Paper No. 15
`Filed: March 15, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC,
`Petitioner,
`
`v.
`
`ROTHSCHILD DIGITAL MEDIA INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01364
`Patent 6,101,534
`____________
`
`PATENT OWNER’S RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`

`
`TABLE OF CONTENTS
`
`Case IPR2015-01364
`Patent 6,101,534
`
`I.
`
`INTRODUCTION ............................................................................................... 1
`
`II. BACKGROUND ................................................................................................. 5
`
`A. Original Patent Application and Issuance ................................................. 5
`
`B. Confirmation of Validity in Reexamination .............................................. 8
`
`C. Concurrent District Court Litigation .......................................................15
`
`D.
`
`Inter Partes Review ..................................................................................18
`
`III. CLAIM CONSTRUCTION ..............................................................................19
`
`A. Applicable Standard ................................................................................20
`
`B.
`
`C.
`
`“Direct” and “Indirect” ............................................................................21
`
`Initiation of Utilization ............................................................................30
`
`IV. PETITIONER’S BURDEN OF PROOF ...........................................................32
`
`V. THE CHALLENGED CLAIMS ARE NOT OBVIOUS OVER MAGES
`IN VIEW OF BATCHELOR ...................................................................................33
`
`A. Batchelor Is Not Analogous Art ..............................................................33
`
`B. Claims 1, 6-9 and 21 Are Not Obvious Over Mages in View of
`Batchelor ..................................................................................................39
`
`The Proposed Combination Fails to Disclose All Limitations in the
`1.
`Challenged Claims ...................................................................................39
`
`2.
`
`Insufficient and Illogical Rationale to Combine ............................43
`
`C. Claim 23 Is Not Obvious Over Mages in View of Batchelor .................48
`
`The Proposed Combination Fails to Disclose All Limitations in the
`1.
`Challenged Claim ....................................................................................48
`
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`Case IPR2015-01364
`Patent 6,101,534
`Insufficient and Illogical Rationale to Combine ............................50
`
`2.
`
`D. Claims 24 Is Not Obvious Over Mages in View of Batchelor ................52
`
`The Proposed Combination Fails to Disclose All Limitations in the
`1.
`Challenged Claim ....................................................................................52
`
`2.
`
`Insufficient and Illogical Rationale to Combine ............................55
`
`E. Claim 22 Is Not Obvious Over Mages in View of Batchelor, in
`Further View of Hughes ..........................................................................57
`
`The Proposed Combination Fails to Disclose All Limitations in the
`1.
`Challenged Claim ....................................................................................57
`
`2.
`
`Insufficient and Illogical Rationale to Combine ............................59
`
`VI. CONCLUSION ..................................................................................................60
`
`
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`–iii–
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`Case IPR2015-01364
`Patent 6,101,534
`
`Cases
`
`TABLE OF AUTHORITIES
`
`ATD Corp. v. Lydall, Inc., 159 F.3d 534 (Fed. Cir. 1998) ......................................44
`
`Atlas IP, LLC v. Medtronic, Inc., 809 F.3d 599 (Fed. Cir. 2015) ............................32
`
`Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249 (Fed. Cir.
`2010).....................................................................................................................27
`
`C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858 (Fed. Cir. 2004) ...................53
`
`Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106 (Fed. Cir. 2002) .30
`
`CardSoft, LLC v. Verifone, Inc., 807 F.3d 1346 (Fed. Cir. 2015) ...........................31
`
`Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341 (Fed.
`Cir. 2013) .............................................................................................................44
`
`Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331 (Fed. Cir. 2015) ......... 33, 34, 36, 38
`
`Cutsforth, Inc. v. MotivePower, Inc., --- Fed. App’x ---, No. 2015-1316, 2016 WL
`279984 (Fed. Cir. Jan. 22, 2016) .................................................................. 43, 46
`
`Cynosure, Inc. v. CoolTouch, Inc., 660 F. Supp. 2d 128 (D. Mass. 2006) ..................
` ........................................................................................................... 39, 48, 53, 57
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015)
` ..............................................................................................................................32
`
`Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314 (Fed. Cir. 2011) .........................32
`
`Ex parte Fischetti, No. 97-0933, 1997 WL 1883922 (B.P.A.I. undated) ......... 44, 46
`
`Fuentes v. Shevin, 407 U.S. 67 (1972) .....................................................................47
`
`Heidelberger Druckmaschinen AG v. Hantscho Comm’l Prods., Inc., 21 F.3d 1068
`(Fed. Cir. 1994) ............................................................................................. 34, 37
`
`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015) ..........................20
`
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) ........................................... 43, 44, 46, 60
`
`
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`Case IPR2015-01364
`Patent 6,101,534
`In re Malik, No. 2009-008833, 2011 WL 2604854 (B.P.A.I. June 30, 2011) .. 33, 35
`
`In re Swanson, 540 F.3d 1368 (Fed. Cir. 2008) ......................................................20
`
`Insite Vision, Inc. v. Sandoz, Inc., 783 F.3d 853 (Fed. Cir. 2015) .............. 44, 46, 60
`
`Integrated Global Concepts, Inc. v. Advanced Messaging Techs., Inc., No.
`IPR2014-01027, Paper 16 (P.T.A.B. Dec. 22, 2014) ................................... 40, 41
`
`KCJ Corp v. Kinetic Concepts, Inc., 223 F.3d 1351 (Fed. Cir. 2000).....................29
`
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ........................................ 43, 59
`
`Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004) ............ 16, 17
`
`Marine Polymer Techs., Inc. v. HemCon, Inc., 672 F.3d 1350 (Fed. Cir. 2012) ....32
`
`Metrics, Inc. v. Senju Pharma. Co., No. IPR2014-01043, Paper No. 19 (P.T.A.B.
`Feb. 19, 2015) ......................................................................................................47
`
`Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH, 139 F.3d 877 (Fed. Cir.
`1998)........................................................................................................ 44, 47, 60
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .........................................20
`
`Tech Licensing Corp. v. Videotek, Inc., 545 F.3d 1316 (Fed. Cir. 2008) ................32
`
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699
`F.3d 1340 (Fed. Cir. 2012) ................................................................ 39, 48, 53, 57
`
`Trivascular, Inc. v. Samuels, 812 F.3d 1056 (Fed. Cir. 2016) ........................ 43, 46
`
`Statutes
`
`35 U.S.C. § 103 ........................................................................................................54
`
`35 U.S.C. § 312 ........................................................................................................47
`
`35 U.S.C. § 315(b) ...................................................................................................18
`
`35 U.S.C. § 316(e) ............................................................................................ 32, 47
`
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`Case IPR2015-01364
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`Rules
`
`37 C.F.R. § 42.100(b) ..............................................................................................20
`
`37 C.F.R. § 42.104(b)(2) ..........................................................................................47
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`MPEP § 904.01(c) ....................................................................................................37
`
`Other Authorities
`
`2014 Patent Litigation Study, Pricewaterhouse Coopers LLP (July 2014),
`https://www.pwc.com/us/en/forensic-services/publications/assets/2014-patent-
`litigation-study.pdf ...............................................................................................19
`
`Statistical Tables for the Federal Judiciary, United States Courts (June 30, 2015),
`http://www.uscourts.gov/statistics-reports/statistical-tables-federal-judiciary-
`june-2015 ..............................................................................................................19
`
`Wikipedia, Modem, https://en.wikipedia.org/wiki/Modem (last visited Mar. 15,
`2016)....................................................................................................................... 5
`
`
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`PATENT OWNER’S EXHIBIT LIST
`
`Case IPR2015-01364
`Patent 6,101,534
`
`
`Petitioner’s Information Disclosure Statement in
`U.S. Patent Application Ser. No. 09/452,811
`
`Petitioner’s U.S. Patent No. 7,047,302
`
`Petitioner’s Information Disclosure Statement in
`U.S. Patent Application Ser. No. 09/452,811
`
`Petitioner’s U.S. Patent No. 7,171,480
`
`Petitioner’s Information Disclosure Statement in
`U.S. Patent Application Ser. No. 09/452,811
`
`Petitioner’s U.S. Patent No. 7,401,151
`
`Proof of Service in U.S. District Court Litigation
`
`Declaration of Michael C. Brogioli, Ph.D.
`
`Curriculum Vitae of Michael C. Brogioli, Ph.D.
`
`Wireshark Wiki (“Broadcast”)
`
`–vii–
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`Ex. 2001
`
`Ex. 2002
`
`Ex. 2003
`
`Ex. 2004
`
`Ex. 2005
`
`Ex. 2006
`
`Ex. 2007
`
`Ex. 2008
`
`Ex. 2009
`
`Ex. 2010
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`Case IPR2015-01364
`Patent 6,101,534
`Pursuant to 37 C.F.R. § 42.120, patent owner Rothschild Digital Media
`
`Innovations, LLC (“Patent Owner”) submits this response to the petition for inter
`
`partes review (Paper No.3 (the “Petition”)) filed by Sony Computer Entertainment
`
`America LLC (“Petitioner”), as narrowed and limited by the Board’s decision
`
`instituting inter partes review (Paper No. 8 (the “Institution Decision”)).
`
`I.
`
`INTRODUCTION
`
`This proceeding concerns claims 1, 6-9, and 21-24 of U.S. Patent No.
`
`6,101,534 (Ex. 1001 (the “‘534 Patent”)), titled “INTERACTIVE, REMOTE,
`
`COMPUTER INTERFACE SYSTEM” (id. title). The Institution Decision found a
`
`basis for inter partes review as to one basic ground proposed in the Petition:
`
`obviousness over U.S. Patent No. 5,892,825 to Mages (Ex. 1005 (“Mages)) in view
`
`of U.S. Patent No. 5,724,103 to Batchelor (Ex. 1004 (“Batchelor”)). Regarding
`
`dependent claim 22, the combination of Mages and Batchelor is supplemented by
`
`the addition of U.S. Patent No. 5,736,977 to Hughes (“Hughes”).
`
`Batchelor is non-analogous art. Broadcast television transmission is a far
`
`cry from, and not reasonably pertinent to, computer system architecture. A person
`
`of ordinary skill in the art would never have looked to the television field. Indeed,
`
`neither the Patent Office nor any prior challenger has ever looked to television
`
`technology in connection with the ‘534 Patent.
`
`Even if Batchelor were properly considered, the challenged claims are not
`
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`obvious over Mages in view of Batchelor. Even when combined, those two
`
`references do not teach all of the limitations recited in the challenged claims. As
`
`the title of the ‘534 Patent suggests, the inventions relate to an interactive computer
`
`system having local and remote elements. The invention recited in independent
`
`claim 1 comprises, among other things, a remote server, a local processor
`
`assembly, and a data storage assembly associated with the local processor
`
`assembly. The remote server and local processor are in data transmitting and
`
`receiving communication with one another. The remote server includes data that
`
`are called primary site data. The data storage assembly (e.g., a CD drive) includes
`
`a portable computer readable medium (e.g., a CD), which in turn includes auxiliary
`
`site addresses, which in turn include portions of data called auxiliary site data. The
`
`auxiliary site addresses are structured to be remotely accessed by the remote server
`
`assembly, so as to initiate the local processor’s utilization of auxiliary site data in
`
`conjunction with primary site data.
`
`The other two independent claims at issue in this proceeding – claims 23 and
`
`24 – were added in a prior reexamination. Claim 23 recites elements comparable
`
`to those of claim 1, but does not refer to a data storage assembly, instead reciting a
`
`portable computer readable medium associated with the local processor assembly.
`
`(Ex. 1001, Reexam. Certif. at 1:44-46, 49-51.) Claim 24, like claim 1, recites a
`
`data storage assembly that includes a portable computer readable medium. (Id. at
`
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`Case IPR2015-01364
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`2:29-34.) Claims 23 and 24 further recite that the portions of auxiliary site data are
`
`“accessible only while the local processor assembly is interactively online
`
`connected to the remote server assembly.” (Id. at 2:8-10, 2:56-58.) And claim 24
`
`recites that the auxiliary site addresses are “encoded so as to restrict access by said
`
`local processor assembly unless said access is directed by said remote server
`
`assembly.” (Id. at 2:51-54.)
`
`It is undisputed that no single prior art reference discloses the claimed
`
`systems, which is why the Petition made no attempt to assert anticipation.
`
`Moreover, even the proposed combination of Mages and Batchelor does not teach
`
`all elements of the claimed systems. Mages teaches a key that can be stored by the
`
`local processor (whether in volatile or non-volatile memory), thus permitting the
`
`local processor to access the auxiliary data regardless of the involvement of a
`
`remote server. Nothing in Mages teaches or suggests that the auxiliary addresses
`
`or data are structured or encoded to be accessed by the remote server. Nor does
`
`Mages teach (as recited in claims 23 and 24) that auxiliary addresses and data are
`
`accessible only while the local processor is interactively online connected to the
`
`remote server, or that (as recited in claim 24) the auxiliary site addresses are
`
`encoded so as to restrict access by the local processor unless such access is
`
`directed by the remote server. Rather, the auxiliary addresses and data are
`
`accessible to any processor (local, remote or other) in possession of the key.
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`Batchelor teaches the use of the vertical blanking interval (“VBI”) in a
`
`broadcast television signal to cause a local processor to retrieve auxiliary data, but
`
`plainly does not teach or suggest that those data are structured or encodeed to be
`
`accessed by the remote server. Rather, Batchelor gives the example of a CD-ROM
`
`encyclopedia that plainly would be accessible by the local processor anytime
`
`anyway, regardless of the involvement of a remote server (or, in the Batchelor
`
`system, remote broadcast transmitter). Nor does Batchelor teach that auxiliary
`
`addresses and data are accessible only while the local processor is interactively
`
`online connected to the remote server, or that the auxiliary site addresses are
`
`encoded so as to restrict access by the local processor unless such access is
`
`directed by the remote server.
`
`The relationship between the remote server and the auxiliary site addresses
`
`and auxiliary site data underlay the Board’s prior confirmation of the validity of
`
`the ‘534 Patent in reexamination, over the very same Mages reference. (Ex. 1003
`
`at 779-93 (“Reexamination Decision”).) The Board distinguished Mages and other
`
`references as disclosing systems in which the auxiliary site addresses and auxiliary
`
`site data were not encoded or structured to be accessed by a remote server.
`
`Nothing has changed with respect to Mages. Nor does Batchelor supply those
`
`missing elements. The Petition does not even argue that Batchelor supplies those
`
`missing elements; rather, the Petition asks this Board to reach a different decision
`
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`Patent 6,101,534
`on Mages than the prior Board. The Board should not reverse itself. The proposed
`
`combination fails to teach the claimed inventions, in which the auxiliary site
`
`addresses are encoded or structured to be accessed by the remote server (as recited
`
`in all claims), are accessible only while the local processor is interactively online
`
`connected to the remote server (as recited in claims 23 and 24), and are encoded so
`
`as to restrict access by the local processor unless directed by the remote server (as
`
`recited in claim 24).
`
`The Board should again confirm the validity of the ‘534 Patent.
`
`II. BACKGROUND
`
`A. Original Patent Application and Issuance
`
`The application that led to the ‘534 Patent was filed on September 3, 1997,
`
`when the Internet was in its infancy. The predominant mode of connectivity at the
`
`time was a 33.6k or 56k modem over an ordinary telephone line. See Wikipedia,
`
`Modem, https://en.wikipedia.org/wiki/Modem (last visited Mar. 15, 2016) (“About
`
`half of all ISPs offered 56k support by October 1997.”). As the ‘534 Patent
`
`explains, slow speeds inhibited the local display of remotely stored information.
`
`(Ex. 1001 at 3:20-50.) The ‘534 Patent provided a system in which, inter alia,
`
`local storage of some of the data would reduce the amount that had to be
`
`downloaded, thus saving time. (Id. 6:41-46 (“A further object of the present
`
`invention is to provide a display system which can be utilized through an on-line
`
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`connection, in connection with a remote server assembly, so as to provide
`
`substantially updated information and an interactive display without excessive
`
`down-load time delays.”).) Accordingly, the remote server hosts a portion of the
`
`data (id. 5:20-22, 12:51-53), and a data storage assembly associated with the local
`
`processor hosts another portion of auxiliary data (id. 5:40-49, 13:16-21) that is
`
`accessible only while connected to the remote server (id. 5:31-34, 13:53-67; Ex.
`
`1003 at 788-92). By hosting a portion of the data, the remote server makes very
`
`large quantities of data available as needed and upon request, relieving capacity
`
`constraints at the local data storage assembly. (Ex. 1001 at 3:16-20.)
`
`The invention further provided a way to seamlessly and continuously present
`
`an interactive display comprising a combination of local and remote data. (Id.; see
`
`also id. 7:4-8 (“Another object of the present invention is to provide a computer
`
`interface system which substantially enhances the display capabilities of a remote
`
`site in a substantially seamless and continuous manner regardless of the remote or
`
`local location of the data being utilized and or displayed.”).) The seamless,
`
`continuous presentation of an interactive display facilitated a preferred
`
`embodiment describing interactive, continuously updating navigation of a virtual,
`
`three-dimensional space. (Id. 1:64-2:31, 4:58-5:6, 10:6-17.)
`
`The dependency of the system on the involvement of a remote server
`
`provided security benefits as well. Because the auxiliary data are structured to be
`
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`accessed by the remote server, their accessibility requires the cooperation of the
`
`remote server. As the ‘534 Patent explains, “[s]uch a structure ensures the
`
`preferred utilization of the auxiliary site data only in conjunction with the primary
`
`site data.” (Id. at 13:61-63.) This dependency on cooperation with the remote
`
`server restricts the utilization of the auxiliary data in the absence of participation
`
`by the remote server. This provides security and subjects the operability of the
`
`entire system to the remote server, thus, among other things, facilitating dedication
`
`of control to a central authority. (Id. at 3:39-43, 13:58-67.)
`
`Claim 1 of the ‘534 patent recites:
`
`interface system
`
`interactive, remote, computer
` 1. An
`comprising:
`a remote server assembly, said remote server assembly
`including a quantity of primary site data;
`said remote server assembly including at least one primary
`site address, said primary site address including at least a
`portion of said primary site data and being distinct so as to
`identify a location thereof on a computer network; a local
`processor assembly;
`said local processor assembly being coupled in data
`transmitting and receiving communication with said
`remote server assembly;
`said local processor assembly being structured to access
`said primary site address so as to achieve said data
`transmitting and receiving communication with said
`remote server assembly;
`at least one data storage assembly associated with said local
`
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`processor assembly and structured to contain a quantity of
`auxiliary site data thereon, said auxiliary site data being
`associated with said primary site data;
`said data storage assembly including a compact, portable
`and interchangeable computer readable medium;
`said compact, portable and
`interchangeable computer
`readable medium
`including a plurality of remotely
`accessible, auxiliary site addresses encoded therein, each
`of said remotely accessible, auxiliary site addresses
`including select portions of said quantity of auxiliary site
`data; and
`said remotely accessible, auxiliary site addresses being
`structured to be remotely accessed by said remote server
`assembly so as to initiate utilization of said select portions
`of said quantity of auxiliary site data by said local
`processor assembly in conjunction with said primary site
`data.
`
`(Id. at 16:41-17:10.)
`
`B. Confirmation of Validity in Reexamination
`
`In 2007, a request for ex parte reexamination was filed, challenging the ‘534
`
`Patent’s validity over a number of prior art references, primarily Mages. The
`
`examiner initially rejected the claims based on Mages and several other references.
`
`Patent Owner appealed, and the Board reversed, confirming the validity of claims
`
`1 and 3 through 21, and of newly allowed claims 23 and 24.
`
`The focus in the reexamination was on whether the prior art disclosed the
`
`elements recited in the last clause of claim 1: “remotely accessible, auxiliary site
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`addresses being structured to be remotely accessed by said remote server assembly
`
`so as to initiate utilization of said select portions of said quantity of auxiliary site
`
`data by said local processor assembly in conjunction with said primary site data”
`
`(Ex. 1001 at 17:5-10). (See Ex. 1003 at 641.) Patent Owner argued that none of
`
`the prior art references disclosed a system in which auxiliary site addresses are
`
`structured to be accessed and utilized by the local processor only while the local
`
`processor was in network communication with the remote server. The prior art
`
`disclosed systems in which a local processor could access and utilize auxiliary data
`
`without direction from, or connection to, a remote server. (Ex. 1003 at 646-48.)
`
`Patent Owner pointed out that in prior litigation, the U.S. District Court for
`
`the Southern District of Florida rendered a claim construction after a full Markman
`
`briefing and hearing, and held, inter alia, that the auxiliary site addresses were
`
`“‘remote[ly] interacted with by the remote server assembly so as to cause the use
`
`of select portions of said quantity of auxiliary site data by said local processor
`
`assembly at the direction of, intermingled with, or otherwise with some of the
`
`primary site data.’” (Id. at 653.) Patent Owner distinguished the prior art systems
`
`asserted in reexamination because they
`
`do not require that the use ever be caused. For example,
`within Mages, although the key may be downloaded, the key
`may never be used. The same holds true for the content
`element of Reisman, the script of Uranaka, and the control
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`panel of Fidelibus. Since the sending of these respective
`elements by Mages, Reisman, Uranaka, and Fidelibus do not
`necessarily cause the use of the auxiliary site data, the
`Examiner’s claim construction, as applied to the cited
`references, is inconsistent with the Court’s claim construction
`of the same limitations.
`
`(Id.)
`
`Patent Owner also explained that the ‘534 Patent disclosed a system that was
`
`different from the prior art:
`
`Unlike the teachings of Mages, Reisman, Uranaka, and
`Fidelibus, which all provide mechanisms by which utilization
`of data on a computer readable medium can be initiated when
`the remote server assembly is not remotely accessing the
`auxiliary site addresses,
`the
`teachings of Appellant’s
`disclosure do not describe a comparable mechanism.
`
`For example, reference is made to column 13, lines 59-
`61 of the ‘534 Patent, which states that ‘only the remote
`server assembly 50 can access the auxiliary site data at the
`auxiliary site addresses.’ Thus, according to the claimed
`invention, the remote server assembly must be remotely
`accessing the auxiliary site addresses (which are encoded in
`the computer readable medium).
`
`(Id. at 653-54.)
`
`
`
`Patent Owner’s reply brief to the Board reiterated the same position,
`
`drawing a distinction between a local processor’s utilization of auxiliary data only
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`in cooperation with the remote server, as in the ‘534 Patent, and “sending some
`
`information that allows access” by the local processor on its own. (Id. at 761.) In
`
`other words, the question was one of timing:
`
`On page 12 of the Appeal Brief, Appellant stated that
`the term ‘to initiate,’ when used in conjunction with the term
`‘utilization,’ establishes a point in time (i.e., the beginning) of
`the act of use. This point in time is critical since it establishes
`when the ‘remotely accessibly, [sic] auxiliary site addresses
`[are] remotely accessed by said remote server assembly.’ The
`Examiner, however, cannot establish that the prior art
`identically teaches this timing limitation based on Appellant’s
`claim construction.
`
`(Id. at 752.)
`
`The Board agreed with Patent Owner, reversed the examiner’s rejections,
`
`confirmed the validity of the ‘534 Patent, and approved newly added claims 23 and
`
`24. Analyzing claim 1, the Board observed that “the auxiliary site addresses are
`
`both encoded and structured for the purpose of being accessed by the remote
`
`server.” (Id. at 787-78.) By contrast, neither Mages nor any of the other
`
`references described auxiliary site addresses that were “structured to be remotely
`
`accessed by the remote server (i.e., directly).” (Id. at 789-91.) Rather, the
`
`auxiliary addresses in the prior art were accessible directly by the local processor
`
`regardless of connection with, or direction from, the remote server. (Id.)
`
`
`
`–11–
`
`

`
`Case IPR2015-01364
`Patent 6,101,534
`Claims 23 and 24 were newly allowed in the reexamination. Claim 23
`
`differs from claim 1 in that it does not recite the data storage assembly, but only
`
`the portable computer readable medium associated with the local processor. Claim
`
`23 also recites that the auxiliary data at the auxiliary addresses are accessible only
`
`while the local processor is interactively online connected to the remote server.
`
` 23. An interactive, remote, computer interface system
`comprising:
`a remote server assembly, said remote server assembly
`including a quantity of primary site data;
`said remote server assembly including at least one primary
`site address, said primary site address including at least a
`portion of said primary site data and being distinct so as to
`identify a location thereof on a computer network;
`a local processor assembly;
`said local processor assembly being coupled in data
`transmitting and receiving communication with said
`remote server assembly;
`said local processor assembly being structured to access
`said primary site address so as to achieve said data
`transmitting and receiving communication with said
`remote server assembly;
`at least one compact portable and interchangeable computer
`readable medium associated with said local processor
`assembly and structured to contain a quantity of auxiliary
`site data thereon, said auxiliary site data being associated
`with said primary site data;
`interchangeable computer
`said compact, portable and
`readable medium being distinct from a fixed hard drive of
`
`
`
`–12–
`
`

`
`Case IPR2015-01364
`Patent 6,101,534
`
`said local processor assembly;
`interchangeable computer
`said compact, portable and
`readable medium
`including a plurality of remotely
`accessible, auxiliary site addresses encoded therein, each
`of said remotely accessible, auxiliary site addresses
`including select portions of said quantity of auxiliary site
`data;
`said remotely accessible, auxiliary site addresses being
`structured to be remotely accessed by said remote server
`assembly;
`said remote server assembly remotely accessing said
`auxiliary site data to initiate utilization of said select
`portions of said quantity of auxiliary site data by said local
`processor assembly;
`said select portions of said quantity of auxiliary site data
`utilized in conjunction with said primary site data; and
`said select portions of said quantity of auxiliary site data at
`the auxiliary site addresses accessible only while the local
`processor assembly is interactively online connected to the
`remote server assembly.
`
`(Ex. 1001 Reexam. Certif. at 1:26-2:10.)
`
`Claim 24, recites, like claim 1, a data storage assembly that includes a
`
`portable computer readable medium, and like claim 23, that the auxiliary data are
`
`accessible only while the local processor is interactively online connected to the
`
`remote server. Claim 24 also recites that the auxiliary site addresses are encoded
`
`to restrict access by the local processor absent direction by the remote server.
`
`
`
`–13–
`
`

`
`Case IPR2015-01364
`Patent 6,101,534
` 24. An interactive, remote, computer interface system
`comprising:
`a remote server assembly, said remote server assembly
`including a quantity of primary site data;
`said remote server assembly including at least one primary
`site address, said primary site address including at least a
`portion of said primary site data and being distinct so as to
`identify a location thereof on a computer network;
`a local processor assembly;
`said local processor assembly being coupled in data
`transmitting and receiving communication with said
`remote server assembly;
`said local processor assembly being structured to access
`said primary site address so as to achieve said data
`transmitting and receiving communication with said
`remote server assembly;
`at least one data storage assembly associated with said local
`processor assembly and structured to contain a quantity of
`auxiliary site data thereon, said auxiliary site data being
`associated with said primary site data;
`said data storage assembly including a compact, portable
`and interchangeable computer readable medium;
`said compact, portable and
`interchangeable computer
`readable medium
`including a plurality of remotely
`accessible, auxiliary site addresses encoded therein, each
`of said remotely accessible, auxiliary site addresses
`including select portions of said quantity of auxiliary site
`data;
`said remotely accessible, auxiliary site addresses being
`structured to be remotely accessed by said remote server
`
`
`
`–14–
`
`

`
`Case IPR2015-01364
`Patent 6,101,534
`
`assembly;
`said remote server assembly remotely accessing said
`auxiliary site data to initiate utilization of sa