UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.
`Petitioner,
`
`v.
`
`EVOLUTIONARY INTELLIGENCE, LLC,
`Patent Owner
`
`Case IPR 2014-0082
`Patent No. 7,010,536
`
`
`
`
`PRELIMINARY RESPONSE BY PATENT OWNER
`
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.
`Petitioner,
`
`v.
`
`EVOLUTIONARY INTELLIGENCE, LLC,
`Patent Owner
`
`Case IPR 2014-0082
`Patent No. 7,010,536
`
`
`
`
`PRELIMINARY RESPONSE BY PATENT OWNER
`
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
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`I. TECHNOLOGY BACKGROUND .................................................................... 5
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`II. OVERVIEW OF THE ASSERTED PRIOR ART .......................................... 9
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`III. THE PETITION SHOULD BE DENIED ..................................................... 10
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`A. The Petition Fails To Explain the Relevance Of The References To The
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`Claims As Required By 37 C.F.R. § 104(b)(5)................................................ 11
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`B. The Petition Violates Rule 42.6(a)(3) by Incorporating the Substance of its
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`Arguments By Reference ................................................................................. 14
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`C. There Is No Reasonable Likelihood of the Claims Being Invalidated. ........... 18
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`1. Petitioner Fails to Construe and/or Incorrectly Construes Terms Material to
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`all Claims .............................................................................................................. 18
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`a. “Container” ................................................................................................. 21
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`b. “Register” ................................................................................................... 23
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`c. “Gateway” ................................................................................................... 25
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`d. “Encapsulated”/”Encapsulating” ................................................................ 27
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`e. “Active Time Register” / “Passive Time Register” / “Neutral Time
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`Register” ............................................................................................................ 28
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`f. “Acquire Register” ...................................................................................... 29
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`2. There Is No Reasonable Likelihood Of Claims 1 or 3-15 Being Found To Be
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`Anticipated By Katz (Ex. 1006). .................................................................. 30
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`ii
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`3. There Is No Reasonable Likelihood Of Claims 1, 3, 4, or 8 Being Obvious in
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`View of Katz (Ex. 1006) and “General Knowledge.” ................................... 34
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`4. There Is No Reasonable Likelihood Of Claim 15 Being Found To Be
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`Anticipated By Chou (Ex. 1007). ................................................................. 34
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`5. There Is No Reasonable Likelihood Of Claims 5 and 7 Being Obvious in
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`View of Chou (Ex. 1007) and “General Knowledge.” .................................. 38
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`IV. CONCLUSION ................................................................................................ 39
`
`ii
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`PRELIMINARY RESPONSE BY PATENT
`OWNER UNDER 37 C.F.R. § 42.107
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`Patent Owner Evolutionary Intelligence LLC hereby respectfully submits
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`this Preliminary Response to the Petition seeking inter partes review of U.S. Patent
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`No. 7,010,536.
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`The Petition is deficient and relies on prior art references that are entirely
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`distinct from the ’536 patent. The Petition should be rejected for three independent
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`reasons. First, the Petition fails to explain the relevance of the prior art to the
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`claims as required by 37 C.F.R. § 104(b)(5), including failing to establish that the
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`prior art discloses all elements “arranged as in the claims.” Second, the Petition is
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`deficient because it violates 37 C.F.R. 42.6(a)(3)’s strict prohibition against
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`incorporating other arguments by reference. Third, even setting aside these critical
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`defects, the Petition should be rejected on the merits, because it fails to
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`demonstrate a reasonable likelihood of any claims being invalid—particularly
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`because it relies on unreasonably broad constructions for and fails to construe
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`terms that are material to all of the claims at issue. For at least these reasons, the
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`Petition does not show a reasonable likelihood of prevailing with respect to any of
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`the challenged claims, and inter partes review should not be instituted.
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`4
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`This filing is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, as it is
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`being filed within three months of the October 29, 2013 mailing date of the Notice
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`granting the Petition a filing date of October 23, 2013.
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`I.
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`Technology Background
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`The ’536 patent describes a “System and Method for Creating and
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`Manipulating Information Containers With Dynamic Registers.” The invention is
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`directed at improving the processing of “containerized” data, such as the data that
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`makes up web pages and documents. At the time of the invention, processing
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`information resources on a computer network (e.g., the internet) was primarily
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`static, in that the processing did not result in dynamic modifications that would
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`improve future processing efforts. For example, the searching of data was
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`“accomplished by individuals directing a search effort by submitting key words or
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`phrases to be compared to those key words or phrases contained in the content or
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`description of that information resource, with indices and contents residing in a
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`fixed location unchanging except by human input.” Ex. 1001 at 1:22-28. As the
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`’536 patent notes, this “static” information model was limited, because, inter alia,
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`the information being processed did not evolve to reflect its actual utility to the
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`people using it, and successful search strategies were not available to be used to
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`process future searches. Ex. 1001 at 1:37-2:48. At most, the prior art allowed
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`“hits” for a given web page to be tracked—a static process. See Ex. 1001, 2:8-13.
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`5
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`The invention solved this problem through the use of “dynamic” information
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`containers. The dynamic information containers include dynamic registers that
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`attach to and form part of the container. Ex. 1001 at 2:66-3:5. Each container has
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`an information element (e.g., an advertisement, article, or a text string), a plurality
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`of registers, and a gateway. The plurality of registers for each container include
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`(i) a unique identification register for that container; (ii) a second register
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`governing the interactions of the container according to utility of the information in
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`the information element relative to space or time; (iii) an active register controlling
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`whether the container acts upon other containers according at a given time or
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`location; (iv) a passive register controlling whether the container can be acted upon
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`by other containers at a given time or location; and (v) a neutral register controlling
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`whether a container may interact with other containers at a given time or location.
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`“Gateways” are programmed with rules to enable the interaction among the various
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`containers, gateways, and system components. Id. at 4:54-5:11.
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`In the invention of the ’536 patent, information containers are populated
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`with information elements and time- and space-based dynamic registers, thereby
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`facilitating access to the information at appropriate times and in relation to
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`pertinent locations. This facilitates access to information that is useful to the user.
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`As users access the information containers, the dynamic registers are updated with
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`information regarding their use, allowing them to evolve. This is made more
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`6
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`evident in the claims of U.S. Patent 6,702,682, whose underlying application is a
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`continuation of the application leading to the ‘536 patent. In the ’2,682 patent, “a
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`search query may be run against a plurality of container registers encapsulated and
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`logically defined in a plurality of containers to identify one or more container
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`registers responsive to the search query,” and “a list characterizing the identified
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`containers may be provided.” See U.S. Patent 6,702,682 at Abstract. The dynamic
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`nature of the invention of the ’536 patent is also evident in its other continuation,
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`U.S. Patent No. 7,873,682. The ’3,682 patent is directed to methods and systems
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`using at least two information containers with dynamic registers to evolve
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`information containers over time.
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`Independent claim 1 of the ’536 patent is directed to “an apparatus for
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`transmitting, receiving and manipulating information on a computer system”
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`comprised of a plurality of dynamic containers, each having an information
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`element, a plurality of registers, and a gateway. The plurality of registers for each
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`container include the five types of registers discussed above.
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`Claim 2, also an independent claim, is identical to claim 1, except that
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`“space” and “three-dimensional space” replace “time” and “event time” in the
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`second register. Claim 2 is not at issue in this proceeding.
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`Claims 3-14 are multiply dependent from claims 1 and 2. These claims
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`further comprise at least one “container history register” (claim 3); “system history
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`7
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`register” (claim 4); “predefined register” (claim 5); “user-created register” (claim
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`6);”system-defined register” (claim 7); “acquire register for controlling whether the
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`container adds a register from other containers or adds a container from other
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`containers when interacting with them” (claim 8); OR an apparatus wherein the
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`gateway includes “means for acting upon another container” (claim 9); “means for
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`allowing interaction (claim 10); “means for gathering information,” (claim 11);
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`means for reporting information (claim 12); or “an expert system” (claim 13); OR
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`an apparatus wherein the “information element is one from the group of text,
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`graphic images, video, audio, a digital pattern, a process, a nested container, bit,
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`natural number and a system” (claim 14).
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`Claims 15 and 16 of the ’536 patent are each directed to “an apparatus for
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`transmitting, receiving and manipulating information on a computer system”
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`comprised of a plurality of dynamic containers, each having an information
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`element, a plurality of registers, and a gateway. The plurality of registers for each
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`container includes (i) a unique identification register for that container, (ii) a
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`second register designating time (claim 15) or space (claim 16) governing the
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`interactions of the container according to utility of the information in the
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`information element relative to event time (claim 15) or three-dimensional space
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`(claim 16), and (iii) at least one acquire register controlling whether the container
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`adds a register or container from another container.
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`8
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`As with claims 1 and 2, claims 15 and 16 differ only with respect to each
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`claim’s second register. Claim 15 recites a second register “having a
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`representation designating time and governing interactions of the container with
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`other containers, systems or processes according to utility of information in the
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`information element relative to an external‐to‐the‐apparatus event time.” Claim
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`16, which is not at issue in this proceeding, recites a second register designating
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`“space” and governing interactions of “the container” of which it is part “according
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`to the utility of the information in the information element relative to three-
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`dimensional space.”
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`II. Overview of the Asserted Prior Art
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`The petition for IPR2014-0082 relies upon two references:
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`• Katz, U.S. Patent No. 6,496,872 (Ex. 1006) (“Katz”); and
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`• Chou, U.S. Patent No. 5,902,352 (Ex. 1007) (“Chou”).
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`Both references are directed to internal event triggers on a computer system.
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`Katz discloses a “Computer System for Automatically Instantiating Tasks
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`Designated by a User,” while Chou discloses a “Method and Apparatus for
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`Scheduling Tasks Across Multiple Execution Sessions.” In both cases, the “tasks”
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`are executable system events such as backups. Katz provides examples based on
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`an Apple Macintosh computer system, while Chou provides examples on a
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`Windows operating system.
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`9
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`The Petition asserts Katz and Chou as anticipatory references for all the
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`claims involving time (claim 1 and claims 3-15). The Petition also asserts that
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`certain claims (claims 1, 3, 4, and 8 for Katz; claims 5 and 7 for Chou) are obvious
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`in view of each respective reference and “general knowledge in the field.”
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`Presumably, Petitioner does this because it believes that its allegations of
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`anticipation are weak for each of these claims in view of the asserted prior art.
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`III. The Petition Should be Denied
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`The Petition should be rejected for three independent reasons. First, the
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`Petition fails to explain the relevance of the prior art to the claims as required by
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`37 C.F.R. § 104(b)(5), including failing to establish that the prior art discloses all
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`elements “arranged as in the claims.” Second, the Petition is deficient because it
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`violates 37 C.F.R. 42.6(a)(3)’s strict prohibition against incorporating other
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`arguments by reference. Third, even setting aside these critical defects, the Petition
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`should be rejected on the merits, because it fails to demonstrate a reasonable
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`likelihood of any claims being invalid—particularly because it relies on
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`unreasonably broad constructions for and fails to construe terms that are material
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`to all of the claims at issue.
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`10
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`A. The Petition Fails To Explain the Relevance Of The References
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`To The Claims As Required By 37 C.F.R. § 104(b)(5)
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`37 C.F.R. § 104(b)(5) states (emphasis added): “the petition must set forth: .
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`. . (5) The exhibit number of the supporting evidence relied upon to support the
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`challenge and the relevance of the evidence to the challenge raised, including
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`identifying specific portions of the evidence that support the challenge. The
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`Board may exclude or give no weight to the evidence where a party has failed to
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`state its relevance or to identify specific portions of the evidence that support the
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`challenge.” In addition, in order to invalidate a claim, a prior art reference “must
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`not only disclose all elements of the claim within the four corners of the document,
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`but must also disclose those elements ‘arranged as in the claim.’” See MPEP 2131;
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`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Failure
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`to satisfy these requirements is grounds to dismiss an IPR petition in its entirety.
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`See, e.g., Synopsis, Inc. v. Mentor Graphics Corp., IPR 2012-0041, Dkt. No. 16,
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`12-13 (PTAB 2013) (declining to institute IPR due to petitioner’s failure to
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`establish that elements were “arranged as in the claim”).
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`The Petition fails to mention, let alone satisfy, these requirements. For
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`example, the Petition provides no explanation of how Katz and Chou show each
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`and every element “arranged as required by the claim” as required for a proper
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`anticipation rejection. See id. Instead, the Petition consists of a series of
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`11
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`conclusory statements that various elements of the claims are present in the
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`asserted prior art. There is little or no explanation in the Petition of specifically
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`how the claim terms are being applied by the Petitioner or why the highlighted
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`language corresponds to (or is otherwise relevant to) the claim elements. Even the
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`Declaration of Henry Houh (Ex. 1003), upon which the Petition is based, contains
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`many conclusory statements that elements are met, but fails to provide the
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`explanation required by the PTO’s regulations.1
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`A prime example of the Petition’s failure to explain how the cited references
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`meet the limitations is the Petition’s assertion that Katz discloses of “an apparatus
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`including a plurality of containers, each container . . . comprising [the other
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`elements].” The Petition asserts that Ex. 1006 discloses “containers,” including a
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`“task file, task folder, trigger objects, and trigger instance list.” Petition at 13. But
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`the Petition does not specify which of these containers it is using as the antecedent
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`“the container” which includes the other elements of the claim (e.g., the
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`information element and the various registers). In the following discussion, the
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`Petition primarily discusses the “task files,” but bounces back and forth between
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`discussion of various “containers.” For example, in relation to the “passive time
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`register,” the Petition cites “setting a time via an operating system service,” yet
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`1 The supporting declaration of Apple’s expert also repeatedly omits the “arranged
`as required by the claim” requirement for anticipation. See Ex. 1003 at ¶ 28
`(representing that § 102 is satisfied because “every element” is present, without
`addressing how the elements are arranged).
`12
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`provides no discussion of how or why this amounts to a register within the
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`antecedent container (i.e., the task file). Id. at 16. Instead, the Petition leaves it to
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`the PTAB to figure out why and how “setting a time via an operating system
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`service” amounts to a passive time register that is “logically defined and
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`encapsulated” within the “task file.”
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`Similarly, with regard to Katz’s disclosure of “a first register having a
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`unique identification value,” the Petition cites the “combination of [the task file’s
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`name] and the folder [in which the file resides],” (Petition at 14), yet never
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`establishes that this allegedly unique combination is part of the “task file”
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`container, as opposed to being a plurality of registers external to the task file.
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`Again, this is a failure to explain adequately the Petition’s application of the claim
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`language to Katz.
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`Accordingly, just like the petition at issue in Synopsis, which the PTO
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`rejected (see IPR 2012-0041, Dkt. No. 16, 12-13 (PTAB 2013)), the instant
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`Petition fails to satisfy § 104(b)(5)’s requirement that “the Petition must set forth . .
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`. the relevance of the evidence to the challenge raised,” and the instant Petition
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`should also be rejected. See Synopsis.
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`13
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`B.
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`The Petition Violates Rule 42.6(a)(3) by Incorporating the
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`Substance of its Arguments By Reference
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`Rule 42.24 of the PTAB’s Rules for Trial Practice limits petitions for inter
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`partes review to 60 pages. The PTO adopted this page limit after substantial
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`public commentary, in an attempt to reduce the burden of petitions for review on
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`the PTAB and patent owners. To ensure that Petitioners adhere to this page limit,
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`the PTO explicitly prohibits incorporation of arguments by reference. See 37
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`C.F.R. 42.6(a)(3) (“Arguments must not be incorporated by reference from one
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`document into another document.”) (emphasis added); see also Rules of Practice
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`for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent
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`Trial and Appeal Board Decisions (“Rules of Practice”), Fed. Reg. 77, No. 157, p.
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`48617 (noting that, under § 42.6, petitions are subject to Fed. R. App. Proc. 32,
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`which prohibits incorporation by reference). As the PTO explained:
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`incorporation by reference
`The prohibition against
`minimizes the chance that an argument would be
`overlooked and eliminates abuses
`that arise from
`In DeSilva
`incorporation
`and
`combination.
`v.
`DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999), the
`court rejected ‘‘adoption by reference’’ as a self-help
`increase in the length of the brief and noted that
`incorporation is a pointless imposition on the court’s time
`as it requires the judges to play archeologist with the
`record. The same rationale applies to Board proceedings.
`Cf. Globespanvirata, Inc. v. Tex. Instruments, Inc., 2005
`WL 3077915, *1 (D. N.J. 2005) (Defendants provided
`cursory statements in motion and sought to make its case
`through incorporation of expert declaration and a claim
`14
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`
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`chart. Incorporation by reference of argument not in
`motion was held to be a violation of local rules governing
`page limitations and was not permitted by the court). . . .
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`The PTO noted that that Board applied page limits to both arguments and findings
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`of fact because the failure to do so resulted in “abuses of the system.” Fed. Reg.
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`77 at 48620. The PTO noted that patent cases before the PTAB are no exception to
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`the standards of district courts, where motion practice does not require federal
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`judges to “shovel through steaming mounds of pleonastic arguments in Herculean
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`effort to uncover a hidden gem of logic.” Id.
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`Despite this prohibition on incorporation by reference, the Petition violates
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`incorporates most of the 123 pages of the supporting declaration by reference.
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`See., e.g., Petition at 12 (stating “[a] concise summary of the systems and
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`processes described in the ’872 patent [Ex. 1006] is provided at ¶¶62-120 of Ex.
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`1003.”), 15 (citing Ex. 1003, ¶¶ 79, 98-111 and 127), 35 (stating “[a] concise
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`summary of the systems and processes described in Ex. 1007 is provided at ¶¶192-
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`235 of Ex. 1003.”), and 37 (citing Ex. 1003, ¶¶203-212, 223-224, and 239- 241). In
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`fact, the Petition itself never directly cites either of the two asserted prior art
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`references.
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`The Petitioner’s failure to abide by the regulations is not merely technical; it
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`directly impacts the substance of the issues in the Petition. Because the Petitioner
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`moved all of the actual evidence into the declaration (Ex. 1003 , ¶¶ 62-241), it is
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`15
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`very difficult to understand the Petitioner’s arguments. This enabled the Petitioner
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`to disguise various logical leaps and mischaracterizations. A prime example of the
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`Petition’s abuse of incorporation by reference is its allegation that Katz discloses
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`“a passive time register.” The Petition states this limitation is met because Katz
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`“describes times at which the trigger instance interacts with the background
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`instance, behavior instance, and the launcher instance.” Petition at 15. The
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`Petition asserts that these times are “stored” in the “task file,” but provides no
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`explanation why the registers in the task file control these interactions. Instead, the
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`Petition cites 15 paragraphs spanning 9 pages of the Houh Declaration. See
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`Petition at 15 (citing “Ex. 1003 at ¶¶ 98-111, and 129).” These paragraphs
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`reference numerous different processes and files, including” script files, trigger
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`instances, trigger lists, trigger objects, behavior instances, etc. But the Petition
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`never clearly states whether any of these “act upon “the task file,” nor establishes
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`exactly which register of the “task file” (i.e., the putative container within which
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`the passive register is supposed to be encapsulated (or under Apple’s proposed
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`construction, “contained”), acts as the “passive time register that controls that
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`action.
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`Another example of how the Petition uses incorporation by reference to hide
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`the speciousness of its arguments is its use of incorporation by reference to
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`disguise its attribution of disclosures of Ex. 1008 (“Inside Macintosh”) to Ex. 1006
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`16
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`(Katz) in order to establish a “first register” having “unique container
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`identification value”. See Petition at 14 (citing Ex. 1003 at 91 (citing Ex. 1008)).
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`Not only does the Petition itself never identify that it is using Ex. 1008 in
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`combination with Ex. 1006, it uses the incorporation by reference to hide its sleight
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`of hand. Even if the Petition were arguing inherent anticipation, it is required to
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`explicitly state that fact and address the requirements for inherent anticipation.
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`Furthermore, as discussed above, the Petition cites the “combination of [the task
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`file’s name] and the folder [in which the file resides]” as the “first register having
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`a unique container identification value” (Petition at 14), yet never establishes that
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`this allegedly unique combination is “a register” or part of the “task file” container,
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`as opposed to being a plurality of registers external to the task file.
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`Walking the PTAB through every Byzantine argument presented by
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`Petitioner would require parsing 102 pages of Ex. 1003 in addition to the Petition,
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`which would exceed the page limit for this Preliminary Response. This creates an
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`unreasonable amount of work for the PTO, is unfair to the Patent Owner, and
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`violates § 42.6 of the PTAB’s Rules of Practice for Inter Partes review
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`proceedings. In light of this violation by Petitioner, the Petition should be denied.
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`17
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`C. There Is No Reasonable Likelihood of the Claims Being
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`Invalidated.
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`1.
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`Petitioner Fails to Construe and/or Incorrectly Construes
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`Terms Material to all Claims
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`The initial step in an analysis of whether to institute a trial is to determine
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`the meaning of the claims. Consistent with the statute and the legislative history of
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`the AIA, the Board interprets claims using the broadest reasonable construction in
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`light of the specification in which they appear. See Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012); 37 CFR § 42.100(b). Claim
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`terms are also given their ordinary and customary meaning, as would be
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`understood by one of ordinary skill in the art in the context of the entire disclosure.
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`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). There is a
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`“heavy presumption” that a claim term carries its ordinary and customary meaning.
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`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
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`“Plain meaning” refers to the ordinary and customary meaning the term would
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`have to a person of ordinary skill in the art. Such terms require no construction.
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`See, e.g., Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp,
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`Inc., 249 F.3d 1341, 1349 (Fed. Cir. 2001) (finding no error in non-construction of
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`“melting”); Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365, 1380
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`18
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`(Fed. Cir. 2001) (finding no error in court’s refusal to construe “irrigating” and
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`“frictional heat”).
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`A patentee may act as his own lexicographer by redefining the meaning of
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`particular claim terms away from their ordinary meaning, by clearly expressing
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`that intent in the written description. See Merck & Co., Inc. v. Teva
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`Pharmaceuticals, 395 F.3d 1364, 1370, 1379 (Fed. Cir. 2005). If an inventor acts
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`as his or her own lexicographer, the definition must be set forth in the specification
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`with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs
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`Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998).
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`The Petition urges the Board to utilize two additional rules in construing the
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`claims, neither of which has any support in the law. First, Petitioner asserts that
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`the “[t]he broadest reasonable construction should reflect subject matter that Patent
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`Owner contends literally infringes the claims, as well as constructions proposed by
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`Patent Owner in past or concurrent litigation.” Petition at 8. No law is cited to
`
`support this position, because there is no legal support for this position. In fact, the
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`Federal Circuit has explicitly ruled that legal opinions offered by patentees during
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`litigation warrant no deference during claim construction. Howmedica Osteonics
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`Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1346 (Fed. Cir. 2008); see also
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`Markman v. Westview Instruments, Inc., 52 F.3d 967, 985 (Fed.Cir.1995) (en banc)
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`(“[I]t is not unusual for there to be a significant difference between what an
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`19
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`inventor thinks his patented invention is and what the ultimate scope of the claims
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`is after allowance by the PTO.”); Reexamination No. 95/000,639, Action Closing
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`Prosecution, 8-9 and 21-22 (declining to construe claims in accordance with patent
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`owner’s positions taken in litigation).2
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`Next, the Petition asserts that, “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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`unless Patent Owner also amends the claims compliant with 35 U.S.C. § 112 to
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`make them expressly correspond to those contentions.” Petition at 8, (citing 77
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`Fed. Reg. 48764 at II.B.6 (August 14, 2012) and In re Youman, 679 F.3d 1335,
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`1343 (Fed. Cir. 2012)). The authorities cited by Petitioner, however, simply do not
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`establish that that any such amendments are necessary.
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`In addition to misunderstanding the proper legal standard for claim
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`construction, the Petition completely fails to construe the terms “encapsulates”—a
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`term that is material to every claim in the ’536 patent. Rather, the Petition merely
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`concludes, without any support, that these limitations are present in the asserted
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`prior art.
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`2 The Declaration of Henry Houh states explicitly that Apple’s expert Henry Houh
`construed the claims “taking into account the matter Patent Owner contends
`infringes the claims and constructions the Patent Owner has advanced in
`litigation.” Ex. 1003 at 15. Accordingly, the PTAB should assume that Dr. Houh
`used an incorrect legal standard in construing the claims. No proposed claim
`constructions have been submitted in the concurrent litigation as of this date, and
`only preliminary infringement contentions, provided without benefit of any
`discovery or expert testimony, have been submitted.
`20
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`Ignoring the term “encapsulates,” the Petition instead focuses on the terms
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`“container,” “register,” “active space register”/“passive register for identifying
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`space”/ “neutral space register,” and “gateway.” In an attempt to construe the
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`claims as broadly as possible and invalidate the claims of the ’536, Petitioner
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`cherry-picks statements about these terms from the specification that, out of
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`context, make these terms appear much broader than they actually are. As
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`described below, these deficiencies are fatal to Petitioner’s arguments, and the
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`constructions proposed by Petitioner are unreasonable.
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`a.
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` “Container”
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`Within the field of computer science at the time the invention was
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`conceived, the word “container” meant “an element that has content as opposed to
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`one consisting solely of the tag name and attributes.” Ex. 2001. This parallels the
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`description of “containers” used in the specification. See, e.g., Ex. 1001 at 8:64-
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`9:2 (“The information container 100 is a logically defined data enclosure which
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`encapsulates any element . . . .”). Patent Owner proposes that the broadest
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`reasonable construction of “container” is “a logically defined data enclosure which
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`encapsulates any element or digital segment (text, graphic, photograph, audio,
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`video, or other), or set of digital elements.”
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`The Petition proposes construing the term “container” as “a logically defined
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`data enclosure that contains a whole or partial digital element (e.g., text, graphic,
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`21
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`photograph, audio, video, or other) or set of digital segments, any system
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`component or process, or other containers or sets of containers.” Petition at 9. The
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`Petition cites a description of “container” from within the ’536’s specification, but
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`substitutes the verb “contains” for the specification’s use of “encapsulates.”
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`Compare id. with Ex. 1001 at 8:64-9:2.
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`As an initial matter, defining “container” as something that “contains” other
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`things is circular and unhelpful. In addition, the Petitioner’s proposed construction
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`is incorrect because it ignores the relationship between “containers” and
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`“encapsulation.” “Encapsulation,” which is discussed in more detail below, is a
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`term of art, referring generally to “treat[ing] a collection of structured information
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`as a whole without affecting or taking notice of its internal structure.” See Ex.
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`2001. Encapsulation can refer, for example, to the process of wrapping data in
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`protocols that allow its transmission from one network to another, as occurs when
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`a web page is sent using HTML. See id. (discussing relevance of encapsulation to
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`TCP/IP transmission); see also Ex. 1002 at 164, line 35 (foreign patent in IDS
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`describing hypermedia “objects” that “encapsulate” and control aspects of the
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`hypermedia system). Patent Owner notes that Facebook, Twitter, and Yelp, who
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`filed IPR petitions for the ’536 patent on the same day as Apple, proposed
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`construing “container” as “a logically defined enclosure that encapsulates any
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`22
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`
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`element . . . .”3 By deleting the word “encapsulates” from its proposed
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`construction, Petitioner seeks to broaden the construction of “container” beyond
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`what the specification reasonably conveys to anything that “contains” something
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`else in the broadest sense of the word (e.g., a “folder”), so that it can assert
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`anticipation based on non-analogous prio
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