`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,108,686
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`
`
`
`
`
`
`
`
`
`
`
`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 IPR2015-00335
`Patent No. 6,108,686
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`I.
`
`TABLE OF CONTENTS
`
`
`
`Page
`
`MANDATORY NOTICES (37 C.F.R. § 42.8(A)(1)) ............................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)) ................................................ 1
`
`Related Matters (37 C.F.R. § 42.8(b)(2)) ........................................................... 1
`
`Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3)) ........................................ 2
`
`Service Information (37 C.F.R. § 42.8(b)(4)) ................................................... 3
`
`II.
`
`FEES (37 C.F.R. § 42.103) ............................................................................................. 3
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. § 42.104 ................................................................................................................. 4
`
`A. Grounds for Standing (37 C.F.R. § 42.104(a)) ................................................ 4
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`Citation of Prior Art ............................................................................................ 4
`
`Claims and Statutory Grounds (37 C.F.R. §§ 42.104(b)(1) & (b)(2)) ........... 5
`
`Claim Construction (37 C.F.R. § 42.104(b)(3)) ............................................... 5
`
`Person of Ordinary Skill in the Art ................................................................. 10
`
`Unpatentability of the Construed Claims (37 C.F.R. § 42.104(b)(4)) ........ 10
`
`Supporting Evidence (37 C.F.R. § 42.104(b)(5)) ........................................... 11
`
`IV.
`
`SUMMARY OF THE ‘686 PATENT ....................................................................... 11
`
`A. Overview of the ‘686 Patent ............................................................................ 11
`
`B.
`
`Prosecution History Summary of the ‘686 Patent ........................................ 12
`
`V.
`
`THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF
`THE ‘686 PATENT ..................................................................................................... 13
`
`A.
`
`Prior Art .............................................................................................................. 14
`
`1.
`
`The Reilly Patent (Ex. 1003) ................................................................. 14
`
`- i -
`
`

`

`
`
`2.
`
`The Technology & Learning Article (Ex. 1004) ................................ 21
`
`B.
`
`Introduction to the Grounds: Correlation Between the LAN Server
`Embodiment of the Reilly Patent and the Claims ........................................ 22
`
`C. Ground I: The Combination of the Reilly Patent and the
`Technology & Learning Article Renders Obvious Each of Claims 1,
`2, 20, 23, 29 and 30 Under 35 U.S.C. § 103 ................................................... 26
`
`D. Ground II: The Reilly Patent Anticipates Each of Claims 1, 2, 20,
`23, 29 and 30 Under 35 U.S.C. § 102(e) ......................................................... 43
`
`VI. CONCLUSION............................................................................................................. 58
`
`
`
`
`
`
`- ii -
`
`

`

`
`
`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 6,108,686 (“the ‘686 Patent”)
`File History for U.S. Patent No. 6,108,686
`U.S. Patent No. 5,740,549 (“the Reilly patent” or “Reilly”)
`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.”)
`Curriculum vitae of Kevin C. Almeroth, Ph.D.
`
`
`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`
`Ex. 1005
`Ex. 1006
`
`
`
`
`- iii -
`
`

`

`
`
`
`
`LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics
`
`MobileComm U.S.A., Inc. (collectively “LG” or “petitioner”) submit this petition
`
`concurrently with a motion for joinder in previously-instituted inter partes review
`
`(“IPR”) of U.S. Patent No. 6,108,686 (“the ‘686 patent”), IPR2014-00717.
`
`I. MANDATORY NOTICES (37 C.F.R. § 42.8(A)(1))
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`The real parties in interest for this Petition for IPR are LG Electronics, Inc.,
`
`LG Electronics U.S.A., Inc., and LG Electronics MobileComm U.S.A. Inc.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`Black Hills Media, LLC (“Black Hills” or “Patent Owner”) is the owner of the
`
`’686 Patent. Black Hills asserted the ’686 Patent against LG and others in Certain
`
`Media Devices, including Televisions, Blu-Ray Disc Players, Home Theater Systems, Tablets and
`
`Mobile Phones, Components Thereof and Associated Software, Inv. No. 337-TA-882
`
`(U.S.I.T.C., filed May 13, 2013) (“the ITC Investigation”) and Black Hills Media, LLC
`
`v. LG Electronics, Inc., 1:13-cv-00803 (filed May 6, 2013) (“the district court litigation”).
`
`The ’686 patent was challenged by Samsung in IPR2014-00717, as noted above. The
`
`’686 Patent has been asserted in the following litigations:
`
`Black Hills Media LLC v. Yamaha Corp. Am. 8-14-cv-00101 CACD
`
`Jan. 21, 2014
`
`Black Hills Media LLC v. Sonos, Inc.
`
`2-14-cv-00486 CACD
`
`Jan. 21, 2014
`
`Black Hills Media LLC v. Yamaha Corp. Am. 2-14-cv-00482 CACD
`
`Jan. 21, 2014
`
`- 1 -
`
`

`

`
`
`Black Hills Media LLC v. Pioneer Elect.
`
`(USA) Inc.
`
`2-14-cv-00471 CACD
`
`Jan. 21, 2014
`
`Black Hills Media LLC v. Sonos Inc.
`
`2-13-cv-06062 CACD Aug. 19, 2013
`
`Black Hills Media LLC v. Yamaha Corp. Am. 2-13-cv-06054 CACD Aug. 19, 2013
`
`Black Hills Media LLC v. Logitech Inc.
`
`2-13-cv-06055 CACD Aug. 19, 2013
`
`Black Hills Media LLC v. Pioneer Corp.
`
`2-13-cv-05980 CACD Aug. 15, 2013
`
`Black Hills Media, LLC v. LG Elect., Inc.
`
`1-13-cv-00803 DED May 6, 2013
`
`Black Hills Media, LLC v. Sharp Corp.
`
`1-13-cv-00804 DED May 6, 2013
`
`Black Hills Media, LLC v. Toshiba Corp.
`
`1-13-cv-00805 DED May 6, 2013
`
`Black Hills Media, LLC v. Panasonic Corp.
`
`1-13-cv-00806 DED May 6, 2013
`
`Black Hills Media, LLC v. Samsung Elect. Co.
`
`Ltd.
`
`2-13-cv-00379
`
`TXE
`
`D
`
`May 6, 2013
`
`Black Hills Media LLC v. Sonos Inc.
`
`1-12-cv-00637 DED May 22, 2012
`
`Black Hills Media LLC v. Pioneer Corp.
`
`1-12-cv-00634 DED May 22, 2012
`
`Black Hills Media LLC v. Yamaha Corp. Am. 1-12-cv-00635 DED May 22, 2012
`
`Black Hills Media LLC v. Logitech Inc.
`
`1-12-cv-00636 DED May 22, 2012
`
`C.
`
`
`Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3))
`
`Lead Counsel
`
`Back-up Counsel
`
`- 2 -
`
`

`

`
`
`Doris Johnson Hines (Reg. No. 34,629)
`
`Jonathan R. Stroud (Reg. No. 72,518)
`
`dori.hines@finnegan.com
`
`jonathan.stroud@finnegan.com
`
`Finnegan, Henderson, Farabow, Garrett
`
`Finnegan, Henderson, Farabow, Garrett
`
`& Dunner, LLP
`
`& Dunner, LLP
`
`901 New York Avenue, N.W.
`
`901 New York Avenue, N.W.
`
`Washington, D.C. 20001-4413
`
`Washington, D.C. 20001-4413
`
`T: (202) 408-4250; F: (202) 408-4400
`
`T: (202) 408-4469; F: (202) 408-4400
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`D.
`Service information for lead and back-up counsel is provided in the
`
`designation of lead and back-up counsel above. Petitioners consent to electronic
`
`service.
`
`II.
`
`FEES (37 C.F.R. § 42.103)
`
`An electronic payment in the amount of $23,000.00 for the inter partes review
`
`fee specified by 37 C.F.R. § 42.15—comprising the $9,000.00 request fee and
`
`$14,000.00 post-institution fee—is being paid at the time of filing this petition. If there
`
`are any additional fees due in connection with the filing of this paper, please charge the
`
`required fees to our Deposit Account No. 06-0916.
`
`
`
`
`
`- 3 -
`
`

`

`
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. § 42.104
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ‘686 Patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting an inter partes review challenging the ‘686 Patent on the grounds
`
`identified in the present petition.
`
`B.
`
`Citation of Prior Art
`
`Exhibit
`
`Reference
`
`Publication
`
`Availability
`
`or Filing
`
`as Prior Art
`
`Date
`
`Ex. 1003
`
`U.S. Patent No. 5,740,549 (“the
`
`June 12,
`
`§ 102(e)
`
`Reilly patent” or “Reilly”)
`
`1995
`
`Ex. 1004
`
`Weiss, “New Places to Go Online,”
`
`May/June
`
`§ 102(b)
`
`14(8) Technology & Learning 109-
`
`1994
`
`115 (1994) (“the Technology &
`
`Learning Article”)
`
`
`
`
`
`- 4 -
`
`

`

`C.
`
`Claims and Statutory Grounds (37 C.F.R. §§ 42.104(b)(1)
`& (b)(2))
`
`The relief requested by Petitioner is that claims 1, 2, 20, 23, 29 and 30 of the
`
`‘686 Patent be found unpatentable and cancelled from the ‘686 Patent on the
`
`
`
`following grounds:
`
`Ground Claims
`
`Basis
`
`I
`
`II
`
`1, 2, 20, 23,
`
`Obvious under 35 U.S.C. § 103(a) in view of the
`
`29 and 30
`
`Reilly patent and the Technology & Learning Article
`
`1, 2, 20, 23,
`
`Anticipated under 35 U.S.C. § 102(e) based on the
`
`29 and 30
`
`Reilly patent
`
`D. Claim Construction (37 C.F.R. § 42.104(b)(3))
`A claim subject to IPR is given its “broadest reasonable construction in light of
`
`the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b).
`
`Should patent owner, in an effort to avoid the prior art, contend that the claims
`
`have a construction different from their broadest reasonable construction, the
`
`appropriate course is for patent owner to seek to amend the claims to expressly
`
`correspond to its contentions in this proceeding. See Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48756, 48764 (August 14, 2012). Of course, any such
`
`amendment would only be permissible if the proposed amended claims comply
`
`with 35 U.S.C. § 112. Petitioner has included below a discussion of the “broadest
`
`- 5 -
`
`

`

`
`
`reasonable construction consistent with the specification” (“BRC”) for a number of
`
`claim terms of the ‘686 Patent.
`
`Claim 1 recites a “rule generation unit” that defines a set of search rules.
`
`Petitioner submits that the BRC for this element is “hardware and/or software
`
`capable of generating a set of search rules.” The ‘686 Patent discloses that search
`
`rules may be generated within a “Subject-specific Information Retrieval and
`
`Viewing System” (“SIRViS”) based on observations of the user’s actions. Ex.
`
`1001, 5:40-48. Moreover, the ‘686 Patent discloses that SIRViS may be embodied
`
`as software executing on a client computer. Id. at 5:9-11. For at least these
`
`reasons, one skilled in the art would understand the BRC for this element is
`
`“hardware and/or software capable of generating a set of search rules.” Almeroth
`
`Dec., ¶ 20.
`
`Claim 1 also recites a “search agent” that retrieves information and stores
`
`the retrieved information in a local database. Petitioner submits that the BRC for
`
`this element is “hardware and/or software capable of retrieving information and
`
`storing it.” The ‘686 Patent discloses that SIRViS includes a search agent. Ex.
`
`1001, 5:21-22. The search agent separately uses each set of search rules to access
`
`information on a predefined subject area in one or more remote databases. Id. at
`
`5:48-51. The search agent then stores the retrieved information in a local database.
`
`Id. at 5:55-56. Moreover, the ‘686 Patent discloses that SIRViS may be embodied
`
`- 6 -
`
`

`

`
`
`as software executing on a client computer. Id. at 5:9-11. For at least these
`
`reasons, one skilled in the art would understand that the BRC for this element is
`
`“hardware and/or software capable of retrieving information and storing it.”
`
`Almeroth Dec., ¶ 21.
`
`Claim 1 recites “to store the retrieved information,” whereas each of claims
`
`20 and 29 recites “storing the retrieved information.” Petitioner submits that the
`
`BRC for “stor[ing] the retrieved information” is “storing the retrieved information
`
`in the same structure as, or a different structure from, the structure in which the
`
`information was stored in the remote database.” Claims 4, 25 and 31 respectively
`
`depend from claims 1, 20 and 29, and each expressly recites that the retrieved
`
`information is stored in the local database in the same structure that it was stored in
`
`the remote database. Under well-settled principles of claim differentiation,
`
`independent claims 1, 20, and 29 cannot be limited to being stored in the same
`
`structure in the local database as it was stored in the remote database. Therefore,
`
`Petitioner submits that the BRC for “stor[ing] the retrieved information” is “storing
`
`the retrieved information in the same structure as, or a different structure from, the
`
`structure in which the information was stored in the remote database.”
`
`Claim 2 recites a “user interface.” Petitioner submits that the BRC for “user
`
`interface” is “hardware, software or a combination thereof that facilitates input
`
`from a user into the system, or that facilitates output to the user from that system.”
`
`- 7 -
`
`

`

`
`
`Claim 2 expressly recites that the “user interface” may “enable . . . users to access”
`
`information in a local database; thus, the user interface may facilitate such access.
`
`Moreover, the specification of the ‘686 Patent discloses both a “user interface”
`
`(see, e.g. Ex. 1001, 2:15-21) and a “graphical user interface” or “GUI” (see, e.g.,
`
`Ex. 1001, 3:2-18). The GUI
`
`is responsible, among other things, for the
`
`communication of information entered by a user to other modules within the
`
`system. Ex. 1001, 3:3-8. The GUI, in particular, may itself include, in addition to
`
`a content viewer component, a control panel component that provides control
`
`functionality beyond passive display of information to, and direct input from, a
`
`user. Id. at 5:21-38. Based on these disclosures, one skilled in the art would
`
`understand that the BRC for “user interface” is “hardware, software or a
`
`combination thereof that facilitates input from a user into the system, or that
`
`facilitates output to the user from that system.” Almeroth Dec., ¶ 23.
`
`Claim 30 recites “using the computer system to receive the set of user inputs
`
`from said one of the local users.” Petitioner submits that the BRC for this element
`
`is “directly or indirectly receiving, through the computer system, the set of user
`
`inputs from said one of the local users.” The ‘686 Patent discloses an embodiment
`
`in which a SIRViS is operating in the client system. Ex. 1001, 3:35-50. In this
`
`embodiment, the SIRViS is embodied as application software that executes on the
`
`client computer system. Id. Thus, in this embodiment, user input is directly
`
`- 8 -
`
`

`

`
`
`received from the user by the client computer system. Id. at 6:47-65. Almeroth
`
`Dec., ¶ 24. In another embodiment, however, the ‘686 Patent discloses that the
`
`client system may represent multiple computer systems connected to each other on
`
`a LAN, corporate intranet, or the like. Ex. 1001, 4:14-24. In such a distributed
`
`system, user input could be received on one of the computers of the LAN that is
`
`distinct from the computer on which the SIRViS software is running. Almeroth
`
`Dec., ¶ 24. Thus, in such an embodiment, user input may be indirectly received
`
`from the user by the computer system carrying out SIRViS functionality.
`
`Almeroth Dec., ¶ 24. For these reasons, one skilled in the art would understand
`
`that the BRC for this element is “directly or indirectly receiving, through the
`
`computer system, the set of user inputs from said one of the local users.” Almeroth
`
`Dec., ¶ 24.
`
`Claim 30 also recites “using the computer system to output the information
`
`to said one of the local users.” Petitioner submits that the BRC for this element is
`
`“directly or indirectly outputting, through the computer system, the information to
`
`said one of the local users.” The ‘686 Patent discloses an embodiment in which a
`
`SIRViS is operating in the client system. Ex. 1001, 3:35-50. In this embodiment,
`
`the SIRViS is embodied as application software that executes on the client
`
`computer system. Id. In this embodiment, retrieved information, which was stored
`
`in a local database, is retrieved upon command of the user from the local database
`
`- 9 -
`
`

`

`
`
`and displayed on the user’s user interface. Id. at 7:3-19. In another embodiment,
`
`the ‘686 Patent discloses that the client system may represent multiple computer
`
`systems connected to each other on a LAN, corporate intranet, or the like. Id. at
`
`4:14-24. In such a distributed system, the computer on which the SIRViS software
`
`is running may be distinct from the user’s computer that includes a display on
`
`which
`
`the user views output. Almeroth Dec., ¶ 25. Thus,
`
`in such an
`
`embodiment, the user’s computer may output on its display retrieved information
`
`that was provided by the computer carrying out SIRViS functionality. Almeroth
`
`Dec., ¶ 25. For at least these reasons, one skilled in the art would understand that
`
`the BRC for this element is “directly or indirectly outputting, through the computer
`
`system, the information to said one of the local users.” Almeroth Dec., ¶ 25.
`
`Person of Ordinary Skill in the Art
`
`E.
`A person of ordinary skill in the art of the ‘686 Patent at the time of the
`
`alleged invention (“POSA”) would typically have had a M.S. degree in computer
`
`science in addition to two or more years of work experience relating to the field of
`
`the provision of information and multimedia services over wide area and local area
`
`networks. Almeroth Dec., ¶ 4.
`
`F. Unpatentability of the Construed Claims (37 C.F.R.
`§ 42.104(b)(4))
`
`An explanation of how claims 1, 2, 20, 23, 29 and 30 of the ‘686 Patent are
`
`unpatentable under the statutory grounds identified above, is provided in Section
`
`- 10 -
`
`

`

`
`
`V., below.
`
`Supporting Evidence (37 C.F.R. § 42.104(b)(5))
`
`G.
`The exhibit numbers of the supporting evidence relied upon to support the
`
`challenge and the relevance of the evidence to the challenge raised, including
`
`identifying specific portions of the evidence that support the challenge, are
`
`provided below in the form of explanatory text and claim charts. An Exhibit List
`
`with the exhibit numbers and a brief description of each exhibit is set forth above.
`
`IV. SUMMARY OF THE ‘686 PATENT
`A. Overview of the ‘686 Patent
`The ‘686 Patent discloses a Subject-specific Information Retrieval and
`
`Viewing System (“SIRViS”) that enables multiple users of a local computer
`
`system to access information stored remotely on a wide area network. Ex. 1001,
`
`Abstract, 3:36 - 4:4 and Fig. 1. The SIRViS is designed to retrieve and display to
`
`a user information relating to a particular, predefined subject area. Id. at Abstract
`
`and 6:26-28. The SIRViS includes a graphical user interface including a control
`
`panel and a content viewer. Id. at Abstract and 5:21-39. The control panel may
`
`enable each local user to define a unique set of search rules for locating
`
`information on the particular subject area stored in one or more remote databases
`
`across the network, or it may enable the search rules to be generated by hardware
`
`and/or software. Id. at 5:21-6:25. Each set of search rules is provided to a search
`
`agent, which accesses content in the remote databases according to the search and
`
`- 11 -
`
`

`

`
`
`stores the information in a local database. Id. at 5:49 - 6:13. Any of the local users
`
`can use the content viewer to access and display information stored in the local
`
`database relating to the particular subject area and to that particular user. Id. at
`
`Abstract, 6:14-24.
`
`Prosecution History Summary of the ‘686 Patent
`
`B.
`The ‘686 Patent was filed on March 2, 1998, as application number
`
`09/034,773.
`
`A number of responses, amendments, and interview summaries are present
`
`in the file history of the ’686 Patent. Petitioner summarizes here the ones most
`
`relevant to the grounds of unpatentability set forth in the present Petition.
`
`In the Office Action dated December 28, 1999, all pending claims were
`
`rejected under 35 U.S.C. § 103 as being obvious in light of the Syeda-Mahmood
`
`patent (U.S. Patent No. 5,920,856). Ex. 1002, pp. 110-18. The Examiner
`
`indicated, among other things, that although the Syeda-Mahmood patent did not
`
`expressly disclose “local users” and a “local database” as recited, it was well
`
`known that a server providing services to remote users could also provide services
`
`to local users (and store information in, for example, a local database). Id. at 113-
`
`14.
`
`In a Response dated March 13, 2000, the Applicant indicated that the
`
`“local” limitation of the claims was important, because it ensured that information
`
`- 12 -
`
`

`

`
`
`retrieval by the users of the system would be quick. Id. at 170-72. Applicant
`
`indicated that the Syeda-Mahmood patent contained no disclosure of such “local”
`
`interaction that would lead to speedy information retrieval. Id.
`
`Applicant further argued that the claims recite distinct search rules for each
`
`of a plurality of users, and that the Syeda-Mahmood patent merely discloses a
`
`common database for all users. Id. at 170-72.
`
`Applicant also
`
`indicated that the claims require storing (in the
`
`local
`
`database) “the retrieved information,” as recited. Based on this, they argued that
`
`the Syeda-Mahmood patent failed to satisfy this element, because that patent
`
`disclosed processing retrieved
`
`information to generate query and scope-of-
`
`relevancy information and only storing the latter (but not storing “the retrieved”
`
`information). Id. at 172.
`
`A Notice of Allowance then issued on April 24, 2000, and the ‘686 Patent
`
`was granted on August 22, 2000. The Examiner did not include a Statement of the
`
`Reasons for Allowance in the Notice of Allowance. Id. at 182-84.
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF
`THE ‘686 PATENT
`
`The subject matter of claims 1, 2, 20, 23, 29 and 30 of the ‘686 Patent is
`
`disclosed and taught in the prior art as explained below. As set forth in § V.A. and
`
`B., the references and combination utilized in Ground I render obvious each of
`
`- 13 -
`
`

`

`
`
`claims 1, 2, 20, 23, 29 and 30 pursuant to 35 U.S.C. §103, and provide a reasonable
`
`likelihood that the Petitioner will prevail on at least one claim. 35 U.S.C. § 314(a).
`
`Additionally,
`
`the
`
`reference
`
`utilized
`
`in Ground
`
`II
`
`anticipates
`
`each
`
`of claims 1, 2, 20, 23, 29 and 30 pursuant to 35 U.S.C. §102(e), and also provides a
`
`reasonable likelihood that the Petitioner will prevail on at least one claim. 35
`
`U.S.C. § 314(a).
`
`Prior Art
`
`A.
`Paragraphs 14-17 of the Almeroth Declaration describe the state of the art
`
`regarding information search, retrieval, and storage in the 1997 time frame. As that
`
`discussion and the prior art make clear, by March 1997, the purported innovations
`
`of the ‘686 Patent were well-known.
`
`1.
`The Reilly patent (U.S. Patent No. 5,740,549) was filed in the U.S. on June
`
`The Reilly Patent (Ex. 1003)
`
`12, 1995, and issued on April 14, 1998. It therefore qualifies as prior art to the
`
`‘686 Patent under 35 U.S.C. § 102(e). The Reilly patent was neither cited nor
`
`considered during prosecution of the ‘686 Patent.
`
`The Reilly patent discloses a computer based information and advertising
`
`distribution system
`
`that
`
`includes multiple client computers,
`
`i.e., subscriber
`
`workstations, and at least one information server computer. Ex. 1003, 3:66 - 4:38.
`
`Each subscriber workstation includes a central processing unit, primary memory,
`
`- 14 -
`
`

`

`
`
`secondary memory, a user interface and an Internet interface for communication
`
`with the information server via the Internet. Id. at 6:17-36 and Fig. 2. The
`
`subscriber workstation's secondary memory stores a local information database that
`
`includes news stories, advertisements, images and display scripts. Id. at 6:46-56.
`
`Reilly Patent - First Embodiment
`
`In a first embodiment, the Reilly patent discloses that the subscriber
`
`workstation includes Screen Saver and Viewer Procedures for controlling the
`
`display of news stories and advertisements. Id. at 6:62-64. These procedures
`
`include a category manager module that includes a category profiler module that
`
`presents a dialog to the subscriber to determine the subscriber's interest in
`
`receiving information relating to particular categories of information. Id. at 6:62-
`
`7:20. The category module then generates a data structure that represents the
`
`subcategories of interest to the subscriber. Id. at 9:59-62. The data structure can
`
`additionally include a filter based on keywords entered by the user that causes the
`
`retrieval of news items in the relevant user-preferred categories that include the
`
`keywords entered by the user. Id. at 9:50-58. This data structure is unique,
`
`because it is generated independently for each subscriber workstation connected to
`
`the LAN server. Id. at 7:13-20. The subscriber workstation from time-to-time
`
`connects with the information server, obtains information that is responsive to the
`
`data structure (including, for example, news items and ads) from the information
`
`server, and stores this information in a local database. Id. at 8:19-29 and 16:22-26.
`
`- 15 -
`
`

`

`The subscriber can then view the downloaded information at a time of the
`
`subscriber’s choosing. Id. at 9:11-17.
`
`
`
`
`Reilly Patent - Second Embodiment (“LAN Server Embodiment”)
`
`In a second embodiment (referred to herein alternatively as the “second
`
`embodiment” or the “LAN Server Embodiment”), the Reilly patent discloses a
`
`LAN server to which a plurality of subscriber workstations are connected, and
`
`which connects to an information server on the Internet to retrieve information
`
`corresponding to the preferences of each of the subscriber workstations on behalf
`
`- 16 -
`
`

`

`
`
`of those subscriber workstations. Id. at 4:5-7, 6:20-25, 8:19-29 and Fig. 1. In this
`
`embodiment, the LAN server contains the functionality of the subscriber
`
`workstation as discussed earlier, except
`
`that
`
`the user’s display device
`
`is
`
`nevertheless located at the subscriber’s premises. Id. at 6:20-25 and Figs. 1-2.
`
`
`Thus, in the second embodiment, a category profiler module of the LAN
`
`server (instead of the subscriber workstation) obtains the subscriber’s preferences
`
`regarding categories of information which the subscriber would like to access from
`
`each of the users of users’ workstations connected to the LAN server, and uses
`
`these preferences to generate a data structure for use in the search for responsive
`
`- 17 -
`
`

`

`
`
`information. Id. at 6:20-25; 6:62-7:20; and 9:36-62; Almeroth Dec., ¶ 29. The
`
`data structure can also include filters based on user-entered keywords that cause
`
`the retrieval of news items in the relevant user-preferred categories that include the
`
`keywords entered by the user. Ex. 1003 at 6:20-25; 6:62-7:20; and 9:36-62;
`
`Almeroth Dec., ¶ 29. Moreover, in the second embodiment, the LAN server
`
`retrieves information from the information server that is responsive to the data
`
`structures of the subscribers whose workstations are connected to the LAN server,
`
`and stores this information in a local database. Ex. 1003, 6:20-25, 8:19-29, 15:19-
`
`40, 4:8-15, 16:22-26 and Figs. 1-2. Almeroth Dec., ¶ 29-30. Thus, each data
`
`structure comprises a set of “search rules” or “search criteria.” This data structure
`
`is unique, because it is generated independently for each subscriber workstation
`
`connected to the LAN server. Ex. 1003, 7:13-20, 6:20-25; Almeroth Dec., ¶ 29.
`
`Finally, in the second embodiment, the LAN server stores the obtained
`
`information in a database local to the LAN Server. Id. at 6:20-25 and 15:7-9.
`
`Almeroth Dec., ¶ 30. The subscriber can view the downloaded information at a
`
`time of the subscriber’s choosing. Ex. 1003, 9:11-17; 6:20-25.
`
`The Reilly patent discloses that news is a type of information that the
`
`subscriber workstations obtain using the system of the invention. Ex. 1003, 4:28-
`
`49; 6:20-25. The Reilly patent also discloses that ads directed to the user are
`
`served along with the news content. Id. at 5:1-4; 6:20-25. The Reilly patent
`
`- 18 -
`
`

`

`
`
`further discloses that each advertisement is assigned to at least one of the
`
`predefined information categories, and is displayed simultaneously with the news
`
`items assigned to the same category as the advertisement. Id. at 4:66 - 5:4; 6:20-
`
`25. For example, if the user indicates a preference for “football news,” then the
`
`user receives both news and ads relating to football. Id. at 4:66 - 5:4, Fig. 5; 6:20-
`
`25; 9:36-58.
`
`Because the Reilly patent discloses that ads are served to the user along with
`
`the selected information category, a person of ordinary skill in the art would
`
`interpret the Reilly patent as disclosing two alternative methods for serving
`
`information on a predefined subject. In a first method, the user is served
`
`information in two distinct predefined subjects: (i) the predefined subject of news,
`
`and (ii) the predefined subject of ads. Almeroth Dec., ¶ 32. Ground I of this
`
`petition, discussed in detail further below, is based on this interpretation by a
`
`person of ordinary skill in the art of the disclosure of the Reilly patent. In a second
`
`method, the user is served information in a single predefined subject (e.g., the
`
`predefined subject of football) because the ads and news served to the user relate to
`
`the same predefined category of information (e.g., the predefined category of
`
`football). Ground II of this petition, discussed in detail further below, is based on
`
`this alternative interpretation by a person of ordinary skill in the art of the
`
`disclosure of the Reilly patent. Almeroth Dec., ¶ 33.
`
`
`
`- 19 -
`
`

`

`
`
`The Reilly patent, in the first embodiment discussed earlier, discloses that
`
`each subscriber workstation includes a user interface that permits the subscriber to
`
`access news stories that the subscriber specifically wants to read. Id. at 9:11-17,
`
`13:28-37. This user interface includes a screen saver mode which displays news
`
`stories corresponding to the subscriber’s preferences after a period of inaction. Id.
`
`at 11:40-49. On the other hand, in the second embodiment of the Reilly patent, the
`
`LAN server carries out user interface functionality for the subscriber workstations
`
`by filtering content according to each subscriber’s preferences. Id. at 15:19-37.
`
`Almeroth Dec., ¶ 34.
`
`As discussed earlier, the first embodiment of Reilly includes a category
`
`profiler module that presents a dialog to the subscriber to determine the
`
`subscriber's interest in receiving information relating to particular categories of
`
`information and that stores this information as a data structure. Ex. 1003, 6:62-
`
`7:20. In the second embodiment, the Reilly patent discloses a LAN server to
`
`which a plurality of subscriber workstations are connected, and which connects to
`
`an information server on the Internet to retrieve information corresponding to the
`
`preferences of each of the subscriber workstations on behalf of those subscriber
`
`workstations. Id. at 4:5-7, 6:20-25, 8:19-29 and Fig. 1. In this embodiment, the
`
`LAN server contains the functionality of the subscriber workstation as discussed
`
`earlier, except that the user’s display device is nevertheless located at the
`
`- 20 -
`
`

`

`
`
`subscriber’s premises. Id. at 6:20-25 and Figs. 1-2. Thus,
`
`in the second
`
`embodiment, the LAN server receives information on the subscribers’ preferences
`
`and interests, i.e., it receives inputs from these subscribers. Almeroth Dec., ¶ 35.
`
`Similarly, in the second embodiment, the LAN server serves relevant retrieved
`
`information to each corresponding subscriber workstation, i.e., the LAN server
`
`outputs such information to the corresponding user, upon a command of the user.
`
`Ex. 1003, 15:19-40, 9:11-17 and 13:28-37. Almeroth Dec., ¶ 35.
`
`2.
`The Technology & Learning Article was published in the May/June 1994
`
`The Technology & Learning Article (Ex. 1004)
`
`issue of Technology & Learning. It therefore qualifies as prior art to the ‘686
`
`Patent under 35 U.S.C. § 102(b). The Technology & Learning Article was neither
`
`cited nor considered during prosecution of the ‘686 Patent.
`
`The Technology & Learning Article reviews information products re