UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
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`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner,
`v.
`ROTHSCHILD DIGITAL MEDIA INNOVATIONS, LLC
`Patent Owner.
`____________
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`Case No. IPR2015-01364
`Patent 6,101,534
` ____________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.120
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
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`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner,
`v.
`ROTHSCHILD DIGITAL MEDIA INNOVATIONS, LLC
`Patent Owner.
`____________
`
`Case No. IPR2015-01364
`Patent 6,101,534
` ____________
`
`
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.120
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`TABLE OF CONTENTS
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`IPR2015-01364
`U.S. Patent No. 6,101,534
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`I. INTRODUCTION .............................................................................................. 1
`II. CLAIM CONSTRUCTION ............................................................................... 3
`A. THE BOARD’S DEFINITION OF ACCESS IS CORRECT ....................................... 4
`B. THERE IS NO CONTEMPORANEITY REQUIREMENT IN CLAIM 1 ....................... 6
`III. MAGES IN VIEW OF BATCHELOR RENDERS CLAIMS 1, 6-9, 21, 23,
`AND 24 OBVIOUS ......................................................................................... 8
`A. BATCHELOR IS ANALOGOUS ART .................................................................. 8
`B. CLAIMS 1, 6-9 AND 21 ARE OBVIOUS IN VIEW OF MAGES AND BATCHELOR 13
`C. MAGES DISCLOSES ACCESS ONLY WHILE ONLINE IN CLAIMS 23 AND 24 ... 16
`D. MAGES DISCLOSES RESTRICTED ACCESS IN CLAIM 24 ................................ 20
`IV. MAGES IN VIEW OF BATCHELOR IN FURTHER VIEW OF HUGHES
`RENDERS CLAIM 22 OBVIOUS ................................................................ 21
`V. CONCLUSION ................................................................................................ 23
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`INTRODUCTION
`This proceeding hinges on the claim construction of the “access” concept in
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`I.
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`the Challenged Claims, and Patent Owner (“PO”) concedes the claims should be
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`broadly construed to include a remote server directing a local processor to access
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`data. That is the heart of the case, and once the claims are properly construed,
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`application of the prior art and a determination of obviousness are both
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`straightforward propositions. PO cannot reasonably challenge any of this, so PO
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`instead deploys some familiar countermeasures along with some unusual ones. In
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`one remarkable inconsistency, PO criticizes new evidence because it has never
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`been presented before, but then asserts that the Board should be bound by an
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`earlier reexamination conclusion because there is nothing new here. All of this
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`should be taken for what it is—chaff intended to distract from a strong showing of
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`unpatentability.
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`For instance, PO presents a lengthy criticism of the adjectives used in the
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`Institution Decision to describe one claim construction issue. The Decision points
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`out that the agreed construction includes “indirect access,” and PO would prefer
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`that the Board describe the construction some other way. PO is not challenging the
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`construction itself, which includes a path through a local processor. Instead, PO is
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`just challenging the nomenclature used to describe the construction. None of this
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`matters to any substantive issue in this proceeding. All that matters is what the
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`
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`1
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`construction actually covers, and there is agreement between PO and Petitioner on
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`this point, as the Institution Decision recognized. See, e.g., Paper 8, Institution
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`Decision at 9.
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`PO then reaches for the more familiar touchstones of obviousness
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`oppositions by asserting that prior art is non-analogous and that there is no
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`motivation to combine. But here these assertions are belied by the record. On
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`analogous art, PO insists that no PHOSITA would ever look to broadcast
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`television. And yet the inventor of the ‘534 Patent described and claimed broadcast
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`technology as within the scope of his invention. On motivation to combine, PO
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`speculates that any combination with Batchelor would fundamentally change the
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`transmitted data operation of Mages. And yet Batchelor expressly describes using
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`packetized data with a personal computer—the same data transmitting concept
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`described in Mages. This combination just improves Mages by including command
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`and address information into the transmitted data.
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`Finally, PO emphasizes a negative limitation that was added to Claims 23
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`and 24, and attempts to salvage patentability by implying that Petitioner must
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`prove that the prior art cannot operate in some other way. PO’s argument is legally
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`flawed. Claims 23 and 24 recite accessibility “only while the local processor
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`assembly is interactively online ….” Because this limitation defines what prior art
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`or accused systems cannot do (i.e., systems cannot access auxiliary site addresses
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`2
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`while offline), rather than affirmatively stating what they must do, this is a
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`negative limitation. To prove invalidity of a negative limitation, it is Petitioner’s
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`burden to demonstrate that prior art discloses what the claims affirmatively require.
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`See, e.g., Upsher-Smith Labs., Inc. v. Pamlab, LLC, 412 F.3d 1319, 1322-23 (Fed.
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`Cir. 2005). Petitioner has done so here by showing that Mages allows accessibility
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`while the local processor is interactively online. See id. It is not Petitioner’s
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`burden, nor should it be, to prove the negative—that is, to prove that Mages cannot
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`operate any other way. See id. Instead, it is PO’s burden of production to identify
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`rebuttal evidence. See id. Here, PO provided nothing more than speculation that
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`Mages might operate in some way different from what it disclosed. Neither PO nor
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`its expert have identified any evidence in Mages that shows accessing auxiliary site
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`addresses while offline, and the actual Mages disclosure is contrary to PO’s
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`position. Petitioner bears the burden of proof, and that burden does not shift. But
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`where, as here, Petitioner has presented evidence satisfying its burden, PO cannot
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`defeat obviousness with speculation about how prior art might or might not operate
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`in a way not disclosed by the prior art itself.
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`II. CLAIM CONSTRUCTION
`PO’s characterizations and criticisms of the Board’s claim construction
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`analysis are meritless and should be rejected. The Board performed the claim
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`construction analysis correctly in the Institution Decision, and should maintain the
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`3
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`conclusions described there.
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`A. The Board’s Definition of Access Is Correct
`There is nothing wrong with the adjective “indirect” used in the Institution
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`Decision to describe the types of access included within the scope of the claims. If
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`there is any semantic confusion here it is entirely of PO’s own making in refusing
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`to recognize a distinction between verbs and adjectives. See Paper 15, Response at
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`21-30. Everyone agrees that the “access” limitation should be broadly construed to
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`include “a remote server assembly accessing the auxiliary site data by directing the
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`local processor assembly to access the data to initiate utilization of the auxiliary
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`site data by the local processor assembly.” See Paper 8, Institution Decision at 11;
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`id. at 9 (“We agree with the parties that indirect access is within the scope of the
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`remote access limitation.”); see also, e.g., Paper 15, Response at 28 (“Institution
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`Decision adopts a claim construction that is consistent with [PO’s] understanding
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`….”); id. at 24 (“There is no suggestion that the remote server might access the
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`auxiliary site addresses and auxiliary site data by a path that does not transit the
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`local processor.”); id. at 29 (“the word ‘direct’ is used … in the sense of access
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`directed by the remote server on a path that transits the local processor”); Paper 7,
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`Prelim. Response at 14-21; Paper 3, Petition at 14-15.
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`There is no confusion in describing this concept using an adjective, and
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`calling this path through the local processor “indirect access.” See Paper 8,
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`4
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`Institution Decision at 9-11; see also Ex. 1003, Reexam File History at Decision at
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`9-10. That simple naming convention provides a useful distinction from “direct
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`access,” where the remote server accesses auxiliary site addresses without any
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`intervention by the local processor or any other intermediary. See Paper 8,
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`Institution Decision at 9-11; see also Paper 3, Petition at 13-14. The helpful use of
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`adjectives to describe the issues here does not somehow transform the verb
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`“directing” in the construction itself. See Paper 8, Institution Decision at 9-11.
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`Call it “indirect access” or call it “Path B”—it makes no difference to the
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`substantive analysis in this proceeding, where there is already agreement as to what
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`the claims should cover.1
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`One claim construction concept that does matter to this proceeding is claim
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`differentiation. At the conclusion of all the discussion over direct and indirect
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`access, PO implies that the independent claims of the ‘534 Patent restrict a local
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`processor from having “unfettered access to auxiliary data regardless of the
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`participation of the remote server.” Paper 15, Response at 29-30. If PO’s position
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`1 Just for clarity, Petitioner notes a typographical error in the Institution Decision—
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`it was the PO, not Petitioner, that “advanced constructions that encompass indirect
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`access in two lawsuits involving the ‘534 Patent.” See Paper 8, Institution
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`Decision at 9.
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`5
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`is that independent claims 1 and 23 include this restriction, then PO is wrong
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`because this concept is expressly claimed in dependent Claim 2 and independent
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`Claim 24. See id.; see also Ex. 1001, ‘534 Patent at Claims 1, 2, 23, 24; SunRace
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`Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003) (“[W]hen a
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`patent claim does not contain a certain limitation and another claim does, that
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`limitation cannot be read into the former claim in determining either validity or
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`infringement …” and the presumption that different claims have different scope is
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`“especially strong when the limitation in dispute is the only meaningful difference
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`between an independent and dependent claim ….”) (internal quotation omitted).
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`B.
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`There Is No Contemporaneity Requirement in Claim 1
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`The Board was also right to reject PO’s attempt to read the term “while” into
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`the scope of Claim 1. See Paper 8, Institution Decision at 10-11. PO now presents
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`a new claim construction position on this point, and asserts that Claim 1 must be
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`interpreted “such that access occasions or causes the initiation of utilization.” See
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`Paper 15, Response at 31-32. PO does not explain why it is necessary to change
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`the claim language “initiate utilization” into something different, nor does PO
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`identify any evidence to support its assertion that the plain meaning demands this
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`change. See id. Indeed, the portion of the written description cited by PO does not
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`say anything about “occasions or causes,” and instead uses the language consistent
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`with Claim 1: “the remote server assembly is structured to initiate utilization …”
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`6
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`See id.; see also Ex. 1001, ‘534 Patent at 5:55-59 (emphasis added).
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`There is no reason to read additional words into the claims that do not even
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`appear in the written description. See, e.g., In re Van Geuns, 988 F.2d 1181, 1184
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`(Fed. Cir. 1993) (“limitations are not to be read into the claims from the
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`specification.”); Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372-73 (Fed.
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`Cir. 2014) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed.
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`Cir. 2002)) (“[e]ven when the specification describes only a single embodiment, the
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`clams of the patent will not be read restrictively unless the patentee has demonstrated
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`a clear intention to limit the claim scope using ‘words or expressions of manifest
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`exclusion or restriction”); Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364,
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`1379 (Fed. Cir. 2001) (“[T]he district court improperly imported a limitation not
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`supported by the claim language or the specification.”); see also, e.g., EMC Corp. v.
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`Clouding Corp., IPR2014-01217, Paper 37 at 11, 16 (PTAB Oct. 22, 2015) (Final
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`Written Decision) (rejecting Patent Owner’s “hindsight attempt to impermissibly read
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`a particular embodiment appearing in the written description into the claim, where the
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`claim language would support a broader embodiment,” and construing “any
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`reasonable ambiguity in the claim against importation of specific embodiments.”);
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`Apple Inc. v. Arendi, IPR2014-00206, Paper 32 at 10-11 (PTAB Jun 9, 2015) (Final
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`Written Decision) (declining to narrowly interpret “application programs” where
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`Patent Owner’s construction “improperly limits the claim term to the embodiments
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`7
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`and examples in the [reviewed] patent specification and imports negative limitations
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`unsupported by the intrinsic evidence.”). PO’s attempt to read additional language
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`into the claims that does not even appear in the specification should be rejected
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`III. MAGES IN VIEW OF BATCHELOR RENDERS CLAIMS 1, 6-9, 21,
`23, AND 24 OBVIOUS
`Once the claims are properly construed, application of the prior art to the
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`claims is straightforward. For instance, it would have been obvious to a PHOSITA
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`to use one aspect of Batchelor—sending command and address information—and
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`combine that concept with the teachings of Mages. Left with no legitimate basis to
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`contest these teachings, PO resorts to speculative and conclusory assertions that the
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`prior art is not analogous and that there would have been no motivation to
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`combine. PO’s assertions are inconsistent with the record, and should be rejected.
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`A. Batchelor Is Analogous Art
`PO asserts that “[a] person of ordinary skill in the art would never have
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`looked to the television field.” Paper 15, Response at 1 (emphasis added). PO even
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`sets aside the relevant PHOSITA perspective and insists that Batchelor cannot be
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`analogous art because the Office and previous litigants have not before cited
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`broadcast television references. See id. at 1, 37-38. But there is no need to guess
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`what a PHOSITA might have done at the time, and there is no need to speculate
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`about the intent of the Office’s classification decisions or strategies executed by
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`other litigants. The record includes concrete evidence that broadcast technology
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`8
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`was both within the field of endeavor and reasonably pertinent to the problems that
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`the inventor of the ‘534 Patent were trying to solve. The inventor himself said so,
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`stating: “the remotely transmitted signal may include any of a variety of types of
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`signals such as a full band broadcast signal, an interlaced broadcast signal or any
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`other known data type signal.” Ex. 1001, ‘534 Patent at 16:10-20 (also disclosing
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`various other kinds of transmitters). This disclosure is no outlier—the claims
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`explicitly recite broadcast technologies. See id. at Claims 13-17. And there cannot
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`be any doubt that the claimed broadcast technology was intended all along to
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`include television. See, e.g., Ex. 1014, Rothschild Trust Holdings, LLC, v. Citrix
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`Systems, Inc., et al., Case No. 1:06-cv-21359 (S.D. Fla.), Dec. 20, 2006 Joint
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`Claim Construction and Prehearing Statement, Dkt. 28 at p. 7 (claim 13 should
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`include “signals such as TV, radio and broadband signals.”) (emphasis added).
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`Batchelor is within the field of endeavor of the ‘534 Patent because
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`broadcast television technology is within the scope of the claims. Support for
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`defining the field of endeavor comes from a patent’s “written description and
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`claims, including the structure and function of an invention.” In re Bigio, 381 F.3d
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`1320, 1326 (Fed. Cir. 2004). The field of endeavor should be defined here to
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`include at least interactive remote computer interface systems that utilize Internet
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`or broadcast television transmissions. See, e.g., Ex. 1001, ‘534 Patent at 1:5-7;
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`16:10-20; Claims 1, 13-17. Batchelor is within that field of endeavor because it
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`9
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`describes an interactive remote computer interface system that utilizes broadcast
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`television. See generally Ex. 1004, Batchelor. PO has not identified any reason or
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`authority for defining the field of endeavor so narrowly that it would exclude
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`technology that is included within the scope of the claims.
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`Batchelor is also reasonably pertinent to the ‘534 Patent at least because the
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`inventor of the ‘534 Patent themselves said that he would look to broadcast
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`technologies in the context of their invention. See Ex. 1001, ‘534 Patent at 16:10-
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`20 (“the remotely transmitted signal may include any of a variety of types of
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`signals such as a fullband broadcast signal, an interlaced broadcast signal or any
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`other known data type signal.”). Further, the disclosure in Batchelor is directly
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`relevant to the problem that the inventor of the ‘534 Patent identified. The ‘534
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`Patent notes: “[a] significant problem associated with the use of such on-line
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`technology, however, involves the substantial amount of time required to
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`download various images and information.” Ex. 1001, ‘534 Patent at 3:20-23. PO
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`and its expert ignore this disclosure, and instead define the problem of the ‘534
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`Patent narrowly as “the need for an interactive, continuously updating, seamlessly
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`navigable, three-dimensional environment.” See Paper 15, Response at 36; Ex.
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`2008, Brogioli Decl. at ¶ 37. The proper inquiry looks to the problem with which
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`the inventor was involved, and not some narrow fiction manufactured after the
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`fact. See, e.g., In re Clay, 966 F.3d 656, 659 (Fed. Cir. 1992) (if not within the
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`10
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`field of endeavor, prior art is analogous if “the reference still is reasonably
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`pertinent to the particular problem with which the inventor is involved.”).
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`Batchelor would have logically commended itself to the inventor’s attention in
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`considering the problem in the ‘534 Patent because Batchelor is directed to
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`remotely controlling the display of locally-stored information. See generally Ex.
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`1004, Batchelor. A PHOSITA would recognize that the Batchelor disclosure
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`would teach digital packetized data transmitted over cable or satellite regardless of
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`whether it is used for Internet or some other broadcast network. See Ex. 1009,
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`Madisetti Decl. at ¶¶ 41-49; KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417
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`(2007) (“When a work is available in one field of endeavor, design incentives and
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`other market forces can prompt variations if it, either in the same field or a
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`different one), id. at 420 (“Common sense teaches, however, that familiar items
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`may have obvious uses beyond their primary purposes ….”).
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`In fact, contrary to the opinion of PO’s expert, broadcast television and
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`computers were not so disparate that a PHOSITA would be completely ignorant of
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`broadcast television. See Ex. 2008, Brogioli Decl. at ¶ 36; see also [Madisetti].
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`One example illustrating that the two technologies were intertwined at the time is
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`the Reisman reference, which was cited during reexamination of the ‘534 Patent to
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`reject a number of claims. See Ex. 1003, Reexamination File History at 93-95,
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`209-217; Ex. 1015, Reisman at 26:20-44. The Reisman disclosure describing
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`11
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`broadcasting such as FM or television was used to reject claims 12-17 of the ‘534
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`Patent during reexamination. See Ex. 1003, Reexamination File History at 214-
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`215. PO never disputed the applicability of Reisman’s teaching of television
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`broadcasts, and PO never argued that this disclosure in Reisman was not analogous
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`art. See id.2
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`Batchelor is analogous art because it is within the field of endeavor defined
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`in the ‘534 Patent and because it is reasonably pertinent to the problems identified
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`by the inventor there.
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`2 PO also implies that the Office’s classification system should be dispositive on an
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`analogous art inquiry. See Paper 15, Response at 37-38. But in determining
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`analogous art, the “structure and function of the inventions disclosed in the
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`references … carry far greater weight.” Application of Ellis, 476 F.3d 1370, 1372
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`(C.C.P.A. 1973); see also MPEP § 2141.01 (citing Ellis); In re Mlot-Fijalkowski,
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`676 F.2d 666, 670, fn.5 (C.C.P.A. 1982) (noting that classification evidence is “of
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`limited value … because the considerations in forming a classification system
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`differ from those relating to a person of ordinary skill seeking solution for a
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`particular problem.”).
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`12
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`B. Claims 1, 6-9 and 21 Are Obvious in View of Mages and Batchelor
`Challenged Claims 1, 6-9, and 21 are unpatentable because they are obvious
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`in view of Mages combined with the teachings of Batchelor, as laid out in the
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`Petition. PO presents five different arguments challenging the combination and the
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`teachings of the prior art. See Paper 15, Response at 33-59. All of PO’s arguments
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`should be rejected.
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`First, PO resorts to an argument akin to stare decisis to assert that Mages is
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`insufficient to support a finding of invalidity because of the BPAI’s 2009 decision
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`in reexamination of the ‘534 Patent. See Paper 15, Response at 39-40. This
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`argument fails because the agreed claim construction in this proceeding is broader
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`than the construction used during reexamination. There is also evidence here such
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`as Batchelor and expert testimony that was not in the record in the earlier
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`reexamination. There is no prohibition against evaluating patentability using
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`Mages in light of the different claim construction and different record. PO has not
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`identified any authority or any reason supporting the notion that the Board is bound
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`by an earlier conclusion on a different record. Even the case cited by PO
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`emphasizes that institution was denied there because the same arguments were
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`presented as before and there was no “persuasive evidence to supplement the
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`record.” See Paper 15, Response at 39-40 (citing Integrated Global Concepts, Inc.
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`v. Advanced Messaging Techs., Inc., IPR2014-01027, Paper 16 at 7-8 (PTAB Dec.
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`13
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`22, 2014)). Unlike Integrated Global Concepts, this proceeding includes new
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`arguments and new evidence, such as claim construction, Batchelor, and expert
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`testimony from Dr. Madisetti.
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`Second, PO asserts that Mages and Batchelor fail to teach the auxiliary site
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`addresses of Claim 1. See Paper 15, Response at 41. This argument is premised on
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`PO’s flawed claim construction position that would: (a) restrict access unless
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`directed by a remote server; and/or (b) require contemporaneous connectivity.
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`There are no such requirements in Claim 1, unlike Claims 2 and 24 (including the
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`access restriction) and Claims 23 and 24 (including the contemporaneity
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`requirement). In any event, PO’s assertions about Mages and Batchelor are wrong.
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`See, e.g., Paper 3, Petition at 25-28 (discussing both Mages and Batchelor in
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`connection with Claim 1 and auxiliary site addresses); 34-35 (discussing Claim 24
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`and Mages); see also Ex. 1009, Madisetti Decl. at ¶¶ 41-49 (discussing file
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`structures in both Mages and Batchelor). Batchelor specifically describes use of
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`specific portions of the data contained on a local CD-ROM when initiated by the
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`broadcaster. See, e.g., Ex. 1004, Batchelor at 1:42-52. Mages describes a host
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`server initiating use of specific data on a local CD-ROM by sending a key or
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`triggering data. See, e.g., Ex. 1005, Mages at 4:15-17, 7:50-8:1. And the claimed
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`access to auxiliary site addresses would have been obvious to a PHOSITA in view
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`14
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`of the teachings of Mages and Batchelor. See Ex. 1009, Madisetti Decl. at ¶¶ 41-
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`49.
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`Third, PO contends that Batchelor fails to teach access by a “remote server
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`assembly.” See Paper 15, Response at 42. This observation is irrelevant because
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`Petitioner did not rely on the disclosure in Batchelor to satisfy the remote server
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`limitation. See Paper 3, Petition at 21. Batchelor does disclose a broadcaster
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`initiating access of auxiliary site addresses, and it would have been obvious to a
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`PHOSITA to combine this teaching with the teachings in Mages to allow remote
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`server access of auxiliary site addresses. See, e.g., Paper 3, Petition at 25-28; see
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`also Ex. 1009, Madisetti Decl. at ¶¶ 41-49.
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`Fourth, PO asserts that Petitioner “fails to articulate any reason” to combine,
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`and that Petitioner’s challenge is based “not on any solid rationale.” See Paper 15,
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`Response at 44-45. These assertions ignore the record. See, e.g., Paper 3, Petition
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`at 18-20 (discussing reasons for combination and citing Madisetti testimony).
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`Fifth, PO asserts that “[r]eplacement of the software-governed key system of
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`Mages with a VBI-type command as in Batchelor would fundamentally change the
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`essential nature of Mages.” See Paper 15, Response at 46. This argument ignores
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`the proposed combination. Petitioner did not propose replacing the entire system of
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`Mages with a VBI system. Instead, the proposed combination is simple—it would
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`have been obvious to a PHOSITA to use the command and address information
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`from Batchelor as the “trigger data” already included in Mages. See, e.g., Paper 3,
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`Petition at 20; Ex. 1009, Madisetti Decl. at ¶¶ 41-49. No systems are being
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`replaced, and no operations are being changed. See id. Rather the data being
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`transmitted from the host computer in Mages is merely “command and address”
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`information, such as a command to display specific data residing at a specific place
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`on the CD-ROM, as described in Batchelor. See id.
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`Petitioner has carried its burden of demonstrating obviousness over Mages
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`in view of Batchelor and, therefore, claims 1, 6-9 and 21 should be canceled.
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`C. Mages Discloses Access Only While Online in Claims 23 and 24
`Claims 23 and 24 are unpatentable as obvious over Mages in view of
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`Batchelor, and PO has not identified any evidence to overcome the showing in the
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`Petition. Defining claim scope by allowing access “only while the local processor
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`is interactively online …” creates a negative limitation. That is, Claims 23 and 24,
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`as drafted, recite in this limitation a functionality that cannot be performed, rather
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`than affirmatively reciting a functionality that must be performed to fall within the
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`scope of the claims. The Federal Circuit has described the appropriate procedure
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`for approaching burdens of proof and production when negative limitations are
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`involved in an invalidity determination. See Upsher-Smith, 412 F.3d at 1322-23.
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`As a general matter, Petitioners (or accused infringers) bear the burden of proof on
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`invalidity, and that burden never shifts to POs. See id. But there is a production
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`burden required of POs once Petitioners show that the affirmative aspects of the
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`claimed invention are disclosed by the prior art. See id. To overcome this showing,
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`PO bears the burden of production to present rebuttal evidence showing that the
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`prior art includes the functionality that is forbidden by the claims. See id. There is
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`good reason for this approach. Without this burden of production, POs could
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`simply speculate that the prior art might include additional functionality, and
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`Petitioners would be left in the impossible position of proving the absence of
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`something.
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`The arguments in this proceeding illustrate the point. Petitioner met its initial
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`burden by showing that Mages teaches auxiliary site data that is accessible while
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`the local processor is interactively online. See Paper 3, Petition at 32-33. In
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`response, PO identifies no evidence beyond the speculation of its expert, Dr.
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`Brogioli. See Paper 15, Response at 49. Without identifying any support in Mages,
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`PO and Dr. Brogioli posit that a user may access locally-stored data while offline
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`by re-accessing a key that is temporarily stored in RAM. See id. PO fails to
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`identify any disclosure in Mages where a local processor is capable of accessing
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`auxiliary site data while offline. See id. Likewise, Dr. Brogioli’s declaration is
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`silent on where Mages teaches this offline access. See generally Ex. 2008, Brogioli
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`Decl. Indeed, during his deposition, Dr. Brogioli conceded that his direct testimony
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`does not specifically address whether Mages describes a key stored in RAM later
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`being accessed by the local processor while offline. See Ex. 1016, Brogioli Tr. at
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`128:15-129:23 (Dr. Brogioli testified that: “I believed you asked where does
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`Mages disclose the key being in the RAM and used without an on-line
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`[connection]. . . . So I don’t believe I discussed that in the Declaration. . . . I may
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`have thought about it along the way, but I didn’t address it in the Declaration.”).
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`Dr. Brogioli also explained that he did not consider whether this aspect of Claims
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`23 and 24 would have been obvious in view of Mages and Batchelor. See id. at
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`120:23-123:23 (discussing Mages and Batchelor and stating “I didn’t perform an
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`obvious analysis in my Declaration.”). Petitioner has already demonstrated that
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`Mages discloses the online limitation of Claims 23 and 24. Faced with speculation
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`from PO and its expert, Petitioner is now not also required to prove a negative by
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`showing that users of the Mages system cannot ever access the key while offline.
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`See Upsher-Smith, 412 F.3d at 1322-23. Instead, PO’s speculation is insufficient to
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`overcome Petitioner’s showing of invalidity, and no further showing from
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`Petitioner is required. See id.3
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`3 To the extent PO argues that allowance of Claim 23 in reexamination proves
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`anything with regard to this contemporaneous connectivity limitation, PO is
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`wrong. See Paper 15, Response at 49. The BPAI did not identify this limitation as
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`a reason for allowance. Ex. 1003, Reexam File History at Decision. In fact, the
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`In any event, PO’s speculation about the operation of Mages is contrary to
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`the goal actually described in Mages itself—to control the display of locally-stored
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`video/audio data with customized information received over the Internet from a
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`host server. See Ex. 1005, Mages at 3:62-4:32. For example, a company’s host
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`computer can initiate display of specific information stored on the local CD-ROM
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`in connection with personalized information received from the host computer over
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`an Internet connection. See id. at 4:7-17; 4:65-5:5. This system “facilitates and
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`encourages” visits to the host company’s website. See id. at 4:18-31. Allowing an
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`end-user to access the local data without a connection to the Internet, as PO
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`speculates, would defeat the purpose of encouraging end-users to visit the host
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`website. See id. at 4:28-31, 4:65-5:5. Mages explicitly states that the “only way to
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`access the data is a socket-to-socket connection with the server of the web page of
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`the host.” See id. at 6:36-38 (emphasis added); 1:29-31. This “obviat[es] the need
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`to send the actual video data over the Internet.” See id. at 4:54-58.
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`BPAI did not address this limitation at all, and instead noted that “claim 23 recites
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`identical limitations to the disputed limitations of claim 1 ….” See id. at 14.
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`Rejections of Claims 1 and 23 were reversed “for the same reasons.” See id. Claim
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`1 is unpatentable on this record, applying the agreed claim construction here, for
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`the reasons discussed supra, and the additional limitation does not save Claim 23.
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`Finally, PO’s argument focuses only on the disclosure in Mages relating to a
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`“key” but ignores the disclosures in Mages relating to “trigger data” and
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`“commands.” According to Mages, “trigger data” can include variou
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