Paper No. 7
`Filed: September 17, 2015
`
`
`
`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 PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`
`
`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
`
`A. Overview of the ’534 Patent ...................................................................... 2
`
`B. Prior Reexamination of the ‘534 Patent .................................................... 7
`
`C. Concurrent District Court Litigation Against Petitioner .........................10
`
`II. CLAIM CONSTRUCTION ..............................................................................13
`
`A.
`
`B.
`
`access .......................................................................................................14
`
`auxiliary site addresses ............................................................................22
`
`III. PROPOSED GROUNDS OF CHALLENGE ...................................................23
`
`A. Ground 1 Fails .........................................................................................23
`
`1. Batchelor Is Not Analogous Art ..............................................................24
`
`2. Claims 1, 6-9, 21 and 23-24 Are Not Obvious Over Mages in View of
`Batchelor ......................................................................................................26
`
`The Proposed Combination Fails to Disclose All Limitations in the
`a.
`Challenged Claims ...................................................................................26
`
`b.
`
`Insufficient and Illogical Rationale to Combine ............................31
`
`B. Ground 2 Fails .........................................................................................35
`
`1. The Petition Fails to Establish That Exhibit 1006 (Mavrakis) Qualifies
`As Prior Art..................................................................................................35
`
`2. Claims 1, 6-9, 21 and 23-24 Are Not Obvious Over the Proposed
`Combination of Mages in View of Exhibit 1006 (Mavrakis) .....................40
`
`The Proposed Combination Fails to Disclose All Limitations in the
`a.
`Challenged Claims ...................................................................................40
`
`b.
`
`Insufficient and Illogical Rationale to Combine ............................44
`
`
`
`–ii–
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`

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`Case IPR2015-01364
`Patent 6,101,534
`C. Ground 3 Fails .........................................................................................46
`
`1. Batchelor Is Not Analogous Art ..............................................................46
`
`2. Claims 1, 6-8 and 23 Are Not Obvious Over Batchelor in View of
`Freeman .......................................................................................................46
`
`The Proposed Combination Fails to Disclose All Limitations in the
`a.
`Challenged Claims ...................................................................................47
`
`b.
`
`Insufficient and Illogical Rationale to Combine ............................53
`
`D. Ground 4 Fails .........................................................................................55
`
`1. Batchelor Is Not Analogous Art ..............................................................55
`
`2. Claim 22 Is Not Obvious Over Mages in View of Batchelor in Further
`View of Hughes ...........................................................................................56
`
`The Proposed Combination Fails to Disclose All Limitations in the
`a.
`Challenged Claim ....................................................................................57
`
`b.
`
`Insufficient and Illogical Rationale to Combine ............................59
`
`IV. CONCLUSION ..................................................................................................60
`
`
`
`–iii–
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`

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`Case IPR2015-01364
`Patent 6,101,534
`
`TABLE OF AUTHORITIES
`
`
`
`Cases
`
`ATD Corp. v. Lydall, Inc., 159 F.3d 534 (Fed. Cir. 1998) ......................................32
`
`Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249 (Fed. Cir.
`2010) ....................................................................................................................19
`
`
`Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374 (Fed. Cir. 2006) ..................36
`
`Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341 (Fed.
`Cir. 2013) ...................................................................................................... 32, 53
`
`
`Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331 (Fed. Cir. 2015) ............................24
`
`Cynosure, Inc. v. CoolTouch, Inc., 660 F. Supp. 2d 128 (D. Mass. 2006) 27, 40, 47,
`57
`
`
`Hughes Network Sys., LLC v. Cal. Inst. Tech., No. IPR2015-00067, Paper 18
`(PTAB Apr. 27, 2015) ...................................................................... 36, 37, 38, 39
`
`
`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015) ..........................14
`
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) ...................................................... passim
`
`In re Malik, No. 2009-008833, 2011 WL 2604854 (BPAI June 30, 2011) ...... 24, 25
`
`In re Swanson, 540 F.3d 1368 (Fed. Cir. 2008) ......................................................14
`
`Insite Vision, Inc. v. Sandoz, Inc., 783 F.3d 853 (Fed. Cir. 2015) ................... passim
`
`Integrated Global Concepts, Inc. v. Advanced Messaging Techs., Inc., No.
`IPR2014-01027, Paper 16 (PTAB Dec. 22, 2014) ....................................... 28, 41
`
`
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ............................ 31, 44, 53, 59
`
`
`
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`–iv–
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`Case IPR2015-01364
`Patent 6,101,534
`Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH, 139 F.3d 877 (Fed. Cir.
`1998) ............................................................................................................ passim
`
`
`Schoenhaus v. Genesco, Inc., 40 F.3d 1354 (Fed. Cir. 2006)..................................19
`
`SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186 (Fed. Cir. 2008) ...............36
`
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699
`F.3d 1340 (Fed. Cir. 2012) ................................................................ 27, 40, 47, 57
`
`
`Statutes
`
`35 U.S.C. § 103 ................................................................................................ passim
`
`35 U.S.C. § 314 ........................................................................................................23
`
`35 U.S.C. § 315(b) ...................................................................................................13
`
`Rules
`37 C.F.R. § 42.100(b) ..............................................................................................13
`37 C.F.R. § 42.101(b) ..............................................................................................13
`37 C.F.R. § 42.107 ...............................................................................................1, 23
`MPEP § 2128.II.B ....................................................................................................39
`
`Other Authorities
`
`Webopedia, protocol, http://www.webopedia.com/TERM/P/protocol.html (last
`visited Sept. 16, 2015) .........................................................................................42
`
`
`Wikipedia, Modem, https://en.wikipedia.org/wiki/Modem (last visited Sept. 16,
`2015) ...................................................................................................................... 2
`
`
`
`–v–
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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
`
`–vi–
`
`Ex. 2001
`
`Ex. 2002
`
`Ex. 2003
`
`Ex. 2004
`
`Ex. 2005
`
`Ex. 2006
`
`Ex. 2007
`
`
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`

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`Case IPR2015-01364
`Patent 6,101,534
`Pursuant to 37 C.F.R. § 42.107, patent owner Rothschild Digital Media
`
`Innovations, LLC (“Patent Owner”) submits the following preliminary response to
`
`the petition for inter partes review (the “Petition”) filed by petitioner Sony
`
`Computer Entertainment America LLC (“Petitioner”).
`
`I.
`
`INTRODUCTION
`
`The Board should not institute inter partes review on claims 1, 6-9, and 21-
`
`24 of U.S. Patent No. 6,101,534 (the “‘534 Patent”) because Petitioner has not met
`
`its burden of showing a reasonable likelihood of prevailing on any of its proposed
`
`grounds of unpatentability, all of which are based on an assertion of obviousness
`
`under 35 U.S.C. § 103.
`
`The ‘534 Patent taught, for the first time, a highly valuable and eventually
`
`widely used system for combining local and remote data at the direction of a
`
`remote server. A preferred embodiment describes the use of the invention to
`
`permit interactive, continuously updating navigation of a virtual, three-dimensional
`
`space. It is beyond dispute that no prior art reference discloses the claimed system.
`
`Indeed, the validity of the ‘534 Patent was confirmed in a prior reexamination
`
`proceeding before this Board. (Ex. 1003.) That prior reexamination primarily
`
`relied on the same prior art reference (Mages) on which Petitioner primarily relies
`
`now. And by limiting the proposed grounds for review to obviousness, Petitioner
`
`concedes that the ‘534 Patent remains the undisputed first reference to teach all
`
`
`
`–1–
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`Case IPR2015-01364
`Patent 6,101,534
`
`elements of the patented system.
`
`The Board should reject the present challenge to the validity of the ‘534
`
`Patent, just as it did in reexamination. Inter partes review should not be instituted.
`
`A. Overview of the ’534 Patent
`
`In general, the ‘534 Patent is directed to a system in which local and remote
`
`data are combined for local display while in interactive network communication
`
`with a remote server. Accordingly, the title of the ‘534 Patent is “INTERACTIVE,
`
`REMOTE, COMPUTER INTERFACE SYSTEM.” (Ex. 1001 title.)
`
`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 Sept. 16, 2015) (“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
`
`connection, in connection with a remote server assembly, so as to provide
`
`substantially updated information and an interactive display without excessive
`
`
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`–2–
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`Case IPR2015-01364
`Patent 6,101,534
`down-load time delays.”).) 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 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; see infra Part I.B.). The role of the
`
`remote server is thus two-fold. First, by hosting a portion of the data, the remote
`
`server makes very large quantities of data available upon request, relieving
`
`capacity constraints at the local data storage assembly. (Ex. 1001 at 3:16-20.)
`
`Second, because the auxiliary data are available only while the local processor is
`
`connected to the remote server, use of the system requires access to the remote
`
`
`
`–3–
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`Case IPR2015-01364
`Patent 6,101,534
`server; thus, security is greatly enhanced and the entire system is made subject 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
`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
`
`
`
`–4–
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`Case IPR2015-01364
`Patent 6,101,534
`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.)
`
`Claims 23 and 24 were newly allowed in the prior reexamination. Claim 24
`
`recites:
`
` 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 ofsaid 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
`
`
`
`–5–
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`

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`Case IPR2015-01364
`Patent 6,101,534
`processor assembly and structured to contain a quantity of
`auxiliary site data thereon, said auxiliary site data being
`associated with saidprimary 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
`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;
`said remotely accessible auxiliary site addresses being
`encoded so as to restrict access by said local processor
`assembly unless said access is directed by said remote
`server assembly; 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 Reexamination Certificate at 2:11-58.)
`
`
`
`–6–
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`Case IPR2015-01364
`Patent 6,101,534
`The basic components of the system are therefore a remote server, a local
`
`processor, a data storage assembly associated with the local processor, and a
`
`portable medium located in the data storage assembly and having auxiliary site
`
`addresses encoded or structured to be accessed by the remote server. Put
`
`differently, the auxiliary site addresses are included within the portable medium,
`
`which is contained in the data storage assembly, which is associated with the local
`
`processor, which is in data transmitting and receiving communication with the
`
`remote server assembly.
`
`B.
`
`Prior Reexamination of the ‘534 Patent
`
`The passage of time and the development of the Internet demonstrated the
`
`technological and economic value of the ‘534 Patent. In 2007, a request for ex
`
`parte reexamination was filed, challenging the patent’s validity over a number of
`
`prior art references. The primary reference was U.S. Patent No. 5,892,825 to
`
`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 prior reexamination was on whether the prior art disclosed
`
`the elements recited in the last clause of claim 1: “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
`
`
`
`–7–
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`Case IPR2015-01364
`Patent 6,101,534
`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 was capable of accessing
`
`and utilizing 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
`panel of Fidelibus. Since the sending of these respective
`
`
`
`–8–
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`Case IPR2015-01364
`Patent 6,101,534
`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
`
`in cooperation with the remote server, as in the ‘534 Patent, and “sending some
`
`
`
`–9–
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`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,
`
`and confirmed the validity of the ‘534 Patent, including newly added claims 23 and
`
`24. The Board held that none of the 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 addresses were accessible directly by the local
`
`processor regardless of connection with, or direction from, the remote server. (Id.)
`
`C. Concurrent District Court Litigation Against Petitioner
`
`In 2014, Patent Owner notified Petitioner that various products infringe the
`
`‘534 Patent. After Petitioner refused to negotiate a license, Patent Owner was
`
`constrained to file suit for patent infringement. Petitioner’s response was the
`
`hyper-aggressive filing of a motion for sanctions, before any claim construction
`
`
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`–10–
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`proceedings had taken place, on the theory that Patent Owner’s claim construction
`
`was frivolous. Patent Owner opposed the motion on the ground that the claim
`
`construction was not only non-frivolous, but correct. The district court denied
`
`Petitioner’s motion, holding that Patent Owner’s claim construction had ample
`
`support in the specification and reexamination history. (Ex. 1011 at 6-7.)
`
`Ironically, Petitioner now advances Patent Owner’s claim construction as a
`
`reasonable construction that this Board should adopt in the present proceeding.
`
`In an apparent effort to gain the Board’s sympathy, Petitioner suggests to
`
`this Board that the litigation is unfounded because the ‘534 Patent is somehow
`
`limited to “interactive real-time display of a real life three dimensional space (such
`
`as a real estate display system)” (Pet. at 5), and cannot “implicate online video
`
`gaming” (id.). Petitioner’s assertion that the ‘534 Patent is limited to “real life”
`
`spaces (and that real estate displays must be “real life”) is plainly false. First, the
`
`‘534 Patent explicitly discusses the rendering of spaces that do not yet exist – i.e.,
`
`virtual spaces. (See Ex. 1001 at 1:9-10 (stating, in the very first sentence of the
`
`specification, that the preferred embodiment permits display of real estate space
`
`“whether the real estate space [is] fully constructed or in a planning stage”)
`
`(emphasis added)); id. at 1:44-47 (stating that invention provides for display of
`
`space that is not “physically available for viewing because it is still under
`
`construction or is in the developmental stages,” thus freeing viewers’ dependency
`
`
`
`–11–
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`Case IPR2015-01364
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`on “static artist sketches”).) Neither the title (“INTERACTIVE, REMOTE,
`
`COMPUTER INTERFACE SYSTEM” (Ex. 1001 title)), nor the abstract, nor
`
`much of the detailed description, nor many of the claims specify that the invention
`
`is limited to a real-estate embodiment, much less existing real estate. Instead, they
`
`define the invention simply as an interactive computer interface system. And it is
`
`axiomatic that while the patent also discusses a real-estate embodiment, the
`
`embodiment does not limit the scope of the claims.
`
`Second, Petitioner’s characterization of the ‘534 Patent as limited to real
`
`estate is demonstrably disingenuous. Between 1999 and 2006, Petitioner filed
`
`three of its own patent applications related to online gaming systems, and disclosed
`
`the ‘534 Patent as material prior art during prosecution of all three applications.
`
`(See Ex. 2001 (disclosing ‘534 Patent); Ex. 2002 at 2 (listing ‘534 Patent as cited
`
`reference); id. at 1:15 (describing invention as relating to “networked game
`
`console”); Ex. 2003 at 2 (disclosing ‘534 Patent); Ex. 2004 at 2 (listing ‘534 Patent
`
`as cited reference); id. at 1:21-24 (describing invention as relating to “providing
`
`auxiliary content located on local storage to a client connected to a primary content
`
`provider over a bi-directional network); id. at 4:4 (describing invention as useful in
`
`connection with “interactive games”); Ex. 2005 at 3 (disclosing ‘534 Patent); Ex.
`
`2006 at 2 (listing ‘534 Patent as cited reference); id. at 1:27-30 (describing
`
`invention as relating to “providing auxiliary content located on local storage to a
`
`
`
`–12–
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`Case IPR2015-01364
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`client connected to a primary content provider over a bi-directional network”); id.
`
`at 4:7 (describing invention as useful in connection with “interactive games”).)
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`Petitioner thus well knows that the ‘534 Patent is not limited to real estate but
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`rather relates generally to an interactive, remote, computer interface system (as its
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`title states (see Ex. 1001 title)), and particularly to the interactive real-time display
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`and navigation of a three-dimensional space – exactly what online video gaming
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`entails. Petitioner has been sued because Petitioner is practicing the ‘534 Patent.
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`The litigation is therefore well-founded, and this too appears to be
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`appreciated by Petitioner. Patent Owner served Petitioner with a complaint for
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`patent infringement on June 12, 2014. (Ex. 2007.) Petitioner waited until June 9,
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`2015 – 362 days after the litigation had started and thus just a few days shy of the
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`limitation period under the America Invents Act, see 35 U.S.C. § 315(b); 37 C.F.R.
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`§ 42.101(b) – to file the instant Petition. Petitioner thus appears to have filed this
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`proceeding as a strategic maneuver to delay the district court litigation which was
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`well underway. The Board should not reward Petitioner’s delay tactic, and should
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`not institute inter partes review.
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`II. CLAIM CONSTRUCTION
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`For purposes of inter partes review, “[a] claim . . . shall be given its broadest
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`reasonable construction in light of the specification of the patent in which it
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`appears.” 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268
`
`
`
`–13–
`
`

`
`Case IPR2015-01364
`Patent 6,101,534
`(Fed. Cir. 2015). Because this standard is different from the claim-construction
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`standards used by federal courts in litigation, see, e.g., In re Swanson, 540 F.3d
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`1368, 1377-78 (Fed. Cir. 2008), any claim construction explicitly or implicitly
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`presented herein should not necessarily be viewed as Patent Owner’s own
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`construction, but as a construction that may be raised under the standard applicable
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`in this proceeding. As such, in any litigation, where different claim construction
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`standards may apply, Patent Owner reserves the right to present other
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`interpretations that differ in whole or in part from those presented herein. Patent
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`Owner submits, solely for purposes of this inter partes review proceeding, that the
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`following claim constructions are the broadest reasonable constructions in light of
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`the specification, for the terms proposed by Petitioner for construction.
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`Petitioner has proposed constructions for essentially two claim terms:
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`(1) terms related to “access”; and (2) the term “auxiliary site addresses.” Patent
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`Owner responds to these proposed constructions below.
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`A.
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`access
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`Petitioner quotes the term “access” as it is used in claims 1, 23 and 24.
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`Claim 1 recites, inter alia: “said remotely accessible, auxiliary site addresses being
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`structured to be remotely accessed by said remote server assembly so as to initiate
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`utilization of said select portions of said quantity of auxiliary site data by said local
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`processor assembly.” (Ex. 1001 at 17:5-10 (emphasis added).) Claims 23 and 24
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`
`
`–14–
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`

`
`Case IPR2015-01364
`Patent 6,101,534
`recite, inter alia: “said remotely accessible, auxiliary site addresses being
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`structured to be remotely accessed by said remote server assembly; said remote
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`server assembly accessing said auxiliary site data to initiate utilization of said
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`select portions of said quantity of auxiliary site data by said local processor
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`assembly.” (Id. Reexamination Certificate at 1:58-2:4; id. at 2:41-47 (emphasis
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`added).)
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`Petitioner then describes two views of the term “access” that Petitioner says
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`are before the district court: (1) a “direct-path” view in which the remote server
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`accesses local auxiliary site data without going through the local processor; and (2)
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`a “remote-direction” view in which the remote server directs the local processor to
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`access local auxiliary site data. The district court indeed framed the question that
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`way, held the remote-direction view perfectly reasonable, and therefore denied
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`Petitioner’s gambit for a quick and dirty, pre-Markman claim construction. The
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`district court explained:
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`For Sony, the dispositive inquiry is about the path of the
`process.
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`. . . . [F]or Rothschild, the dispositive inquiry is about
`which device is directing the access regardless of path.
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`To better understand the distinction, imagine that
`whatever device is directing the access is the “brain” of the
`operation. Under Rothschild’s construction, as long as the
`remote server is the brain, whether the path passes through no
`
`
`
`–15–
`
`

`
`Case IPR2015-01364
`Patent 6,101,534
`other devices or through one thousand other devices is
`irrelevant. It is on this basis that Rothschild successfully
`distinguished the Mages, Reisman, Uranaka and Fidelibus prior
`art references from the ‘534 patent at the Board. . . . None of its
`representations were based on the path from the remote server
`to its ultimate destination – the auxiliary site addresses. Rather,
`it focused on what device was running the show.
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`Like Sony’s, Rothschild’s construction is supported by
`the [order on reexamina