Trials@uspto.gov
`571-272-7822
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` Paper 8
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`Date: December 15, 2015
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`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
`
`
`
`
`Before MICHAEL W. KIM, MICHAEL J. FITZPATRICK, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
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`
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`
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` Paper 8
`
`Date: December 15, 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
`
`
`
`
`Before MICHAEL W. KIM, MICHAEL J. FITZPATRICK, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2015-01364
`Patent 6,101,534
`
`I.
`
`INTRODUCTION
`
`Petitioner, Sony Entertainment America LLC, filed a Petition to
`institute an inter partes review of claims 1, 6–9, and 21–24 of U.S. Patent
`No. 6,101,534, as amended by U.S. Patent Reexamination Certificate
`6,101,534 C1, (Ex. 1001, “the ’534 patent”) pursuant to 35 U.S.C. § 311(a).
`Paper 3 (“Pet.”). Patent Owner, Rothschild Digital Media Innovations, LLC,
`filed a Preliminary Response pursuant to 35 U.S.C. § 313. Paper 7 (“Prelim.
`Resp.”).
`
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Upon consideration of the
`Petition, and for the reasons explained below, we determine that the
`information presented shows a reasonable likelihood that Petitioner would
`prevail with respect to all challenged claims. See 35 U.S.C. § 314(a).
`Accordingly, we grant the Petition to institute an inter partes review.
`
`A. Related Matters
`
`The Director requires a petitioner to include certain mandatory notices
`with its petition. 37 C.F.R. § 42.8(a)(1). The mandatory notices include a
`requirement to “[i]dentify any other judicial or administrative matter that
`would affect, or be affected by, a decision in the proceeding.” 37 C.F.R.
`§ 42.8(b)(2) (titled “Related matters”). “Judicial matters include actions
`involving the patent in federal court. Administrative matters include every
`application and patent claiming, or which may claim, the benefit of the
`priority of the filing date of the party’s involved patent or application as well
`as any ex parte and inter partes reexaminations for an involved patent.”
`
`2
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14,
`2012).
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner identifies the following
`related matter only: Rothschild Digital Media Innovations, LLC v. Sony
`Computer Entertainment America LLC, Case No. 5:14-cv-03928 (N.D. Cal.)
`(the “California lawsuit”). Pet. 59; see also Paper 6, 2 (Patent Owner’s
`mandatory notice identifying the same lawsuit).
`
`Petitioner does not identify as related matters the following:
`(1) Rothschild Trust Holdings, LLC v. Citrix, Case No. 06-21359-CIV (S.D.
`Fla.), a lawsuit in which Patent Owner asserted the ’534 patent (the “Florida
`lawsuit”); and (2) Reexamination Control No. 90/008,591, a third party-
`requested ex parte reexamination of the ’534 patent (the “reexamination”).
`Pet. 59; see also Paper 6, 2 (Patent Owner’s mandatory notice also failing to
`identify these matters as related matters).
`
`Although the Florida lawsuit and the reexamination are discussed in
`the body of the Petition, those matters should have been specifically
`identified as related matters in Petitioner’s section expressly dedicated to
`“MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1).” See Pet. 59.1
`
`
`
`
`1 Both parties should file updated mandatory notices to identify all related
`matters.
`
`3
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`Patent 6,101,534
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`B. The ’534 Patent
`
`The ’534 patent relates to an interactive remote computer interface
`system. Ex. 1001, 1:6–7. In general, it describes a system in which local
`data and remote data are combined for local use. Id. at Abstract. The use of
`local data on, for example, a CD-ROM reduces the amount of data required
`to be downloaded in order to render desired data on a display, while the use
`of remote data allows for providing updated data from a centralized source.
`Id. at 6:41–46, 7:4–8.
`
`The system includes a remote server, a local processor, and a data
`storage assembly associated with the local processor. Ex. 1001, 5:20–42.
`The remote sever includes primary site data and at least one primary site
`address that includes at least a portion of the primary site data. Id. at 5:20–
`25. The data storage assembly may be a hard drive but is preferably a
`compact, portable, and interchangeable computer readable medium such as a
`CD-ROM. Id. at 5:40–45. The data storage assembly includes auxiliary site
`data associated with the primary site data and is encoded with a plurality of
`remotely accessible auxiliary site addresses, each of which includes select
`portions of auxiliary site data. Id. at 5:46–53.
`
`Petitioner fairly describes operation of an embodiment of the ’534
`patent as follows:
`a user at a local computer, having access to a CD-
`ROM or
`the
`like
`that has been previously
`distributed and stored at a local computer, is able
`to go online to access primary site information
`(e.g., through a website). See, e.g., [Ex. 1001] at
`Col. 13:43-14:32. When the interaction calls for
`interactive video, downloading is not necessary
`
`4
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`Patent 6,101,534
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`because the system accesses the CD-ROM, and
`initiates utilization of auxiliary data stored thereon.
`See id. The auxiliary data is stored at specific
`auxiliary site addresses on the CD-ROM so that
`the data is readily accessible. See id.
`Pet. 4. Lastly, it is clear from the specification that a focus of the ’534
`patent is on application of the invention to a real estate context. See, e.g., id.
`at 7:30–35 (“the present invention is directed towards a system for the
`display of a three dimensional space, generally 10, and preferably, a real
`state display system 10 structured to provide for the remote exhibition of
`real estate space.”). But, the challenged claims, which are discussed below,
`are not limited to such an application.
`
`C. The Challenged Claims
`
`An interactive, remote, computer interface system
`
`Petitioner challenges claims 1, 6–9, and 21–24. Pet. 2–3. Claims 1,
`23, and 24 are independent, and the remaining challenged claims—claims 6–
`9, 21, and 22—ultimately depend from claim 1. Claim 1 is illustrative and
`reproduced below.
`1.
`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;
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`5
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`IPR2015-01364
`Patent 6,101,534
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`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; 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.
`Ex. 1001, 16:41–17:9.
`
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`6
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`Patent 6,101,534
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`D. Asserted Grounds of Unpatentability
`
`Basis
`§ 103(a)4
`
`Claims Challenged
`1, 6–9, 21, 23, 24
`
`Petitioner identifies the following as asserted grounds of
`unpatentability:
`References
`Mages (Ex. 1005)2 and
`Batchelor (Ex. 1004)3
`VEMMI (Ex. 1006)5
`Batchelor and Freeman
`(Ex. 1007)6
`Mages, Batchelor, and Hughes
`(Ex. 1008)7
`Pet. 2–3.
`
`§ 103(a)
`§ 103(a)
`
`1, 6–9, 21, 23, 24
`1, 6–8, 23
`
`§ 103(a)
`
`22
`
`
`2 U.S. Patent No. 5,892,825, filed Nov. 25, 1996, issued April 6, 1999.
`3 U.S. Patent No. 5,724,103, filed Nov. 13, 1995, issued March 3, 1998.
`4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, took
`effect on March 18, 2013. Because the application from which the ’534
`patent issued was filed before that date, our citations to 35 U.S.C. §§ 102
`and 103 are to their pre-AIA version.
`5 Petitioner offers the following citation for VEMMI (Ex. 1006): “Daniel
`Mavrakis, VEMMI: a new On-line Client/Server Multimedia Protocol for
`the Internet, published Sept. 12, 1996, submitted to Worldwide Web
`Consortium Workshop ‘Real Time Multimedia and the Web’ (October 24-
`25, 1996), available at: http://www.w3.org/AudioVideo/9610_Workshop/
`paper24/paper24.html (accessed June 8, 2015).” Pet. 61 (“Appendix of
`Exhibits”).
`6 U.S. Patent No. 5,861,881, filed Feb. 8, 1996, issued Jan. 19, 1999.
`7 U.S. Patent No. 5,736,977, filed Apr. 26, 1995, issued Apr. 7, 1998.
`
`7
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`IPR2015-01364
`Patent 6,101,534
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`II. ANALYSIS
`
`A. Claim Construction
`
`“A claim in an unexpired patent shall be given its broadest reasonable
`construction in light of the specification of the patent in which it appears.”
`37 C.F.R. § 42.100(b). Pursuant to that standard, the claim language should
`be read in light of the specification, as it would be interpreted by one of
`ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260
`(Fed. Cir. 2010). Thus, we generally give claim terms their ordinary and
`customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that
`the term would have to a person of ordinary skill in the art in question.”)
`(internal quotation marks omitted).
`
`Independent claim 1 recites:
`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.
`Similarly, each of independent claims 23 and 24 recites:
`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.
`In a September 17, 2010, Board decision on an appeal in the
`reexamination, the scope of these limitations (the “remote access”
`limitations) was construed to mean “that the addresses are directly accessed
`8
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`Patent 6,101,534
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`by the remote server.” Ex. 1003, 787. The Board further stated that the
`scope of these limitations do “not cover encoded auxiliary site addresses that
`are structured to be accessed by a local processor or any other intermediary,
`ultimately resulting in the addresses being indirectly accessed by the remote
`server.” Id.8
`
`In the Petition and Preliminary Response, both parties argue for a
`construction that differs from the construction in the reexamination.
`Petitioner proposes that the remote access limitations be construed to include
`both (1) direct access by a remote server, and (2) indirect access by a remote
`server via a local processor. Pet. 13–15. Patent Owner argues that direct
`access by a remote serve is physically impossible and proposes that the
`limitations be construed to include indirect access only. Prelim. Resp. 14–
`21. Additionally, and although not dispositive, Petitioner has successfully
`advanced constructions that encompass indirect access in two lawsuits
`involving the ’534 patent. See Ex. 1011, 6–7 (construction in California
`lawsuit); Ex. 1013, 29 (construction in Florida lawsuit).
`
`We agree with the parties that indirect access is within the scope of
`the remote access limitations.9 The specification notes that “in the preferred
`embodiment of the present invention, the remotely accessible, auxiliary site
`
`
`8 The quoted Board statements were expressly directed to the remote access
`limitation of claim 1, but it implicitly relates to the remote access limitations
`of claims 23 and 24 as well. Ex. 1003, 787.
`9 Whether direct access is also within the scope of the claims (or even
`physically possible) is not relevant to the grounds of unpatentability raised
`by Petitioner.
`
`9
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`Patent 6,101,534
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`addresses are specifically encoded so as to restrict access by the local
`processor assembly 25' unless the access is directed by the remote server
`assembly 50.” Ex. 1001, 14:33–37; see also C.R. Bard, Inc. v. U.S.
`Surgical Corp., 388 F.3d 858, 865 (Fed. Cir. 2004) (“a construction that
`excludes a preferred embodiment ‘is rarely, if ever, correct.’”) (quoting
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996)).
`
`That indirect access is within the scope of the limitations does not
`settle completely the claim construction dispute between the parties.
`Petitioner argues that the remote access limitations are met if a remote server
`assembly accesses the auxiliary site data “by directing the local processor
`assembly to access the data[ ] to initiate utilization of the auxiliary site data
`by the local processor assembly.” Pet. 15. But, Patent Owner proposes that
`the accessing must occur “while a remote server assembly is acting in
`network communication with the local processor assembly.” Prelim. Resp.
`21 (emphasis added). Patent Owner does not identify, nor are we aware of,
`any support in the specification for the proposed contemporaneity
`requirement. Additionally, claims 23 and 24 (but not claim 1) include
`additional claim language expressly directed to contemporaneity. See
`Ex. 1001, C1, at 2:8–10 (claim 23 reciting that the auxiliary site data are
`“accessible only while the local processor assembly is interactively online
`connected to the remote server assembly”), 2:56–58 (claim 24 reciting the
`same). Construing the limitations at issue to implicitly require what
`additional claim language in claims 23 and 24 explicitly requires would
`render the additional claim language meaningless. Thus, we do not adopt
`Patent Owner’s proposed construction. See Cardiac Pacemakers, Inc. v. St.
`
`10
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`Patent 6,101,534
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`Jude Medical, Inc., 296 F.3d 1106, 1115 (Fed. Cir. 2002) (proposed
`construction that rendered a portion of the claim language meaningless held
`improper).
`
`The remote access limitations of claims 1, 23, and 24 encompass a
`remote server assembly accessing the auxiliary site data by directing the
`local processor assembly to access the data to initiate utilization of the
`auxiliary site data by the local processor assembly. In claims 23 and 24,
`additional claim language requires that the auxiliary site data are accessible
`only while the local processor assembly is interactively online connected to
`the remote server assembly.
`
`The parties additionally dispute the meaning of the term “auxiliary
`site addresses,” but that dispute essentially is a repeat of the same issues as
`the dispute with respect to the remote access limitations. Petitioner proposes
`that auxiliary site addresses be “‘memory locations’ encoded on the
`computer readable medium,” Pet. 15, whereas Patent Owner proposes that
`they be “real or logical memory addresses that point to auxiliary site data,
`and are available while a remote server assembly is acting in network
`communication with a local processor assembly.” Prelim. Resp. 23
`(emphasis added). The italicized portion of Patent Owner’s proposed
`construction is not supported by the record. The parties’ constructions
`otherwise are effectively the same, with any further differences being
`immaterial to this decision.
`
`B. Obviousness in View of Mages and Batchelor
`
`Petitioner contends that claims 1, 6–9, 21, 23, and 24 would have been
`obvious over Mages and Batchelor. Pet. 2. In assessing obviousness, “the
`11
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`Patent 6,101,534
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`scope and content of the prior art are to be determined; differences between
`the prior art and the claims at issue are to be ascertained; and the level of
`ordinary skill in the pertinent art resolved.” Graham v. John Deere Co., 383
`U.S. 1, 17 (1966).10
`
`1. Mages (Ex. 1005)
`Mages states that there are “considerable drawbacks and deficiencies
`in transmitting video images and/or audio data over the Internet” from a
`remote server, including “considerable time delays.” Ex. 1005, 3:28–52.
`Mages, thus, teaches a networked computer system in which audio/video
`data is stored locally (e.g., on a CD-ROM), the use of which is controlled by
`a remote server. Id. at 4:15–17 (“Specific tracks on the CD-ROM can
`thereby be controlled by the remote server.”), Abstract (“A method of
`triggering video imaging and/or audio data on a ‘HyperCD’ (CD-ROM) via
`a trigger through a network for instant local access of encrypted data on
`local media.”). Mages states the following:
`It is the primary objective of the present
`invention to separate keys and data by providing a
`CD-ROM having its informational data of video
`and/or audio that is crippled, which data may only
`be read after it has been “uncrippled” by receiving
`“uncrippling” triggering data over the Internet
`
`
`10 Additionally, secondary considerations such as “commercial success, long
`felt but unsolved needs, failure of others, etc., might be utilized to give light
`to the circumstances surrounding the origin of the subject matter sought to
`be patented. As indicia of obviousness or nonobviousness, these inquiries
`may have relevancy.” Graham, 383 U.S. at 17–18. The current record,
`however, lacks such evidence.
`
`12
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`IPR2015-01364
`Patent 6,101,534
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`from a server of a host system, so that a company's
`host computer serving the Internet may transmit
`the “uncrippling” data over the Internet to an end-
`user's receiving computer in order to uncripple
`and, thereby, actuate the CD-ROM, so that the data
`thereon may be read by the end-user’s receiving
`computer only in volatile memory such as RAM.
`It
`is another objective of
`the present
`invention to enable server control of the local
`media data by providing such a “crippled” CD-
`ROM with video and/or audio data thereon,
`whereby content by a company on the Internet may
`be better controlled, and whereby in conjunction
`with the content, video and/or audio playback may
`be
`combined with
`any
`updated,
`textual
`information, such as current price of a product or
`products, location of a store or stores in the
`vicinity of the end-user’s residence, etc. Specific
`tracks on the CD-ROM can thereby be controlled
`by the remote server.
`Id. at 3:62–4:17. Also, “[s]ince the uncrippling trigger is much smaller than
`the entire media file, it saves considerable amount of transmission time.” Id.
`at Abstract.
`
`Patent Owner urges us not to consider Mages here because it was
`previously considered during the reexamination. Prelim. Resp. 27–28.
`Indeed, the Board did reverse a rejection of claim 1, among others, as
`anticipated by Mages. The Board explained as follows:
`The Examiner does not direct us to, and we can not
`find where Mages describes that the CD-ROM
`audio/video data (i.e., auxiliary site addresses,
`auxiliary site data) are structured to be remotely
`accessed by the remote server (i.e., directly).
`Instead, Mages describes
`that
`the CD-ROM
`audio/video data (i.e., auxiliary site addresses,
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`IPR2015-01364
`Patent 6,101,534
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`auxiliary site data) are accessed by the local end-
`user’s computer (i.e., processor).
`Ex. 1003, at 788–89. Thus, the reversal of the Examiner’s rejection was
`premised on a claim construction we do not adopt here, for reasons
`explained above.11 In fact, in its Preliminary Response before us, Patent
`Owner asserts that it would be physically impossible to meet the remote
`access limitation under the Board’s prior construction. Prelim. Resp. 19
`(“[T]he direct-path construction makes no sense. . . . a construction that
`posits ‘a physical impossibility,’ is erroneous.”) (internal citation omitted).
`
`In any event, Petitioner does not, as was done in the reexamination,
`rely on Mages alone to meet the remote access limitation. It relies on a
`modification of Mages in view of Batchelor. For all of these reasons, the
`prior Board’s consideration of Mages does not warrant declining to consider
`Mages here.
`
`2. Batchelor (Ex. 1004)
`Batchelor describes combining information received from a broadcast
`transmission with information locally stored on a local CD-ROM and
`displaying the combined information together. Ex. 1004, 4:7–17. A
`broadcaster has a data source and a video source, which are inputted to a
`vertical blanking interval (VBI) inserter. Id. at 2:14–22, 3:1–25. “The video
`
`11 Patent Owner’s argument that the prior decision “should not be disturbed”
`(see Prelim. Resp. 28) rings hollow, as Patent Owner has advanced (with
`success) in district court proceedings a much broader construction for the
`remote access limitation, which the Board found missing from Mages. See
`Ex. 1011, 6–7 (construction in California lawsuit); Ex. 1013, 29
`(construction in Florida lawsuit).
`
`14
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`signal and accompanying inserted data are transmitted by a transmitter.” Id.
`at 2:26–28. After receipt of the transmission, a VBI decoder separates the
`combined signal into (1) a video signal, which is further processed by an
`NTSC decoder, and (2) a data signal. Id. at 2:29–34. The data is sent to a
`local CPU which it instructs, via “command and address information” to
`retrieve specific text and graphic information from an optical disk (e.g., a
`CD-ROM) and display the text and graphic information on a display, along
`with the NTSC video signal. Id. at 2:49–54.
`
`3. Petitioner’s Application of the Art to the Challenged Claims
`Petitioner relies on Mages as teaching all of the subject matter of
`claims 1, 6–9, 21, 23, and 24 except that it additionally relies on Batchelor
`for the remote access limitations of claims 1, 23, and 24. Pet. 21–35. In that
`regard, Petitioner notes that both references “recognize the desirability of
`locally storing data on a CD-ROM and a remote server directing access to
`that data.” Pet. 19–20 (citing Ex. 1005, 4:15–17; Ex. 1004, 1:30–58).
`Petitioner persuasively argues that one of ordinary skill would have
`recognized and appreciated that the operation of the remote server of Mages
`could have been modified to access and control the specific data on a local
`CD-ROM, as taught by Batchelor. Pet. 20. “In other words, the uncrippling
`or triggering data [of Mages] could include specific command and address
`information as provided in Batchelor.” Id.
`
`Patent Owner argues against the unpatentability challenge based on
`the intertwined reasons of claim construction and prior consideration of
`Mages during the reexamination. Prelim. Resp. 26–31. Those arguments,
`however, were considered above and, based on the current record, are
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`rejected.
`
`Patent Owner also argues that Batchelor is not analogous art. Prelim.
`Resp. 24–26. Whether it is presents a question of fact. In re Clay, 966 F.2d
`656, 658 (Fed. Cir. 1992) (“Whether a reference in the prior art is
`“analogous” is a fact question.”). “Two criteria have evolved for
`determining whether prior art is analogous: (1) whether the art is from the
`same field of endeavor, regardless of the problem addressed, and (2) if the
`reference is not within the field of the inventor’s endeavor, whether the
`reference still is reasonably pertinent to the particular problem with which
`the inventor is involved.” Id. at 659.
`
`Patent Owner argues that Batchelor does not meet the first criterion
`because it is from the field of broadcast television but the challenged
`invention is in the field of computer networks. Pet. 25. We need not
`determine whether Batchelor is from a different field, however, because,
`even assuming Batchelor is from a different field, it would meet the second
`criterion set forth in Clay. Batchelor is reasonably pertinent to the particular
`problem with which the ’534 patent was involved, i.e., how to control local
`display of data from a remote location while avoiding the time-consuming
`step of transmitting all of the data to be displayed. See, e.g., Ex. 1001, 3:20–
`23 (“A significant problem associated with the use of such on-line
`technology, however, involves the substantial amount of time required to
`download various images and information.”).
`
`Patent Owner argues that Batchelor could not have been concerned
`with that problem because it involved data transfer via a broadcast
`transmission, which Patent Owner argues (without citing evidence) lacks
`16
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`bandwidth constraints. Pet. 26. But, a prior art reference need not identify
`or solve the same problem as the challenged patent; it need merely be
`“reasonably pertinent” to the problem. Clay, 966 F.2d at 658. Because
`Batchelor discloses a system in which a remote source controls a local
`display of data without transmitting all of the data to be displayed, it is
`reasonably pertinent to the problem involved in the ’534 patent.
`
`Patent Owner also argues that Petitioner has failed to demonstrate
`sufficient reasoning for the proposed combination of prior art teachings from
`Mages and Batchelor. Prelim. Resp. 31–35. To the contrary, on the current
`record, we are persuaded by the reasoning identified in the Petition, which is
`that Batchelor expressly provides a reason to modify Mages to provide
`access and control of the specific data on a local CD-ROM. See Pet. 20
`(citing Ex. 1004, 1:30–39).
`
`Lastly, Patent Owner argues, with respect to a subset of the
`challenged claims, that Batchelor does not teach “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” as recited in claims 23 and 24. Prelim. Resp. 30.
`But, for that limitation, Petitioner relies on various excerpts from Mages,
`including the following:
`
`[S]ince the key 5 is being sent via Internet 6, the end-user’s
`computer 7 must be equipped with the requisite software which
`is capable of receiving data from the server 7 and which will
`ensure that the received encoded key 5 is placed safely in RAM
`12, and not allowed to be otherwise saved in hard drive 11
`where it may be captured and used in a way not authorized by
`the server 7.
`
`17
`
`
`
`IPR2015-01364
`Patent 6,101,534
`
`Pet. 33 (citing Ex. 1005, 6:58–65).
`Based on our review of the record, including the claim chart mapping
`the relied-upon prior art teachings to the limitations of claims 1, 6–9, 21, 23,
`and 24, we determine that Petitioner has established a reasonable likelihood
`of prevailing in showing that those claims would have been obvious over
`Mages and Batchelor.
`
`C. Obviousness in View of Mages and VEMMI (Ex. 1006)
`
`Petitioner contends that claims 1, 6–9, 21, 23, and 24 would have been
`obvious over Mages and Batchelor. Pet. 2.
`
`In an inter partes review, a petitioner may challenge claims “only on
`the basis of prior art consisting of patents or printed publications.” 35
`U.S.C. § 311(b). The Petition asserts that VEMMI is prior art to the ’534
`patent under 35 U.S.C § 102(a) solely because it “is dated September 12,
`1996.” Pet. 2 (emphasis added). The Petition does not present any evidence
`that VEMMI was published on that date, or ever. Nor does the reference
`itself provide any indication that it was published prior to the invention of
`the ’534 patent. See Ex. 1006.
`
`Accordingly, Petitioner has not established a reasonable likelihood of
`prevailing in showing that claims 1, 6–9, 21, 23, and 24 would have been
`obvious over Mages and VEMMI.
`
`D. Obviousness in View of Batchelor and Freeman (Ex. 1007)
`
`Petitioner contends that claims 1, 6–8, and 23 would have been
`obvious over Batchelor and Freeman. Pet. 2. In the body of its argument,
`Petitioner does not account for how the proposed combination meets the
`18
`
`
`
`IPR2015-01364
`Patent 6,101,534
`
`remote access limitations of claims 1 and 23. See Pet. 44–46. And, in the
`accompanying claim chart, Petitioner does not cite directly any prior art
`teachings to meet those limitations. See Pet. 50, 53. Instead, and with
`respect to claim 1 for example, the claim chart states: “Batchelor teaches
`this limitation. See supra V.1 at Claim 1(i).” Pet. 50. Yet, Batchelor clearly
`does not teach this limitation at least because it lacks a remote server
`assembly. Petitioner acknowledged as much by relying, in its Ground 1
`challenge, upon a combination of teachings from Mages and Batchelor. See
`Pet. 20 (in Ground 1, relying on a “modification” of Mages in view of
`Batchelor to meet the remote access limitation), 25–28 (Ground 1 claim
`chart at “1(i)” citing teachings from both references to meet remote access
`limitation).
`
`Accordingly, Petitioner has not established a reasonable likelihood of
`prevailing in showing that claims 1 and 23 would have been obvious over
`Batchelor and Freeman. For the same reason, Petitioner also fails to do the
`same for claims 6–8, which depend from claim 1.
`
`E. Obviousness in View of Mages, Batchelor, and Hughes
`
`Petitioner contends that claim 22 would have been obvious over
`Mages, Batchelor, and Hughes. Pet. 3. Claim 22 depends from claim 21,
`and adds further limitations directed to generating a floor plan display of a
`three dimensional space and a three dimensional, walk through display of
`that space. Ex. 1001, 18:34–47.
`
`Petitioner relies on Mages and Batchelor as applied against claim 21
`and additionally on Hughes (Ex. 1008) for teaching the limitations added by
`claim 21. Pet. 53. Hughes “relates to combining images with other
`19
`
`
`
`IPR2015-01364
`Patent 6,101,534
`
`information of real estate presented on the same screen, storing and filing all
`the information centrally or locally, and providing the combined information
`over a communications network.” Ex. 1008, 1:5–10. The Petition cites
`numerous Hughes teachings that appear to meet the limitations added by
`claim 22 and provides reasoning for why one of ordinary skill in the art
`would have applied those teachings with Mages and Batchelor. Pet. 53–55;
`see also id. at 56–58 (claim chart mapping Hughes teachings to the
`limitations added by claim 22).
`
`Based on our review of the record, we determine that Petitioner has
`established a reasonable likelihood of prevailing in showing that claim 22
`would have been obvious over Mages, Batchelor, and Hughes.
`
`III. CONCLUSION
`
`We have considered the information presented in the Petition and
`Preliminary Response and determine that there is a reasonable likelihood
`that Petitioner would prevail with respect to all claims challenged but not on
`all grounds raised. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108.
`
`IV. ORDER
`
`Accordingly, it is
`
`ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes review
`of U.S. Patent No. 6,101,534 is hereby instituted on the following grounds:
`
`claims 1, 6–9, 21, 23, and 24 as obvious over Mages and
`Batchelor; and
`
`claim 22 as obvious over Mages, Batchelor, and Hughes;
`
`20
`
`
`
`IPR2015-01364
`Patent 6,101,534
`
`FURTHER ORDERED that no other ground of unpatentability
`alleged in the Petition for any claim is authorized for this inter partes
`review; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`
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