IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`and
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and LG
`ELECTRONICS MOBILECOMM U.S.A., INC.,
`Petitioners
`
`v.
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`
`Case IPR2014-00717
`Case IPR2015-00335
`Patent No. 6,108,686
`
`
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`

`

`IPR2014-00717/ IPR2015-00335
`
`LIST OF EXHIBITS
`
`Description
`Exhibit
`U.S. Patent No. 6,108,686 (“the ‘686 Patent”)
`Ex. 1001
`File History for U.S. Patent No. 6,108,686
`Ex. 1002
`U.S. Patent No. 5,740,549 (“the Reilly patent” or “Reilly”)
`Ex. 1003
`Ex. 1004 Weiss, “New Places to Go Online,” 14(8) Technology & Learning
`109-115 (1994) (“the Technology & Learning Article”)
`Declaration of Kevin C. Almeroth, Ph.D. (“Almeroth Dec.”)
`Ex. 1005
`Curriculum vitae of Kevin C. Almeroth, Ph.D.
`Ex. 1006
`Ex. 1007 Motion to Intervene in Investigation and Supporting Memorandum of
`Google Inc., International Trade Commission Investigation No. 337-
`TA-882 (ITC Jul. 26, 2013).
`Notice of Filing of Requests for Inter Partes Review of the Patents-
`in-Suit, filed in the Eastern District of Texas for Case 2:13-cv-00379-
`JRG on May 21, 2014.
`Ex. 1009 Declaration of Mr. Sungil Cho
`Ex. 1010
`Black Hills Media, LLC’s Opposition To Google Inc.’s Motion to
`Intervene (Inv. No. 337-TA-882)
`Order No. 17: INITIAL DETERMINATION Granting Google Inc.’s
`Motion to Intervene (Inv. No. 337-TA-882)
`Final Initial Determination Distribution List (Inv. No. 337-TA-882)
`Supplemental Declaration of Kevin C. Almeroth, Ph.D. (served as
`supplemental evidence on Dec. 4, 2014)
`Updated curriculum vitae of Kevin Almeroth, Ph.D. (served, but not
`filed, on January 20, 2015)
`Legal Engagements of Kevin Almeroth, Ph.D. (served, but not filed,
`on January 20, 2015)
`Transcript of deposition of William O. Putnam, dated April 28, 2015.
`Second Declaration of Kevin C. Almeroth, Ph.D.
`Search Engines publication, archived on the Internet Archive
`Wayback Machine (http://www.archive.org/) on April 5, 1997, as
`shown in the following URL
`https://web.archive.org/web/19970405174547/http://www.webrefere
`nce.com/content/search/features.html
`
`Ex. 1008
`
`Ex. 1011
`
`Ex. 1012
`Ex. 1013
`
`Ex. 1014
`
`Ex. 1015
`
`Ex. 1016
`Ex. 1017
`Ex. 1018
`
`
`
`
`
`
`
`i
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`

`IPR2014-00717/ IPR2015-00335
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction ....................................................................................................... 1
`
`II. BHM’s Discussion of “Push” and “Pull” Technology is Irrelevant and
`without Merit .................................................................................................... 3
`
`III. BHM’s Reliance on Unclaimed Features is Legally Incorrect ......................... 5
`
`A. The Claims Do Not Require “Pull” Technology .................................... 6
`
`B. The Claims Do Not Require an “Active Search” ................................... 8
`
`IV. BHM’s Newly Proposed and Implied Claim Constructions Are
`Erroneous .......................................................................................................... 9
`
`A. BHM’s Proposed Construction of “Search Agent” Should be
`Rejected .................................................................................................. 9
`
`B. BHM’s Implied Construction of “Search,” “Search Criteria,”
`and “Search Rules” Should be Ignored ................................................ 13
`
`V. BHM’s Anticipation Analysis Incorrectly Characterizes Reilly and
`Uses Incorrect Legal Principles ......................................................................14
`
`A. BHM’s Summary of Reilly Includes Characterizations that Are
`Irrelevant to the Challenged Claims and Characterizations that
`Confirm Anticipation of the Challenged Claims .................................. 14
`
`B. BHM Incorrectly Characterizes Reilly’s Disclosure as a “Push”
`System................................................................................................... 15
`
`C. Reilly Discloses a Search Agent, Search Rules, and Search
`Criteria .................................................................................................. 18
`
`D. BHM’s Characterization of Reilly’s Transmission of
`Information on Multiple Subjects is Irrelevant .................................... 22
`
`E. Reilly Anticipates Claim 2 ................................................................... 23
`
`VI. BHM Concedes Obviousness of the Challenged Claims ...............................24
`
`ii
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`IPR2014-00717/ IPR2015-00335
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`VII. BHM’s Allegation that the Petition is “Fatally Defective” is without
`Merit and Has Been Rejected by the Board’s Decision to Institute ...............25
`
`VIII. Conclusion ......................................................................................................25
`
`
`
`
`
`
`
`iii
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`IPR2014-00717/ IPR2015-00335
`
`TABLE OF AUTHORITIES
`
`PAGE(S)
`
`CASES
`Deere & Co. v. Bush Hog, LLC,
`703 F.3d 1349 (Fed. Cir. 2012) ............................................................................ 9
`
`GE Lighting Solutions, LLC v. AgiLight, Inc.,
`750 F.3d 1304 (Fed. Cir. 2014) ............................................................................ 4
`
`In re Bond,
`910 F.2d 831 (Fed. Cir. 1990) ............................................................................. 18
`
`In re Graves,
`69 F.3d 1147 (Fed. Cir. 1995) ............................................................................. 18
`
`In re Self,
`671 F.2d 1344 (C.C.P.A. 1982) ............................................................................ 6
`
`In re Trans Texas Holdings Corp.,
`498 F.3d 1290 (Fed. Cir. 2007) ............................................................................ 4
`
`Trebro Mfg., Inc. v. Firefly Equip., LLC,
`748 F.3d 1159 (Fed. Cir. 2014) .......................................................................... 11
`
`Vas-Cath Inc. v. Mahurkar,
`935 F.2d 1555 (Fed. Cir. 1991) ........................................................................ 5, 6
`
`STATUTES
`
`35 U.S.C. §6(c) ........................................................................................................ 25
`
`35 U.S.C. §314(d) .................................................................................................... 25
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 1.7 ........................................................................................................... 1
`
`37 C.F.R. § 42.1(a) ..................................................................................................... 1
`
`37 C.F.R. § 42.71(d) ................................................................................................ 25
`
`iv
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`IPR2014-00717/ IPR2015-00335
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`IPR2014-00717/ IPR2015-00335
`
`37 C.F.R. § 42.71(d)(1) ............................................................................................ 25
`37 CPR. § 42.71(d)(1) ............................................................................................ 25
`
`37 C.F.R. § 42.100(b) .............................................................................................. 10
`37 CPR. § 42.100(b) .............................................................................................. 10
`
`
`
`v
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`IPR2014-00717/ IPR2015-00335
`
`I.
`
`Introduction
`
`In accordance with the Notice of Stipulation to Revised Schedule (Paper 28),
`
`Petitioners timely submit1 the present Reply to Patent Owner’s Response
`
`(“Response,” Paper 36) filed on February 25, 2015.
`
`This proceeding involves prior art that discloses the systems and methods for
`
`providing local users with information stored remotely on a network broadly
`
`claimed in the ’686 patent and widely known in the field of computer networking
`
`before the ’686 patent’s purported priority date. Due to the lack of an invention,
`
`the Board should find claims 1, 2, 20, 23, 29 and 30 unpatentable.
`
`As set forth in the Petition and recognized in the Decision to Institute
`
`(“Decision,” Paper 18), the Board determined there is a reasonable likelihood that
`
`the challenged claims are unpatentable as being anticipated by Reilly and obvious
`
`over Reilly and Technology & Learning. The strength of the prior art is evidenced
`
`by the weaknesses of Black Hills Media’s (“BHM”) Response.
`
`
`
`1 Paper 28 moved Due Date 2 to May 25, 2015, a Federal holiday within the
`
`District of Columbia. A paper due on a Federal holiday within the District of
`
`Columbia may be filed on the next succeeding business day, and, as such, the
`
`present Reply has been timely filed. See 37 C.F.R. § 42.1(a) incorporating by
`
`reference 37 C.F.R. § 1.7; see also IPR2014-00773, Paper 7, p. 2.
`
`1
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`

`

`IPR2014-00717/ IPR2015-00335
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`Recognizing that the Board correctly reached its conclusion even without
`
`adopting Petitioners’ proposed constructions, BHM attempts to first distinguish the
`
`prior art by proposing flawed constructions for “search agent,” and
`
`suggesting―without actually proposing―a construction for “search,” “search
`
`rules,” and “search criteria.” Even utilizing BHM’s cited evidence and expert
`
`testimony for these terms, the prior art still anticipates and renders obvious the
`
`challenged claims for the reasons set forth in the Petition.
`
`Second, BHM attempts to distract from the prior art and actual language of
`
`the challenged claims by devoting approximately one fourth of its response―and
`
`more in Mr. Putnam’s declaration―to explaining differences between so-called
`
`“push” and “pull” technology and arguing patentability based on a “pull” limitation
`
`that is wholly absent from the challenged claims and not even mentioned in the
`
`‘686 patent specification. BHM’s approach is legally irrelevant because any
`
`distinction based on “pull” technology is not recited in the claims.
`
`Third, BHM uses this unclaimed “limitation” to make legally and factually
`
`erroneous arguments against the straightforward teaching of Reilly. BHM attempts
`
`to create distinctions between the ’686 patent and Reilly through a combination of
`
`misstating its teaching and focusing on irrelevant aspects of the specification.
`
`None of the arguments raised by BHM is sufficient to alter the analysis of
`
`the Board in its Decision. When BHM’s erroneous claim construction and
`
`2
`
`

`

`IPR2014-00717/ IPR2015-00335
`
`irrelevant inquiries are set aside, the essential elements of the Petition are
`
`unrebutted: every element of the claimed invention was disclosed in the prior art,
`
`and a person of skill in the art would have reason to combine these teachings to
`
`achieve an agent-based on-line information retrieval and viewing system. The
`
`challenged claims are thus unpatentable as being both anticipated and obvious as
`
`set forth in the Petition.
`
`The Petition, supported by Dr. Almeroth’s declaration, demonstrates why
`
`the challenged claims are anticipated and obvious, and why one of ordinary skill in
`
`the art would have combined the teachings of the cited references. The declaration
`
`testimony of Mr. Putnam, BHM’s declarant, and subsequent cross-examination
`
`testimony, provide no reason to find otherwise.
`
`II. BHM’s Discussion of “Push” and “Pull” Technology is Irrelevant and
`without Merit
`
`BHM alleges that the “the ’686 Patent specifically describes a “‘pull’
`
`system” that distinguishes that system from “‘push’ systems described in the
`
`background of the ’686 Patent.” (Resp. at 3). At least six significant flaws undercut
`
`this argument.
`
`First, the term “pull” is not recited in the claims and does not even appear in
`
`the specification of the ’686 patent. Neither the claims nor the written description
`
`of the ’686 patent limit the challenged claims to the use of “pull” technology. The
`
`Federal Circuit has stated that “while the specification [should be used] to interpret
`3
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`

`

`IPR2014-00717/ IPR2015-00335
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`the meaning of a claim, courts must not import[] limitations from the specification
`
`into the claim.” In re Trans Texas Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir.
`
`2007) (alterations in original) (citations omitted).
`
`Second, the specification of Reilly (Ex. 1003) does not include the word
`
`“push.” It is not clear what argument BHM is making, or why it might be relevant,
`
`since no challenged claims exclude this. (Resp. at 2, 3, 14, 16, 20-24, 26, 41; Ex.
`
`1016, 26:8 - 27:18). BHM’s argument rests on introducing terms that are simply
`
`not found in the ’686 patent claims or specification, or the specification or claims
`
`of Reilly.
`
`Third, BHM’s use of the terms “push” and “pull” that are not found in the
`
`’686 patent specification or Reilly falls far short of a clear and unmistakable
`
`disavowal as the law requires. See GE Lighting Solutions, LLC v. AgiLight, Inc.,
`
`750 F.3d 1304, 1309 (Fed. Cir. 2014). Indeed, BHM does not even try to
`
`demonstrate such disavowal.
`
`Fourth, BHM characterizes “‘push’ technology” as “automatically”
`
`downloading information to a user’s computer, such that the “user does not need to
`
`search for or request the information.” (Resp. at 2, citing Ex. 1001, 1:24-25; see
`
`also Ex. 1016, 85:4 - 86:21; 88:16 - 89:11). BHM fails to explain how the ’686
`
`patent disavows “push” technology when the ’686 patent describes embodiments
`
`that operate in accordance BHM’s characterization of “push” technology. (See Ex.
`
`4
`
`

`

`IPR2014-00717/ IPR2015-00335
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`1001, 5:40-48 (search rules that may be generated “automatically” based on
`
`observations of the user’s actions); 6:57-61 (searches that are performed
`
`“automatically,” and regardless of “whether the client system 1 is currently in use
`
`by any user.”))
`
`Fifth, Reilly discloses a pull system even under a definition proposed by
`
`BHM. “[T]he Microsoft Computer Dictionary defines ‘pull’ as ‘[t]he process of
`
`retrieving data from a network server.’” (Resp. at 21, citing Ex. 2014 at 364
`
`(emphasis in original); see also Ex. 1016, 60:25 - 61:2)).
`
`Sixth, the ’686 patent is directed to “improved speed of access…of delivered
`
`information,” and states that “[p]ush technology…may be [a] partial solution to the
`
`speed issue.” (Ex. 1001, 2:2-5; id. at 1:40-41). By BHM’s reasoning, any
`
`technology that may be directed to the improved speed of access of delivered
`
`information―including “pull” technology”―is also disclaimed. (Ex. 1001, 7:17-
`
`20).
`
`III. BHM’s Reliance on Unclaimed Features is Legally Incorrect
`BHM relies on the unclaimed features of “pull” technology and “active”
`
`searching (Resp. at 3, 20, 21, 22, 26, 41) to distinguish the prior art, even though—
`
`as its own expert concedes—these alleged functional features are neither recited in
`
`the claims nor supported by the specification. (See Ex. 1016, 98:10-19; 101:9 -
`
`103:24). This is improper. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565
`
`5
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`

`

`IPR2014-00717/ IPR2015-00335
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`(Fed. Cir. 1991) (“The invention is defined by the claims ….”) (internal quotation
`
`marks omitted); see also In re Self, 671 F.2d 1344, 1348 (C.C.P.A. 1982) (It is well
`
`established that the invention is defined by the claims, and that limitations not
`
`appearing in the claims cannot be relied upon for patentability.).
`
`Although it is well-settled that limitations from the specification are not read
`
`into the claims, BHM endeavors to further stray from the law and read limitations
`
`that are not found in the specification into the claims. BHM’s comments regarding
`
`non-existent claim limitations are legally flawed and irrelevant, and should also be
`
`rejected. BHM could have filed a motion to amend the claims to require the use of
`
`“pull technology” or “active searching.” But BHM has chosen not to do so.
`
`A. The Claims Do Not Require “Pull” Technology
`BHM declares that the alleged invention of the ‘686 patent is directed to a
`
`“‘pull’ system” or “pull technology” when no such feature is an element of the
`
`claims or even found in the specification. (Resp. at 3, 20, 21). The scope of what
`
`BHM claimed is what determines novelty and nonobviousness. See Vas-Cath Inc.,
`
`935 F.2d at 1565. Nonetheless, BHM focuses on a term and feature it did not
`
`claim. Mr. Putnam concedes this, testifying that “it’s been a while since I’ve read
`
`the patent,” and that “I don’t see the word pull in any of the claims at issue here.”
`
`(Ex. 1016, 102:4-8 and 101:24-25; see also id. at 48:15-25, 100:4-9, 161:5-21,
`
`108:13 -109:4, 184:5-11). If BHM believed that certain benefits could only be
`
`6
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`

`

`IPR2014-00717/ IPR2015-00335
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`realized by the use of pull technology, BHM could have filed a motion to amend
`
`the challenged claims to add the term “pull.” It did not. BHM’s attempt to import a
`
`“pull” technology requirement into the claims should be rejected.
`
`The specification confirms that the claims are not limited to the use of pull
`
`technology. (Ex. 1001 at 2:8-10, 2:50-55, 2:59-62, 5:4-8, 5:63-66, 7:46-48; Ex.
`
`1017, ¶¶ 7-8). Mr. Putnam cannot identify any instance of the term pull in the ’686
`
`patent’s specification. (Ex. 1016, 103:6-24; see also id. at 108:7 - 119:2).
`
`BHM’s proposed construction of “search agent” also fails to include the
`
`term “pull.” 2 No “pull” feature or element is indirectly found in the claims.
`
`In Ex. 2013 at page 11, footnote 14, Mr. Putnam cites the Microsoft
`
`Computer Dictionary (Ex. 2014), which states “[p]ush was developed as a means
`
`of relieving users from having to actively retrieve (‘pull’) information from the
`
`Web...”). In his deposition testimony, Mr. Putnam testified that “I would say that
`
`these alternative embodiments [of the ’686 patent] suggest to me like a way to
`
`relieve the user of manually and actively searching for information.” (Ex. 1016,
`
`98:16-19; see also id. at 181:25 - 182:24). BHM’s allegation that Reilly’s push
`
`
`
`2 BHM should not be permitted use claim construction to change the claim’s
`
`scope with respect to the broadest reasonable interpretation when it chose not to do
`
`so through claim amendment.
`
`7
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`

`IPR2014-00717/ IPR2015-00335
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`system is “fundamentally different” than the systems and methods disclosed in the
`
`’686 patent is undermined by the testimony of its own expert. (Resp. at 1, 20-23;
`
`see also Ex. 1001 at 1:19-28, 1:60 - 2:5, 3:2-18, 5:39-56, 6:12-17, 6:57-62; Ex.
`
`1017, ¶¶ 9-17).
`
`The Claims Do Not Require an “Active Search”
`
`B.
`BHM compounds the error of its reliance on unclaimed pull technology by
`
`further alleging that “each of the challenged claims recites a method or system that
`
`actively searches remote databases….” (Resp. at 24-25 (emphasis added)). But Mr.
`
`Putnam confirmed that embodiments disclosed in the ’686 patent specification do
`
`not require an active search. (“I would say that these alternative embodiments [of
`
`the ‘686 patent] suggest to me like a way to relieve the user of manually and
`
`actively searching for information.” (Ex. 1016, 98:16-19, 181:25 - 182:24; see also
`
`Ex. 1017, ¶ 32).
`
`BHM repeatedly alleges that the ’686 patent pertains to the use of an “active
`
`search,” “active searching,” or a system that “actively searches.” (Resp. at 3
`
`(“[T]he ‘686 Patent describes a ‘pull’ system that utilizes an active search...”); id.
`
`at 20 (“[T]he ‘686 Patent particularly contrasts its use of active searching…”); Id.
`
`(“[T]he ‘686 Patent describes and claims a ‘pull’ system that actively searches for
`
`information…” (emphasis in original)); see also Ex. 2013, ¶¶ 43, 46).
`
`But none of these terms is a requirement in the claims. The specification
`
`8
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`

`

`IPR2014-00717/ IPR2015-00335
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`does not include the use of or describe an “active search” or any variant thereof,
`
`and BHM’s attempt to import yet another unclaimed limitation not found in the
`
`specification into the claims should be rejected. See Deere & Co. v. Bush Hog,
`
`LLC, 703 F.3d 1349, 1354 (Fed. Cir. 2012) (“While claim terms are understood in
`
`light of the specification, a claim construction must not import limitations from the
`
`specification into the claims.”).
`
`IV. BHM’s Newly Proposed and Implied Claim Constructions Are
`Erroneous
`
`BHM suggests that the Board failed to understand the plain and ordinary
`
`meaning of the term “search” and, by extension, related terms “search agent,”
`
`search rules,” and “search criteria.” (Resp. at 11). But BHM only offers a
`
`proposed construction for “search agent.” (Resp. at 12). The Board should reject
`
`BHM’s construction of “search agent” at least because it is not the broadest
`
`reasonable construction, and ignore BHM’s implied construction of the remaining
`
`terms.
`
`A. BHM’s Proposed Construction of “Search Agent” Should be
`Rejected
`
`BHM seeks to modify the construction of “search agent” proffered by
`
`Petitioners, effectively conceding that the challenged claims are unpatentable
`
`under Petitioners’ construction. In particular, BHM seeks to construe “search
`
`agent” as “a computer program that acts on behalf of a user to conduct a search for
`
`9
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`IPR2014-00717/ IPR2015-00335
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`(e.g., seek/locate/look for) specific information, guided by search criteria that
`
`specify the particular information to be retrieved.” (Resp. at 12). BHM’s proposed
`
`construction of “search agent” is not the broadest reasonable construction (see 37
`
`C.F.R. § 42.100(b)) for several reasons. (Ex. 1001, 3:48-50, 3:2-3; 5:49-51; Ex.
`
`1017, ¶¶ 18-25).
`
`First, BHM’s construction is incorrect because it is limited to a “computer
`
`program.” The specification states that “a SIRViS and any component thereof can
`
`alternatively be embodied in hardware or in a combination of hardware and
`
`software.” (Ex. 1001 at 3:48-50). “The SIRViS generally includes a graphical user
`
`interface (GUI) and a search agent.” (Id. at 3:2-3). Accordingly, BHM’s
`
`construction would exclude embodiments of the search agent 25 component of
`
`SIRViS 22 that can be embodied in hardware or in a combination of hardware and
`
`software.
`
`Second, BHM’s proposed construction would limit the claims to an
`
`unspecified embodiment that requires the use of “search criteria.” BHM’s citation
`
`to the specification confirms that a search agent can use “search rules,” but is not
`
`required to use “search criteria.” (Resp. at 13-14, citing Ex. 1001, 5:49-51). The
`
`intrinsic evidence in the ’686 patent does not support limiting a “search agent” to
`
`the use of “search criteria.” Because the specification does not include definitions
`
`or disclaimers of the term “search agent” that include and mandate the “search
`
`10
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`IPR2014-00717/ IPR2015-00335
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`criteria” limitation BHM seeks to inject, BHM cannot limit the claims to an
`
`“embodiment.” Trebro Mfg., Inc. v. Firefly Equip., LLC, 748 F.3d 1159, 1166
`
`(Fed. Cir. 2014).
`
`Third, BHM’s proposed construction would limit a search agent to an
`
`embodiment that requires the end user to use interface elements such as windows
`
`and dialog boxes to enter search criteria. (See Resp. at 5, citing Ex. 1001 at 5:32-
`
`39). But the ’686 patent discloses alternative embodiments where “search rules
`
`may be generated automatically” and “may not be specified explicitly by a user.”
`
`(Ex. 1001, 5:39-48). Mr. Putnam has confirmed that alternative embodiments of
`
`the ’686 patent “relieve the user of manually and actively searching for
`
`information.” (Ex. 1016, 98:15-19).
`
`Finally, BHM’s attempt to construe “search agent” by using another
`
`proposed term for construction―“search criteria”―results in unnecessary
`
`confusion, not clarity.3
`
`Regarding “search criteria,” Mr. Putnam cites only to the “‘686 patent at
`
`2:11-21.” (Ex. 2013, ¶ 28). But this passage refers to “search criteria” without any
`
`indication as to whether or how search criteria might be used in connection with a
`
`
`
`3 BHM may have taken this approach because “the corresponding set of
`
`search criteria” recited in claim 2 lacks antecedent basis in claim 1.
`
`11
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`IPR2014-00717/ IPR2015-00335
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`search agent. BHM’s construction of “search agent” would mandate the use of
`
`“search criteria,” when Mr. Putnam provides no citation to any intrinsic evidence
`
`that would permit, much less require, such use of search criteria.
`
`In fact, Mr. Putnam testifies and confirms that BHM’s proposed construction
`
`is incorrect, providing one definition of “search agent” as “a computer program
`
`configured to locate and retrieve specific information.” (Ex. 2013, ¶ 39, citing ’686
`
`patent at 5:49-51). While BHM refers to “Petitioner’s (sic) overly broad
`
`definition,” Petitioners’ definition (“hardware and/or software capable of retrieving
`
`information and storing it”) is similar to Mr. Putnam’s definition. (Resp. at 11;
`
`Petition at 5). Because BHM’s proposed construction is narrower than what is
`
`proffered by its own declarant, BHM’s proposed construction is not the broadest
`
`reasonable construction and should be rejected for this reason as well.
`
`BHM cites paragraphs 29-31 of Mr. Putnam’s declaration (Ex. 2013) in
`
`support of its proposed construction. (See Resp. at 11-13). Paragraphs 29-30
`
`contain five definitions from extrinsic evidence. (Ex. 2014). And no definition of
`
`the term “search agent” appears among the five definitions.
`
`Mr. Putnam states that “a search agent is a particular type of program that
`
`seeks or searches for specific information on behalf of a user based on a defined set
`
`of search criteria.” (Ex. 2013, ¶ 31). This definition is narrower than the definition
`
`found in paragraph 39 of Mr. Putnam’s declaration. In paragraph 42, Mr. Putnam
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`provides a third definition of “search agent” that is again narrower than the
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`definition provided in paragraph 31 of his declaration. (Ex. 2013, ¶¶ 31, 42).4
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`At least because BHM’s proposed construction is without lexicographic
`
`support or disclaimer in the ’686 patent, and narrower than what is proffered by its
`
`declarant (Ex. 2013, ¶ 31), BHM’s proposed construction is not the broadest
`
`reasonable construction and should be rejected.
`
`B.
`
`BHM’s Implied Construction of “Search,” “Search Criteria,” and
`“Search Rules” Should be Ignored
`
`Tellingly, BHM does not propose a claim construction for the terms
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`“search,” “search rules,” or “search criteria.” (Resp. at 11-15). On that basis alone,
`
`BHM’s quasi-claim-construction arguments should be ignored and deemed
`
`waived.
`
`For “search,” BHM merely cites to extrinsic evidence. (Resp. at 12, citing
`
`Ex. 2014; Resp. at 13, citing Ex. 2013, ¶ 30). For “search criteria,” BHM again
`
`merely cites to extrinsic evidence. (Resp. at 12, citing Ex. 2014; Resp. at 13, citing
`
`Ex. 2013, ¶ 30). And while Mr. Putnam testified that the plain and ordinary
`
`meaning of the term “search rule” is “a rule that’s used for searching,” (Ex. 1016,
`
`140:22 - 141:10) BHM does not appear to provide citation to any
`
`
`4 Mr. Putnam testified that “…I was not asked to propose formal
`
`definitions.” (Ex. 1016, 144:2-3).
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`evidence―intrinsic or extrinsic―for “search rules.”
`
`V. BHM’s Anticipation Analysis Incorrectly Characterizes Reilly and Uses
`Incorrect Legal Principles
`A. BHM’s Summary of Reilly Includes Characterizations that Are
`Irrelevant to the Challenged Claims and Characterizations that
`Confirm Anticipation of the Challenged Claims
`
`Although the Petition (Paper 1), Dr. Almeroth’s Declaration (Ex. 1005) and
`
`the Decision have each described Reilly, BHM devotes four pages to discussing
`
`Reilly. (Resp. at 16-19). BHM’s discussion includes both irrelevant features of
`
`Reilly, and features of Reilly that confirm Reilly’s anticipation of the challenged
`
`claims.
`
`BHM states that Reilly “downloads information to a subscriber’s device
`
`matching the subscriber’s preferences at times when it would otherwise be
`
`inactive.” (Resp. at 16). The ’686 patent operates in essentially the same manner.
`
`(Ex. 1001, 6:57-65; Ex. 1017, ¶ 27).
`
`BHM’s comments regarding a “screen saver” are legally irrelevant. (Resp. at
`
`16, 19). The challenged claims do not exclude the use of a screen saver.
`
`BHM’s comments regarding an “information server” that “receives, edits,
`
`and compiles content on multiple subjects from a variety of news and information
`
`sources” is legally irrelevant. (Resp. at 16). The challenged claims do not exclude
`
`these features or activities.
`
`BHM also discusses administrative aspects of how Reilly’s information
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`database 134 is populated. (Resp. at 17-18). BHM confirms that Reilly discloses
`
`the claimed “database” and “predefined subject.”
`
`BHM notes that Reilly’s subscriber computers can connect to LAN 106.
`
`(Resp. at 18). But the client system 1 or any of the content servers 2 of the ’686
`
`patent may represent multiple computer systems connected to each other on a
`
`LAN, corporate intranet, or the like. (Ex. 1001, 4:21-24).
`
`BHM notes that Reilly’s screen saver filters out news items that are not
`
`consistent with each subscriber’s user profile. (Resp. at 19). But the ’686 patent
`
`filters out news items that are not consistent with each subscriber’s user profile.
`
`(Ex. 1001, 5:49-61, 6:19-24, 6:44-46; Ex. 1017, ¶ 38).
`
`B.
`
`BHM Incorrectly Characterizes Reilly’s Disclosure as a “Push”
`System
`
`BHM discusses Reilly’s alleged “push” system and the alleged “pull”
`
`system of the ’686 patent. (Resp. at 20-23). Reasons why BHM’s allegations are
`
`legally erroneous and without merit have been discussed in Sections II and III,
`
`supra.
`
`BHM brazenly alleges that “the ‘686 Patent, in contrast to ‘push’
`
`technology, describes and claims a ‘pull’ system that actively searches for
`
`information about a specific subject on remote databases and retrieves that
`
`information from the remote sources.” (Resp. at 20, citing Ex. 2013, ¶ 22) (bold
`
`emphasis added). BHM fails to explain how the challenged claims could possibly
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`claim a “‘pull’ system that actively searches for information” when neither “pull”
`
`or “actively searches” appears in the claims or specification―or even in BHM’s
`
`proposed construction of “search agent.” (Ex. 1017, ¶ 9).
`
`While BHM makes broad and sweeping categorical assessments, Mr.
`
`Putnam’s testimony is much more circumspect:
`
`[Y]ou have to give me details of the implementation, for
`example, you know, the protocols, there are lots of server
`protocols and configuration things that can be used.
`Some of them might be considered more push-oriented
`some of them might be considered more pull-oriented.
`
`(Ex. 1016, 69:11-16; see also id. at 57:2-24, 60:19 - 61:24; 76:1-12; 120:12-
`
`20; 126:10 - 127:2; 180:22 - 181:16). Yet, neither BHM or Mr. Putnam provide
`
`any discussion or analysis of the protocols used in Reilly or the ’686 patent.
`
`Assuming arguendo that the ’686 patent uses the HTTP protocol in connection
`
`with the Internet (Ex. 1001, 2:34-35, 2:59-62, Fig. 1), Mr. Putnam testifies that
`
`“HTTP is also used in some configurations by some servers to push pages down.”
`
`(Ex. 1016, 60:2-3).
`
`BHM refers to definitions from the PC Magazine Encyclopedia. (Resp. at
`
`21, citing Ex. 2015 and Ex. 2013, ¶ 21). Ex. 2015 is dated February 18, 2015.
`
`BHM fails to explain how a document dated February 18, 2015, would be relevant
`
`to how one of ordinary skill would have understood the terms “push technology”
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`IPR2014-00717/ IPR2015-00335
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`or “pull technology” at the time of filing of the ’686 patent application.
`
`BHM alleges that “‘[p]ush’ technology differs from the search technology
`
`described in the ‘686 Patent in that information is instead ‘pushed’ from a server to
`
`the client computers, either automatically or at specified intervals, as a way to
`
`relieve users from having to actively retrieve or ‘pull’ information from the
`
`server.” (Resp. at 22). But, as noted, the ’686 patent also discloses an embodiment
`
`that operates in this manner. (Ex. 1001, 5:40-48, 6:57-61; Ex. 1016, 98:16-19; Ex.
`
`1017, ¶¶ 11-16).
`
`BHM alleges that “the ‘686 Patent utilize[s] a search agent to identify,
`
`locate, and retrieve targeted information from one or more data sources.” (Resp. at
`
`22). As explained in the Petition and recognized in the Decision, Reilly’s search
`
`agent does so too. (Pet. at 22, 23, 30-31, 45-46; Ex. 1005 ¶¶ 26-35; Decision at
`
`11).
`
`BHM alleges that the “Reilly’s system utilizes ‘push’ technology such that
`
`users of the clients (102) merely receive content that was previously received at,
`
`edited at, and compiled for download by the infor