IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In the Inter Partes Review of:
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`Trial Number: To Be Assigned
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`U.S. Patent No. 6,314,409
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`Filed: October 26, 1998
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`Issued: November 6, 2001
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`Inventor(s): Paul B. Schneck, Marshall D.
`Abrams
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`Assignee: Intellectual Ventures II LLC
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`Title: System for controlling access and
`distribution of digital property
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`Mail Stop Inter Partes Review
`Commissions for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Panel: To Be Assigned
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`SUBMISSION PURSUANT TO 35 U.S.C. § 301 AND 37 C.F.R. § 1.501 IN
`SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,314,409
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`In the Inter Partes Review of:
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`Trial Number: To Be Assigned
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`U.S. Patent No. 6,314,409
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`Filed: October 26, 1998
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`Issued: November 6, 2001
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`Inventor(s): Paul B. Schneck, Marshall D.
`Abrams
`
`Assignee: Intellectual Ventures II LLC
`
`Title: System for controlling access and
`distribution of digital property
`
`Mail Stop Inter Partes Review
`Commissions for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Panel: To Be Assigned
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`SUBMISSION PURSUANT TO 35 U.S.C. § 301 AND 37 C.F.R. § 1.501 IN
`SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,314,409
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`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,826,694
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`International Business Machines Corporation
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`(“IBM”) offers
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`this
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`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
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`Petition for Inter Partes Review Under 37 C.F.R. § 42.100 of U.S. Patent No.
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`6,314,409 (“Submission”). This Submission addresses (1) prior art that bears on
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`the patentability of Claims 1-11 and 13-21 (the “Challenged Claims”) of U.S.
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`Patent No. 6,314,409 (“the ’409 Patent”); and (2) statements that the current patent
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`owner, Intellectual Ventures II LLC (“IV”), has made in federal court proceedings
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`regarding the scope of the Challenged Claims. IBM files this Submission in
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`connection with, and as Exhibit 1004 to, its Petition for Inter Partes Review Under
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`37 C.F.R. § 42.100 of U.S. Patent No. 6,314,409 (“Petition”).
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`I.
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`PRIOR ART BEARING ON THE PATENTABILITY OF THE
`CHALLENGED CLAIMS
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`Pursuant to 35 U.S.C. § 301(a)(1) and 37 C.F.R. § 1.501(a)(1), IBM
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`identifies the following prior art that it believes bears on the patentability of the
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`Challenged Claims:
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`• Olin Sibert, et al., DigiBox: A Self-Protecting Container for Information
`Commerce (“Digibox”), Ex. 1008, published in the Proceedings of the
`First USENIX Workshop on Electronic Commerce New York, New
`York, July 1995. Digibox is prior art under 35 U.S.C. § 102(a).
`• U.S. Patent No. 5,689,560 to Cooper et al. (“Cooper”), Ex. 1009, filed on
`April 25, 1994. Cooper is prior art under 35 U.S.C. § 102(e).
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`
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`1
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`
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`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,826,694
`• Mark Stefik, Letting Loose the Light: Igniting Commerce in Electronic
`Publication (“Stefik”), Ex. 1015, distributed no later than during a
`publishing conference held in March 1995 (Exs. 1010, 1011, 1012, 1013,
`1014). Stefik is prior art under 35 U.S.C. § 102(a).
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`As required by 37 C.F.R. § 1.501(b)(1), the pertinence of this prior art to the
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`Challenged Claims is explained in Section V.B of the Petition. In particular, the
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`manner of applying this prior art to the Challenged Claims may be found in the
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`claim-by-claim analysis of Section V.B of the Petition.
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`II.
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`STATEMENTS ABOUT THE SCOPE OF THE CHALLENGED
`CLAIMS MADE IN A PROCEEDING BEFORE A FEDERAL
`COURT
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`Pursuant to 35 U.S.C. § 301(a)(2) and 37 C.F.R. § 1.501(a)(2), IBM
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`identifies the following statements made by IV where IV took a position on the
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`scope of the Challenged Claims in a proceeding before a federal court.
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`Claim Construction in Intellectual Ventures II LLC v. JP Morgan Chase & Co.,
`et al., No. 1:13–cv–03777 (S.D.N.Y.)
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`IV took a position on the scope of the Challenged Claims in the Joint Chart
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`of Proposed Claim Constructions filed before Judge Alvin K. Hellerstein of the
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`Southern District of New York on January 15, 2014. (Ex. 1020.) IV’s positions
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`were addressed in Judge Hellerstein’s Order Regarding Claim Construction and
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`Patent Summaries dated March 18, 2014. (Ex. 1021.) Exhibits 1022, 1023, 1024,
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`1025, 1026, 1027, 1028, and 1029 were also submitted during the claim
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`construction proceedings by the parties.
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`2
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`
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`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,826,694
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`As required by 37 C.F.R. § 1.501(a)(3), IBM identifies the following:
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`37 C.F.R. § 1.501(a)(3)(i), Forum: IV made these statements during a
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`district court litigation captioned Intellectual Ventures II LLC v. JP Morgan Chase
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`& Co., et al., No. 1:13–cv–03777 (S.D.N.Y.).
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`37 C.F.R. § 1.501(a)(3)(ii), Specific Documents: IV made these statements
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`when filing its positions on claim construction. (Exs. 1020, 1021, 1022, 1023,
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`1024, 1025, 1026, 1027, 1028, 1029.)
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`37 C.F.R. § 1.501(a)(3)(iii), How Statement is a Position on the Scope of
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`Any Claim: In explaining how the district court should construe certain terms that
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`appear in the Challenged Claims, IV and the Court made statements about the
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`scope of those claims. The statements are express statements about the scope of
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`those claims, and must be considered when establishing the broadest reasonable
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`construction of terms used in the Challenged Claims. Below is an identification of
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`the statements, an explanation of the pertinence of the statements, and an
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`explanation of how the statements should be applied to the Challenged Claims, as
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`required by 37 C.F.R. § 1.501(b)(1).
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`openly distributing
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`i.
`IBM proposes that the term “openly distributing/openly distributed” be
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`construed as “sending over an openly accessible channel.” The specification of the
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`3
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`
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`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,826,694
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`’409 Patent supports this construction. (Ex. 1006 at 5:4-47; see also Petition,
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`Section IV.C.)
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`In its “Proposed Constructions of the Claim Terms From the ‘409 Patent” of
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`the Joint Chart of Proposed Claim Constructions, IV stated that “openly distributed
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`data” means “data transmitted over an insecure communication channel.” (Ex.
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`1020 at 2-3.) The Court ultimately ruled that “openly distributed data” is “data
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`transmitted over an openly accessible communications channel.” (Ex. 1021 at 6.)
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`IV’s construction is broader than the Court’s construction for this term.
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`
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`Date: April 18, 2014
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`Respectfully submitted,
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`/s/ Alicia L. Shah
`Kenneth R. Adamo (Reg. No. 27,299)
`Alicia L. Shah (Reg. No. 68,080)
`KIRKLAND & ELLIS LLP
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`
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`4
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`
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`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,826,694
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Submission
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`Pursuant to 35 U.S.C. § 301 and C.F.R. § 1.501 in Support of Petition for Inter
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`Partes Review of U.S. Patent No. 6,314,409 was served on April 18, 2014 directed
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`to the attorney of record for the patent at the following addresses:
`
`Via U.S. Priority Mail
`Perkins Coie LLP
`Patent - Sea
`P.O. Box 1247
`Seattle, WA 98111
`
`Via Federal Express
`Perkins Coie LLP
`Patent - Sea
`1201 Third Avenue, Suite 4900
`Seattle, WA 89101
`
`A copy will also be served on April 21, 2014 via Federal Express on:
`
`
`
`Ian N. Feinberg
`Feinberg, Day Law Firm
`1600 El Camino Real, Suite 280
`Menlo Park, CA 94025
`David J. Koukol
`Koukol, Johnson Law Firm
`12020 Shamrock Plaza, Suite 333
`Omaha, NE 68154
`
`William Irvin Dunnegan
`Dunnegan LLC
`350 Fifth Avenue
`New York, NY 10118
`A H Gaede , Jr
`Bainbridge Mims Rogers & Smith LLP
`600 Luckie Drive
`P O Box 530886
`Birmingham, AL 35233
`
`
`Norman Eli Siegel
`Stueve Siegel Hanson, LLP
`460 Nichols Road, Suite 200
`Kansas City, MO 64112
`Zahra S. Karinshak
`Krevolin & Horst LLC
`One Atlantic Center
`1201 West Peachtree Street, Suite 3250
`Atlanta, GA 30309
`Edwin E Voigt, II
`Vidas Arrett & Steinkraus
`6640 Shady Oak Rd, Suite 400
`Eden Prairie, MN 55344
`Charles Joseph Faruki
`Faruki Ireland & Cox PLL - 3
`500 Courthouse Plaza, SW
`10 N Ludlow Street
`Dayton, OH 45402-1818
`
` /s/ Alicia Shah
`Alicia Shah
`
`
`
`
`
`
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