UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TWITTER, INC. AND YELP INC.
`Petitioners
`
`v.
`
`EVOLUTIONARY INTELLIGENCE, LLC
`
`Patent Owner
`
`Patent No. 7,010,536
`Filing Date: January 28, 1999
`Issue Date: March 7, 2006
`Title: SYSTEM AND METHOD FOR CREATING AND MANIPULATING
`INFORMATION CONTAINERS WITH DYNAMIC REGISTERS
`
`Inter Partes Review No. Unassigned
`
`PETITION FOR INTER PARTES REVIEW
`
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`IV.
`
`Introduction.................................................................................................- 1 -
`
`Formalities ..................................................................................................- 1 -
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`Real Party in Interest ........................................................................- 1 -
`
`Related Matters.................................................................................- 1 -
`
`Fee ....................................................................................................- 2 -
`
`Designation of Lead Counsel and Request for Authorization .........- 3 -
`
`Service Information..........................................................................- 3 -
`
`Power of Attorney ............................................................................- 3 -
`
`Standing............................................................................................- 4 -
`
`Statement of Precise Relief Requested.......................................................- 4 -
`
`Full Statement of Reasons for the Relief Requested..................................- 4 -
`
`A.
`
`B.
`
`C.
`
`D.
`
`The ’536 Patent ................................................................................- 4 -
`
`The Theimer Patent ..........................................................................- 5 -
`
`Person of Ordinary Skill in the Art ..................................................- 8 -
`
`Claim Construction of Certain Terms in the ’536 Patent ................- 9 -
`
`1.
`
`2.
`
`3.
`
`4.
`
`“Container” ............................................................................- 9 -
`
`“Register”.............................................................................- 12 -
`
`“Gateway”............................................................................- 13 -
`
`Means Plus Function Claims 9-12.......................................- 14 -
`
`E.
`
`Theimer Anticipates Claims 1-16 of the ’536 Patent.....................- 16 -
`
`1.
`
`2.
`
`Theimer Anticipates Claim 1...............................................- 16 -
`
`Theimer Anticipates Claim 2...............................................- 33 -
`
`i
`
`

`

`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`10.
`
`11.
`
`12.
`
`13.
`
`14.
`
`15.
`
`16.
`
`Theimer Anticipates Claim 3...............................................- 40 -
`
`Theimer Anticipates Claim 4...............................................- 42 -
`
`Theimer Anticipates Claim 5...............................................- 43 -
`
`Theimer Anticipates Claim 6...............................................- 44 -
`
`Theimer Anticipates Claim 7...............................................- 46 -
`
`Theimer Anticipates Claim 8...............................................- 47 -
`
`Theimer Anticipates Claim 9...............................................- 48 -
`
`Theimer Anticipates Claim 10.............................................- 50 -
`
`Theimer Anticipates Claim 11.............................................- 51 -
`
`Theimer Anticipates Claim 12.............................................- 53 -
`
`Theimer Anticipates Claim 13.............................................- 55 -
`
`Theimer Anticipates Claim 14.............................................- 56 -
`
`Theimer Anticipates Claim 15.............................................- 57 -
`
`Theimer Anticipates Claim 16.............................................- 58 -
`
`V.
`
`CONCLUSION.........................................................................................- 58 -
`
`ii
`
`

`

`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`U.S. Patent No. 7,010,536
`
`U.S. Patent No. 5,493,692
`
`Complaint for Patent Infringement Against Twitter, Inc.
`
`Evolutionary Intelligence, LLC v. Twitter, Inc. Proof of Service
`
`Complaint for Patent Infringement Against Yelp Inc.
`
`Evolutionary Intelligence, LLC v. Yelp Inc. Proof of Service
`
`Declaration of Don Turnbull, Ph.D
`
`’536 Patent Prosecution History
`
`Patent Holder’s Infringement Contentions in district Court
`
`Litigation, Ex. A (Apple Chart), Ex. E (Twitter Chart) and Ex. Q
`
`(Yelp Chart)
`
`1010
`
`IEEE Standard Dictionary of Electrical and Electronics Terms
`
`(Sixth Edition) (1997)
`
`1011
`
`IBM Dictionary of Computing (Tenth Edition) (1993)
`
`
`
`iii
`
`

`

`I.
`
`Introduction
`
`Through counsel, real parties in interest Twitter, Inc. and Yelp Inc.
`
`(“Petitioners”) hereby petition for initiation of inter partes review of U.S. Patent
`
`No. 7,010,536, entitled “System and Method for Creating and Manipulating
`
`Information Containers With Dynamic Registers.” (“the ’536 patent”). Ex. 1001.
`
`The ’536 patent issued on March 7, 2006 more than nine months prior to the filing
`
`of this petition. Id. The ’536 patent is currently asserted in a co-pending litigation,
`
`and this petition is being filed within one year of Petitioners being served with a
`
`complaint for patent infringement. See Exs. 1003-1006 (Complaints and
`
`Certificates of Service). Thus, the ’536 patent is eligible for inter partes review.
`
`II.
`
`Formalities
`
`A.
`
`Real Party in Interest
`
`The real parties in interest are Twitter, Inc., incorporated in the state of
`
`Delaware with its principal place of business at 1355 Market Street, Suite 900,
`
`San Francisco, California 94103 and Yelp Inc., incorporated in the state of
`
`Delaware with its principal place of business at 140 New Montgomery Street,
`
`San Francisco, California 94103.
`
`B.
`
`Related Matters
`
`The ’536 patent is the subject of the following civil actions:
`
`- Evolutionary Intelligence LLC v. Yelp Inc., Civil Action No. 4:13-cv-
`
`03587 (DMR) (N.D. Cal.)
`
`- 1 -
`
`

`

`- Evolutionary Intelligence LLC v. Apple Inc., Case No. 3:13-cv-04201-
`
`WHA (N.D. Cal.);
`
`- Evolutionary Intelligence LLC v. Facebook, Inc., Case No. 3:13-cv-
`
`04202-JSC (N.D. Cal.);
`
`- Evolutionary Intelligence LLC v. FourSquare Labs, Inc., Case No.
`
`3:13-cv-04203-EDL (N.D. Cal.);
`
`- Evolutionary Intelligence LLC v. Groupon, Inc., Case No. 3:13-cv-
`
`04204-LB (N.D. Cal.);
`
`- Evolutionary Intelligence LLC v. LivingSocial, Inc., Case No. 3:13-
`
`cv-04205-EDL (N.D. Cal.);
`
`- Evolutionary Intelligence LLC v. Millennial Media, Inc., Case No.
`
`5:13-cv-04206-HRL (N.D. Cal.); and
`
`- Evolutionary Intelligence LLC v. Twitter, Inc., Case No. 5:13-cv-
`
`04207-JSW (N.D. Cal.).
`
`Fee
`C.
`This petition for inter partes review is accompanied by a payment of
`
`$29,800 and requests review of 28 claims of the ’536 patent. 37 C.F.R. § 42.15.
`
`Thus, this petition meets the fee requirements under 35 U.S.C. § 312(a)(1).
`
`- 2 -
`
`

`

`D.
`
`Designation of Lead Counsel and Request for Authorization
`
`Lead Counsel
`Vaibhav P. Kadaba
`Reg. No. 45,865
`wkadaba@kilpatricktownsend.com
`1100 Peachtree St. NE, Suite 2800
`Atlanta, GA 30309
`(404) 815-6500
`
`Backup Lead Counsel
`Robert D. Tadlock
`Pro Hac Vice authorization requested
`rtadlock@kilpatricktownsend.com
`Two Embarcadero Center, Suite 8000
`San Francisco, CA 94111
`(415) 576-0200
`
`Petitioners hereby request authorization to file a motion for Robert D.
`
`Tadlock to appear pro hac vice, as Mr. Tadlock is an experienced litigating
`
`attorney, and is counsel for Petitioners in the above-referenced litigations and as
`
`such has an established familiarity with the subject matter at issue in this
`
`proceeding. Petitioners intend to file such a motion once authorization is granted.
`
`E.
`
`Service Information
`
`As identified in the attached Certificate of Service, a copy of the present
`
`petition, in its entirety, is being served to the address of the attorney or agent of
`
`record in the Patent Office as well as counsel of record for the Patent Owner in the
`
`above-referenced litigations. Petitioners may be served at its counsel, Kilpatrick
`
`Townsend & Stockton LLP.
`
`F.
`
`Power of Attorney
`
`Powers of attorney are being filed with the designation of counsel in
`
`accordance with 37 C.F.R. § 42.10(b).
`
`- 3 -
`
`

`

`Standing
`G.
`The Petitioners certify that the ’536 patent is available for inter partes
`
`review and that the Petitioners are not barred or estopped from requesting an inter
`
`partes review challenging the patent claims on the grounds identified in this
`
`petition.
`
`III.
`
`Statement of Precise Relief Requested
`
`Pursuant to 35 U.S.C. § 311, this petition requests cancellation of claims 1-
`
`16 of the ’536 patent as being anticipated under 35 U.S.C. § 102(b) by United
`
`States Patent No. 5,493,692 to Theimer et al. entitled “Selective Delivery of
`
`Electronic Messages In A Multiple Computer System Based On Context And
`
`Environment Of A User” (“Theimer” or the “Theimer patent”). Ex. 1002.
`
`IV. Full Statement of Reasons for the Relief Requested
`
`A.
`
`The ’536 Patent
`
`The ’536 patent discloses “an apparatus for transmitting, receiving and
`
`manipulating information on a computer system.” Ex. 1001 (Abstract); Ex. 1007
`
`(Declaration of Don Turnbull, Ph.D), ¶ 15. The “Summary of the Invention”
`
`describes a system with “an input device, an output device, a processor, a memory
`
`unit, a data storage device, and a means of communicating with other computers. . .
`
`.” Ex. 1001 (col.3:6-10); Ex. 1007, ¶ 15. The system includes “containers” which
`
`include “dynamic registers,” and “unique gateways” to manufacture information
`
`- 4 -
`
`

`

`on, upgrade the utility of, and develop intelligence in, a computer network. Ex.
`
`1001 (col.2:66-6:15); Ex. 1007, ¶ 15.
`
`In response to a Final Rejection based on U.S. Patent No. 6,075,791
`
`(“Chiussi”), Applicant added three new limitations to independent claims 1 and 2,
`
`each new element relating to a specific type of time or space register (active /
`
`passive / neutral) with respect to claims 1 and 2 respectively. Ex. 1008 (1/3/05
`
`Amendments After Final Rejection, pp. 4-9) ; Ex. 1007, ¶ 16. Applicant explained
`
`that the “active time/space register” identified times/spaces at which the container
`
`will act on other containers or the system, the “passive time/space register”
`
`identifies times/spaces at which the container can be acted upon, and the “neutral
`
`time/space register” identifies times/spaces at which the container may interact.
`
`Ex. 1008 (1/3/05 Amendment After Final Rejection, p. 11); Ex. 1007, ¶ 16. In
`
`response, the examiner allowed the amended claims. Ex. 1007, ¶ 16.
`
`B.
`
`The Theimer Patent
`
`Originally assigned to Xerox, the Theimer patent discusses “the Office of
`
`the 21st Century.” Ex. 1007, ¶ 18. This patent represents one part of the research
`
`by a group of computer scientists at the Xerox Palo Alto Research Center (Xerox
`
`PARC) including other inventors of the patent in addition to Marvin M. Theimer
`
`including Michael J. Spreitzer, Mark D. Weiser, Richard J. Goldstein, Douglas B.
`
`Terry, William N. Schilit and Roy Want. Id. This group researched, designed,
`
`- 5 -
`
`

`

`built and improved a number of related systems focusing on using location and
`
`other user-based attributes to support and allow for communication and
`
`collaboration. Id. In fact, the research team not only invented software
`
`applications, but also entire software systems including networking techniques as
`
`well as invented their own hardware computer systems themselves to provide a
`
`wide range of functionality. Id. Functionality that far exceeds what is described in
`
`the patent. Id. Not only did this team of researches invent these technologies, they
`
`did so over a time span of at least 8 years before the filing of the patent. Id. The
`
`computer scientists’ work not only predates the 536 patent, but went on to invent
`
`further improvements in their own systems. Id. These original designs and
`
`systems were well publicized through numerous available publications in academic
`
`journal articles, conference presentations and papers, as well as mainstream
`
`magazine articles and their own set of US patents. Id.
`
`For example, in an article in the readily available and popular magazine
`
`Scientific American, in 1991 Mark Weiser provided a general overview of many of
`
`the forthcoming inventions the team later designed, programmed and subsequently
`
`published articles and patents on. Id. The systems invented were generally
`
`described as “ubiquitous computing” a term actually coined by Mark Weiser to
`
`cover the areas of computer science where computers seamlessly integrate into our
`
`day-to-day environment and interact with a network to provide messages to
`
`- 6 -
`
`

`

`collaborate with others, multimedia content for viewing and editing and other
`
`issues related to the context (time and space) of a computer user. Id. The concept
`
`of space and time (context) aware settings and system functionality based on these
`
`contexts and associated settings is one of the major inventions from the PARC
`
`Ubicomp Group. Id.
`
`The Theimer patent “relates to control by a user of particular devices and
`
`activities in a multiple computer system based upon the current location and
`
`surrounding environment, including computing devices, of the user.” Ex. 1002
`
`(col.1:31-34); Ex. 1007, ¶ 20. Theimer discusses the introduction of a “ubiquitous
`
`computing environment” in which “there are many computing and computer-
`
`controlled devices surrounding each user all the time” and “specific action may be
`
`taken by computers based on knowledge of location.” Ex. 1002 (col.1:61-2:33);
`
`Ex. 1007, ¶ 20. Theimer also discloses that “users may further desire different
`
`automatic actions to be made by the system based on the context surrounding
`
`them” and that the ubiquitous environment “should enable users to make better use
`
`of their time and space.” Ex. 1002 (col.2:50-3:28); Ex. 1007, ¶ 20. Thus, the
`
`Theimer patent discloses “the ability to provide a system in which actions of the
`
`system are initiated or triggered based on the context (for example, the location of
`
`the user or other users, the time of day) and the environment (for example, the
`
`user’s location, nearby computing devices available) in proximity to the user” such
`
`- 7 -
`
`

`

`that “the delivery of electronic messages to a particular user or users may be
`
`selective, depending on the context or state of the user or users.” Ex. 1002
`
`(col.3:66-4:8); Ex. 1007, ¶ 20.
`
`C.
`
`Person of Ordinary Skill in the Art
`
`One of ordinary skill in the art at time of the effective filing date of the
`
`patent (January 28, 1998) would possess a Bachelors of Science degree in
`
`Computer Engineering, Computer Science or some closely related degree, and
`
`would have two or more years of working experience in the area of software
`
`application development, focusing on experience with Internet technologies
`
`including HTML, web browsers, and Web-related client/server concepts; database
`
`management systems; object-oriented programming; and distributed programming
`
`concepts. Ex. 1007, ¶ 11. One of ordinary skill in the art would have also had
`
`some understanding of the prior art commercial tools and standards available at the
`
`time for use in web application development, such as Web servers, Internet-based
`
`data exchange protocols (such as HTTP, messaging protocols and RSS). Id.
`
`Advanced formal university work could offset less working experience in the area,
`
`and additional related working experience could compensate for less or no formal
`
`university education. Id.
`
`- 8 -
`
`

`

`Claim Construction of Certain Terms in the ’536 Patent
`D.
`In inter partes review, claim terms are interpreted under a “broadest
`
`reasonable construction” standard. See 37 C.F.R. § 42.100(b). In compliance with
`
`37 C.F.R. § 1.42.104(b)(4), Petitioners state that in general the “claim terms are
`
`presumed to take on their ordinary and customary meaning.” See Changes to
`
`Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and
`
`Transitional Program for Covered Business Method Patents, 77 Fed. Reg. 48699
`
`(2012), Response to Comment 35.
`
`To be clear, the interpretation and/or construction of the claims in the ’536
`
`patent presented either implicitly or explicitly herein should not be viewed as
`
`constituting, in whole or in part, Petitioners’ own interpretation and/or construction
`
`of such claims for purposes of district court proceedings, but instead should be
`
`viewed as constituting an interpretation and/or construction of such claims as may
`
`be raised by Patent Owner or the Office through a broadest reasonable claim
`
`construction. Petitioners expressly reserve the right to present other interpretations
`
`of any of the ’536 patent claims at a later time in the district court litigation, which
`
`interpretation may differ, in whole or in part, from that presented herein.
`
`1.
`
`“Container”
`
`The ’536 patent specification repeatedly defines the term “container” in very
`
`broad terms, at a minimum a single bit of information and at maximum all of the
`
`- 9 -
`
`

`

`information accessible via the internet (“cyberspace”) currently existing and
`
`developed in the future. Ex. 1007, ¶ 22. The Abstract states that a container is “a
`
`logically defined data enclosure and comprising an information element, a plurality
`
`of registers, and a gateway.” Ex. 1001 (Abstract); Ex. 1007, ¶ 22. The Summary
`
`of the Invention describes a container as “an interactive nestable logical domain
`
`configurable as both subset and superset, including a minimum set of attributes
`
`coded into dynamic interactive evolving registers, containing any information
`
`component, digital code, file search string, set, database, network, event or process,
`
`and maintaining a unique network-wide lifelong identity.” Ex. 1001 (col.3:28-35);
`
`Ex. 1007, ¶ 22. The specification further states that
`
`“[t]he information container 100 is a logically defined data enclosure
`which encapsulates any element or digital segment (text, graphic,
`photograph, audio, video, or other), or set of digital segments or
`referring now to FIG 3C, any system component or process, or other
`containers or sets of containers. A container 100 at minimum includes
`in its construction a logically encapsulated portion of cyberspace, a
`register and a gateway. A container 100 at minimum encapsulates a
`single digital bit, a single natural number or the logical description of
`another container, and at maximum all defined cyberspace, existing,
`growing and to be discovered, including but not limited to all
`containers, defined and to be defined in cyberspace.”
`
`- 10 -
`
`

`

`Ex. 1001 (col.8:64-9:12); Ex. 1007, ¶ 22. The specification also states that a
`
`container “may be a floppy or CD-Rom to be downloaded or inserted.” Id.,
`
`(col.10-67-11:2); Ex. 1007, ¶ 23.
`
`Patent Owner has employed an equally broad definition of “container” in the
`
`concurrent litigation. Ex. 1007, ¶ 24. It has alleged that a “container” is any
`
`“logically defined data enclosure.” Ex. 1009 (Twitter Inf. Cont. Chart, p. 2); (Yelp
`
`Inf. Cont. Chart, p. 2); Ex. 1007, ¶ 24. As to Twitter, “containers” include a user’s
`
`profile, status updates, a user’s timeline, a place, a tweet, query results, a direct
`
`message, or a media entity. Ex. 1009 (Twitter Inf. Cont. Chart, p. 2-34); Ex. 1007,
`
`¶ 24. As to Yelp, “containers” include a business profile and a business “location.”
`
`Ex. 1009 (Yelp Inf. Cont. Chart, p. 2-8); Ex. 1007, ¶ 24. Patent Owner has
`
`similarly alleged that Apple iOS-compatible devices that enable a user to create
`
`and edit an “event,” “reminder” and “alarm” are all containers as are objects that
`
`incorporate geographic coordinates, objects that define the interface for
`
`configuring the delivery of location and heading-related events, objects that store
`
`placemarks for a given latitude and longitude, and objects that define a
`
`geographical area. Ex. 1009 (Apple Inf. Cont. Chart, p, 2-5); Ex. 1007, ¶ 24.
`
`Contemporary technical dictionaries define “container” as “an object that
`
`holds other objects. A folder is an example of a container object.” Ex. 1011 (IBM
`
`Dictionary of Computing 1999); Ex. 1007, ¶ 25. “An ordered set of 1, 2, 4, or 8
`
`- 11 -
`
`

`

`contiguous bytes fully packed with one or more signed or unsigned field formats.”
`
`Ex. 1010 (IEEE Standard Dictionary of Electrical and Electronics Terms (Sixth
`
`Edition) (1997)); Ex. 1007, ¶ 25.
`
`Thus, the broadest reasonable construction of “container” is “a logically
`
`defined data enclosure which encapsulates any element or digital segment (text,
`
`graphic, photograph, audio, video, or other), or set of digital elements.” Ex. 1007,
`
`¶ 26.
`
`2.
`
`“Register”
`
`The ’536 patent specification describes a “register” as follows:
`
`Container registers 120 are interactive dynamic values appended to
`the logical enclosure of an information container 100, and serve to
`govern the interaction of that container 100 with other containers 100,
`container gateways 200 and the system 10, and to record the historical
`interaction of that container 100 on the system 10. Container registers
`120 may be values alone or contain code to establish certain
`parameters in interaction with other containers 100 or gateways 200.
`Ex. 1001 (col.9:14-28); Ex. 1007, 27.
`
`Contemporary dictionaries define “register” as “[a] device capable of
`
`retaining information, often that contained in a small subset (for example, one
`
`word), of the aggregate information in a digital computer” or “A storage device or
`
`storage location having a specified storage capacity.” Ex. 1010; Ex. 1007, ¶ 28.
`
`“A part of internal storage having a specified storage capacity and usually intended
`
`- 12 -
`
`

`

`for a specific purpose.” Ex. 1011; Ex. 1007, ¶ 28. Almost any computer designed
`
`in the last 50 years allows for the creation, modification and deletion of storage
`
`locations in computer memory (RAM, disk or both) as well as the methods to write
`
`and read information into said storage locations. This functionality is a basic tenet
`
`of computer operating systems, programming languages and software development
`
`frameworks. Ex. 1007, ¶ 29.
`
`The broadest reasonable construction of “register” in the context of the ‘’536
`
`patent is “value or code associated with a container.” Id., ¶ 30.
`
`3.
`
`“Gateway”
`
`The ’536 patent does not explicitly define the term “gateway.” Ex. 1007, ¶
`
`31. Instead, the ’536 specification describes some gateway functions and points to
`
`“logically defined gateways residing both on containers 100 and independently in
`
`the system 10. Gateways 200 govern the interactions of containers 100 within
`
`their domain, and alter the registers 120 of transiting containers 100 upon ingress
`
`and egress.” Ex. 1001 (col.9:22-28); Ex. 1007, ¶ 31. “Gateways gather and store
`
`container register information according to system-defined, system-generated, or
`
`user determined rules . . . governing how containers [sic] system processes or
`
`system components interact within the domain of that container.” Ex. 1001
`
`(col.4:58-66); Ex. 1007, ¶ 31. Therefore, in this sense, a gateway may be defined
`
`- 13 -
`
`

`

`as “a software interface that governs interactions between containers, systems,
`
`and/or processes.” Ex. 1007, ¶ 31.
`
`Additionally, dictionaries define “gateway” as “[a] dedicated computer that
`
`attaches to two or more networks and that routes packets from one to the other.”
`
`Ex. 1010; Ex. 1007, ¶ 32. The IBM Dictionary of Computing defines “gateway”
`
`as “[a] functional unit that interconnects two computer networks with different
`
`network architectures. A gateway connects networks or systems of different
`
`architectures.” Ex. 1011; Ex. 1007, ¶ 32.
`
`Based on the description of gateway functions in the ’536 patent, as well as
`
`the common dictionary definition, the broadest reasonable construction of
`
`“gateway” is “a hardware or software unit that facilitates the transfer of
`
`information between containers, systems, networks, and/or processes.” Ex. 1007,
`
`¶ 33. The common interpretation of the gateway from someone skilled in the art
`
`would be a hardware appliance with a small amount of resident software (most
`
`commonly known as firmware) that manages network data transfer amongst a set
`
`of connected computers and network devices. Id.
`
`4. Means Plus Function Claims 9-12
`
`At least claims 9-12 include means plus function claim limitations subject to
`
`interpretation under 35 U.S.C. § 112 ¶ 6. Claim 9 recites a “means for acting upon
`
`another container,” claim 10 recites a “means for allowing interaction,” claim 11
`
`- 14 -
`
`

`

`recites a “means for gathering information,” and claim 12 recites a “means for
`
`reporting information.” Ex. 1001 (col.31:18-37). Although each of these
`
`processing functions requires a specific algorithm for the processor to execute the
`
`function, the specification of the ’536 patent fails to disclose any algorithms for
`
`performing the identified functions of claims 9-12 and the only structure identified
`
`in the ’536 patent corresponding to these means for performing the various
`
`functions is a general purpose processor. Ex. 1007, ¶ 36. The ’536 patent states,
`
`[t]he processor 18 preferably executes programmed instruction steps,
`generates commands, stores data and analyzes data configurations
`according to programmed instruction steps that are stored in memory
`unit 22 and in the data storage device 20. The processor 22 is
`preferably a microprocessor such as the Motorola 680(x)0, the Intel
`80(x)86 or Pentium, Pentium II, and successors, or processors made
`by AMD, or Cyrix CPU of the any class.
`
`Ex. 1001 (col.7:58-65); Ex. 1007, ¶ 37.
`
`Thus, the corresponding structure in claims 9-12 under a broadest reasonable
`
`interpretation standard is a processor.1 Ex. 1007, ¶ 38.
`
`
`1 Other forums, such as U.S. district courts, require different standards of proof and
`claim interpretation that are not applied by the PTO for inter partes review.
`Petitioners believe that the means plus function elements recited in claims 9-12 as
`construed under 35 U.S.C. §112 ¶ 6 and relevant case law in district court
`proceedings requires the disclosure of a specific algorithm to carry out the
`processing functions. Function Media, LLC v. Google Inc., 708 F.3d 1310, 1318
`(Fed. Cir. 2013). Accordingly, any interpretation or construction of the challenged
`claims in this IPR, either implicitly or explicitly, is not binding on Petitioners in
`- 15 -
`
`

`

`E.
`
`Theimer Anticipates Claims 1-16 of the ’536 Patent
`
`The ’536 Patent claims priority to Provisional Application No. 60/073,209,
`
`which was filed on January 30, 1998. Ex. 1007, ¶ 39. For purposes of this
`
`petition, Petitioners do not challenge Patent Owner’s claimed priority date. The
`
`Theimer patent issued on February 20, 2006 and qualifies as prior art under 35
`
`U.S.C. § 102(b). Ex. 1002. A concise summary of Theimer is provided at IV.B.
`
`Petitioners submit that claims 1-16 of the ’536 patent are unpatentable in view of
`
`Theimer.
`
`1.
`
`Theimer Anticipates Claim 1
`
`a.
`
`“An apparatus for transmitting, receiving and
`manipulating information on a computer system”
`
`The ‘536 Patent
`1. An apparatus for
`transmitting, receiving and
`manipulating information on
`a computer system
`
`Disclosure in Theimer
`“the invention relates to techniques for selectively
`delivering electronic messages to an identified user
`via particular computer devices based on context
`and environment in proximity to the user.”
`(Theimer, col.1:35-38 (emphasis added).)
`
`“Components that might be found in such a system
`comprise hardwired network backbone 12, radio
`and infrared transceivers 14 and 16 respectively,
`workstation 18, file server 20, printer 22 and
`various mobile units 24, 26 and 28, and user 30.”
`(Theimer, col.5:27-32.)
`
`“A user’s agent . . . interacts with the rest of the
`system as an electronic proxy for that user.
`
`any future litigation related to the ’536 patent. See In re Zletz, 893 F.2d 319, 321
`(Fed. Cir. 1989).
`
`- 16 -
`
`

`

`Personal information about a user is primarily
`collected by, and primarily resides in, the user’s
`agent.” (Theimer, col.7:61-8:2 (emphasis added).)
`
`Inasmuch as the preamble can be considered a claim limitation, Theimer
`
`generally describes an apparatus computer system for transmitting and receiving
`
`information, i.e., “selectively delivering electronic messages . . . via particular
`
`computer devices.” Ex. 1002 (col.1:35-38); Ex. 1007, ¶ 40. Apparatus
`
`components include a network backbone, radio and/or infrared transceivers,
`
`workstations, file servers, printers, and mobile computing units. Id. (col.5:26-
`
`6:67); Ex. 1007, ¶ 40. “Each physical object . . . is represented in the system by a
`
`unique ‘agent.’ For example, each user is represented in the system by a unique
`
`‘UserAgent.’ A user’s agent . . . interacts with the rest of the system as an
`
`electronic proxy for that user. Personal information about a user is primarily
`
`collected by, and primarily resides in, the user’s agent.” Id. (col.7:61-8:26); Ex.
`
`1007, ¶ 40. Therefore, Theimer teaches this element as recited by claim 1. Ex.
`
`1007, ¶ 40.
`
`b.
`
`“a plurality of containers, each container being a
`logically defined data enclosure”
`
`The ‘536 Patent
`
`Disclosure in Theimer
`
`1. the apparatus
`including a plurality of
`containers, each container
`being a logically defined
`data enclosure
`
`“Personal information about a user is primarily
`collected by, and primarily resides in, the user’s
`agent.” (Theimer, col.7:61-8:2 (emphasis added).)
`
`- 17 -
`
`

`

`(Theimer, FIG. 3)
`
`“That [device] agent collects and manages
`information about . . . the device.” (Theimer,
`col.8:18-20.)
`
`(Theimer, FIG. 5)
`
`As discussed above, the broadest reasonable interpretation of “container” is
`
`“a logically defined data enclosure which encapsulates any element or digital
`
`segment (text, graphic, photograph, audio, video, or other), or set of digital
`
`elements.” The agents of Theimer include logically defined data enclosures that
`
`store information about a user or device. Ex. 1007, ¶ 41. Theimer discloses at
`
`- 18 -
`
`

`

`least three types of agent containers: user agents, device agents, and terminal
`
`agents, with FIG. 3, and FIGS. 5-6 illustrating the logical structure of these data
`
`enclosures. Ex. 1001 (col.7:61-8:12, col.9:41-13:48, col.13:49-16:8.); Ex. 1007, ¶
`
`41. Theimer additionally discloses data enclosures that represent a name service
`
`and a location service, with logically defined data enclosures as illustrated by
`
`FIGS. 8-9. Ex. 1001 (col.16:9-17:32, col.17:33-20:28.); Ex. 1007, ¶ 41.
`
`Therefore, the device/user agents, name service, and location service of Theimer
`
`teach a “container” based on the broadest reasonable construction of that term as
`
`described above and as recited by claim 1. Ex. 1007, ¶ 41.
`
`c.
`
`“an information element having information”
`
`The ‘536 Patent
`1. an information element
`having information
`
`Disclosure in Theimer
`“Personal information about a user is primarily
`collected by, and primarily resides in, the user’s
`agent. This information may include: 1) relatively
`static information, such as preferences and policies,
`2) modestly dynamic information, such as personal
`calendar or datebook information, and 3) very
`dynamic information, such as current location and
`activity” (Theimer, col.7:61-8:6 (emphasis
`added).)
`
`“That [device] agent collects and manages
`information about . . . the device. . . . Information
`that the agent may manage and collect includes
`things like the capabilities of the device . . . the
`current state of the device, and possibly the
`ownership state of the device.” (Theimer, col.8:18-
`26 (emphasis added).)
`
`- 19 -
`
`

`

`“Name Service 210, shown in FIG. 8, provides a
`repository into which clients can deposit tuples,
`change or delete existing ones . . . , and search for
`(key, value) pairs matching various naming
`criteria.” (Theimer, col.16:55-59 (emphasis
`added).)
`
`“The Location Service provides a place to store
`location specific information and a way of
`executing queries over that information.”
`(Theimer, col.17:33-35 (emphasis added).)
`
`An information element may include “any information component, digital
`
`code, file, search string, se