Paper No. 14
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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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`OLD REPUBLIC GENERAL INSURANCE GROUP, INC.;
`OLD REPUBLIC INSURANCE COMPANY;
`OLD REPUBLIC TITLE INSURANCE GROUP, INC.; and
`OLD REPUBLIC NATIONAL TITLE INSURANCE COMPANY
`Petitioners,
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`v.
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`INTELLECTUAL VENTURES I LLC,
`Patent Owner
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`____________________
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`Inter Partes Review No. IPR2015-01992
`Patent No. 6,546,002
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`PETITIONER’S REPLY
`________________________
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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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`OLD REPUBLIC GENERAL INSURANCE GROUP, INC.;
`OLD REPUBLIC INSURANCE COMPANY;
`OLD REPUBLIC TITLE INSURANCE GROUP, INC.; and
`OLD REPUBLIC NATIONAL TITLE INSURANCE COMPANY
`Petitioners,
`
`v.
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`INTELLECTUAL VENTURES I LLC,
`Patent Owner
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`____________________
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`Inter Partes Review No. IPR2015-01992
`Patent No. 6,546,002
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`PETITIONER’S REPLY
`________________________
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`IPR2015-01992
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`Contents
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`Petitioners’ Reply
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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 .................................. 1
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`A.
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`B.
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`“Mobile Interface” ................................................................................. 1
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`“Pointer” ................................................................................................ 4
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`C. Means-Plus-Function ............................................................................ 7
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`III. CLAIMS 1-49 ARE UNPATENTABLE ........................................................ 8
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`A. Huang Anticipates Claims 1, 2, 7-12, 17-23, 25, 26, 30-38, 40-45, and
`47-49 ...................................................................................................... 8
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`1.
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`2.
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`3.
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`4.
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`Huang Discloses a “Mobile Interface Including a Plurality of
`Pointers” (Claims 1, 11, 34, and 40) ........................................... 8
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`Huang Discloses “Means for Accessing …” (Claim 25) ......... 11
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`Huang Discloses “Means for Retrieving …” (Claim 49) ......... 14
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`Huang Discloses “Retrieving the Mobile Interface Via a
`Cellular Network” (Claims 9, 19, 32, 37, and 44) .................... 15
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`B.
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`C.
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`Huang Renders Obvious Claims 4, 14, 21-23 and 28 ......................... 18
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`Huang and Boyer Render Claims 3, 13, and 27 Obvious ................... 18
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`D. Huang and Boyer Render Claims 5, 15, and 29 Obvious ................... 21
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`E.
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`F.
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`Huang and Hayes Render Claims 6, 16, 39, and 46 Obvious ............. 22
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`Huang and Raman Render Claim 24 Obvious .................................... 25
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`IV. CONCLUSION .............................................................................................. 25
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`i
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`In re Antor Media Corp.,
`689 F.3d 1282 (Fed. Cir. 2012) .......................................................................... 18
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`Blackboard, Inc. v. Desire2Learn, Inc.,
`574 F.3d 1371 (Fed.Cir. 2009) ............................................................................. 8
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`Cadiocom, LLC v. Robert Bosch Healthcare Sys., Inc.,
`IPR2013-00451, Paper 65 (Jan. 15, 2015) .......................................................... 18
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`Chiuminatta Concrete Concepts v. Cardinal Industries,
`145 F. 3d 1303 (Fed.Cir. 1998) ............................................................................ 8
`
`In re Donohue,
`766 F.2d 531 (Fed. Cir. 1985) ............................................................................ 19
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`Google Inc. v. Jongerius Panoramic Technologies, LLC,
`IPR2013-00191, Paper 70 (Aug. 12, 2014) ........................................................ 18
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`Howmedica Osteonics Corp. v. Wright Med. Tech.,
`540 F.3d 1337 (Fed. Cir. 2008) ............................................................................ 3
`
`In re Paulsen,
`30 F.3d 1475 (Fed. Cir. 1994) .............................................................................. 6
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`Phillips v. AWH Corporation,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................................ 5
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`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) .............................................................................. 2
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`WMS Gaming, Inc. v. Int’l Game Tech.,
`184 F.3d 1339 (Fed. Cir. 1999) ............................................................................ 8
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`Statutes
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`35 U.S.C. § 112(6) ............................................................................................... 8, 16
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`37 C.F.R. § 42.6(e) ................................................................................................... 28
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`IPR2015-01992
`IPR2015—O1992
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`Petitioners’ Reply
`Petitioners’ Reply
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`37 C.F.R. § 42.24 ..................................................................................................... 27
`37 C.F.R. § 42.24 ................................................................................................... ..27
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`MPEP § 2181(I)(A) .................................................................................................... 8
`MPEP § 2181(I)(A) .................................................................................................. ..8
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`iii
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`Exhibit List
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`Exhibit # Reference Name
`1001
`U.S. Patent No. 6,546,002 to Kim
`1002
`U.S. Patent No. 6,546,002 File History
`1003
`Declaration of Dr. Philip Greenspun
`1004
`Curriculum Vitae of Dr. Philip Greenspun
`1005
`U.S. Patent No. 6,571,245 to Huang
`1006
`U.S. Patent No. 6,268,849 to Boyer
`1007
`U.S. Patent No. 6,339,826 to Hayes
`Berners-Lee, RFC1866, Hypertext Markup Language – 2.0
`1008
`(November 1995)
`U.S. Patent No. 5,491,783 to Douglas
`Raman, T.V., Emacspeak – A Speech Interface (April 13-18, 1996)
`Microsoft Press Computer Dictionary (1997)
`U.S. Patent No. 5,519,760 to Borkowski
`U.S. Patent No. 6,571,245 – Exhibit A
`Common Ground, Chi 96 Conference Proceedings
`Bartlett, Experience with a Wireless World Wide Web Client, IEEE
`(1995)
`Email, dated October 8, 2014, from Derek Gilliland regarding IV v.
`Old Republic
`[RESERVED]
`WO 1998012833 Patent to Arnold
`
`1009
`1010
`1011
`1012
`1013
`1014
`1015
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`1016
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`1017-23
`1024
`[NEW]
`1025-29
`1030
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`1031
`1032
`[NEW]
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`[RESERVED]
`Intellectual Ventures I LLC, et. al., v. Old Republic General Ins. Grp.,
`Inc., Case No. 2-14-cv-01130, Doc. No. 1 (W.D. Pa. Aug 22, 2014)
`Declaration of Vernon M. Winters
`Deposition Transcript of Tim Williams, Ph.D. (September 23, 2016)
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`iv
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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 undo the claim interpretations provisionally
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`adopted in the Institution Decision, each of which was finally adopted in unrelated
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`proceedings involving the 002 Patent. See IPR2015-00089, 00092. Patent Owner
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`presents no new argument not already advanced in its preliminary response in this
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`proceeding and during the course of the full trial in those other proceedings.
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`Merely maintaining those interpretations here therefore requires rejection of almost
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`all of Patent Owner’s arguments in this proceeding.
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`For the few remaining issues, Patent Owner advances an unreasonably
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`narrow understanding of the claims and, in at least one case, ignores the language
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`of the claims entirely. The 002 Patent, however, is unexpired, so its claims must
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`be given their broadest reasonable interpretation consistent with the specification.
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`As demonstrated below, by that standard all claims of the patent are unpatentable
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`over the prior art Huang patent. The Board should so find.
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`II.
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`PATENT OWNER MISCONSTRUES THE CLAIMS
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`A.
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`“Mobile Interface”
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`The Board has construed “mobile interface” to mean “a user interface
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`accessible on different computing devices.” Paper 7 (“Dec.”) at 8. Patent Owner
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`asserts the term should be construed to additionally require that the mobile
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`interface be “capable of dynamically accessing user-specific data on a network
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`1
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`server and local device.” Paper 11 (“Resp.”) at 8-11. Patent Owner and its expert,
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`however, do not advance any argument as to why Huang would not disclose a
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`“mobile interface” as they seek to have it construed. See Resp. 21-25; Ex. 2002,
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`¶¶53, 55-58. Nor could they—as explained in the Petition, Huang discloses a user
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`interface accessible on different computing devices capable of dynamically
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`accessing user-specific data on a network server and local device. Pet. 17 (citing,
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`inter alia, Ex. 1005, 2:25-34; 3:2-4; 5:31-54, 6:58-60, 7:22-24). The Board
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`therefore need not address Patent Owner’s claim construction argument on this
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`claim term in this proceeding, as it is irrelevant to the parties’ dispute. See Vivid
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`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
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`To the extent the Board addresses this issue, however, Patent Owner’s
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`arguments have already been finally rejected by the Board in its Final Written
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`Decision in IPR2015-00092, Paper 44 at 9-12, and should be here for the same
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`reasons. Moreover, in its Institution Decision in this proceeding the Board rejected
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`this same argument, noting that “[a]lthough the term ‘dynamically access’ is used
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`repeatedly in the ’002 patent, the difference between accessing and dynamically
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`accessing resources is not explained in the ’002 patent or addressed by Patent
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`Owner.” Paper 7, 8. Patent Owner provides no further explanation of the
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`differences between “accessing” and “dynamically accessing” in its formal
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`response, see Resp. 8-11, and its expert has conceded that the phrase would
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`2
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`effectively cover any type of accessing, Ex. 1032, 38:6-9, so its argument should
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`be rejected again on the same basis. Indeed, the independent claims already
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`require that the mobile interface be capable of accessing, in a dynamic sense,
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`information stored both locally and remotely, see, e.g., Ex. 1001 at 17:18-20, so its
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`proposed additional language adds nothing to the claim or is inconsistent
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`therewith.1
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`Nor does Patent Owner provide any other sufficient basis for adding this
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`potentially narrowing language to the construction. For example, it cites a
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`sentence from the specification (Ex. 1001 at 1:11–16) discussing “the present
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`invention,” Resp. 8-9, but that passage merely states what the mobile interface can
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`be used for or relates to. It is certainly not definitional. See Howmedica Osteonics
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`Corp. v. Wright Med. Tech., 540 F.3d 1337, 1345 (Fed. Cir. 2008) (noting that a
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`specification feature described as part of the present invention will only be read
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`into the claims where “the specification makes clear that the invention requires”
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`that feature) (emphasis added).
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`1 Patent Owner contends that “dynamic access using the mobile interface is
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`achieved by ‘periodically updat[ing] or query[ing] user profile data,’” citing Ex.
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`1001, 5:61-62, but the cited sentence does not use the phrase “dynamic access.”
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`3
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`B.
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`“Pointer”
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`Patent Owner next argues that “pointer” should be construed, based on only
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`one of several specification statements concerning pointers, to be limited to “a
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`reference to a type of menu item that can be accessible on the computer, PDA or a
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`server.” Resp. 11-13. But Patent Owner again makes no argument for
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`patentability based on this construction, since its analysis ignores that its proposed
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`interpretation requires “a reference to a type of menu item …” and does not apply
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`that language. See, e.g., Resp. at 22 (asserting that the claim requires “a reference
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`to a type of item” but arguing only that Huang does not include “reference to
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`another data item.”); see also Ex. 2002 at ¶ 56 (same).2
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`In any event, Patent Owner’s arguments in this regard have already been
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`finally rejected by the Board in its Final Written Decision in IPR2015-00092,
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`2 This understanding of Patent Owner’s interpretation was explained by Patent
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`Owner’s expert, who testified that the word “reference” meant a “location,” Ex.
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`1032, 62:14-25, and that the “reference” must be to a “category” of menu items,
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`Ex. 1032, 60:11-13 (“Q. Okay. And so your interpretation requires a reference to
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`a category of menu item? A. Yes.”). Patent Owner’s proposed interpretation, as
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`understood by the expert, requires a location of a category of menu items. Patent
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`Owner does not apply that understanding in its analysis.
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`4
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`Paper 44 at 13-15, and should be here for the same reasons. As the Board noted
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`when it rejected this same argument in the Institution Decision in this proceeding,
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`the 002 Patent characterizes the claimed pointer in several passages, Paper 7 at 8-9,
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`and the specification discloses that the claimed inventions may be used in various
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`technological contexts beyond just computers and PDAs, so there is no basis for
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`adopting an interpretation limited to computers and PDA, as Patent Owner
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`requests, id. at 9-10. Nor can the Board ignore the additional specification
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`statements describing the claimed “pointer,” as Patent Owner demands, since
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`claims must be construed in the context of the entire patent. Phillips v. AWH
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`Corporation, 415 F.3d 1303, 1313 (Fed. Cir. 2005).3
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`Finally, Petitioner observes that the passage relied on by Patent Owner (Ex.
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`1001, 1:35-38) is located in a description of the background of the invention and in
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`the context of a description of prior art operating systems and their user interfaces,
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`see, e.g., Ex. 1001 at 1:20-65, not in any summary or detailed description of the
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`3 Patent Owner also quotes Petitioner’s expert statement that he may have
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`construed pointer “with a slightly different wording.” Resp. 13. Dr. Greenspun
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`did not testify, however, that the Board’s opinion is wrong, and Patent Owner does
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`not even suggest that whatever “slightly different” verbal formulation Dr.
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`Greenspun would have used would have avoided a finding of unpatentability.
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`putative invention of the 002 Patent. Thus, the “context” referred to in that column
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`1 passage is prior art computer user interfaces, which unsurprisingly refers to
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`computers, PDAs and “menu items.”
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`The passage relied on by the Board (Ex. 1001, 10:8-10), on the other hand,
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`is located in the detailed description of the invention, see, e.g., id. at 9:61 et seq.
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`(“FIG. 4 illustrates a detailed block diagram of an MIA in accordance with the
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`present invention. …”), and is broader, just as the putative invention described in
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`the 002 Patent is expressly intended to be used in various devices beyond a
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`computer or PDA. See e.g., Ex. 1001, 1:16-19 (“… any computer device.”), 6:24-
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`27. Thus, to the extent the inventor of the 002 Patent can be said to have acted as
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`his own lexicographer for the claim term “pointer,” he did so in column 10, not in
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`column 1.4 Patent Owner’s proposed interpretation must therefore be rejected
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`again.
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`4 Patent Owner cites In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) for the
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`proposition that there is a “presumption” that the broadest reasonable interpretation
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`claim construction standard “is rebutted when the inventor provides a definition for
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`a term in the specification with reasonable clarity, deliberateness, and precision.”
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`Resp. 11. Paulson describes no such presumption, and if there was a lexicographic
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`act, it is found in column 10, not column 1.
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`C. Means-Plus-Function
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`Patent Owner next argues that the corresponding structure for the claimed
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`“means for accessing …” element of claim 25 should be construed to be “a
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`component that processes the associated location information for an item and
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`causes the local device to access the item using the associated location
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`information.” Resp. 14-17. Patent Owner’s arguments have already been rejected
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`by the Board in its Final Written Decision in IPR2015-00092, Paper 44 at 17-19,
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`and should be rejected here for the same reasons.
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`Moreover, Patent Owner’s proposed corresponding structure is legally
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`erroneous for several additional reasons. For example, none of the specification
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`passages Patent Owner cites actually discloses “a component that processes the
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`associated location information for an item and causes the local device to access
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`the item using the associated location information.” See Resp. 14-17 (citing Ex.
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`1001, 10:5-7, 10-15). While those passages refer to certain functionality of
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`“controller 200” and “pointer resolver 206,” Patent Owner does not ask that
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`controller 200 or pointer resolver 206 be included in the corresponding structure
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`for this means element. See id. It is legally improper, however, to generalize the
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`specific structures disclosed in the specification in a means-plus-function analysis.
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`See WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1348-49 (Fed. Cir.
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`1999); Chiuminatta Concrete Concepts v. Cardinal Industries, 145 F. 3d 1303,
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`1308 (Fed. Cir. 1998).
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`Further, Patent Owner’s proposal is not structural at all, but instead purely
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`functional. The word “component,” for example, is a nonce word that does not
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`connote any definite structure. See, e.g., MPEP § 2181(I)(A). And the words that
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`follow “component” in Patent Owner’s proposal are also purely functional. The
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`statute, however, requires identification of the disclosed corresponding structure,
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`see 35 U.S.C. § 112(6), and the identification of disclosed functionality is not
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`sufficient, WMS Gaming, 184 F.3d at 1348-49; Blackboard, Inc. v. Desire2Learn,
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`Inc., 574 F.3d 1371, 1383 (Fed.Cir. 2009).
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`III. CLAIMS 1-49 ARE UNPATENTABLE
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`A. Huang Anticipates Claims 1, 2, 7-12, 17-23, 25, 26, 30-38, 40-45,
`and 47-49
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`1.
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`Huang Discloses a “Mobile Interface Including a Plurality of
`Pointers” (Claims 1, 11, 34, and 40)
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`The Petition demonstrated that Huang’s virtual desktop includes icons linked
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`to various local and remote resources, Pet. 19; Ex. 1005, 6:60-7:1, Fig. 3; Ex.
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`1003, ¶134, and that those icons are “pointers” under the interpretation adopted by
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`the Board, Pet. 19-20. Patent Owner does not dispute that conclusion, see Resp. at
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`21-25, so the Board can reject Patent Owner’s arguments on this issue if it
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`maintains the interpretation of “pointer” it adopted in its Institution Decision and
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`in IPR2015-00092, Paper 44 at 13-15.
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`However, even if Patent Owner’s construction were applied, Huang still
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`satisfies the claims. Huang’s virtual desktop is preferably implemented using a
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`web browser and presented in part as a web page containing icons representing a
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`user’s applications and files, Ex. 1005, 6:40-7:10, though Huang also discloses that
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`the icons can alternatively be presented in other forms such as a “list” (i.e., a
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`menu), id. at 7:1-3. These icons each link to other web pages using conventional
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`Uniform Resource Locaters (URLs), which Huang explains are “used as an
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`identifier to point to a specific site or location of a computer and its contents on the
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`web.” Ex. 1005, 5:60-66; see id. at 5:55-6:15, 19:54-56.
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`Huang’s disclosure thus fits within Patent Owner’s proposed construction
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`because each of Huang’s icons includes a “reference” (URL, id., 6:40-7:10) “to a
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`type of menu item” (text file, image, etc., id.), at least in the manner Patent Owner
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`is reading that phrase in its analysis.5 Such files “can be accessible on the
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`computer, PDA or a server” (e.g., when retrieved and displayed via a browser, Ex.
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`5 Patent Owner’s expert Dr. Williams confirmed, for example, that for a “URL
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`point[ing] to a file, the file would be the item,” and “[t]he URL would be the
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`pointer.” Ex. 1032, 78:22-79:1, 80:13-15.
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`9
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`1005, 6:40-7:10). Thus, Huang discloses the claimed “pointers” even under Patent
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`Owner’s proposed interpretation.6
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`Patent Owner makes only two arguments for why it believes Huang does not
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`disclose “pointers” under its interpretation.7 First, Patent Owner asserts that
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`Huang is “devoid of information regarding what information is contained with the
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`icons.” Resp. 23. Not so. Each icon is a link containing a URL that identifies the
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`location of an HTML page or other file on a server. Ex. 1005, 2:30-32 (“The web
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`page represents the virtual desktop of the user and includes links for applications
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`6 Dr. William’s earlier assertion (from which he backed away during cross
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`examination, see n.7 supra) that a URL does not include “reference (e.g., location)
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`information” was never credible. Ex. 1032, 63:11-65:22. The 002 Patent equates a
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`URL with an “address,” Ex. 1001, 2:30, which is clearly a type of location
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`information, and Huang expressly states that the Uniform Resource Locator points
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`to a specific location, see Ex. 1005, 5:57-62.
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`7 In passing Patent Owner asserts that Petitioner “relies on broad conclusory
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`statements” to show “pointers,” but quotes from claim 49’s means-plus-function
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`equivalence analysis. Resp. 23 (citing Pet. 37-38). This is irrelevant to whether
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`Huang’s icons fit within the broadest reasonable interpretation of a claimed
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`“pointer.”
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`10
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`available to the user and files accessible by the user.”), 6:5-7 (“[I]f the user selects
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`a link in an HTML page, the browser will access the new URL location pointed to
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`by the link.”). Thus, Huang discloses icons that contain specific location
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`information.
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`Second, Patent Owner argues that in Huang “commands that are received
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`and processed by one or more backend servers” do not include “references to
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`underlying items represented by the icons.” Resp. 24. But the Petition never
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`identifies the cited “commands” of Huang as satisfying the claimed “pointers,” so
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`that argument is irrelevant.
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`Huang therefore discloses the use of “pointers” under either parties’
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`construction of that term.
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`2.
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`Huang Discloses “Means for Accessing …” (Claim 25)
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`The Petition also demonstrated that Huang satisfies the “means for
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`accessing” of claim 25 under the Board’s interpretation by the disclosure of the
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`networked computers of Figures 1 & 2 (i.e., the corresponding structure of this
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`means element: “a computer connected to a network”) that can, via a web browser,
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`load a user’s virtual desktop and its associated icons to access her files,
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`applications, etc. (i.e., the function of this means element: “accessing the user
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`specific resources and information using the plurality of pointers”). Pet. 28-29;
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`Ex. 1005, 7:28-30, Figs. 1-2; Ex. 1003, ¶¶120-122, 179-180, 260-61. Patent
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`11
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`Owner does not dispute this conclusion. See Resp. at 25-26.
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`Instead, Patent Owner argues that Huang “does not disclose the structure
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`equivalent to the local pointer resolver of the ’002 patent.” Resp. 26. However,
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`Patent Owner has not requested an interpretation that identifies “the local pointer
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`resolver of the ’002 patent” as part of the disclosed corresponding structure of this
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`claim element. See id. at 14-17. Instead, its proposed corresponding structure is “a
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`component that processes the associated location information for an item and
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`causes the local device to access the item using the associated location
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`information.” See id. Its argument about the pointer resolver is thus irrelevant.
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`Moreover, Huang does disclose a “pointer resolver” because it discloses that
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`the networked computers of Huang’s Figures 1 and 2 (i.e., the structure identified
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`in the Petition as satisfying this claim element, see Pet. at 29; Ex. 1003 at ¶¶ 179-
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`180) provide the functionality required by this claim element via a web browser
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`running on those computers, Ex. 1005 at 6:8-10, and that the browser resolves the
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`URLs of Huang’s icons, Ex. 1005 at 5:66-6:25. This is the same
`
`structure/algorithm disclosed for the pointer resolver of the 002 Patent, at least for
`
`URL pointers. See Ex. 1001 at col. 10:13-18. Accordingly, to the extent a browser
`
`or pointer resolver were included in the corresponding structure of this claim
`
`element, Huang discloses the same structure for performing the function of this
`
`claim element as does the 002 Patent.
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`Petitioners’ Reply
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`Indeed, even if one were to conclude that Huang does not disclose exactly
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`the same structure, the browser of Huang is at least the equivalent to the 002 Patent
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`pointer resolver/web browser. For example, URLs are a standardized mechanism
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`for accessing resources on the web. Ex. 1005, 5:55-6:7. Thus, the web browser of
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`Huang performs the same function (access resources) in at least substantially the
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`same way (resolve URLs) to achieve the same results (obtain information for the
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`user) as the pointer resolver or web browser of the 002 Patent.8
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`Similarly, if one were to accept Patent Owner’s proposed corresponding
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`structure – “a component that processes associated location information for an item
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`and causes a local device to access the item using the associated location
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`information,” Resp. 14-17 – Huang would still disclose the same or equivalent
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`structure. The web browser as disclosed in Huang is “a component” (e.g., a
`
`portion of Huang’s client) “that processes associated location information” (e.g.,
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`
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`8 Moreover, while the 002 Patent suggests the pointer resolver may process pointer
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`data that is similar to a URL but which has additional information, Ex. 1001 at
`
`8:34-35, it never states that such additional information has anything to do with the
`
`function of this claim element, so processing a URL is sufficient to perform that
`
`function. Thus, any differences between the pointer resolver and a web browser
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`are insubstantial for purposes of this claim element.
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`13
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`Petitioners’ Reply
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`processes a URL) “for an item” (e.g. a linked file) “and causes a local device to
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`access the item using the associated location information” (e.g., resolving the URL
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`and obtaining the file). Ex. 1005, 5:55-6:39. The Huang web browser is therefore
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`the same or equivalent structure as Patent Owner has proposed be adopted as the
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`corresponding structure for this means element.
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`3.
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`Huang Discloses “Means for Retrieving …” (Claim 49)
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`The Petition explained how Huang discloses an embodiment in which the
`
`icons are replaced by a list of items, and how this list performs the same function
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`and has the same corresponding structure (i.e., a pointer ) of the claimed “means
`
`for retrieving.” Pet. 36-37; Ex. 1005, 7:1-3. The Petition also explained that, “[t]o
`
`the extent one might argue Huang does not disclose identical structure for this
`
`claim element, the disclosed structures of Huang (icons, toolbars, lists, objects, or
`
`other indicators) are equivalent to the pointers of 002 Patent,” Pet. 37-38, relying
`
`on detailed testimony from Petitioners’ expert, Dr. Greenspun, see id. (citing Ex.
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`1003, ¶¶357-60).
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`In response, Patent Owner argues that, Huang cannot disclose the claimed
`
`“means for retrieving” because Huang purportedly does not disclose “pointers”
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`under its construction. Resp. 26. This argument is misplaced because Patent
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`Owner’s construction of “pointers” is wrong, see §II.B above, and because Huang
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`discloses “pointers” even under that construction, see §III.A.1 above.
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`Further, Patent Owner ignores Petitioners equivalence analysis, offering no
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`rebuttal whatsoever, and therefore concedes that Huang discloses at least the
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`equivalent structure for this means element. Indeed, while Petitioner advanced
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`extensive evidence on this point, see Pet. 37-38 (citing Ex. 1003, ¶357-60), Patent
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`Owner’s expert never analyzed the question of equivalence, see Ex. 2002, ¶61; Ex.
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`1032, 32:25-9 (“… I don’t think I have expressed an opinion on that.”), and
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`apparently did not understand that a means-plus-function claim element can be
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`literally met by an equivalent corresponding structure performing the claimed
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`function, Ex. 1032, 32:18-24. Patent Owner and its expert therefore ignore the
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`explicit language of Section 112 requiring a means-plus-function element “be
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`construed to cover the corresponding structure … described in the specification
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`and equivalents thereof.” 35 U.S.C. § 112 ¶6 (pre-AIA) (emphasis added).
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`4.
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`Huang Discloses “Retrieving the Mobile Interface Via a
`Cellular Network” (Claims 9, 19, 32, 37, and 44)
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`The Petition also demonstrated that Huang discloses accessing the virtual
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`desktop (which Huang explains is a web page, e.g., Ex. 1005 at 2:25-27; 6:16-25)
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`through “a browser application installed on computer system 210,” which in one
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`embodiment can be “mobile cellular phone 132” accessing the network over “a
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`cellular link.” Pet. 44-45; Ex. 1005, 6:8-10, 4:23-24, 3:66-67; Ex. 1003, ¶179-81.
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`For example, Petitioners’ expert Dr. Greenspun testified that it was “well-known
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`by the filing date of Huang’s application that cellular phones and other mobile
`15
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`devices could include web browsers capable of accessing the Internet and the
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`World Wide Web.” Ex. 1003, ¶181.9 In support of his opinion, Dr. Greenspun
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`also cited a 1995 IEEE publication that explained the “interactive response” of
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`browsing the web over a cellular link “is satisfactory” even at “4800 baud.” Ex.
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`1015, 155.10 The Petition therefore demonstrated that Huang discloses accessing
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`his web page/virtual desktop (“mobile interface”) on a cellular phone over a
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`cellular network and that, years before the July 1999 priority date of the 002
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`Patent, those of ordinary skill in the art could access web pages in that manner.
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`Patent Owner nevertheless argues that Huang “would not have enabled a
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`person of ordinary skill to implement Huang’s virtual desktop over a cellular
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`network without undue experimentation.” Resp. 27-30. This argument is not
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`credible. The evidence cited by Dr. Greenspun, Ex. 1015, explains how a cellular
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`phone was actually used to access a web page over a cellular network “[u]sing
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`equipment available in the winter of 1994,” Ex. 1015 at Abstract, four years before
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`
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`9 Dr. Greenspun’s testimony is also informed by his experience in the late 1990s
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`developing mobile phone Internet applications. See Ex. 1004, 1 (ArsDigita Corp.).
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`10 See also Ex. 1015, 154 (“Sections 2 through 5 provide a roughly chronological
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`record of the design and implementation of W4, a ‘proof of concept’ for a Wireless
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`World Wide Web client.”)
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`the priority date of the 002 Patent. Moreover, Ex. 1015 and all of its details as to
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`how to accomplish such an access was published in 1995, so a person of ordinary
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`skill would have been aware of how to make such an access long before the 1999
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`priority date of the 002 Patent. This is confirmed by various other publications of
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`the time. See, e.g., Ex. 1003, ¶149; Ex. 1006, 2:49-65; see also, Int’l App. Publ.
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`No. WO 98/12833 to Arnold et al. (1998) (Ex. 1024), 3:14-27; id. at 1:4-8, 8:1-29,
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`10:27-30, Fig. 1.
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`Moreover, the only evidence Patent Owner cites in response is the
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`unsupported testimony of its expert, Dr. Williams. Such ipse dixit testimony by an
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`expert should be ignored, Cadiocom, LLC v. Robert Bosch Healthcare Sys., Inc.,
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`IPR2013-00451, Paper 65 at 28-29 (Jan. 15, 2015), and is wholly insufficient to
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`meet Patent Owner’s burden of proving the non-enablement of a prior art U.S.
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`patent, see In re Antor Media Corp., 689 F.3d 1282, 1287–88 (Fed. Cir. 2012);
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`Google Inc. v. Jongerius Panoramic Technologies, LLC, IPR2013-00191, Paper 70
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`at 37 (Aug. 12, 2014),
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`Even when considered, however, Dr. Williams’ testimony does not support
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`Patent Owner’s argument because Dr. Williams never testified that a skilled artisan
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`could not have accessed a web page over a cellular network in 1999. Rather, his
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`testimony was consistently hedged. See, e.g., Ex. 2002, ¶63-65 (Huang’s cellular
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`network would not provide “reliable transport” and might be “unusable in most
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`scenarios”) (emphasis added).
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`Thus, the unrebutted evidence of record demonstrates that the re
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