art in the field of the ’290 patent would
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`have been someone with a good working knowledge of networking protocols, as
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`well as computer systems (including servers) that support these protocols and
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`techniques. The person also would be familiar with Internet standards related to
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`Petition for Inter Partes Review of U.S. Patent No. 6,771,290
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`communications, programming languages, database systems, and a variety of
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`client-server systems and technologies. The person would have gained this
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`knowledge either through education and training, several years of practical
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`working experience, or through a combination of these. Ex. 1003 at ¶ 54.
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`C. Construction of Terms Used in the Claims
`In this proceeding, claims must be given their broadest reasonable
`
`construction in light of the specification. 37 CFR § 42.100(b). In determining the
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`broadest reasonable construction of a claim or a claim term, the Panel should
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`consider subject matter that Patent Owner contends infringes the claims or
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`meanings for claim terms that Patent Owner has proposed in past or in current
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`litigation1. See, e.g., Ex. 1012. Also, if Patent Owner contends terms in the claims
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`should be read to have a special meaning, those contentions should be disregarded
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`1 In its Initial Infringement Contentions in litigation against Petitioner, Ex. 1012,
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`Patent Owner appears to rely upon claim interpretations that are not bounded by
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`even the broadest reasonable interpretation of the claims, and are not supported by
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`the disclosure of the ’290 patent and relevant intrinsic and extrinsic evidence.
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`Microsoft does not agree with the apparent claim interpretations proffered by the
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`Patent Owner. Nothing in this Petition constitutes an admission that Patent
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`Owner’s Infringement Contentions or apparent claim constructions are correct, or
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`an admission that Microsoft’s technology infringes the patent-in-suit.
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`Petition for Inter Partes Review of U.S. Patent No. 6,771,290
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`unless Patent Owner also amends the claims in a manner compliant with 35 U.S.C.
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`§ 112 to make the claims expressly correspond to the contended meaning. See 77
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`Fed. Reg. 48764 at II.B.6 (August 14, 2012); cf. In re Youman, 679 F.3d 1335,
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`1343 (Fed. Cir. 2012).
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`The standard of claim construction used in this proceeding differs from the
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`standard used to interpret claims in a District Court proceeding. Consequently,
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`constructions of the claims or of individual claim terms which the Panel may adopt
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`in this proceeding, and positions Petitioner takes in respect of those constructions,
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`are not relevant to or binding upon Microsoft in current or subsequent litigation
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`related to the ’314 patent. See In re Zletz, 13 USPQ2d 1320, 1322 (Fed. Cir.
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`1989). In particular, Petitioner expressly reserves the right to and may submit
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`constructions for the claims or for individual claim terms in Civil Action No. 2:12-
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`cv-02829-JPM, now pending in the Western District of Tennessee, under the legal
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`standard applicable in that proceeding which are different than those proposed or
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`adopted in this proceeding, including how a person of ordinary skill in the art
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`would understand the claims in light of relevant intrinsic and extrinsic evidence.
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`In the Petition below, Petitioner addresses the meaning of certain claim
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`terms in the course of comparing the claims to the prior art. Petitioner submits this
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`manner of addressing the scope of the claims is appropriate for this proceeding, as
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`it identifies the basis of Petitioner’s contentions why the claims, in their broadest
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`Petition for Inter Partes Review of U.S. Patent No. 6,771,290
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`reasonable construction in view of the specification, are anticipated by or would
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`have been obvious in view of the prior art.
`
` “File”
`1.
`The specification of the ’290 patent defines “file” as “[a]ny digital item,
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`including information, documents, applications, audio/video components, and the
`
`like, that is stored in memory and is accessible via allocation table or other
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`pointing or indexing structure.” Ex. 1001 at 4:25-28. The ’290 patent further
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`explains that file(s) could comprise, for example, “documents, executable
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`programs, email messages, audio clips, video clips, or other files.” Ex. 1001 at
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`13:3-7.
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`The broadest reasonable construction of “file” should therefore encompass
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`Patent Owner’s understanding and include “[a]ny digital item, including
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`information, documents, applications, audio/video components, and the like, that is
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`stored in memory and is accessible via allocation table or other pointing or
`
`indexing structure.”
`
`IV. Precise Reasons for Relief Requested
`A. Claims 1-3 Are Anticipated by Kikinis
`Kikinis was published in March 1997, and is prior art under at least §102(b).
`
`A concise summary of the systems and processes described in Kikinis is provided
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`at ¶¶ 115-131 of Ex. 1003. Petitioner submits that claims 1 to 3 of the ’290 patent
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`Petition for Inter Partes Review of U.S. Patent No. 6,771,290
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`are unpatentable in view of Ex. 1005 (Kikinis), for the reasons set forth below and
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`as supported by ¶¶ 115-177 of Ex. 1003.
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`1. Kikinis Anticipates Claim 1
`Ex. 1005 (Kikinis) describes a computer-based system designed to provide a
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`user at a client computer with remote access to a variety of computer resources,
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`including software applications that maintain the user’s electronic documents. Ex.
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`1003 at ¶¶ 115-117, 132. The user’s electronic documents are stored in electronic
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`document servers, and are accessible over a network connection through the user’s
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`individualized home page, which is a graphical user interface. Ex. 1003 at ¶¶ 115-
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`117, 125, 132-133. Ex. 1005 (Kikinis) provides an example of the individualized
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`home page comprising the user’s graphical interface:
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`Ex. 1003 at ¶ 125. Ex. 1005 (Kikinis) thus shows “[a] computer-readable memory
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`for use by a client computer to provide a user of the computer with an integrated,
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`
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`Petition for Inter Partes Review of U.S. Patent No. 6,771,290
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`customized, graphical user interface to a plurality of computer resources, the
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`computer-readable memory comprising.” Ex. 1003 at ¶¶ 132-135.
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`Ex. 1005 (Kikinis) discloses multiple client “user stations,” each of which
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`consist of computer systems having “well-known elements of such a computer
`
`system, including a Web-browser 65 and PPP or SLIP communication software.”
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`Ex. 1001 at 6:11-23; Ex. 1003 at ¶¶ 118, 136. Ex. 1005 (Kikinis) thus shows “a
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`non-volatile data storage device; a program stored on said non-volatile data
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`storage device in a computer-readable format.” Ex. 1003 at ¶¶ 136-137.
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`Ex. 1005 (Kikinis) explains that a user invokes a web browser in order to
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`access an individualized home page. Ex. 1003 at ¶ 124. The individualized home
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`page is a web browser window that provides the user with an integrated,
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`customized graphical interface that includes a number of “active selection areas.”
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`Ex. 1003 at ¶¶ 122, 124-128, 138-139. The active selection areas are links to
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`remote computer resources, such as software applications and electronic
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`documents. Ex. 1003 at ¶¶ 122, 124-128, 138-139. Ex. 1005 (Kikinis) provides an
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`example of a user’s customized home page interface:
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`Petition for Inter Partes Review of U.S. Patent No. 6,771,290
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`
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`Ex. 1003 at ¶ 125. Ex. 1005 (Kikinis) thus shows “said program being operable
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`upon execution to display a graphical user interface comprising an application
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`window separated into a number of regions.” Ex. 1003 at ¶¶ 138-140.
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`
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`Ex. 1005 (Kikinis) explains that the “active selection areas” displayed on the
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`individualized home page of a user are selectable by the user. Ex. 1003 at ¶¶ 117,
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`125-126, 141. Each of the “active selection areas” are links to underlying
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`computer resources, such as software applications or data bases containing “any
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`other sort of digital data.” Ex. 1003 at ¶¶ 117, 122, 126, 141. Upon the user’s
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`selection of one of the “active selection areas” representing a software application,
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`such as the “V-mail 117,” “E-Mail 118,” and “FAX-Mail 120” program links
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`depicted above, the application will execute in order to provide the user with
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`access to the software application’s associated data—such as the user’s voicemail,
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`e-mail, or faxes. Ex. 1003 at ¶¶ 119-121, 141-143. Ex. 1005 (Kikinis) thus shows
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`“a first one of said regions including a number of graphical objects, at least some
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`Petition for Inter Partes Review of U.S. Patent No. 6,771,290
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`of which are each representative of a different software application and are
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`selectable by the user via an input device, wherein said program is operable upon
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`selection of one of said graphical objects to initiate execution of the software
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`application associated therewith;.” Ex. 1003 at ¶¶ 141-143.
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`
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`As described above, Ex. 1005 (Kikinis) discloses an individualized home
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`page of a user that includes a number of “active selection areas” that provide a link
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`to various computer resources, such as the “V-mail 117,” “E-Mail 118,” and
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`“FAX-Mail 120” software applications depicted in Figure 3. Ex. 1003 at ¶¶ 119-
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`121, 125-126. Upon the user’s selection of one of the “active selection areas”
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`representing a software application, the application will execute in order to provide
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`the user with access to the software application’s associated data—such as the
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`user’s voicemail, e-mail, or faxes. Ex. 1003 at ¶¶ 119-121, 125-126.
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`
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`Ex. 1005 (Kikinis) also discloses that a user’s individualized home page can
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`provide links to other data bases, such as “a personal multi-lingual dictionary
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`featuring pronunciation, a spelling checker, or a thesaurus; or indeed, almost any
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`other sort of digital data or control routines.” Ex. 1003 at ¶¶ 128, 146; Ex. 1005
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`(Kikinis) at 8:14-18. Ex. 1005 (Kikinis) thus shows “a second one of said regions
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`including a number of user-selectable items, at least some of which are each
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`associated with a different data set, said data sets each comprising a number of
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`links to different information resources, wherein said program is operable in
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`Petition for Inter Partes Review of U.S. Patent No. 6,771,290
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`response to selection of at least one of said items to provide the user with access to
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`its associated data set.” Ex. 1003 at ¶¶ 144-147.
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`
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`Ex. 1005 (Kikinis) explains that access to a user’s individualized home page
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`is protected through a security protocol that requires a username and password.
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`Ex. 1003 at ¶¶ 129-131, 146-148. Ex. 1005 (Kikinis) thus shows “said program
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`including a login module that is operable upon execution to identify the user of the
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`computer; and.” Ex. 1003 at ¶¶ 146-149.
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`
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`After a user successfully logs in to their individualized home page, Ex. 1005
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`(Kikinis) explains that users are able to select among a number of active selection
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`areas. Ex. 1003 at ¶¶ 122-125, 129-131, 150. Each active selection area provides
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`a link to underlying computer resources, including software applications and data
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`bases that permit access to the user’s electronic documents. Ex. 1003 at ¶¶ 151-
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`152. Ex. 1005 (Kikinis) thus shows “said program being operable following
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`execution of said login module to provide an identification of the user to the server
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`and to receive from the server a user profile containing one or more user data sets
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`and user links to information resources, with said program further being operable
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`to display in one of said regions a user-selectable item for each of said user data
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`sets and each of said user links.” Ex. 1003 at ¶¶ 150-153.
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`Petition for Inter Partes Review of U.S. Patent No. 6,771,290
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`2. Kikinis Anticipates Claim 2
`Ex. 1005 (Kikinis) discloses providing a user at a client computer with
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`remote access to a variety of resources, including programs that maintain the user’s
`
`electronic documents. Ex. 1003 at ¶¶ 115-117, 154. Ex. 1005 (Kikinis) discloses
`
`multiple client “user stations,” each of which consist of computer systems having
`
`“well-known elements of such a computer system, including a Web-browser 65
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`and PPP or SLIP communication software.” Ex. 1001 at 6:11-23; Ex. 1003 at
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`¶¶ 118, 154-155. Ex. 1005( Kikinis) explains that the user’s electronic documents
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`are stored in electronic document servers, and are accessible over a network
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`connection through the user’s individualized home page. Ex. 1003 at ¶¶ 115-126,
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`154-156. Ex. 1005 (Kikinis) thus shows “[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.” Ex. 1003 at ¶¶ 154-157.
`
`Ex. 1005 (Kikinis) explains that the user invokes the web browser in order to
`
`initiate the process of accessing the user’s individualized home page. Ex. 1003 at
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`¶¶ 115-117, 158. Access to a user’s home page and the resources linked within are
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`protected through a security protocol that requires a username and password,
`
`which retrieves information from a server associated with the user’s username. Ex.
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`1003 at ¶¶ 129, 159. The individualized home page is a web browser window that
`
`provides the user with a customized interface that includes a number of “active
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`Petition for Inter Partes Review of U.S. Patent No. 6,771,290
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`selection areas” that are links to remote programs. Ex. 1003 at ¶¶ 115-117, 161.
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`Ex. 1005 (Kikinis) describes the user’s home page as providing “indicia
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`identifying the home page owner, and an on-screen active selection area for access
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`to an electronic document data base containing electronic documents addressed
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`specifically to the home page owner.” Ex. 1003 at ¶¶ 115-126, 127, 131, 161.
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`Ex. 1005 (Kikinis) discloses electronic document servers that are accessible
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`from the user’s individualized home page could contain a number of electronic
`
`documents, including e-mails, faxes, voice mail, video, graphics and other “various
`
`sorts of electronic documents.” Ex. 1003 at ¶¶ 115-126, 127, 131, 160-161.
`
`The electronic documents described in Ex. 1005 (Kikinis) are specifically-
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`addressed to the user. Ex. 1003 at ¶¶ 115-117, 160-161. Each of the specifically-
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`addressed electronic documents are stored at a web server, accessible only through
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`the user’s individualized home page. Ex. 1003 at ¶¶ 115-126, 127, 131, 160-161.
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`Under the broadest reasonable interpretation of the claims, and as apparently
`
`interpreted by the Patent Owner in its Initial Infringement Contentions, Ex. 1005
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`(Kikinis) thus shows “the server storing a user profile and user library for each of
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`a number of different users, with the user library containing one or more files and
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`the user profile containing at least one user link that provides a, link to one of the
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`files in the user library, the computer-readable memory comprising.” Ex. 1003 at
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`¶¶ 158-162.
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`Petition for Inter Partes Review of U.S. Patent No. 6,771,290
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`Ex. 1005 (Kikinis) discloses multiple client “user stations,” each of which
`
`consist of computer systems having “well-known elements of such a computer
`
`system, including a Web-browser 65 and PPP or SLIP communication software.”
`
`Ex. 1001 at 6:11-23; Ex. 1003 at ¶¶ 118, 163. Ex. 1005 (Kikinis) thus shows “a
`
`non-volatile data storage device; a program stored on said non-volatile data
`
`storage device in a computer-readable format.” Ex. 1003 at ¶¶ 163-164.
`
`Ex. 1005 (Kikinis) describes a user invoked web browser in order to access
`
`an individualized home page. Ex. 1003 at ¶¶ 124, 165. The individualized home
`
`page is a web browser window that provides the user with a customized interface
`
`that includes a number of “active selection areas” that are links to remote programs
`
`and other resources of information. Ex. 1003 at ¶¶ 117-126, 167-168. Ex. 1005
`
`(Kikinis) provides an example of the user’s customized interface:
`
`Ex. 1003 at ¶¶ 125, 168. Ex. 1005 (Kikinis) thus shows “said program being
`
`operable upon execution to display a graphical user interface comprising an
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 6,771,290
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`application window having a number of user-selectable items displayed therein,
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`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
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`and in response to selection by a user of one of said items to access the associated
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`information resource over the network;.” Ex. 1003 ¶¶ 165-169.
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`Ex. 1005 (Kikinis) explains that the “active selection areas” displayed on the
`
`individualized home page of a user are selectable by the user. Ex. 1003 at ¶¶ 115-
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`126, 171-173. The presentation of the “active selection areas” in an individualized
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`home page is based on information retrieved from the server and protected by the
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`user’s login and password. Ex. 1003 at ¶¶ 115-126, 129, 170.
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`Each of the “active selection areas” represent a link to an underlying
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`resource, such as programs or data bases containing “any other sort of digital data.”
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`Ex. 1003 at ¶¶ 115-126, 127, 131, 171-173. Upon the user’s selection of one of the
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`“active selection areas” representing programs, such as the “V-mail 117,” “E-Mail
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`118,” and “FAX-Mail 120” program links depicted above, the program will
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`execute in order to provide the user with access to the program’s and the user’s
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`associated data—such as the user’s voicemail, e-mail, or faxes. Ex. 1003 at
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`¶¶ 115-126, 127, 131, 171-173. Under the broadest reasonable interpretation of the
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`claims, and as apparently interpreted by the Patent Owner in its Initial
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`Infringement Contentions, Ex. 1005 (Kikinis) thus shows “said program being
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`operable upon execution to receive from server one of the user profiles and to
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`display a user-selectable item for user links contained within the user profile, said
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`program further being operable in response to selection by a user of one of the
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`user links to access the file associated with the selected user link from the user
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`library associated with the received user profile.”2 Ex. 1003 at ¶¶ 170-174.
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`3. Kikinis Anticipates Claim 3
`Ex. 1005 (Kikinis) explains that a user invokes a web browser in order to
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`access the user’s individualized home page. Ex. 1003 at ¶¶ 115-126, 175-176.
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`The individualized home page is a web browser window that provides the user
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`with a customized, graphical interface that includes a number of “active selection
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`areas” that are links to remote programs and data bases of the user’s electronic
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`2 In its Initial Infringement Contentions in litigation against Petitioner, Ex. 1012,
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`Patent Owner appears to rely upon claim interpretations that are not bounded by
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`even the broadest reasonable interpretation of the claims, and are not supported by
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`the disclosure of the ’290 patent and relevant intrinsic and extrinsic evidence.
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`Microsoft does not agree with the apparent claim interpretations proffered by the
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`Patent Owner. Nothing in this Petition constitutes an admission that Patent
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`Owner’s Infringement Contentions or apparent claim constructions are correct, or
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`an admission that Microsoft’s technology infringes the patent-in-suit.
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`documents. Ex. 1003 at ¶¶ 115-126, 175-176. Ex. 1005 (Kikinis) thus shows “[a]
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`computer-readable memory as defined in claim 2, wherein said program is
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`operable upon execution and in response to selection by a user of one of said items
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`to access the associated information resource over the network using a browser.”
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`Ex. 1003 at ¶¶ 175-177.
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`B. Claims 1-3 Are Anticipated by AOL
`AOL was published at least by December 31, 1996, and is prior art under at
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`least §102(b). A concise summary of the systems and processes described in AOL
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`is provided at ¶¶ 179-209 of Ex. 1003. Petitioner submits that claims 1 to 3 of the
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`’290 patent are unpatentable in view of Ex. 1006 (AOL), for the reasons set forth
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`below and as supported by ¶¶ 179-260 of Ex. 1003.
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`AOL Anticipates Claim 1
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`1.
`Ex. 1006 (AOL) describes a computer-based online system that was
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`designed to provide a user at a client computer with user-specific access to
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`information resources and files accessible through servers supporting the America
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`Online system. Ex. 1003 at ¶¶ 179-183, 187-191, 210. Ex. 1006 (AOL) shows
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`that a user-customized graphical interface is presented to the user after the user
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`logs into America Online using a screen name and password. Ex. 1003 at ¶¶ 184-
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`187, 211. Ex. 1006 (AOL) shows that the graphical user interface provides the
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`user with a variety of user-selectable items that are links to underlying computer
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`resources, such as information resources or software applications:
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`
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`Ex. 1003 at ¶¶ 187-191, 211. Ex. 1006 (AOL) thus shows “[a] computer-readable
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`memory for use by a client computer to provide a user of the computer with an
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`integrated, customized, graphical user interface to a plurality of computer
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`resources, the computer-readable memory comprising.” Ex. 1003 at ¶¶ 210-212.
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`Ex. 1006 (AOL) describes a user having a computer with the America
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`Online special access software installed thereon that executes on that computer.
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`Ex. 1003 at ¶¶ 184, 213. Ex. 1006 (AOL) thus shows “a non-volatile data storage
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`device; a program stored on said non-volatile data storage device in a computer-
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`readable format.” Ex. 1003 at ¶¶ 213-214.
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`Ex. 1006 (AOL) shows that a user-customized graphical interface is
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`presented to the user after the user logs into America Online using a screen name
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`and password. Ex. 1003 at ¶¶ 184-191. The graphical interface—shown in Ex.
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`1006 (AOL) as a window—provides the user with a variety of user-selectable
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`items that are links to underlying information resources or software applications.
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`Ex. 1003 at ¶¶ 187-191. An example of a user-customized graphical interface is
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`illustrated in Ex. 1006 (AOL):
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`
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`Ex. 1003 at ¶¶ 187-191. Ex. 1006 (AOL) thus shows “said program being
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`operable upon execution to display a graphical user interface comprising an
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`application window separated into a number of regions.” Ex. 1003 at ¶¶ 215-217.
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`
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`Ex. 1006 (AOL) explains that the items displayed on the user-customized
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`graphical interface are selectable by the user. Ex. 1003 at ¶¶ 187-191. Upon the
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`user’s selection of one of the items representing a software application, such as the
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`Personal Filing Cabinet,” the software application will execute in order to provide
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`the user with access to the software application’s associated data. Ex. 1003 at
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`¶¶ 201-202. An example of a user’s personal filing cabinet is depicted in Ex. 1006
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`(AOL):
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`Ex. 1003 at ¶¶ 201-202. The user-customized graphical interface also provides the
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`user access to the Internet through a Web browser application, which is depicted in
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`AOL as a user-selectable item in the Welcome window labeled “INTERNET:”
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