UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`SERVICENOW, INC.
`Petitioner
`
`
`
`v.
`
`
`
`BMC SOFTWARE, INC.
`Patent Owner
`____________________
`
`
`Case IPR 2015‐01211
`
`Patent No. 7,617,073
`Filed February 28, 2003
`Issued November 10, 2009
`Title: System and method for assessing and indicating
`the health of components
`____________________
`
`Filed electronically via the Patent Review Processing System (PRPS) on
`February 22, 2016
`
`
`
`
`
`
`PATENT OWNER’S RESPONSE TO PETITION FOR INTER
`PARTES REVIEW OF U.S. PATENT NO. 7,617,073
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`

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`
`
`
`
`TABLE OF CONTENTS
`
`Patent Owner’s Response
`IPR2015-01211
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`INTRODUCTION ........................................................................................... 1
`OVERVIEW OF U.S. PATENT NO. 7,617,073 ............................................ 1
`Background of the Technology ............................................................. 1
`A.
`
`The ’073 Inventors, Jean-Marc Trinon and Olivier Pignault,
`B.
`
`were Pioneers in the Field of Enterprise Management ......................... 2
`BMC Today ........................................................................................... 4
`C.
`
`
` Overview of the Claimed Invention of the ’073 Patent ........................ 5 D.
`III. RESPONSE TO SERVICENOW’S CLAIM CONSTRUCTIONS .............. 11
`Claim 1 of the ’073 Patent is Representative of the Use of
`A.
`
`Terms for Construction ....................................................................... 13
`IT Component ...................................................................................... 13
`B.
`
`IT Subcomponent ................................................................................ 14
`C.
`
`Processor ............................................................................................. 16
`D.
`
`
` Wherein the first and second indicator are each separately E.
`visible at the same time on a single display window of a
`display unit .......................................................................................... 17
`IV. CLAIMS 1-4 OF THE ’073 PATENT ARE NOT ANTICIPATED
`BY LEWIS ..................................................................................................... 20
`Legal Standard ..................................................................................... 20
`A.
`
`Overview of the Prior Art - Lewis ...................................................... 21
`B.
`
`C.
`Figure 35 of Lewis as presented by Petitioner is illegible and
`
`does not provide sufficient evidence of anticipation .......................... 22
`Lewis does not disclose “an IT component processor adapted
`to compute a component health status of the IT component” as
`recited in claim 1 ................................................................................. 23
`Lewis fails to disclose “a renderer adapted to display the
`health status of the IT component by showing a first indicator
`for the IT component and a second indicator for the at least
`one IT subcomponent, wherein the first and second indicators
`are each separately visible at the same time on a single display
`window of a display unit” as recited in claim 1 .................................. 27
`i
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`D.
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`E.
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`I.
`II.
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`Patent Owner’s Response
`IPR2015-01211
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`
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`Lewis does not disclose a “first indicator” and a
`“second
`indicator”
`that convey
`independent and
`separate health statuses corresponding
`to an IT
`component and an IT subcomponent, respectively ................... 27
`i.e.,
`Lewis requires additional affirmative action,
`navigation between windows, to ascertain the health
`statuses of components ............................................................. 30
`CONCLUSION .............................................................................................. 33
`
`1.
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`2.
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`
`
`V.
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`ii
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`TABLE OF AUTHORITIES
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`Patent Owner’s Response
`IPR2015-01211
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`
`CASES
`AOL, Inc. and Cloudera, Inc. v. COHO Licensing LLC,
`IPR2014-00771, 2014 Pat. App. LEXIS 7783 (P.T.A.B. Nov. 20,
`2014) ................................................................................................................... 12
`
`Page(s)
`
`Avaya Inc., Dell Inc., Sony Corporation Of America, and Hewlett-
`Packard Co. v. Network-1 Security Solutions Inc.,
`IPR2013-00071 ................................................................................................... 32
`
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1297 (Fed. Cir. 2015) .......................................................................... 11
`
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) ............................................................................ 20
`
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) .......................................................................... 11
`
`Intelligent Bio-Sys. v. Illumina Cambridge Ltd.,
`IPR2013-00266, 2014 Pat. App. LEXIS 8332 (P.T.A.B. Oct. 28,
`2014) ................................................................................................................... 22
`
`Motorola Mobility, LLC v. ITC,
`737 F.3d 1345 (Fed. Cir. 2013) .......................................................................... 20
`
`Power Integrations, Inc. v. Lee,
`797 F.3d 1318 (Fed. Cir. 2015) .......................................................................... 12
`
`Verdegaal Bros., Inc. v. Union Oil Co. of Cal.,
`814 F.2d 628 (Fed. Cir. 1987) ............................................................................ 20
`
`ZTE Corp. v. ContentGuard Holdings, Inc.,
`IPR2013-00137 ................................................................................................... 31
`
`STATUTES
`
`37 C.F.R. § 42.6(e) ................................................................................................... 35
`
`35 U.S.C. § 102(b) ................................................................................................... 33
`
`iii
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`35 U.S.C. § 314(a) ................................................................................................... 22
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`Patent Owner’s Response
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`iv
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`I.
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`Patent Owner’s Response
`IPR2015-01211
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`
`
`INTRODUCTION
`The Board instituted inter partes review of claims 1 – 4 of U.S. Patent No.
`
`7,617,073 (Ex. 1001, “the ’073 patent”) as anticipated by International Patent
`
`Application Publication No. WO 00/72183 A2 to Lundy Lewis, published
`
`November 30, 2000 (Ex. 1004, “Lewis”). The Board should deny the petition
`
`because the cited prior art does not necessarily disclose every element of the
`
`claimed inventions and mere possibility is not a sufficient basis for anticipation.
`
`II. OVERVIEW OF U.S. PATENT NO. 7,617,073
` Background of the Technology A.
`
`Many companies began exploring alternatives to the use of mainframe or
`
`“mini” computers by 1990. Among other things, many companies moved to the
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`use of “client/server” computer networks. In such situations, a “server” computer
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`would run various applications or maintain databases that were accessible to
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`“client” computers in the network. As the use of different computers, operating
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`software, applications, and databases grew, so did the number of computers in the
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`network, including both servers and clients.
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`And, there was a need for network management technology to provide
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`increased automation and efficiency that would be easy to implement and yet
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`maintain flexibility as such systems grew. To manage these complex and growing
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`computer networks accordingly, companies often relied on the Information
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`1
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`Technology (“IT”) department personnel to monitor their networks. Such
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`personnel often needed to personally check on a server or client to see if it was
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`operating properly. Because a human administrator can only do so much,
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`companies needed to hire more and more personnel to handle the larger and more
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`complex networks that existed. In response, software vendors began offering
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`“system management” software products that could help administrators monitor
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`computer networks. One such vendor was IT Masters Technologies S.A., the
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`original assignee of the ’073 patent.
`
`B.
`
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`The ’073 Inventors, Jean-Marc Trinon and Olivier Pignault, were
`Pioneers in the Field of Enterprise Management
`
`In the days before the inventions of the ’073 patent, IT management systems
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`were limited to processing and monitoring events at the component level. These
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`systems lacked the capability to assess the impact that component-level events had
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`on the business because component-level events were not correlated to business
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`services and it was not readily possible to identify what business services were
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`impacted by a component-level event or how those business services might be
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`impacted. As a result, system administrators did not have the tools needed to
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`optimally prioritize resources in an enterprise system.
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`When the industry began looking for solutions to monitor enterprise systems
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`from the business service perspective, Messrs. Trinon and Pignault, who were
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`2
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`working at IT Masters at the time, were on the front line of developing products
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`that moved away from component-specific monitoring to providing business
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`context to the event-processing feature of enterprise systems.
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`In or about 2001, Messrs. Trinon and Pignault first conceived of the initial
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`concept of a management tool that modeled the impact of IT service level
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`degradation on business processes. In the Information Technology context, service
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`levels include things such as the expectations of a business regarding identification
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`of risks, prioritization of resources, and delivery of services to meet business
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`demands. Messrs. Trinon and Pignault developed software that provided real-time
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`assessments of IT service levels on business services. This concept was
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`incorporated into the ’073 patent, and it formed the basis of IT Masters’ flagship
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`product—Master Cell.
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`BMC acquired IT Masters, for $42 million in 2003. (Ex. 2001, BMC
`
`Software
`
`Acquires
`
`IT Masters
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`for
`
`$42 Million,
`
`available
`
`at
`
`http://www.wsj.com/articles/SB104856648021382500 (last accessed August 31,
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`2015).) With this acquisition, BMC expanded its capabilities of providing real-
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`time service modelling, root cause analysis and business service
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`level
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`management. Master Cell was immediately incorporated into existing BMC
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`platforms.
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`3
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` BMC Today C.
`By developing and acquiring leading technologies, BMC has been able to
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`provide its customers the foundational technology in IT management. Presently,
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`approximately 6,000 BMC employees support more than 20,000 customers across
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`the globe. More than 80% of Fortune 500 companies rely on BMC for innovative
`
`and
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`industrialized
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`IT
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`solutions.
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`
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`(Ex. 2002, About BMC Software,
`
`http://www.bmc.com/corporate/about-bmc-software.html (last accessed August 31,
`
`2015).)
`
`BMC’s IT management systems enable companies to easily manage, track,
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`and service the ever-increasing number of network servers, computers, printers,
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`software applications, and other computing resources needed across an enterprise,
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`to ensure its customers are not disrupted in their business activities. Helping build
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`the IT management industry through the design and development of modern IT
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`management systems was no small feat. BMC made enormous investments over
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`many years in research and development, as well as significant acquisitions. From
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`these investments, BMC invented or acquired, and further developed the
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`technologies needed to make modern IT management system a reality. For
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`example, BMC has invested approximately $8 billion in research and development
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`during the past 34 years to help build many of today’s leading IT management
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`4
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`solutions. The results of these efforts are highly valuable and include patented
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`innovations such as the ’073 patent.
`
`
` Overview of the Claimed Invention of the ’073 Patent D.
`The ’073 patent is generally directed to systems and methods for
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`visualization of the components of an enterprise system and/or the rendering of
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`information related to the health or status of the enterprise system, its components,
`
`and subcomponents. See Ex. 1001, Abstract. In particular, claim 1 generally is
`
`directed to a system that includes a renderer adapted to display indicators
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`associated with the health statuses of IT components in an enterprise system on a
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`single display.
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`The ’073 patent explains that IT components may consist of computers,
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`computer peripherals, computer programs, networking equipment, and
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`manufacturing equipment. See Ex. 1001, 1:27-29. IT components also include
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`virtual IT components such as business processes that may be combined into a
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`business system. See Id., 1:29-31. The IT components in enterprise systems relate
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`to each other in different ways. See Id., 1:31-32. For example, some IT
`
`components may be parts of other components. See Id., 1:32-33. Still, other IT
`
`components may depend on services provided by other IT components. See Id.,
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`1:33-35. The inventions of the ’073 patent provide IT personnel managing the
`
`availability of business processes and IT systems with a technique for assessing the
`
`
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`5
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`“health” of the various IT components or non-IT components that are combined
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`Patent Owner’s Response
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`into a complex system delivering IT services. See Id., 1:14-20. The ’073 patent
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`teaches a particular visualization of the manner in which these components relate
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`and depend on each other’s “health” or status. See Id., 1:55-57.
`
`The ’073 patent discusses several “common representations” of IT
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`components using graphical user interfaces (“GUI”):
`
`A single view showing the components at one level, such as the
`window seen when a user double clicks on the icon representing
`the computer on his or her desktop;
`An expandable tree (like in the left window of the WINDOWS®
`EXPLORER); and
`An [sic] star tree, such as the technology from Inxight Software
`Inc.
`
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`Ex. 1001, 1:39-45. Through such interfaces and representations of IT components,
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`the ’073 patent explains “users can navigate through the representation of the
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`systems by expanding parts of the tree or by selecting the icons representing the
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`component they want to explore further,” which “typically results in showing more
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`details over the selected component.” See Id., 1:46-49. “In doing so, the user can
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`see the components that are part of the selected component or components that the
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`selected component is depending upon.” See Id., 1:49-52.
`
`
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`6
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`The ’073 patent discusses rendering health or status information about the
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`displayed IT components by relying on color. See Id., 1:61-66. Coloration is
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`associated with a severity level, which in turn is associated with the health of the
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`corresponding IT component. See Id., 1:64-2:2. These health conditions are
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`conveyed as alarms, alerts, events, Simple Network Management Protocol (SNMP)
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`traps, or equivalent forms. See Id., 2:2-6. Accordingly, the ’073 patent discusses
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`“two common ways” of determining the corresponding colors of IT components:
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`(1) associating an IT component with the color of the most severe event related to
`
`the IT component; and (2) computing a status of the underlying events related to
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`the IT component, and determining the corresponding color to be displayed
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`indicating the level of severity of the status computed. See Id., 2:9-16.
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`As recognized by the inventors of the ’073 patent, a problem arises when a
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`single color code is displayed for each component because that color code may
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`indicate the health of an IT component or the IT component’s subparts or the
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`components depending on it, i.e., an IT subcomponent. In such a system,
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`information may be lost, because when an IT component is assigned a color code,
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`it is not possible to know if the color code is an indication of an IT component’s
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`own status or alerts or is due to the statuses or alerts of its IT subcomponents. See
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`Id., 2:24-30. Such a process of aggregating the severities to one single color would
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`require a user to further manipulate the user interface for more information. See
`
`7
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`Id., 2:44-48. The ’073 patent inventors recognized that there was a need to be able
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`to provide more health information of IT components, which is otherwise lost
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`through a conglomeration of information into a single indicator. See Id., 2:48-50.
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`The ’073 patent provides a representative example of such a situation:
`
`[C]omponent A is composed of components B and C or depends
`on components B and C. For the purposes of this example, a
`green indicator is used when a component is healthy and a red
`one when it is not. If A is healthy and B or/and C is not, then a
`red indicator is used for A in these systems, even if A is not
`actually impacted.
`
`If A is not healthy and B and C are healthy, then a red indicator
`is used for A. The same color indicator is used and it does not
`enable [sic] to distinguish between the two situations in these
`systems. These systems and their methods of use require
`additional navigation through the GUI to distinguish these
`different situations.
`
`
`Ex. 1001, 3:16-28. The ’073 patent inventions solve this problem.
`
`The ’073 patent remedies the disadvantages of using a single color code or
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`indicator by disclosing and claiming a system that uses at least two colors for a
`
`single component, such that information about the component and information
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`about
`
`the underlying subcomponents can be conveyed separately and
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`independently. Figure 1 illustrates the use of two-color indicators in a tree
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`presentation:
`
`
`
`The ’073 patent teaches that using two-color indicators allows a user to
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`know whether it is the IT component or its subcomponents that are healthy. See
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`Id., 3:36-38. By using the technique disclosed in the ’073 patent, the health status
`
`of an IT component can be completely independent from the health status of its
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`subcomponents. See Id., 3:39-41. This was not possible in the prior art without
`
`drilling down as “all existing implementations are using a single color code per
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`component.” See Id., 2:23-24. The inventions described in the ’073 patent enable
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`a user to derive the health of an IT component from the events received on the IT
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`component itself as well as from the events received for its subcomponents. See
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`Id., 3:41-46.
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`To further illustrate the invention, Figure 1 of the ’073 patent describes IT
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`components with at least two indicators: a green indicator used when a component
`
`is healthy; and a red indicator used when it is unhealthy. Following Figure 1(as
`
`modified below), component FO@biz is
`
`composed
`
`of
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`components
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`ca_os@FO@biz and ny_os@FO@biz.
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`See Id., 4:13-15.) FO@biz includes a
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`green indicator in the foreground and a
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`red
`
`indicator
`
`in
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`the background.
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`Accordingly, FO@biz is healthy while
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`an underlying component is not healthy.
`
`Following
`
`the
`
`branch
`
`to
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`component
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`ny_os@FO@biz,
`
`both
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`indicators are green, and it does not have a subcomponent depending from it. As a
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`result, a user may assess that any health problems shown by the indicator in the
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`10
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`background of component FO@biz is not related to ny_os@FO@biz. See Id.,
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`4:20-26.)
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`Following the branch to component ca_os@FO@biz, both the indicators in
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`the foreground and the background are red, and thus the user may assess that
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`ca_os@FO@biz is not healthy and at least one component depending from the
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`component ca_os@FO@biz is unhealthy. See Id., 4:27-32.) Thus, the unhealthy
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`background of component FO@biz is related to ca_os@FO@biz. The ’073 patent
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`claims precisely the concept discussed above without being limited to any specific
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`visualization or graphical user interface. See Id., 5:53-61.)
`
`III. RESPONSE TO SERVICENOW’S CLAIM CONSTRUCTIONS
`For purposes of this proceeding, the claims of the ’073 patent must be given
`
`their broadest reasonable interpretation. In re Cuozzo Speed Techs., LLC, 793 F.3d
`
`1297 (Fed. Cir. 2015). Consistent with the broadest reasonable interpretation,
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`claim terms are presumed to have their ordinary and customary meaning, as
`
`understood by a person of ordinary skill in the art, in the context of the entire
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`patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`2007).
`
`Petitioner has identified three terms for construction: “IT component,” “IT
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`subcomponent” and “processor.” See Pet. at 11. Patent Owner submits that no
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`construction of those terms is necessary in addressing the ground in this inter
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`partes review because plain and ordinary meaning controls as to all the terms
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`identified by Petitioner. See AOL, Inc. and Cloudera, Inc. v. COHO Licensing
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`LLC, IPR2014-00771, 2014 Pat. App. LEXIS 7783, at *5 (P.T.A.B. Nov. 20, 2014)
`
`(“[W]e do not discern a need to construe expressly any of the claim terms . . . .”).
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`Construing those terms in accordance with the plain and ordinary meaning is
`
`also consistent with the claim construction from the district court in the co-pending
`
`parallel litigation. The Board is obligated to acknowledge and evaluate the district
`
`court’s interpretation in conjunction with its determination of the proper
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`construction of the claims. See Power Integrations, Inc. v. Lee, 797 F.3d 1318,
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`1327-28 (Fed. Cir. 2015) (“The fact that the board is not generally bound by a
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`previous judicial interpretation of a disputed claim term does not mean, however,
`
`that it has no obligation to acknowledge that interpretation or to assess whether it is
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`consistent with the broadest reasonable construction of the term.”).
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`In the district court litigation, the Honorable Judge Gilstrap issued a
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`Markman decision construing “IT subcomponent” and “processor” to have their
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`plain and ordinary meaning. See Ex. 3001, Markman Opinion, 14-cv-903-JRG,
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`ECF No. 131 at 96-101 (E.D. Tex. Aug. 13, 2015). The parties also agreed that
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`“IT component” should be given its plain and ordinary meaning in connection with
`
`the Markman proceedings at the district court. Patent Owner contends that the
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`Board should construe the claim terms in the same way as the district court and
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`reject Petitioner’s proposed constructions.
`
`
` Claim 1 of the ’073 Patent is Representative of the Use of Terms A.
`for Construction
`
`Independent Claim 1 of the ’073 patent reads:
`
`A system for indicating the health status of an IT component and
`at least one IT subcomponent comprising:
`an IT component processor adapted to compute a component
`health status of the IT component;
`an
`IT subcomponent processor adapted
`subcomponent health
`status
`for
`the at
`subcomponent; and
`a renderer adapted to display the health status of the IT
`component by showing a first indicator for the IT component and
`a second indicator for the at least one IT subcomponent, wherein
`the first and second indicator are each separately visible at the
`same time on a single display window of a display unit.
`
`to compute a
`least one
`IT
`
` (’073, 9:25‐41 (Claim 1)).
`
`IT Component
`
`B.
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`Patent owners disagrees with Petitioner’s contention that the broadest
`
`reasonable construction of “IT component” is “part of an information technology
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`system, i.e. a system that relies at least in part on storing, retrieving, transmitting or
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`manipulating data or information.” See Pet. at 14. The ’073 patent is directed to a
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`system and method of visualization of components of an enterprise system. See
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`Patent Owner’s Response
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`Ex. 1001, Abstract. Within the enterprise system, “IT components” are described
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`as encompassing computers, computer peripherals, computer programs,
`
`networking equipment, and manufacturing equipment. See Id., 1:27-29. IT
`
`components are also described as virtual IT components like business processes
`
`that can be combined into a business system. See Id., 1:29-31. The broadest
`
`reasonable construction for “IT component” is its plain meaning, which is a
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`“component of an IT enterprise system.” Changing the word “component” with
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`“part” unduly broadens the scope of “IT component” to any part of an IT enterprise
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`system. Although extensive, the list of examples of “IT components” does not
`
`include any part of an IT enterprise system.
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`IT Subcomponent
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`C.
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`Patent owner also disagrees with Petitioner’s proposal that the broadest
`
`reasonable construction of “IT subcomponent” is “IT component (a) that is part of
`
`another IT component, or (b) that is used or depended upon by another IT
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`component.” See Pet. at 15. As mentioned, the district court agreed with Patent
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`Owner and ruled that the proper construction of “IT subcomponent” is its plain and
`
`ordinary meaning, explaining that the term includes “components that are parts of
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`other components, as well as components depending on other components.” See
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`Ex. 3001, Markman Opinion at 96-99. Petitioner’s proposal to construe “IT
`
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`subcomponent” as a component that is used by another component is contrary to
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`Patent Owner’s Response
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`the intrinsic evidence of the ’073 patent.
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`Specifically, the broadest reasonable construction of “IT subcomponent”
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`does not contemplate a component that is merely used by other components.
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`Rather, the plain meaning of “IT subcomponent” in view of the ’073 patent
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`suggests “IT subcomponent” can be a part of an “IT component” or have a
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`dependency relationship with an “IT component.” Indeed, as the district court
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`recognized, the prosecution history of the ’073 patent recites a “conventional”
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`definition for “subcomponent” consistent with this plain meaning interpretation.
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`See Ex. 2004, (6/5/08 Office Action Response) at 13 (“The prefix ‘sub’ is used in
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`its conventional manner. That is: ‘subcomponent used in its conventional
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`manner.”); (quoting a dictionary definition for “sub”: “sub- 1: under : beneath :
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`below… 2 a : subordinate : secondary : next lower than or inferior to…b :
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`subordinate portion of : subdivision of: derived from….” (citing Webster’s Ninth
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`New Collegiate Dictionary (1984). Accordingly and consistent with the district
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`court’s Markman Opinion,
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`the broadest reasonable construction of “IT
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`subcomponent” is its plain and ordinary meaning of an “IT component (a) that is
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`part of another IT component, or (b) depended upon by another IT component.”
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`Processor
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`D.
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`Patent Owner also disagrees with Petitioner’s proposal that the broadest
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`reasonable construction of “processor” is “any combination of software and/or
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`hardware.” See Pet. at 17 (emphasis added). A person of ordinary skill in the art
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`would construe “processor” in the context of its surrounding terms. See Ex. 3001,
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`Markman Opinion at 100 (Hon. Judge Gilstrap explaining that “‘processor should
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`be considered with the terms ‘IT component processor’ and ‘IT subcomponent
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`processor’ . . . .”).) The operative term for construction is not “processor” standing
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`alone, but rather, “IT component processor” and “IT subcomponent processor.”
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`The claim language expressly provides that “an IT component processor” is
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`“adapted to compute a component health status of the IT component,” and that “an
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`IT subcomponent processor” is “adapted to compute a subcomponent health status
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`for at least one IT subcomponent.” See Ex. 1001, 7:11-15. In addition, as
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`Petitioner noted, the specification explains the invention “enables the user to have
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`very complex algorithms or rules‐based systems that derive the health/status of a
`See Id., 3:41‐46. In view of the intrinsic evidence, even the broadest construction
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`component from the events/alerts received on the component itself (if any) and the
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`events/alerts received for its subcomponents or components depending from it.”
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`applicable is not so broad as to be any combination of hardware and/or software.
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`Petitioner’s proposal therefore is not within the ambit of the broadest reasonable
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`Patent Owner’s Response
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`construction.
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`Consistent with the intrinsic evidence, the combination of hardware and/or
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`software that make up the “IT component processor” and “IT subcomponent
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`processor” must be “adapted to compute a component health status of the IT
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`component” and “adapted to compute a subcomponent health status for at least one
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`IT subcomponent,” respectively. See Ex. 2005, Dr. Mark Jones Declaration ¶ 21.
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`The district court concluded the same in its Markman Opinion. See Ex. 3001,
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`Markman Opinion at 101 (“[T]he claim language itself defines the terms ‘IT
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`component processor’ and ‘IT subcomponent processor.’ Specifically, claim 1
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`recites that the ‘IT component processor’ is ‘adapted to compute a component
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`health status of the IT component.’ Likewise, claim 1 recites that the ‘IT
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`subcomponent processor’ is ‘adapted to compute a subcomponent health status for
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`the at least one IT subcomponent.’”).) Accordingly, the Board should adopt the
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`broadest reasonable interpretation that corresponds to the intrinsic evidence and
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`accords with that of the district court.
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` Wherein the first and second indicator are each separately visible E.
`at the same time on a single display window of a display unit
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`Patent owner submits that the phrase “wherein the first and second indicator
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`are each separately visible at the same time on a single display window of a display
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`unit” should be accorded a broadest reasonable interpretation that corresponds to
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`the construction of the district court.
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`The district court ruled that pending claim 13 (which issued as claim 1 of the
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`’073 patent) was limited during prosecution when this wherein clause was added to
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`the claim.
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`See Ex. 3001 at 93 (citing 1/12/09 Office Action Response)) (highlighting
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`added). The district court further highlighted the applicants’ remarks in the Office
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`Action Response.
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`See Ex. 3001 at 94 (citing 1/12/09 Office Action Response)) (highlighting
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`added). The district court concluded that “a person of ordinary skill in the art
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`would understand that the phrase ‘wherein the first and second indicator are each
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`separately visible at the same time on a single display window of a display unit’
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`means that the indicators are visible ‘without requiring the user to perform any
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`affirmative action (i.e., ‘navigate’).’” Id.
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`The district court further concluded that specification of the ’073 patent
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`supported this construction because it distinguishes prior art in which “[t]he users
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`can navigate through the representation of the systems by expanding parts of the
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`tree or by selecting the icons representing the component they want to explore
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`further.” See Ex. 1001, 1:46-49. Thus, the district court concluded that “wherein
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`the first and second indicator are each separately visible at the same time on a
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`single display window of a display unit” should be construed to mean ““wherein
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`Patent Owner’s Response
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`the first and second indicator are each separately visible at the same time on a
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`single display window of a display unit without requiring the user to perform any
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`affirmative action (i.e., ‘navigate’).” Patent owner submits that this is the broadest
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`reasonable construction of this claim limitation.
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`IV. CLAIMS 1-4 of the ’073 Patent are not anticipated by Lewis
`The Board has instituted inter partes review on the sole ground that claims
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`1-4 of the ’073 patent are anticipated by Internati