Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 50
`Entered: October 20, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`and
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and LG
`ELECTRONICS MOBILECOMM U.S.A., INC.
`Petitioner,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00717
`Case IPR2015-00335
`Patent 6,108,686
`_______________
`
`
`
`Before BRIAN J. MCNAMARA, DAVID C. MCKONE,
`and FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 50
`Entered: October 20, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`and
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and LG
`ELECTRONICS MOBILECOMM U.S.A., INC.
`Petitioner,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00717
`Case IPR2015-00335
`Patent 6,108,686
`_______________
`
`
`
`Before BRIAN J. MCNAMARA, DAVID C. MCKONE,
`and FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
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`I. INTRODUCTION
`
`A. Background
`Samsung Electronics Co., Ltd. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) to institute an inter partes review of claims 1, 2, 20, 23, 29, and 30 of
`U.S. Patent No. 6,108,686 (Ex. 1001, “the ’686 patent”). Pet. 4. Samsung
`Electronics America, Inc., and Samsung Telecommunications America,
`LLC, are identified as real parties-in-interest. Pet. 1. Black Hills Media,
`LLC (“Patent Owner”) filed a Preliminary Response (Paper 91, “Prelim.
`Resp.”). Pursuant to 35 U.S.C. § 314(a), in our Decision to Institute, we
`instituted this proceeding as to all of the challenged claims of the ’686
`patent. Paper 18 (“Dec.”), 15.
`After Samsung Electronics Co., Ltd., filed its Petition, LG
`Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics
`MobileComm U.S.A., Inc., filed a petition (Case IPR2015-00335, Paper 2)
`and a motion to join the ’335 proceeding to this proceeding (Case IPR2015-
`00335, Paper 3). We granted the motion for joinder, instituting the ’335
`proceeding on grounds identical to those in this proceeding. Paper 32. We
`refer to the petitioners in the joined proceeding collectively as “Petitioner.”
`After the Decision to Institute, Patent Owner filed a Patent Owner
`Response (Paper 36, “PO Resp.”), and Petitioner filed a Reply to the Patent
`Owner Response (Paper 39, “Reply”). An oral hearing was held on July 28,
`2015. Paper 49 (“Tr.”).
`Petitioner relies on the testimony of Kevin C. Almeroth, Ph.D.
`(Ex. 1005, “Almeroth Decl.”; Ex. 1017, “2nd Almeroth Decl.”) in support of
`
`1 Unless otherwise noted, paper numbers refer to papers filed in IPR2014-
`00717.
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`its contentions.2 Patent Owner relies on the testimony of William O. Putnam
`(Ex. 2013, “Putnam Decl.”) in support of its contentions.
`We have jurisdiction under 35 U.S.C. § 6(c). This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`challenged claims. Based on the record before us, Petitioner has
`demonstrated, by a preponderance of the evidence, that all of the challenged
`claims are unpatentable.
`
`B. Related Matters
`The ’686 patent has been asserted against multiple defendants in
`Black Hills Media, LLC v. Samsung Electronics Co., Ltd., No. 2-13-cv-
`00379 (E.D. Tex.). Pet. 1; Paper 5, 2.
`The ’686 patent is also at issue in Black Hills Media, LLC v. Yamaha
`Corporation of America, No. 2:14-cv-00101 (C.D. Cal.); Black Hills Media,
`LLC v. Sonos, Inc., No. 2:14-cv-00486 (C.D. Cal.); and Black Hills Media,
`LLC v. Pioneer Electronics Inc., No. 2:14-cv-00471 (C.D. Cal.). Paper 5, 2.
`
`
`
`2 Patent Owner argues that we should disregard Dr. Almeroth’s testimony
`because he did not provide a claim limitation-by-claim limitation analysis.
`PO Resp. 39–41. Although an expert witness is permitted to testify
`regarding the ultimate issue in a case, Fed. R. Evid. 704(a), we are aware of
`no requirement that he provide a claim-by-claim analysis. Consistent with
`our rules, we assign Dr. Almeroth’s testimony appropriate weight in
`consideration of the underlying facts and data on which it is based.
`See 37 C.F.R. § 42.65(a).
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`C. References Relied Upon
`Petitioner relies upon the following prior art references:
`Reilly et al., US 5,740,549, issued Apr. 14, 1998, filed June 12, 1995
`(Ex. 1003, “Reilly”)
`Jiri Weiss, New Places to Go Online, Vol. 14, No. 8, TECHNOLOGY &
`LEARNING 109–15 (May/June 1994) (Ex. 1004, “Technology &
`Learning”)
`
`D. The Asserted Grounds
`We instituted this proceeding based on the following specific grounds
`(Dec. 15):
`Reference(s)
`Reilly
`
`Basis
`§ 102(e)
`
`Claims Challenged
`1, 2, 20, 23, 29,
`and 30
`1, 2, 20, 23, 29,
`and 30
`
`§ 103(a)
`
`Reilly and Technology &
`Learning
`
`E. The ’686 Patent
`The ’686 patent is directed to techniques for retrieving information
`about a specific subject from remote databases. Ex. 1001, Abstract. At the
`time of the invention, high speed data connections were excessively
`expensive for many consumers, making it difficult to obtain information
`over the Internet and World Wide Web quickly. Id. at 1:12–39. The
`invention of the ’686 patent uses a search agent to retrieve information
`relating to a single, predefined subject, stores that information in a local
`database, and allows a user to access the locally stored information. Id. at
`2:8–23. Examples of subjects on which a user can seek information include
`news, cooking, weather, and sports. Id. at 3:40–43. The ’686 patent terms
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`such a system a subject-specific information retrieval and viewing system
`(“SIRViS”). Id. at Abstract.
`A SIRViS includes a graphical user interface (“GUI”) in cooperation
`with a search agent. Id. at 5:21–22. The GUI includes a control panel
`component and a content viewer component. Id. at 5:22–24. Figure 4 of the
`’686 patent, reproduced below, illustrates an example of a SIRViS:
`
`
`Figure 4 is a block diagram illustrating the functions of a SIRViS. Id. at
`2:40–41.
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`A user defines a set of search rules for a subject area (e.g., sports),
`using control panel 26. Id. at 5:24–28. The control panel component
`includes dialog boxes and other features, which, in a Windows-based
`environment, allow a user to enter, using a mouse, touchpad, etc., a set of
`search rules that define the type of information the user wants to access.
`Id. at 5:24–38. Control panel 26 maintains dataset 40 containing the search
`rules for the user and other users. Id. at 6:50–52. For example, each
`member of a family can define his or her own search rules for accessing
`information on the family’s personal computer. Id. at 5:27–30. To retrieve
`the subject-based information for the user, search agent 25 accesses dataset
`40, selects the rules defined by the user, retrieves information relating to the
`subject (e.g., sports) from remote database 34, and stores the retrieved
`information in local database 30. Id. at 6:53–57.
`Search agent 25 can perform the search periodically, at scheduled
`times, or directly in response to a user request. Id. at 6:61–65. When the
`user wants to access the information, content viewer 27 retrieves the user’s
`stored information from local database 30 and displays it to the user in a
`Windows-based environment. Id. at 6:14–24, 6:40–45.
`
`Claim 1, reproduced below, is illustrative of the claimed subject
`matter:
`
`1. A device for providing a plurality of local
`users with information stored remotely on a
`network, the device comprising:
`a rule generation unit configured to define,
`for each of the plurality of local users,
`a set of search rules applicable to a
`predefined subject; and
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`retrieve
`to
`a search agent configured
`information on only the predefined
`subject from a database on
`the
`network based on each set of search
`rules and
`to store
`the retrieved
`information in a local database.
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268, 1278 (Fed. Cir. 2015). Claim terms generally are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`In the Decision to Institute, we determined that no term required
`express construction for purposes of that Decision.3 Dec. 7. Nevertheless, it
`is necessary to construe several terms that include the word “search,” as well
`as the term “predefined subject,” in this Decision in order to decide the
`challenges to patentability presented in the Petition. See Wellman, Inc. v.
`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms
`need only be construed ‘to the extent necessary to resolve the controversy.’”
`
`
`3 Patent Owner argues that, because we did not adopt Petitioner’s proposed
`constructions or the constructions proposed by Patent Owner, Petitioner
`necessarily cannot make out a prima facie case of anticipation or
`obviousness. PO Resp. 35–39. Nevertheless, we analyze the arguments and
`evidence presented by Petitioner under our constructions as detailed in this
`Decision.
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`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999)).
`Claim 1 recites “a set of search rules” and “a search agent configured
`to retrieve information on only the predefined subject from a database on the
`network based on each set of search rules.” Claim 20 recites “a unique set
`of search criteria” and “retrieving information relating to only the
`predefined subject from a database on the network based on each set of
`search criteria.” Claim 29 recites “a set of search rules.”
`
`
`1. “search agent”
`Petitioner proposes construing “search agent” to mean “hardware
`and/or software capable of retrieving information and storing it,” but does
`not otherwise propose constructions for “search,” individually, or either of
`the terms “search rules” or “search criteria.” Pet. 5–6.
`In response, Patent Owner contends that Petitioner’s proposal does not
`fully appreciate the meaning of “search.” PO Resp. 11. Patent Owner does
`not propose an express construction of “search,” but does introduce technical
`dictionary definitions of the term, including:
`search (noun) – “The process of seeking a particular file or
`specific data. A search is carried out by a program through
`comparison or calculation to determine whether a match to
`some pattern exists or whether some other criteria have been
`met . . .”; and
`search (verb) – “1. To look for the location of a file. 2. To seek
`specific data within a file or data structure . . .”.
`PO Resp. 12 (quoting Ex. 2014 (MICROSOFT COMPUTER DICTIONARY, 4th
`ed.), 399) (emphases Patent Owner’s). From the dictionary definitions,
`Patent Owner concludes that the ordinary and customary meaning of “search
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`agent” is “a computer program that acts on behalf of a user to conduct a
`search for (e.g., seek/locate/look for) specific information, guided by search
`criteria that specify the particular information to be retrieved.” PO Resp. 12.
`
`Patent Owner argues that “the ’686 Patent explicitly indicates that
`mere retrieval (i.e., ‘gathering’) and storage (i.e., ‘download’) of information
`does not constitute a ‘search’.” PO Resp. 14.
`We are not persuaded by Patent Owner’s attempt to distinguish search
`agents from programs that perform “gathering” or “retrieval.” Rather,
`“retrieval” is precisely the function claim 1 assigns to the “search agent”: “a
`search agent configured to retrieve information on only the predefined
`subject from a database on the network based on each set of search rules.”
`This is consistent with the Specification, which states that “[t]he agent 25 is
`designed to use these sets of search rules to retrieve a specific type of
`information from the predefined remote databases 34 and to store that
`information in the local database 30 using the same data structure in which
`the data is stored in the remote databases 34.” Ex. 1001, 6:34–38 (emphasis
`added); see also id. at 3:11–13 (“The search agent may retrieve the
`information periodically or at specified days or times, for example.”
`(emphasis added)); 6:53–57 (“The agent 25 accesses the dataset 40, selects
`the set of rules for a particular user, [and] retrieves information from the
`remote database 34.” (emphasis added)).
`As these passages demonstrate, searching, in the context of the ’686
`patent, is retrieving a subset of the data stored on a database, the particular
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`subset retrieved being determined by search rules (or search criteria).4 This
`also is reflected in the structure of the independent claims. For example,
`claim 1 recites “a search agent configured to retrieve information on only
`the predefined subject from a database on the network based on each set of
`search rules.” Claim 20 recites “retrieving information relating to only the
`predefined subject from a database on the network based on each set of
`search criteria.” Claim 29 recites “retrieving information relating to only
`the predefined subject from a remote database on the network.”
`Regarding the meaning of “agent,” we accept a dictionary definition
`proposed by Patent Owner, namely “[a] program that performs a background
`task for a user and reports to the user when the task is done or some
`expected event has taken place.” PO Resp. 13 (quoting Ex. 2014
`(MICROSOFT COMPUTER DICTIONARY, 4th ed.)), 18. Although Petitioner
`protests that this excludes hardware and combinations of hardware and
`software (Reply 10), Petitioner presents no persuasive contrary evidence.
`Claim 1 further recites that “search rules” are defined by “a rule generation
`unit” for “each of the plurality of local users.” We also accept a technical
`dictionary definition of “search criteria” provided by Patent Owner, namely
`“[t]he terms or conditions that a search engine uses to find items in a
`database.” PO Resp. 12 (quoting Ex. 2014, 399). Considering this evidence
`together, we construe “search agent” to mean “a computer program that acts
`
`
`4 Claims 1 and 29 use the term “search rules,” while claims 2 and 20 use the
`term “search criteria.” The Specification appears to use the terms
`synonymously. Compare Ex. 1001, 2:10–11 with id. at 3:3–7. The parties
`do not argue persuasively that the terms should be assigned different
`meanings.
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`on behalf of a user to locate and retrieve information in accordance with
`search rules.”
`
`
`2. Alleged Distinction over “Push” Technology
`In arguing a distinction between “search” and “retrieve” or “gather,”
`Patent Owner contends that the Background of the Invention section of the
`’686 patent distinguishes the invention (which requires a “search”) from
`“push” technology (that merely “gathers”). PO Resp. 13–14 (citing
`Ex. 1001, 1:18–25). In particular, the ’686 patent states:
`Another, more
`recently developed
`information access
`technology is commonly referred to as “push” technology.
`With push technology, a remote server generally gathers
`information on various topics from remote databases, packages
`the information into subject groupings called “channels”, and
`automatically downloads selected channels to the user’s
`computer. The user does not need to search for or request the
`information. The retrieved information may be automatically
`stored locally on the user’s computer, such that the user can
`browse the information off-line at a time of his own choosing.
`Ex. 1001, 1:18–28.
`
`Patent Owner offers definitions of “push” and “pull” technology from
`dictionaries and periodicals. PO Resp. 20–22. For example, Patent Owner
`argues that “push” technologies are “designed to provide end users with
`personalized Web access by having a site actively ‘push’ requested
`information to a user’s desktop, either automatically or at specified
`intervals,” while “pull” is “[t]he process of retrieving data from a
`network server.” Id. at 20–21 (quoting Ex. 2014 (MICROSOFT COMPUTER
`DICTIONARY, 4th ed.), 364–66 (emphasis Patent Owner’s)). According to
`Patent Owner, “Push was developed as a means of relieving users from
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`having to actively retrieve (‘pull’) information from the Web.” Id. at 21
`(quoting Ex. 2014, 365–66 (emphasis Patent Owner’s)); see also Ex. 2015
`(PC MAGAZINE ENCYCLOPEDIA) (characterizing “push” technology as
`technology “in which selected data are automatically delivered to the user’s
`computer” and “pull” technology as technology “in which the user initiates a
`request for the data each time”).
`
`Patent Owner argues that the invention of the ’686 patent is directed
`to “pull” systems. PO Resp. 22. According to Patent Owner, “[t]he search
`technology disclosed by ’686 Patent in which users specify search criteria
`such that a search engine (e.g., search agent (25)) uses those criteria to seek
`and retrieve corresponding information is inherently ‘pull’ in nature.” Id.
`Patent Owner cites to Mr. Putnam’s testimony to show that “search
`technology” is “inherently ‘pull’ rather than ‘push’ in nature.” Id. (citing
`Ex. 2013 ¶ 44). Patent Owner, however, does not cite to any examples in
`the Specification describing “pull” technology in which the user (rather than
`a search agent) actively initiates requests for data.
`We do not read the ’686 patent to distinguish the invention from
`“push” technology or otherwise characterize the claims as limited to “pull”
`technology (a term the ’686 patent does not use). Rather, in the above-
`quoted passage (Ex. 1001, 1:18–28), consistent with Patent Owner’s
`dictionary definitions, the patent characterizes “push” technology as data
`gathering performed automatically by a remote server (rather than at the
`request of a user). According to the patent’s description of the preferred
`embodiments, a “search agent then automatically accesses content in the
`remote databases according to the search and stores the information in a
`local database.” Ex. 1001, 3:8–11. In one embodiment, “the search agent
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`25 may be located remotely from the client system 1.” Id. at 5:64–65. Thus,
`the ’686 patent describes a preferred embodiment of the invention
`consistently with Patent Owner’s definitions of “push” technology, in the
`sense that data are gathered automatically by software on a remote server
`and forwarded to the user’s local computer. In contrast to Patent Owner’s
`definitions of “pull” technology, the Specification describes the search agent
`retrieving data without the user actively initiating a search. Id. at 6:57–61
`(“In one embodiment, the agent 25 searches the remote database 34 on
`behalf of one or more users regardless of whether the client system 1 is
`currently in use by any user; hence, searches are generally performed
`automatically.” (emphasis added)). We note that information first must be
`located before it can be “pushed” or “pulled” to a user.
`Although the examples it describes are consistent with Patent Owner’s
`definitions of “push” technology, the ’686 patent nevertheless purports to
`distinguish the invention over “conventional” push technology and web
`browsers, which the patent states “do not provide a user-friendly way for a
`person to access large volumes of stored information in the event that he
`wishes to archive the information for later use.” Id. at 1:55–65. According
`to the patent,
`In contrast with conventional information access techniques,
`such as Web browsers and push technology, the search agent
`stores information in the local database using the same
`organizational structure in which the information was stored in
`the remote database. This structure is selected in advance to be
`suitable for effectively conveying information on the predefined
`subject area to a user in a format that can be easily assimilated.
`Id. at 3:19–26. Thus, according to the Specification, the advantage of the
`search agent of the preferred embodiments over conventional push
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`technology is in the way that it stores information, not whether it operates in
`a “push” or “pull” configuration. Patent Owner’s evidence does not show
`persuasively that the claim terms “search,” “search agent,” or any other
`claim language invokes a distinction between “push” and “pull”
`technologies.
`
`In sum, we are not persuaded that the claims are directed to
`technology characterized as “pull,” or exclude technology characterized as
`“push.”
`
`
`3. “search rules,” and “search criteria”
`Consistent with our construction of “search agent,” the above-cited
`dictionary definitions, and the above-cited description in the Specification,
`we further construe “search rules” and “search criteria” to mean “the terms
`or conditions used to identify items to be retrieved from a database.”
`See Ex. 1001, 3:3–11, 6:53–57; Ex. 2014, 399.
`
`
`4. “predefined subject”
`Claim 1 recites “a set of search rules applicable to a predefined
`subject” and “a search agent configured to retrieve information on only the
`predefined subject.” Neither party proposes a construction of this term.
`Nevertheless, the parties dispute the application of this term to Reilly.
`Petitioner, for example, contends that “news” can be a predefined
`subject. Pet. 29. In another instance, Petitioner contends that “football” can
`be a predefined subject. Id. at 44. Patent Owner’s declarant, Mr. Putnam,
`appears to agree with Petitioner’s first contention. Ex. 2013 ¶ 41 (“The
`search agents described in the ’686 Patent are designed to be specific to a
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`predefined subject area, such as news, cooking, weather, or sports.”).
`Mr. Putnam cites to column 3, lines 40–43, of the ’686 patent, which states
`“[t]he client system 1 may have multiple users who wish to access, from
`time to time, information stored in databases on the content servers 2
`relating to various topics, such as news, cooking, weather, sports, etc.” The
`parties appear to agree that this is the only disclosure in the ’686 patent of
`examples of predefined subjects. Tr. 15:18–16:12, 28:21–29:19.
`While neither party presents evidence to show the boundaries of the
`term “predefined subject,” the parties appear to agree that term is broad
`enough to encompass a high level topic such as “news.” This is consistent
`with the Specification. Ex. 1001, 3:40–43. Accordingly, the term
`“predefined subject” is broad enough to encompass “news.”
`
`
`B. Asserted Grounds of Unpatentability
`1. Anticipation by Reilly
`Patent claims are anticipated if a single prior art reference “show[s] all
`of the limitations of the claims arranged or combined in the same way as
`recited in the claims.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
`1370 (Fed. Cir. 2008); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir.
`1990).
`Petitioner contends that Reilly anticipates claims 1, 2, 20, 23, 29,
`and 30. Pet. 42. For the reasons given below, we agree.
`
`
`a. Overview of Reilly
`Reilly describes a system for matching information to subscribers’
`interests, retrieving the information, and displaying the information, together
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`with advertisements, in screen savers on the subscribers’ computers.
`Ex. 1003, 1:4–10, 5:20–23.
`Figure 1 of Reilly, reproduced below, illustrates an example:
`
`
`Figure 1 is a block diagram of an information and advertising distribution
`system. Id. at 3:30–32. Several subscriber computers, or clients 102, are
`connected to information server 104 via the Internet 119. Id. at 4:8–10.
`Additional clients are connected to local area network (“LAN”) server 108
`on LAN 106, and LAN server 108 is connected to information server 104
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`via the Internet 119. Petitioner focuses particularly on this LAN
`embodiment, as will be explained below.
`
`Information server 104 includes newswire interface 120 that receives
`news feeds from services such as the Associated Press (“AP”), the DOW
`news feed, and sports news feeds. Id. at 4:28–31. Information editor 130
`edits and formats the received news items into a form suitable to distribute to
`subscribers and stores the formatted items in information database 134.
`Id. at 4:31–38. Information editor 130 assigns each news item to an
`information category and, in some instances, a sub-category. Id. at 4:39–42.
`Information database 134 also stores advertisements 138, which also are
`assigned to information categories. Id. at 4:66–5:1.
`
`Each client 102 (or in the case of clients networked together in LAN
`106, the LAN server 108) includes category managers. Id. at 6:62–67.
`There can be a separate category manager for each information category.
`Id. at 7:3–6. Each category manager includes a category profiler, which
`presents a dialog box to a subscriber to determine whether the subscriber is
`interested in specific subcategories (e.g., by selecting and deselecting boxes
`corresponding to specific sports or specific sports teams, as shown in
`Figure 5). Id. at 7:13–18, 9:36–57. The categories selected by the
`subscriber are stored in a category profile data structure. Id. at 7:18–20,
`9:58–61.
`
`A subscriber computer connects to the information server at a time
`that the subscriber is not likely to be using the computer (e.g., once in the
`middle of the night) or periodically (e.g., every four hours) to download
`news items and advertisements, which then are stored in the subscriber
`computer’s local information database. Id. at 8:19–31. In the case of a LAN
`
`
`17
`
`
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`IPR2014-00717; IPR2015-00335
`Patent 6,108,686
`server serving several clients, the LAN server downloads news items and
`advertisements for all of the clients and stores them on its local database.
`Id. at 15:19–27. When an individual subscriber on a client computer of the
`LAN wants to view news items, the news items are filtered according to the
`subscriber’s user profile and the subscriber is presented with only those
`items and advertisements that match its profile. Id. at 15:27–39.
`
`For a particular subscriber, a screen saver program displays news
`items and advertisements (e.g., as shown in Figure 6). Id. at 11:40–52.
`Advertisements are displayed on subscribers’ workstations simultaneously
`with news items that have been assigned to the same category. Id. at 5:1–4.
`If the subscriber wants to read a particular news item, the subscriber can
`give a command (e.g., click on the news item with the mouse), after which a
`data viewer (Figure 2, data viewer 208, and Figure 10) is launched to display
`the full news story associated with the news item. Id. at 9:11–17, 13:29–37.
`
`
`b. Claims 1, 20, and 23
`Regarding claim 1, Petitioner contends that Reilly’s LAN server 108
`is a “device for providing a plurality of local users with information stored
`remotely on a network.” Pet. 21–22, 43. According to Petitioner, the clients
`in LAN 106 are the plurality of local users. Id. Petitioner further contends
`that Reilly’s category profiler is a “rule generation unit” and that the data
`structure the category profiler generates is a “set of search rules.” Id. at 22,
`44–45. Petitioner also contends that Reilly describes LAN server 108 as
`configured to retrieve news items and advertisements relating to a category
`selected by a subscriber and, thus, includes “a search agent configured to
`retrieve information on . . . the predefined subject from a database on the
`
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`18
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`IPR2014-00717; IPR2015-00335
`Patent 6,108,686
`network based on each set of search rules,” as recited in claim 1. Id. at 23,
`45–46. Petitioner argues that because both the news items and
`advertisements retrieved by LAN server 108 relate to the same subject, the
`search agent of the LAN server retrieves information “on only the
`predefined subject.” Id. at 22; see also Ex. 1003, 4:66–5:4 (“Advertisements
`138 are also stored in the information database 134 and each advertisement
`is assigned to at least one of the predefined information categories. Each
`advertisement is displayed on subscribers’ workstations simultaneously with
`news items assigned to the same category as the advertisement.”). Petitioner
`contends that LAN server 108, when it downloads news items into its local
`database, “store[s] the retrieved information in a local database.” Pet. 23,
`45–46. Regarding claims 20 and 23, Petitioner makes substantially the same
`contentions as it does for claim 1. Id. at 46–50.
`We have considered Petitioner’s evidence (Pet. 21–24, 42–50),
`including Dr. Almeroth’s testimony (Ex. 1005 ¶¶ 29–35), and agree with
`Petitioner that Reilly discloses each limitation of claims 1, 20, and 23. For
`the reasons below, we are not persuaded by Patent Owner’s arguments to the
`contrary. With the exception of claim 2 (discussed below), Patent Owner
`does not present separate arguments for each of the challenged claims.
`Rather, Patent Owner presents arguments common to independent claims 1,
`20, and 29.
`In its Response, Patent Owner contends that Reilly does not anticipate
`the challenged claims because it describes a “push” system of the type
`distinguished by the ’686 patent. PO Resp. 20–23. According to Patent
`Owner,
`whereas the methods and systems of the ’686 Patent utilize a
`search agent
`to
`identify,
`locate, and
`retrieve
`targeted
`
`19
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`IPR2014-00717; IPR2015-00335
`Patent 6,108,686
`information from one or more data sources, 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 information server (104).
`Id. at 22. Patent Owner also argues that PointCast, Inc., the assignee of
`Reilly, utilized “push” technology in its commercial product. Id. at 23. As
`explained in Section II.A.2 above, the challenged claims do not distinguish
`between “push” and “pull” technologies. Thus, whether Reilly implements
`“push” or “pull” technology is not dispositive of Petitioner’s challenge.
`We also disagree with Patent Owner’s characterization of Reilly.
`Information server 104 compiles news stories and stores them according to
`categories and sub-categories. Ex. 1003, 4:23–49. Software executing on
`client 102 (or LAN server 108, in a LAN configuration) locates and retrieves
`only some of the news stories from information server 104. Id. at 6:46–56.
`The news stories the software retrieves are determined by the categories and
`sub-categories selected by a user and supplied to category managers
`executing on client 102. Id. at 6:62–7:20, 9:36–61. The system described
`by Reilly locates and retrieves from a remote database the subset of the data
`stored on that database that corresponds to search rules provided by a user.
`Thus, Reilly teaches seeking out or locating information corresponding to
`search rules and retrieving the located information. As explained in Section
`II.A.1 above, this is consistent with the searching described in the ’686
`patent.
`Patent Owner further seeks to distinguish Reilly by arguing that it
`discloses “filtering” that is “passive” rather than a system that “actively
`searches.” PO Resp. 24–26. Patent Owner admits that, according to Reilly,
`“items to be downloaded are compared to the category preferences of a user
`
`
`20
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`IPR2014-00717; IPR2015-00335
`Patent 6,108,686
`profile, and items that are not excluded by the profile are transmitted to the
`user’s client (102)” and that “[t]he sub-category selections and filters are
`then used by the information server (104) to filter the information
`downloaded to the client, so that only information of interest to the
`subscribers is
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