Paper No. 19
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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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. IPR2015-01707
`U.S. Patent No. 7,516,177
`
`––––––––––––––––––
`
`PETITIONERS’ REPLY
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`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. IPR2015-01707
`U.S. Patent No. 7,516,177
`
`––––––––––––––––––
`
`PETITIONERS’ REPLY
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`IPR2015-01707
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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 ................................. 2
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`A. A Link Is A Type of “Content” ........................................................... 2
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`B.
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`“Content” Is Added by Linking to It ................................................... 8
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`III. CLAIM 11 IS UNPATENTABLE .............................................................. 11
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`IV. CLAIM 16 IS UNPATENTABLE .............................................................. 16
`
`A.
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`B.
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`Selecting Content .............................................................................. 16
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`Accessing the Centralized Access Point ............................................ 17
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`V.
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`CLAIMS 13 AND 15 ARE UNPATENTABLE ......................................... 18
`
`A.
`
`B.
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`There Was Reason To Combine Payne And Ackley ......................... 18
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`The Combination of Payne And Ackley Satisfies Claim 13 .............. 21
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`VI. CONCLUSION .......................................................................................... 25
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`
`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
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................. 14, 20, 21
`
`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
`
`In re Rouffet,
`149 F.3d 1350 (Fed. Cir. 1998) ........................................................................ 20
`ii
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`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) .................................................................... 11, 17
`
`Other Authorities
`
`37 C.F.R. § 42.100(b) ............................................................................................. 2
`
`MPEP 2173.05(H) .................................................................................................. 3
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`Exhibit List
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`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`
`1014
`
`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
`U.S. Patent No. 5,715,314 to Payne - Appendix
`U.S. Patent No. 5,987,440 to O’Neil
`U.S. Patent No. 8,601,373 to Ackley
`[RESERVED]
`[RESERVED]
`[RESERVED]
`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)
`[RESERVED]
`U.S. Patent No. 5,491,820 to Belove
`[RESERVED]
`U.S. Patent No. 6,119,167 to Boyle
`U.S. Patent No. 4,925,240 to Peters
`[RESERVED]
`[RESERVED]
`U.S. Patent No. 6,032,162 to Burke
`U.S. Patent No. 6,135,646 to Kahn
`
`1015
`1016
`1017
`1018
`1019
`1020
`1021
`1022
`1023
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`iv
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`1025
`1026
`
`1027
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`1028
`1029
`1030
`
`1031
`1032
`
`Exhibit # Reference Name
`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)
`[RESERVED]
`[RESERVED]
`[RESERVED]
`Berners-Lee, T., et al., The World-Wide Web, Communications of the
`ACM, Vol. 37, No. 8, p. 76 (August 1994)
`[RESERVED]
`U.S. Patent No. 6,393,462 to Mullen-Schultz
`U.S. Patent Application Publication No. 20010032152 to Khosla
`[RESERVED]
`[RESERVED]
`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)
`Exhibit A - Infringement Contentions to Reply Brief Supporting Great
`West Casualty Company’s Amended Venue Transfer Motion (Dkt. 40,
`
`1033
`1034
`1035
`1036
`
`1037
`1038
`1039
`1040
`1041
`1042
`
`1043
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`Exhibit # Reference Name
`Ex. 2) Civ No 6-15-cv-60 (May 29, 2015)
`[RESERVED]
`[RESERVED]
`Declaration of Vernon M. Winters
`Deposition Transcript of Dr. Yannis Papakonstantinou (June 9, 2016)
`
`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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`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. 13. 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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`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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`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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`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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`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
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`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. 13. 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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`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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`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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`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. 26-30. 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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`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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`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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`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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`III. CLAIM 11 IS UNPATENTABLE
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`Claim 11 recites “wherein a user is enabled with the capability to log on to
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`their centralized access point from one or more distributed information access
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`point(s) ….” The Petition demonstrated, and the Board agreed, that it would have
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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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`Petitioners’ Reply
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`been obvious to include login functionality on the advertising documents of Payne,
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`and thereby satisfy this claim language. Pet. 48-49; Paper 11 (“Dec.”) 13-16. In
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`particular, the Petition showed that it was known to include such login
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`functionality on a publically facing web page, such as a home page, that adding it
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`to Payne’s advertising documents would have been trivial, and that arranging such
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`known elements in a known way to obtain a predictable result demonstrated the
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`obviousness of the claims. Pet. 48-49 (citing Ex. 1003 at ¶¶240-241).
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`The Petition also showed that a skilled artisan would have been motivated to
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`include such login functionality in Payne as argued because “[p]lacing a log in
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`facility directly on an advertising document provides the user an efficient and user
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`friendly way to purchase the content objects being advertised on the document or
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`to make use of functionality of the system provided to registered users.” Pet. 48-49
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`(emphasis added). The Petition then added that one example of a way “to make
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`use of functionality of the system provided to registered users” was the ability to
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`check if a particular document had been purchased before: “For example, placing a
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`log in facility on the advertising document would have permitted the user to
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`quickly check if she had already purchased the advertised content object.” Id. at
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`49 (emphasis added).
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`In response, Patent Owner argues that the advertising documents of Payne
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`do not provide login capability to Payne’s smart statements, Resp. 20-21, but that
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`Petitioners’ Reply
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`argument ignores the obviousness ground on which the Board instituted trial. The
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`Petition argued “[t]o the extent one might argue Payne does not disclose the ability
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`to log on to a “centralized access point” [i.e., the Payne smart statement] from a
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`“distributed information access point” [i.e., the Payne advertising document] as
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`required by the “wherein clause” of claim 11, it would have been obvious to
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`include that functionality in Payne,” Pet. 48, and then pointed out that the existing
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`log on functionality of Payne, which provided a means to log into the user’s smart
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`statement, Ex. 1006 at 6:9-42, 8:38-53, could be placed on the advertising
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`document, Pet. 48-49. The Board instituted trial on this ground. Dec. 16-17.
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`Thus, in the obviousness ground that formed the basis of this trial, the advertising
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`documents of Payne do provide login capability to Payne’s smart statements.
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`Patent Owner also argues that the home page registration link of O’Neil (Ex.
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`1008), cited in the Petition, is not a login link and its home page is not an
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`advertising document, so the combination supposedly does not satisfy the claim or
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`show that the claimed elements were known. Resp. 22-25. But that argument
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`ignores why the Petition actually cited O’Neil, which was to demonstrate that “[i]t
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`was well-known in the art to include or link to a log on facility prominently on, for
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`example, the homepage of a website.” Pet. 48 (citing Ex. 1008 at Fig. 25). As the
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`Petition pointed out, Payne already discloses the use of a log on facility. Ex. 1006
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`at Figs. 7, 8; id. at 6:9-42; see Pet. 48. It was therefore unnecessary to cite to any
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`13
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`Petitioners’ Reply
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`other prior art reference to show such functionality was known. Only the
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`placement of such functionality on a publically facing web page (i.e., a “distributed
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`information access point”) was needed. O’Neil proved that it was known to
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`prominently place such links on web pages that were openly distributed to the
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`public, Ex. 1008 at Fig. 25, and that was all that was required to demonstrate that
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`everything in the “wherein” clause of claim 11 was known in the art. An
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`obviousness analysis “take[s] account of the inferences and creative steps that a
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`person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc.,
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`550 U.S. 398, 419 (2007). Indeed, placing login functionality on publically
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`accessible web pages was a common, and even trivial, practice by 1999, and Patent
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`Owner’s implicit suggestion that such functionality is a patentable distinction is
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`absurd. See Ex. 1047 at 55:5-14 (Dr. Papakonstantinou: “There were pages with
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`login before the ’177 [patent].”), 55:15-56:7; e.g., Ex. 1009 at Fig. 3.
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`Patent Owner also asserts that the addition of a login link to the advertising
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`document of Payne to provide the ability “to quickly check if she had already
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`purchased the advertised content object” is not a motivation to combine because a
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`user of Payne supposedly “cannot mistakenly purchase the same content twice.”
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`Paper 7 at 49 (emphasis in original).
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`But that argument ignores the actual motivations set forth in the Petition.
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`Indeed, nowhere in its response does Patent Owner dispute that placing a log on
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`14
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`facility on the advertising document would provide a convenient way “to purchase
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`the content objects being advertised on the document” and also a convenient way
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`“to make use of functionality of the system provided to registered users.” See Pet.
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`48-49. Patent Owner therefore concedes these facts.
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`Patent Owner’s argument is instead addressed to one example of the system
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`functionality a user might conveniently access from the log on facility, but even
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`then Patent Owner gets it wrong. Nowhere does the Petition say that a user might
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`check to determine whether she was about to “mistakenly purchase the same
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`content twice.” See Pet. 48-49. The Petition pointed out that “[f]or example,
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`placing a log in facility on the advertising document would have permitted the user
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`to quickly check if she had already purchased the advertised content object.” Pet.
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`49; Ex. 1003 at ¶241. Thus, a user might want to check to determine whether she
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`had purchased the content a first time, so that she would not have to needlessly go
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`through the purchase process again.
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`Payne also explains that a user may need to purchase desired content a
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`second time, since access to content in the Payne system can expire with time:
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`“The user can … access the previously purchased document (step 85) or to go
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`ahead and buy the currently selected product (step 86).” Ex. 1006 at 6:60-7:4
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`(emphasis added); see also id. at Fig. 9 (depicting “Go ahead and buy the item
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`again” as one choice).
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`15
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`Thus, even if Payne precludes a user from “mistakenly” purchasing an item
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`a second time, it is uncontested that “[p]lacing a log in facility directly on an
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`advertising document provides the user an efficient and user friendly way … to
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`make use of functionality of the system provided to registered users,” Pet. 48-49
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`(emphasis added), such as buying it a first time or buying it a second time where
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`the initial purchase has expired. Claim 11 is therefore obvious.
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`IV. CLAIM 16 IS UNPATENTABLE
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`A.
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`Selecting Content
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`Claim 16 requires the step of “selecting content from one or more of an
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`entire range of distributed information access points for addition to a centralized
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`access point of the particular user.” The Petition demonstrated that this is satisfied
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`by Payne’s disclosure of the ability of a user to select content from advertising
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`documents (“distributed information access points”) which will be added to the
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`user’s smart statement (“centralized access point of the particular user”). Pet. 42;
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`Ex. 1006 at 5:26-27; Ex. 1003 at ¶¶228-230, 269.
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`Patent Owner contests this mapping “because Payne does not enable content
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`to be selected for addition to a centralized access point,” apparently because Patent
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`Owner believes the information that gets added to the Payne smart statement after
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`selection is not “content.” Resp. 26-29.
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`But that assertion is based on an interpretation of this claim language that
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`16
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`would exclude the only disclosed example potentially supporting the claim. As
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`demonstrated above in Section II, links are a type of “content,” and even if one
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`were to conclude otherwise, the only example of “selecting content … for addition
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`to a centralized access point of the particular user” in the 177 Patent is the
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`addition of links to the user’s personal web page. Indeed, since nowhere in the
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`patent is there any disclosure of adding actual non-link “content,” as opposed to
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`links or content objects (by way of a link), to a personal web page, Patent Owner’s
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`implicit interpretation would exclude every embodiment, and is therefore clearly
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`erroneous. See Vitronics 90 F.3d at 1583.
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`Moreover, the expert testimony on this point is undisputed. While
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`Petitioner’s expert Dr. Greenspun testified that this claim language was satisfied by
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`the addition of a link to a web page as disclosed in Payne, Ex. 1003 at ¶¶228-230,
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`269, under cross examination Patent Owner’s expert refused to take a position: “I
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`have not considered this question within the context of all that we have got.” Ex.
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`1047 at 16:3-9 (emphasis added). The cited functionality of Payne, identical as it
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`is to the only functionality in the 177 Patent that could support this claim language,
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`necessarily satisfies the claim.
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`B. Accessing the Centralized Access Point
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`Claim 16 also requires “accessing the centralized access point of the
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`particular user from one or more distributed information access points to gain
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`17
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`access to the selected content.” As with the “wherein” clause of claim 11, the
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`Board found this claim element not disclosed by Payne, but obvious in view of it
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`and Petitioner’s evidence that it would have been obvious to add a log on facility to
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`the advertizing document of Payne. Dec. 16-17 (citing Ex. 1003 at ¶272). As
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`demonstrated above, Patent Owner does not contest the reasoning and evidence
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`included in the Petition for why this obviousness conclusion is correct, and what it
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`does contest is irrelevant. See supra Section III. In its analysis of claim 16, Patent
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`Owner advances no additional arguments against this obvious conclusion, see
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`Resp. 29-30, so its assertions fail for the same reasons set forth above.
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`Patent Owner also asserts that the “accessing” limitation is not met because
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`Payne supposedly does not satisfy the “selecting content” limitation. Resp. 30.
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`However, as set forth above, Section IV.A supra, the “selecting content” limitation
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`is disclosed in Payne, so this argument fails as well.
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`V. CLAIMS 13 AND 15 ARE UNPATENTABLE
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`A. There Was Reason To Combine Payne And Ackley
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`The Petition demonstrated that it would have been obvious to combine the
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`content marketing system of Payne with the functionality of Ackley so as to permit
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`the same user to both buy items and contribute them for sale, and that the
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`combined system renders claims 13 and 15 unpatentable. Pe
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