Paper No. 18
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––––––––––
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`GREAT WEST CASUALTY COMPANY; BITCO GENERAL INSURANCE
`CORPORATION; and BITCO NATIONAL INSURANCE COMPANY,
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2015-01706
`U.S. Patent No. 7,516,177
`
`––––––––––––––––––
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`PETITIONERS’ REPLY
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`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`GREAT WEST CASUALTY COMPANY; BITCO GENERAL INSURANCE
`CORPORATION; and BITCO NATIONAL INSURANCE COMPANY,
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2015-01706
`U.S. Patent No. 7,516,177
`
`––––––––––––––––––
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`PETITIONERS’ REPLY
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`IPR2015-01706
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`Petitioners’ Reply
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`Table of Contents
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`I.
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`II.
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`INTRODUCTION ........................................................................................ 1
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`PATENT OWNER MISCONSTRUES THE CLAIMS ............................... 11
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`A. A Link Is A Type of “Content” ......................................................... 11
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`B.
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`“Content” Is Added by Linking to It ................................................. 11
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`III. CLAIM 11 IS UNPATENTABLE .............................................................. 12
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`A. Wherein Clause ................................................................................. 12
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`B.
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`Administrative Interface ................................................................... 17
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`IV. CLAIM 16 IS UNPATENTABLE .............................................................. 19
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`A.
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`B.
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`Selecting Content .............................................................................. 19
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`Accessing the Centralized Access Point ............................................ 21
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`V.
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`CONCLUSION .......................................................................................... 22
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`Petitioners’ Reply
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
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`Applied Medical Resources Corp. v. US Surgical Corp.,
`448 F. 3d 1324 (Fed.Cir. 2006) .......................................................................... 7
`
`Becton, Dickinson & Co. v. Tyco Healthcare Group,
`616 F.3d 1249 (Fed. Cir. 2010) ...................................................................... 5, 6
`
`Blue Calypso, Inc. v. Groupon, Inc.,
`93 F. Supp. 3d 575 (E.D. Tx. 2015) ................................................................... 7
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ....................................................................................... 2
`
`Dealertrack, Inc. v. Huber,
`674 F.3d 1315 (Fed. Cir. 2012) .......................................................................... 7
`
`EMC Corp. et al. v. Pure Storage, Inc.,
`Civ. No. 13-1985-RGA, Dkt. No. 362 (D. Del. Feb. 2, 2016) ............................ 6
`
`Facebook Inc. v. Pragmatus LLC,
`582 Fed.Appx. 864, slip. Op. (Fed. Cir. 2014) ................................................... 8
`
`Kraft Foods, Inc. v. International Trading Co.,
`203 F.3d 1362 (Fed. Cir. 2000) .......................................................................... 7
`
`Ex parte Markush,
`1925 Dec. Comm’r Pat. 126 (1924) ................................................................... 3
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ................................................................ 5, 8, 11
`
`Powell V. Home Depot U.S.A., Inc.,
`663 F.3d 1221 (Fed. Cir. 2011) .......................................................................... 6
`
`Silergy Corp., v. Monolithic Power Sys., Inc.,
`IPR2015-00803, Paper 9 (Sept. 11, 2015) ........................................................ 22
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) .................................................................... 11, 20
`ii
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`IPR2015-01706
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`Other Authorities
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`Petitioners’ Reply
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`37 C.F.R. § 42.100(b) ............................................................................................. 2
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`MPEP 2173.05(H) .................................................................................................. 3
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`iii
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`IPR2015-01706
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`Petitioners’ Reply
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`Exhibit List
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`1006
`1007
`1008
`1009
`1010
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`1011
`1012
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`1013
`
`Exhibit # Reference Name
`1001
`U.S. Patent No. 7,516,177 to Knapp
`1002
`File History of U.S. Patent No. 7,516,177
`1003
`Declaration of Philip Greenspun, Ph.D.
`1004
`Curriculum Vitae of Philip Greenspun, Ph.D.
`Eric Lease Morgan, MyLibrary: A Model for Implementing a User-
`1005
`centered, Customizable Interface to a Library’s Collection of
`Information Resources (1999)
`U.S. Patent No. 5,715,314 to Payne
`[RESERVED]
`U.S. Patent No. 5,987,440 to O’Neil
`U.S. Patent No. 8,601,373 to Ackley
`Declaration of Eric Lease Morgan regarding Public Accessibility of
`the MyLibrary Article (August 3, 2015)
`Declaration of Simeon Warner (July 6, 2015)
`Ginsparg, P., It was twenty years ago today . . . arXiv.org history (Sep.
`13, 2011)
`Berners-Lee, T. and Connolly, D., RFC 1866, Hypertext Markup
`Language – 2.0 (November 1995)
`Berners-Lee, T., Fielding, R., and Frystyk, H., RFC 1945, Hypertext
`Transfer Protocol – HTTP/1.0 (May 1996)
`U.S. Patent No. 5,761,662 to Dasan
`[RESERVED]
`U.S. Patent No. 6,632,248 to Isaac
`U.S. Patent No. 6,119,167 to Boyle
`U.S. Patent No. 4,925,240 to Peters
`U.S. Patent No. 5,288,980 to Patel
`U.S. Patent No. 6,347,333 to Eisendrath
`
`1014
`
`1015
`1016
`1017
`1018
`1019
`1020
`1021
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`iv
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`Petitioners’ Reply
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`1025
`1026
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`1027
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`1028
`1029
`1030
`
`1031
`1032
`
`Exhibit # Reference Name
`1022
`U.S. Patent No. 6,032,162 to Burke
`1023
`U.S. Patent No. 6,135,646 to Kahn
`White, S., ABYSS: A Trusted Architecture for Software Protection,
`1024
`IEEE (1987)
`U.S. Patent No. 5,260,999 to Wyman
`Bartlett, J., Experience with a Wireless World Wide Web Client, IEEE
`(1995)
`Joseph, A., Mobile Computing with the Rover Toolkit, IEEE
`Transaction on Computers, Vol. 46, No. 3 (March 1997)
`U.S. Patent No. 5,857,191 to Blackwell
`U.S. Patent No. 6,625,447 to Rossmann
`Lidsky, D., Home on the Web, PC Magazine (Vol. 17, No. 15)(Sept. 1,
`1998)
`Chesnais, P., et al., The Fishwrap Personalized News System, IEEE
`Rich, L., et al., How Libraries Are Providing Access to Electronic
`Serials: A Survey of Academic Library Web Sites, Serials Review 25:2,
`35-46 (1999)
`Poynder, R., Lexis-Nexis: Past and Future, Online & CD-ROM
`Review, Vol. 22, No. 2 (1998)
`MyLibrary, Archive.org - my.lib.ncsu.edu (8/16/99)
`U.S. Patent No. 6,922,781 to Shuster
`Berners-Lee, T., et al., The World-Wide Web, Communications of the
`ACM, Vol. 37, No. 8, p. 76 (August 1994)
`Persistent Client State HTTP Cookies, Wayback Machine –
`https://web.archive.org/web/19981205102303/http://www.netscape.co
`m/newsref/std/cookie_spec.html
`U.S. Patent No. 6,393,462 to Mullen-Schultz
`U.S. Patent Application Publication No. 20010032152 to Khosla
`[RESERVED]
`[RESERVED]
`
`1033
`
`1034
`1035
`1036
`
`1037
`
`1038
`1039
`1040
`1041
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`Petitioners’ Reply
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`Exhibit # Reference Name
`1042
`Exhibit A - Infringement Contentions to Reply Brief Supporting
`BITCO’s Amended Venue Transfer Motion (Dkt 44, Ex. 3) Civ. No.
`6-15-cv-59 (May 29, 2015)
`[RESERVED]
`[RESERVED]
`[RESERVED]
`Declaration of Vernon M. Winters
`Deposition Transcript of Dr. Yannis Papakonstantinou (June 9, 2016)
`
`1043
`1044
`1045
`1046
`1047
`[NEW]
`1048
`[NEW]
`
`Infringement Contentions as to the BITCO Defendants, Civ. No. 6-15-
`cv-59 (May 15, 2015)
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`Petitioners’ Reply
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`I.
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`INTRODUCTION
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`Patent Owner asks the Board to finally construe the word “content” to
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`exclude “links to content.” That would be error, for three reasons. First, that
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`construction is not the broadest reasonable construction. Second, the 177 Patent’s
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`specification expressly describes “content” to include links to content—links are a
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`type, or species, of content. Third, precedent holds merely that different claim
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`terms are presumed to have different scope. That presumption can be, and often is,
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`overcome—it is readily overcome based on the intrinsic record in this case.
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`Patent Owner also implicitly asks the Board to construe claim language
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`requiring the selection of “content” for addition to a “centralized access point” as
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`excluding the selection of content that results in the addition of links to the access
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`point. That too would be error, as the only disclosed example of the selection of
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`“content” for addition to a “centralized access point” results in the addition of links
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`to the access point. When one adds milk to a shopping list, one does not open the
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`jug and pour the liquid onto the list.
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`Patent Owner’s remaining arguments similarly ignore the claim language,
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`the clear disclosures of the specification, or both. They must all be rejected and the
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`claims at issue here found unpatentable.
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`1
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`IPR2015-01706
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`Petitioners’ Reply
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`II.
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`PATENT OWNER MISCONSTRUES THE CLAIMS
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`A. A Link Is A Type of “Content”
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`Patent Owner contends that the claim word “content” must be construed to
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`exclude links to content, relying on the language of claim 11 requiring a “server
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`operative to store one or more of: a) content, b) links to content, c) information
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`about content, and d) information about users including information about which
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`content a user has chosen.” (emphasis added). Patent Owner argues from the list
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`set forth in this server element that “content” must be construed to exclude “links
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`to content.” Resp. 10. This position is contrary to the intrinsic record, Patent
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`Owner’s litigation positions, and settled case-law.
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`Patent Owner fundamentally misapplies the claim construction methodology
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`that governs IPRs. The Supreme Court has recently confirmed that claims in an
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`IPR must be given their broadest reasonable construction, Cuozzo Speed Techs.,
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`LLC v. Lee, 136 S. Ct. 2131, 2134-35 (2016); 37 C.F.R. § 42.100(b), yet Patent
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`owner’s claim construction argument instead tries to impose an unreasonably
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`narrow construction. Here, the intrinsic record demonstrates that the claim terms
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`“content” and “links to content” have different, but overlapping, scope because in
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`the context of the 177 Patent links are a type (i.e., a species) of content.
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`For example, the claim language at issue merely lists the type of information
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`the claimed server must be “operative to store.” That the listed items may have
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`Petitioners’ Reply
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`some overlap does not make one or more of them superfluous. Indeed, the
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`“server” limitation of claim 11 is in the nature of a Markush Group, a well-known
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`and long-used claiming technique. See Ex parte Markush, 1925 Dec. Comm’r Pat.
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`126, 127 (1924). The fact that one member of such a group is a genus (“content”)
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`and another is a species of that genus (“links to content”) is of no moment, as the
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`Office has explained:
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`Similarly, the double inclusion of an element by members of a
`Markush group is not, in itself, sufficient basis for objection to or
`rejection of claims. … The mere fact that a compound may be
`embraced by more than one member of a Markush group recited in the
`claim does not necessarily render the scope of the claim unclear. For
`example, the Markush group, “selected from the group consisting of
`amino, halogen, nitro, chloro and alkyl” should be acceptable even
`though “halogen” is generic to “chloro.”
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`MPEP 2173.05(H) (emphasis added). An interpretation of claim 11 that held
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`“content” to be generic to “links to content” is thus perfectly acceptable under the
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`Office’s own procedures.
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`Moreover, while nothing in the claim language indicates that “content” must
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`exclude “links,” the specification requires the opposite by defining “links” to be a
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`type of “content.” For example, in the context of the 177 Patent “content” is stored
`
`in a data structure called a “content object.” Ex. 1001 at 17:31-35. Indeed, Patent
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`3
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`Petitioners’ Reply
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`Owner’s proposed interpretation for “content object” is “an object containing
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`content.” Paper 7 at 23-24 (emphasis added).
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`The specification of the 177 patent, moreover, discloses a “link type content
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`object” that contains only a link to content. See Ex. 1001 at 47:15-18 (“FIG. 43 is
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`a diagram of a screen display showing a link content builder page 504 provided for
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`a content object type comprising a link.” (emphasis added)), 48:47-48, 48:64.
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`Thus, under the specification, the content contained in a “link type content object”
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`is a link, so a link must be a type of content.1
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`Other passages of the 177 Patent confirm this conclusion by explaining how
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`a “link type content object” can be built. For example, Figure 43 discloses that the
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`“type” of content included in such a content object is a “link”:
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`1 The 177 Patent also refers to a “tutorial content object,” which contains a tutorial.
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`Ex. 1001 at 47:5-7. This tutorial “can consist exclusively of external links.” Ex.
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`1001 at 53:54-56 (emphasis added). Thus, the patent discloses at least two types
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`(species) of “content”—links and tutorials—that can comprise links.
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`Petitioners’ Reply
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`
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`Ex. 1001 at Fig. 43 (emphasis added). As the Federal Circuit explained in Phillips
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`v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005), the specification is the single
`
`best guide to the proper construction of a claim term—indeed, it is often
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`dispositive. Here, that single best guide points, and firmly so, away from the result
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`that the Patent Owner seeks.
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`Patent Owner’s reliance on an isolated statement in Becton, Dickinson & Co.
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`v. Tyco Healthcare Group, 616 F.3d 1249, 1254 (Fed. Cir. 2010), concerning
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`infringement, does not suggest a different result. See Resp. 10. In Becton, the
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`issue was whether two separately recited claim elements could be satisfied for
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`purposes of infringement by a single accused structure. 616 F.3d at 1254-55.
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`Because claim construction is a patent-specific exercise, the Court in that case
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`Petitioners’ Reply
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`found they could not, based on its analysis of both the specification and claim
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`language. Id. at 1255-57. In the context of other specifications and claim
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`language, other courts have come to the opposite conclusion, see Powell V. Home
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`Depot U.S.A., Inc., 663 F.3d 1221, 1231-32 (Fed. Cir. 2011), so Becton cannot be
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`read as setting forth a hard and fast rule. As with most claim construction issues,
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`the analysis turns on the intrinsic record, which in this case defines links as a type
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`of content.
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`Patent Owner’s mis-description of Becton, however, goes deeper than that.
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`Just because two claim elements must read on two separate structures for purposes
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`of infringement does not mean that the interpretation of those elements must be
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`different, or mutually exclusive, as Patent Owner would have it. Consider a claim
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`to a bicycle reciting “a first brake” and “a second brake.” To be satisfied, that
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`claim may very well require two separate brakes, but that does not mean those two
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`claim terms would not be construed in exactly the same way. See EMC Corp. et
`
`al. v. Pure Storage, Inc., Civ. No. 13-1985-RGA, Dkt. No. 362, at *7 (D. Del. Feb.
`
`2, 2016). Nothing in Becton suggests otherwise.
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`Moreover, even different claim language can still read on the same structure.
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`Consider, for example, claim 12 of the 177 Patent, which requires that “the
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`distributed information access point comprises one or more of: a) a web page; b) a
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`plurality of web pages; c) a portion of a web page ….” Ex. 1001 at 55:28-31. A
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`Petitioners’ Reply
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`prior art “distributed information access point” comprising a plurality of web
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`pages would also comprise “a web page” and “a portion of a web page.” While
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`different claim terms may have different claim scope, and even different meanings,
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`they can still read on the same structure. Applied Medical Resources Corp. v. US
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`Surgical Corp., 448 F. 3d 1324, 1333 n.3 (Fed.Cir. 2006).
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`The basis for Patent Owner’s error, which it asks the Board to adopt, is the
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`assertion that different claim elements must to be construed as mutually exclusive.
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`That is not the law. Different claim terms merely presumptively have different
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`scope, but that presumption can be, and often is, rebutted by the intrinsic record,
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`see, e.g., Kraft Foods, Inc. v. International Trading Co., 203 F.3d 1362, 1368 (Fed.
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`Cir. 2000), and it does not preclude two different claim elements being given
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`overlapping interpretations (as with the listed terms of claim 12, discussed above),
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`see Blue Calypso, Inc. v. Groupon, Inc., 93 F. Supp. 3d 575, 600-01 (E.D. Tx.
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`2015) (construing “set” to mean “a collection of one or more” even though the
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`same claim included the phrase “at least one”).
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`Under the broadest reasonable interpretation consistent with the
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`specification, the Board must construe “content” to embrace all examples of
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`content disclosed in the specification, so the claim term “content” must include a
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`link to content. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir.
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`Petitioners’ Reply
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`2012) (including enumerated and non-enumerated examples within a term’s
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`scope).
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`Finally, Patent Owner is in no position to argue otherwise. In parallel
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`litigation, for example, Patent Owner’s infringement contentions specifically
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`identified links (called “Bookmarks”) on a portal website as satisfying the
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`“content” requirements of the claims. See Ex. 1048 at 43-49. Patent Owner should
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`not be heard to argue that the broadest reasonable interpretation of its claims does
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`not cover the very structure it has accused of infringement under the Phillips
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`standard. Facebook Inc. v. Pragmatus LLC, 582 Fed.Appx. 864, slip. Op. at *869
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`(Fed. Cir. 2014) (non-precedential) (interpretation under BRI “cannot be narrower”
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`than under Phillips). Given the intrinsic record here and the positions Patent
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`Owner has taken, the broadest reasonable interpretation of the claim term
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`“content” must include links to content.
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`B.
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`“Content” Is Added by Linking to It
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`Patent Owner also contends that certain claim language (as in claim 16)
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`requiring “selecting content … for addition to a centralized access point” does not
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`cover the selection of content that results in the addition of a link to a user’s
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`“centralized access point.” Resp. 37-39. That is incorrect. Regardless of the
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`construction of “content,” such claim language must be construed broadly enough
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`Petitioners’ Reply
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`to cover the addition of links to a centralized access point because that is the only
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`disclosed example of the claimed functionality.
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`For example, the only detailed example of selecting information for addition
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`to a centralized access point in the 177 Patent is described with respect to Figures
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`8, 9 and 10. Figure 8 is “a diagram of a screen display for a personal HowZone”
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`(i.e., a centralized access point) before anything has been selected for addition. Ex.
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`1001 at 3:58-60; 22:20-22. As is evident from the Figure, there is no content on
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`the web page:
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`Ex. 1001 at Fig. 8.
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`The patent then describes the process of selecting content (in the example an
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`article entitled “What is a Wireless LAN?”) for addition to the user’s personal web
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`page by manipulating a different webpage called a “content detail page.” Ex. 1001
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`at 23:11-24:4; Fig. 9. Figure 10 depicts the result of that process. Id. at 24:5-35.
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`9
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`Petitioners’ Reply
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`As is again evident from the Figure, the only things that have been added to the
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`user’s personal web page are a link (232) to the selected article and certain
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`information about the article:
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`Ex. 1001 at Fig. 10 (emphasis added). There is no other example of “selecting
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`content … for addition to a centralized access point” in the patent specification, so
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`the claims must be construed to cover such functionality.
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`It is true that the patent also states that a “content object” may be added to a
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`user’s personal web page. Ex. 1001 at 25:20-23. But a content object is not
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`content; it is the container for content, as even Patent Owner recognizes (Paper 7 at
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`23-24), and the patent explains that “[i]t is understood that, when a user adds a
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`content object to their personal HowZone, they are actually adding a ‘link’ to that
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`specific content object, wherein the link is actually provided on the user’s personal
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`Petitioners’ Reply
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`web page, within box 212 of FIG. 8.” Ex. 1001 at 23:46-49 (emphasis added).2
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`Thus, in the context of the 177 Patent, the addition of a “content object” to a
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`personal web page is accomplished by adding a link.
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`The Board cannot ignore these disclosures and must construe the claims in
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`the context of the entire patent. Phillips v. AWH Corporation, 415 F.3d 1303,
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`1313 (Fed. Cir. 2005). The only disclosed example of selecting content for
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`addition to a personalized web page results only in the addition of a link to that
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`content. The claims must be construed to embrace that functionality. Vitronics
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`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996).
`
` .
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`2 Indeed, Figure 10’s “Brief Description” states that it shows “the addition of a
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`content object,” Ex. 1001 at 3:65-67, but its “Detailed Description” explains that
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`“FIG. 10 is a diagram of the personal web page, corresponding with the personal
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`web page of FIG. 8, but showing the addition of a link to a content object that has
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`been added to the user's personal web page, or personal HowZone.” Id. at 24:5-11
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`(emphasis added).
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`11
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`IPR2015-01706
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`Petitioners’ Reply
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`III. CLAIM 11 IS UNPATENTABLE
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`A. Wherein Clause
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`The “wherein clause” of claim 11 recites two separate capabilities, (1) a “log
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`on” capability and (2) an “access content” capability:
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`wherein a user is enabled with the capability to log on to their
`centralized access point from one or more distributed information
`access point(s) and access content chosen from one or more
`distributed information access point(s).
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`Ex. 1001 at 55:23-27 (emphasis added).
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`The Petition demonstrated that the “capability to … access content” claim
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`language was satisfied in MyLibrary by the ability of a user to select, via
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`Customization web pages, links for addition to her personal web page and to use
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`those links to access content. See Pet. 35; Ex. 1005 at 9-10; Ex. 1003 at ¶¶134-38,
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`235–236. As Petitioner’s expert Dr. Greenspun explained:
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`MyLibrary explains that the user can customize information and links
`shown in the “Library and University Link,” “Bibliographic
`Databases, Electronic Journals, and Reference Shelf”; “Personal
`Links” and “Quick Searches” categories by selecting a “Customize
`hotlink” button associated with the category the user desires to
`customize. Ex. 1005 at 4–6. (Though somewhat obscured in the figure
`above, the “Customize” links is depicted in the dark-colored title bar
`above these sections.) Once the “Customize hotlink” button is
`selected, the user is presented with a list of links to additional
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`information that can be selected or de-selected and thereby added or
`removed from the user’s personalized web page. Id. at 6.
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`Ex. 1003 at ¶134 (citations omitted).
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`In its Institution Decision, the Board agreed, noting that the patent’s
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`description of accessing content on the World Wide Web via links “unequivocally
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`supports a construction that ‘access to content’ is broad enough to be met by the
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`presence of links to content,” Paper 11 (“Dec.”) at 9, and concluded with respect to
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`the “wherein” clause of claim 11 that “we construe ‘access to content’ as being met
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`by the presence of links to content. MyLibrary discloses that a user’s personalized
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`web page includes links to content, such as Reference Shelf, Bibliographic
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`Databases, and Electronic Journals. Ex. 1005, 4.” Dec. 15. Patent Owner no
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`longer disputes that “access to content” should be construed as including the
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`presence of links to content. See Resp. 15-32 (never arguing the Board’s
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`construction in this regard is incorrect).
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`As to the “log on” capability, the Board concluded that “the precise
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`relationship between the different elements of the ‘wherein’ clause [of claim 11]
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`are not disclosed explicitly in MyLibrary,” but was persuaded “that the
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`modifications to MyLibrary articulated by Petitioner to meet the ‘wherein’ clause
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`would have been within the abilities of one of ordinary skill.” Dec. 15-16 (citing
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`Pet. 47-48). The portions of the Petition cited by the Board in this passage (pages
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`47-48) demonstrated that “it would have been obvious to include a home page for
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`the MyLibrary system that included a log on facility and other library information
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`generally available to library users.” Pet. 47 (emphasis added). Thus, the Board
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`agreed it would have been obvious to include a log on facility on the MyLibrary
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`home page, and thereby satisfy the “capability to log on” requirement of claim 11.
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`Patent Owner does not contest that conclusion either. See Resp. 15-32.
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`Instead, Patent Owner argues that the Customization pages of MyLibrary
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`“do not permit the accessed content to be chosen for addition to a user’s
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`MyLibrary personalized web page” and therefore do not satisfy the “wherein”
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`clause. Resp. 18 (emphasis in original).
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`The “wherein” clause, however, does not require “the accessed content to be
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`chosen for addition to a user’s” personalized web page, but instead requires that a
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`user be “enabled with the capability to … access content chosen from one or more
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`distributed information access point(s).” Nowhere does this claim language
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`require that the content that is chosen be “for addition,” or actually added to, the
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`user’s personal web page, and Patent Owner points to no language reciting such a
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`requirement.5
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`5 Even if such language existed in claim 11, as explained below in § IV.A with
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`respect to claim 16, it would be insufficient to distinguish MyLibrary’s disclosure.
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`Moreover, as the Board found, a MyLibrary user is enabled with the ability
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`to access content she has chosen from one or more distributed information access
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`points (i.e., customization pages) by the presence of links to that content appearing
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`on her personal web page. Dec. 15. In other words, the links are the mechanism
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`by which the user is enabled with the capability to access chosen content.
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`Indeed, an interpretation of this claim language excluding such links
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`functionality would be inconsistent with the specification. As the Board noted, the
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`patent’s description of using links on the World Wide Web to access content,
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`“unequivocally supports a construction that ‘access to content’ is broad enough to
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`be met by the presence of links to content.” Dec. 9. And, as demonstrated above,
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`see § II, in the only disclosed example of adding content to a personal web page—
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`described with respect to Figures 8, 9 and 10—the patent discloses adding only a
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`link to the user’s web page, which the user can then use to access the chosen
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`content.
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`Patent Owner also argues that “MyLibrary’s customization pages … do not
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`provide access to content that is chosen, as required by the wherein clause.” Resp.
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`19-21. However, once again, the “wherein” clause of claim 11 does not require
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`that “MyLibrary’s customization pages [i.e., the distributed information access
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`points] … provide access to content that is chosen,” Resp. 19-21, but instead
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`requires only that “a user is enabled with the capability to … access content
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`chosen from one or more distributed information access point(s)” (emphasis
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`added). The distributed information access point of the claim enables the
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`choosing, not the access. As the Board correctly concluded in its Institution
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`Decision, MyLibrary satisfies this claim language because it discloses that a user
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`can choose content from the customization pages (i.e., “distributed information
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`access points”), and then access that content via the links that are thereby added to
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`her personal web page. See Dec. 15-16 (citing Pet. 47-48).
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`In sum, the “wherein” clause of claim 11 requires that the “user is enabled
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`with the capability to … access content chosen from one or more distributed
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`information access points,” which the Board has correctly construed to cover the
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`use of links. Dec. 8-9, 15. The link capability of MyLibrary clearly satisfies that
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`claim language. And since Patent Owner does not contest that “it would have been
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`obvious to include a home page for the MyLibrary system that included a log on
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`facility and other library information generally available to library users,” Pet. 47-
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`48, MyLibrary also satisfies the remainder of the wherein clause of claim 11.6
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`6 Patent Owner also contends that Petitioner’s expert, Dr. Greenspun, “signaled
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`Petitioner’s intent to propound a new theory,” Resp. 18, and spends a fair amount
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`of ink addressing this alleged new theory, id. at 18-19, 21-25. There is no new
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`theory. The analysis discussed in this brief is the same one advanced in the
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`B. Administrative Interface
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`Patent Owner next argues that MyLibrary does not disclose the
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`“administrative interface” of claim 11 because the administrative functionality of
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`MyLibrary is supposedly not “operative to create groupings of content,” an
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`argument based on Patent Owner’s assertion that the claim phrase “groupings of
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`content” is limited to the creation of entirely new “categories” mentioned in the
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`patent. Resp. 32-37.
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`Patent Owner’s implicit claim interpretation is erroneous. The claim does
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`not require the ability to create “categories of content,” just the ability to create
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`“groupings of content,” and the ordinary meaning of “category” (e.g. teenagers) is
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`not the same as the meaning of “grouping” (e.g., John, Paul, George, and Ringo).
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`Moreover, the Summary of the Invention discloses that the categorization and
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`grouping of content are two different functionalities:
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`Additionally, information in the form of content objects available on
`the networked system is enhanced … by categorizing content.
`Furthermore, content is distributed to users in several manners: by
`way of a primary Web site, and by way of predetermined but dynamic
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`Petition and analyzed in the Institution Decision. Pet. 29-34; Dec. 13-16. Dr.
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`Greenspun was merely responding to ambiguous, open-ended cross-examination
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`questions. See, e.g., Ex. 2008 at 16:19-22, 17:10-12.
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`groups of aggregated content objects which are made available via
`banners and/or tokens.
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`Ex. 1001 at 2:37-43 (emphasis added). This conclusion is further confirmed by the
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`disclosure of the 177 Patent that categories may be initially created without any
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`content in them at all. Ex. 1001 at 30:36-38 (“Accordingly, it is possible that a
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`new category may not have a content object assigned to it at the time the new
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`category is added.”). A category with no content in it at all cannot fairly be called
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`a “grouping of content,” so the mere creation of a category cannot be an example
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`of creating a “grouping of content.”
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`Indeed, as demonstrated by the distinction between “groupings” and
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`“categories” drawn in the Summary of Invention, the actual disclosed example of
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`the claimed “grouping of content” is what the patent refers to as the “aggregation”
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`(a synonym for “grouping”) of content objects. See, e.g., Ex. 1001 at 14:15-18
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`(“FIG. 2 forms a process flow diagram showing the logic processing for
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`aggregating content objects using system 100 (of FIG. 1). More particularly, FIG.
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`2 illustrates logic processing used to aggregate content objects.” (emphasis
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`added.)). As Figure 2 and its related description confirm, the aggregation of
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`content objects involves the “associate[ion of] one or more content objects with a
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`distribution mechanism,” such as on the “display of a client computer.” See id. at
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`14:29-42.
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`As the Petition demonstrated,
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