PTOISBI57 (04-05)
`Approved for use through 04/30/2007. OMB 0651-0033 M,
`U.S. Patent and Trademark Office: U.S. DEPARTMENT OF COMMERCE
`Under the Pa erwork Reduction Act of 1995. no ersons are re - ulred to res - - nd to a collection ol information unless it dis la a valid OMB control number.
`0 0
`‘ o
`_ _ '
`(Also referred to as FORM PTO-1465)
`REQUEST FOR EX PARTE REEXAMINATION TRANSMITTAL FORM
`
`90003591
`
`Address to:
`Mall Stop Ex Parte Reexam
`
`Alexandria, VA 22313-1450
`
`66543
`PTO
`lllllllllllllllllllllllllllllllllllllllllll
`
`11/07
`
`?4/1 1/07
`
`Date:
`
`Apr“ 11, 2007
`
`1.
`
`This is a request for ex parle reexamination pursuant to 37 CFR 1.510 of patent number 5.101.534
`issued Aug 8 121): m
`. The request is made by:
`
`|:] patent owner.
`
`third party requester.
`
`2. The name and address of the person requesting reexamination is:
`Van Mahamedi
`Shemwell Mahamedi LLP
`
`4880 Stevens Creek Boulevard, Suite 201
`San Jose, CA 95129-1034
`
`3.
`
`is enclosed to cover the reexamination fee, 37 CFR 1.20(c)(1);
`a‘. A check in the amount of $ 2,520.00
`E] b. The Director is hereby authorized to charge the fee as set forth in 37 CFR 1.20(c)(1)
`to Deposit Account No.
`(submit duplicative copy for fee processing): or
`
`Payment by credit card. Form PTO-2038 is attached.
`I: c.
`‘I 7/ 1
`Any refund should be made by i: check or
`credit to DepositAccount No.
`37 CFR 1.26(c). If payment is made by credit card, refund must be to credit card account.
`
`4.
`
`.
`
`' 5. A copy of the patent to be reexamined having a double column format on one side of a separate paper is
`enclosed. 37 CFR 1.510(b)(4)
`
`6:]
`
`CD-ROM or CD-R in duplicate, Computer Program (Appendix) or large table
`E] Landscape Table on CD
`
`7.|:]
`
`Nucleotide and/or Amino Acid Sequence Submission
`If applicable, items a. — c. are required.
`
`a. D Computer Readable Fonn (CRF)
`b. Specification Sequence Listing on:
`
`i. E] CD-ROM (2 copies) or CD-R (2 copies); or
`ii. I:] paper
`
`c. E] Statements verifying identity of above copies
`
`8. |:] A copy of any disclaimer, certificate of correction or reexamination certificate issued in the patent is included.
`
`9.
`
`10.
`
`is requested.
`Reexamination of c|aim(s)
`1 ' 21
`- Fonn PTO/SB/08, PTO-1449, or equivalent.
`34/19/2867 HWIHY 8888838? figagggi
`A copy of every patent or printed publication relied upon is submitted herewith including a Iistin ther
`2528.08 '1'
`11. B An English language translation of all necessary and pertinent non-B'|gl'f§}l1fl§r§uage patents and/or printed
`publications is included.
`
`[Page 1 of 2]
`This collection of information is required by 37 CFR 1.510. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO
`to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 2 hours to complete,
`including gathering, preparing. and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments
`on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, US. Patent
`and Trademark Office. US. Department of Commerce, PO. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS
`ADDRESS. SEND TO: Mail Stop Ex Pane Reexam, Commissioner for Patents. P.0. Box 1450, Alexandria, VA 22313-1450.
`If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`PETITIONER EX. 1003 Page 1
`
`

`
`PTOISBI57 (04-05)
`Approved lor use through 04f30l2007. OMB 0651-0033
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Underthe Paerwork Reduction Act of 1995. no ersons are reuired to resond to a collection of information unless it disla ' a valid OMB control number.
`
`12.
`
`The attached detailed request includes at least the following items:
`
`a. A statement identifying each substantial new question of patentability based on prior patents and printed
`publications. 37 CFR1.510(b)(1)
`b. An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency
`and manner of applying the cited art to every claim for which reexamination is requested. 37 CFR 1.510(b)(2)
`
`13. El A proposed amendment is included (only where the patent owner is the requester). 37 CFR 1.510(e)
`
`14.
`
`a. It is certified that a copy of this request (if filed by other than the patent owner) has been served in its entirety on
`the patent owner as provided in 37 CFR 1.33(c).
`The name and address of the party served and the date of service are:
`
`Jennie S. Malloy
`Malloy & Malloy, P.A.
`2800 SW 3rd Avenue
`Miami, FL 33129
`(Attorney of Record for Patent Owner)
`
`Date or service; April 11, 2007 via Express Mail No. ED 882854835 US
`
`;
`
`El
`
`b. A duplicate copy is enclosed since service on patent owner was not possible.
`
`15. Correspondence Address: Direct all communication about the reexamination to:
`
`The address associated with Customer Number.
`
`30554
`
`OR
`
`Firm or
`individual Name
`Address
`
`16.
`
`The patent is currently the subject of the following concurrent proceeding(s):
`C] a. Copending reissue Application No.
`C] b. Copending reexamination Control No.
`I:] c. Copending Interference No.
`[2] d. Copending litigation styled:
`Rothschild Trust Holdings LLC v. Citrix Systems, Inc. et al., U.S. District Coun for the Southern District of Florida (Miami)
`Civ. No. I206-CV-21359-JLK
`Rothschild Trust Holdings LLC v. Orb Networks, Inc, U.S. District Coun for the Southern District ofFlorida (Miami), Civ. No.
`l :06-CV-22921-ASG
`Orb Networks, Inc. v. Rothschild Trust Holdings LLC, U.S. District Coun for the Northern District of California (San
`Francisco), Civ. No. 3:07-CV~00400-CRB
`
`Authorized Signature
`
`Van Mahamedi
`Typed/Printed Name
`
`April
`
`1 1. 2007
`Date
`
`429828
`Registration No.
`
`D For Patent Owner Requester
`For Third Party Requester
`
`[Page 2 of 2]
`
`PETITIONER EX. 1003 Page 2
`
`

`
`I hereby certify that this paper and accompanying documents are being deposited with the U.S. Postal
`Service “Express Mail Post Office to Addressee” service under 37 C.F.R. Section 1.10 on the date
`indicated above and addressed to: Mail Stop Ex Parte Reexamination, Commissioner for Patents, P.O.
`BOX l450, Alexandria, VA 22313-1450.
`.
`
`-_Evt=?au?'aan3u§-
`
`AW‘ "I”’°7
`
`_
`
`J
`
`Van Mahamedi
`
`Date
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In the Reexamination of :
`
`ROTHSCHILD, Leigh M.
`
`Patent No.: 6,101,534
`
`Issue Date: August 8, 2000
`
`Filing Date: September 3, 1997
`
`REQUEST FOR REEXAMINATION UNDER 37 C.F.R. § 1.510
`
`The Undersigned (“Requester”) hereby submits under provisions of C.F.R. § 1.510, a
`
`Request for Reexamination of Claims 1-21 of US. Patent No. 6,101,534, entitled
`
`INTERACTIVE, REMOTE, COMPUTER INTERFACE SYSTEM.
`
`Reexamination of Claims 1-21 of U.S. Patent No. 6,101,534 is requested, in view of the
`
`following references:
`
`U.S. Patent No. 5,892,825 (“Mages”)
`
`U.S. Patent No. 6,594,692 (“Reisman”)
`
`U.S. Patent No. 5,555, 407 (“Cloutier”)
`
`U.S. Patent No. 6,145,088 (“Stevens”)
`
`U.S. Patent No. 5,857,187 (“Uenoyama”)
`
`U.S. Patent No. 5,937,158 (“Uranaka”)
`
`U.S. Patent No. 5,915,093 (“Berlin”)
`
`U.S. Patent No. 5,996,000 (“Shuster”)
`
`Reexamination of U.S. Patent No. 6,101 ,534
`Page 1 of 37
`
`PETITIONER EX. 1003 Page 3
`
`

`
`Mages, Reisman, Cloutier, Stevens, Uenoyama, Uranaka, Berlin and Shuster (“New Prior
`
`Art Patents”) are not of record in the file of U.S. Patent No. 6,101,534. The ‘534 Patent
`
`was issued on a first-action allowance, with only six references cited.
`
`Statement Pointing Out Each New Question of Patentabilig Based on Prior Art
`
`Because all of the New Prior Art Patents (i) teach subject matter of claims of the ‘534
`
`Patent, and (ii) were not taught in any prior art cited or considered during the prosecution
`
`of the ‘534 Patent, the teachings of New Prior Art Patents raise a substantial new
`
`question of patentability of Claims 1-21 of the ‘534 Patent.
`
`In particular, Reexamination of Claims 1-21 is requested because:
`
`0 Mages raises a substantial new question of patentability with respect to Claims 1,
`
`3, 7, 8 and 9, as Mages is shown below to anticipate these claims. Mages teaches
`
`a computer system (“end-user computer” and “host computer server”) in which
`
`audio/video data on a CD-Rom is unlocked by a server. A detailed claim chart
`
`and analysis is provided herein for the identified claims.
`
`Reisman raises a substantial new question of patentability with respect to Claims
`
`1, 6-19 and 21, as Reisman is shown below to anticipate these claims. Reisman
`
`recites several embodiments relating to use of a portable storage medium (recited
`
`examples include CD-Rom or DVD) in connection with an online server. A
`
`detailed claim chart and analysis is provided herein for the identified claims.
`
`Reisman is a continuation-in-part of U.S. Patent No. 5,694,546 (“Reisman
`
`Parent”), which is of record in the ‘534 Patent. As detailed herein, there are
`
`portions of Reisman that raise a substantial new question or patentability which
`
`are not part of the subject matter disclosed in the Reisman Parent.
`
`Cloutier raises a substantial new question of patentability with respect to Claims
`
`1, 7, 8, 10, 11, 12, 17, 18, 19 and 20, as Cloutier is shown below to anticipate
`
`these claims. Cloutier teaches the use of a local and network side database to
`
`reduce bandwidth requirements for when multimedia information access is
`
`Reexamination of U.S. Patent No. 6,101,534
`Page 2 of 37
`
`PETITIONER EX. 1003 Page 4
`
`

`
`requested. A detailed claim chart and analysis is provided herein for the identified
`
`claims.
`
`Stevens raises a substantial new question of patentability with respect to Claims
`
`1, 4 and 6, as Stevens is shown below to anticipate these claims. Stevens teaches a
`
`system in which a remote workstation operated by a technician can perform data
`
`recovery operations on a local storage disk. A detailed claim chart and analysis is
`
`provided herein for the identified claims.
`
`Uenoyama raises a substantial new question of patentability with respect to
`
`Claims 1 and 4, as Uenoyama is shown below to anticipate these claims.
`
`Uenoyama teaches a computer system that includes a client section, a server
`
`section, and a communication data storage section. A detailed claim chart and
`
`analysis is provided herein for the identified claims.
`
`Uranaka raises a substantial new question of patentability with respect to Claim
`
`1, as Uranaka is shown below to anticipate this claim. Uranaka recites several
`
`embodiments relating to use of a portable storage medium (recited examples
`
`include CD-Rom or DVD) in connection with an online server. A detailed claim
`
`chart and analysis is provided herein for the identified claims.
`
`Berlin raises a substantial new question of patentability with respect to Claims 1-
`
`2, and 21 as Berlin is shown below to render these claims obvious. Berlin teaches
`
`a way for implementing a token on a CD-Rom or other similar device in order to
`
`implement a network communication. A detailed claim chart and analysis is
`
`provided herein for the identified claims.
`
`Shuster, as combined with Uranaka, raises a substantial new question of
`
`patentability with respect to Claims 1-5, 7 and 8, as the combination of Shuster
`
`and Uranaka render these claims obvious. Shuster teaches a computer system
`
`that is configured to use multimedia files on a CD-Rom in conjunction with
`
`browsing a website. A detailed claim chart and analysis is provided herein for the
`
`identified claims.
`
`Reexamination of U.S. Patent No. 6,101,534
`
`Page 3 of 37
`
`PETITIONER EX. 1003 Page 5
`
`

`
`I. THE ‘534 PATENT
`
`In reexamination proceeding, the standard of claim interpretation is to apply the broadest
`
`reasonable claims language, taking into account meaning provided in the specification.
`
`See In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002). The MPEP states this standard
`
`explicitly: “The USPTO uses a different standard for construing claims than that used by
`
`district courts; during examination the USPTO must give claims their broadest reasonable
`
`interpretation.” MPEP Section 2111.01. Requester has reviewed the prior art using this
`
`standard. With this standard in mind, the following brief summary of the ‘534 Patent may
`
`aid the Office.
`
`Brief Summary of the ‘534 Patent
`
`Among other things, the ‘534 Patent provides that a compact, portable, and
`
`interchangeable computer readable storage medium (i.e. a CD-Rom) includes auxiliary
`
`site data that may include video images, audio signals, graphic displays, and various
`
`combinations thereof. For example, the specification of the ‘S34 Patent states that
`
`auxiliary site data “primarily includes data types which are substantially difficult to
`
`quickly and effectively download from a remote server assembly, and/or data or
`
`executable programs which can more conveniently and quickly be maintained and
`
`accessed at the local site.” [Column 14, lines 5-12]
`
`The compact, portable, and interchangeable computer readable storage medium also
`
`includes “auxiliary site addresses” (i.e. forms of data encoded therein). Examples of
`
`“auxiliary site addresses” that are identified in the ‘534 Patent include a URL (see Claim
`
`9).
`
`The ‘534 Patent also provides that an auxiliary site address is distinct and provides
`
`identification of a particular location on the interchangeable, computer readable medium.
`
`[Column 13, lines 47-5 0] Consistent with this usage, the term “internal site addresses” is
`
`Reexamination ofU.S. Patent No. 6,101,534
`Page 4 of 37
`
`PETITIONER EX. 1003 Page 6
`
`

`
`described in the Specification of the ‘534 Patent as meaning a drive location (e.g. “e:”)
`
`[Column 15, lines 10-15].
`
`Given the explicit descriptions of “auxiliary site address” (See e.g. URL in Claim 9) and
`
`the specification, and the requirement in the claims that such addresses include select
`
`portions of auxiliary site data, the relevant prior art can meet this by disclosing any of (i)
`
`a URL that is formed from “auxiliary site data”; (ii) a URL that is formed from “auxiliary
`
`site data” (e.g. a file path); or (iii) a site located by a URL.
`
`With regard to remote access, as noted, the ‘S34 Patent provides for “an auxiliary site
`
`address” that includes a URL accessible through an online connection. (See e.g. URL in
`
`Claim 9; column 14 ofthe ‘534 Patent, lines 1-33).
`
`Of additional significance, Column 14, lines 12-15 of the ‘534 Patent recite that a user
`
`may operate the local processor to access “a primary site address or ‘web site’ using
`
`normal means.” The language “nonnal means” is a clear suggestion of a browser, and
`
`further that an application-level interaction with the web site is contemplated by the
`
`embodiment being described. This particular language must therefore include normal
`
`browser/server interactions. More specifically, remote access should be interpreted to
`
`include the use of scripts provided from the server and delivered to the client through the
`
`browser in order to direct or otherwise cause the browser or client to perform certain
`
`functions.
`
`Additionally, Claim 1 of the ‘534 Patent only requires the server to be able to access
`
`auxiliary site addresses from the so-called compact, portable, interchangeable computer
`
`readable medium. There is no requirement for the server to be able to access auxiliary site
`
`data that is not an auxiliary site address, nor to access addresses on anything other than a
`
`compact, portable and interchangeable computer readable medium.
`
`Reexamination of U.S. Patent No. 6,101,534
`
`Page 5 of37
`
`PETITIONER EX. 1003 Page 7
`
`

`
`II.
`
`DETAILED EXPLANATION OF THE SUBSTANTIAL NEW
`
`QUESTIONS OF PATENTABILITY RAISED BY THE NE WPRIOR
`ART PATENTS
`
`Claim 1, 3, 7, 8 and 9 of U.S. Patent No. 6,101,534 are unpatentable under 35 U.S.C.
`
`Section 102 e as bein antici ated b “Ma es”
`
`.S. Patent No. 5 892 825 .
`
`Mages teaches a computer system (“end-user computer” and “host computer server”) in
`
`which audio/video data on a CD-Rom is unlocked by a server. A detailed claim chart is
`
`provided below, showing how every limitation of Claim 1 of the ‘S34 Patent is met by
`
`Mages.
`
`In reviewing the claim chart (see below), it is important to note that the ‘534 Patent
`
`explicitly contemplates the term “auxiliary site addresses” to include a URL. [See Claim
`
`9, Column 17, line 40-43] Mages discloses URLs on a CD-Rom, which are then
`
`communicated to a server. As such, the “auxiliary site addresses” are remotely accessed
`
`by the server. Further, the URLs of Mages may be considered to “include auxiliary site
`
`data” for any of the following reasons: (i) the URL i_s also auxiliary site data, as it is
`
`provided on the CD-Rom; (ii) the URL includes data in its file path arguments (see the
`
`example URL provided below) to enable identification of source data on the CD-Rom;
`
`and (iii) the URL locates additional “auxiliary site data” on the CD-Rom.
`
`Mages fits squarely into Claim 9 of the ‘S34 Patent in that the auxiliary site address
`
`includes a URL that is accessible through an online connection. If Mages anticipates
`
`dependent Claim 9, it must also anticipate independent Claim 1.
`
`Mages further teaches that crippled data on a CD-Rom may be combined in the RAM of
`
`the end-user terminal with de-crippling data from a server. [See e.g. Step 22 of FIG. 5]
`
`Thus, data from the server is combined with data from the CD-Rom. Specifically, Mages
`
`specifies that in one embodiment, “local media data” on a CD-Rom can be used “in
`
`conjunction with” Internet website content, so that video or audio playback can be
`
`“combined with” textual information. [Column 4, lines 7-17]
`
`Reexamination ofU.S. Patent No. 6,101,534
`
`Page 6 of 37
`
`PETITIONER EX. 1003 Page 8
`
`

`
`Mages is not part of the file for the ‘534 Patent, and its teachings are not reflected in any
`
`art considered by the U.S. Patent Office in issuing this patent. As such, Mages presents a
`
`substantial new question of patentability under 35 U.S.C. Section 102(e).
`
`Claim 1 of the ‘534 Patent
`
`U.S. Patent No. 5,892,825 (“Mages”)
`
`1. An interactive, remote, computer
`interface system comprising:
`
`End-user computer 1 and server 7. [See e.g.
`FIG. 1]
`
`a remote server assembly, said remote
`server assembly including a quantity of
`primary site data;
`
`said remote server assembly including
`at least one primary site address, said
`primary site address including at least a
`portion of said primary site data and
`being distinct so as to identify a
`location thereof on a computer network;
`
`a local processor assembly;
`
`said local processor assembly being
`coupled in data transmitting and
`receiving communication with said
`remote server assembly;
`said local processor assembly being
`structured to access said primary site
`address so as to achieve said data
`
`transmitting and receiving
`communication with said remote server
`
`assembly;
`
`the host computer server 7,
`In Mages,
`includes web pages which “conventionally
`provides web pages to the Internet users. . . .”
`[Column 6, lines 10-12] The content of the
`web ages constitute 1- rimary site data.
`Mages discloses that host computer server 7
`includes a web site. “FIG. 3 is a flow chart at a
`
`user’s computer for accessing the trigger data
`from a web site.” [Colurrm 5, lines 22-23] Host
`computer server 7 includes web pages and
`trigger data. [See e.g. FIG. 3] It is well known
`that in the Internet context described, the web
`page is associated with a primary site address
`(i.e. a unique URL) that identifies the location
`rimary site data web age .
`Mages provides the local processor assembly
`as end-user computer 1. [See e.g. FIG. 1]
`Mages further provides: “The end-user’s
`computer 1 is connected via the Internet 6 to a
`host computer server 7....” [Column 5, line
`55-56]
`Mages provides: “The data on the CD-Rom
`will automatically call up and connect the end
`user’s computer to the host computer’s server
`7. ...” [Column 6, lines 41-44] This occurs
`under control of the local processor assembly.
`As stated, “[s]uch an automatic connection is
`well known, and will automatically find the
`end-user’s browser, will call the Internet
`
`Service Provider, and pass the necessary link
`from the CD-Rom to the browser in order to
`
`get to the host’s web page.” [Column 6, lines
`43-48]
`
`Reexamination of U.S. Patent No. 6,101,534
`Page 7 of 37
`
`PETITIONER EX. 1003 Page 9
`
`

`
`at least one data storage assembly
`associated with said local processor
`assembly
`and structured to contain a quantity of
`auxiliary site data thereon,
`
`said auxiliary site data being associated
`with said primary site data;
`
`said data storage assembly including a
`compact, portable and interchangeable
`computer readable medium;
`
`said compact, portable and
`interchangeable computer readable
`medium including a plurality of
`remotely accessible, auxiliary site
`addresses encoded therein,
`
`See CD-Rom 2 (which inserts into computer
`1) of Mages.
`
`Mages provides “[V]ideo images and/or audio
`images ...are stored in crippled fashion on
`CD-Rom 3.” [Column 6, lines 17-20]
`
`Mages teaches that the host computer server 7
`has decrippling data for the data on the CD-
`Rom. “The host computer then sends back to
`the local server serving the end users computer
`the necessary, decrippling trigger for the
`specific video/audio data on the end—user’s
`CD-Rom.” [Column 6, lines 53-56] The video
`and audio constitute a quantity of auxiliary site
`data, such as video and audio content stored on
`the CD-Rom and associated with a website,
`such as
`
`http://tekweb.com/hypercd/adver/lotto.html
`[Colunm 6, lines 16-65]
`Mages teaches this in numerous places. FIG. 1
`of Mages shows the CD-Rom 3 inserted into
`the personal computer.
`
`The ‘534 Patent teaches that “auxiliary site
`addresses” include URLs (see for example
`Claim 9).
`Mages teaches that the CD-Rom contains
`one or more URLs or links, as illustrated by
`the following:
`0
`“The Hyper-CD 3 is provided with the
`URL (web page) of the designated host
`computer, or server” [Column 6, line
`23-25]
`
`FIG. 5, block 16: “HyperCd is encoded
`with crippled data and unique
`URL’s. . .”
`
`“This data on the CD-Rom 3 will
`
`automatically call up and connect the
`end—user’s computer to the host
`computer’s server 7 on the Internet,
`whereby a socket-to-docket connection
`is made therebetween. . ..Such an
`automatic connection. . .will
`
`. pass the necessary links
`automatically. .
`from the CD-Rom to the browser in
`
`order to get to the host’s web page.
`[Column 6, lines 41-48]
`
`Reexamination of U.S. Patent No. 6,101,534
`Page 8 of 37
`
`PETITIONER EX. 1003 Page 10
`
`

`
`each of said remotely accessible,
`auxiliary site addresses including select
`portions of said quantity of auxiliary
`Site data; and
`.
`
`Mages provides auxiliary site data in the form
`of
`
`o Audio/video data carried on CD-Rom
`2[Column 6, lines 17-20]
`The URL, or portions thereof, i_s
`auxiliary site data.
`The URL must also carry some amount
`of source data (i.e. auxiliary site data),
`as provided by the statement that the
`URLs “locate source data on [the]
`HyperCd. ..”[FIG. 3, block 16]. Also
`see the example URL:
`http://tekweb.com/hypercd/adver/lotto.html
`All of which teach that the URL carries some
`
`auxiliary site data to identify file ath etc.
`said remotely accessible, auxiliary site Mages states that “CD-Rom contains a code
`addresses being structured to be
`representing the URL Web Page of the host
`remotely accessed by said remote server
`computer server 7.. .” [Column 6, lines 39-40].
`assembly
`This code is communicated to the host
`computer server 7 as a URL.
`(“http://tckweb.com/hypercd/adver/lotto.html)
`[Column 6, line 24]
`
`so as to initiate utilization of said select Mages teaches that once the local host server 7
`portions of said quantity of auxiliary
`receives the URL, it sends decrippling data to
`site data by said local processor
`the user computer where the data is combined
`assembly in conjunction with said
`in RAM: “In RAM, the trigger and the data on
`primary site data.
`the CD-Rom 3 are combined, and played
`back. . ..” [Column 6, line 56-58] Mages may
`use a file name or file path to locate the
`crippled data. Furthermore, “local media data”
`on a CD-Rom can be used “in conjunction
`with” Internet website content, so that video or
`
`audio playback can be “combined with”
`textual infonnation. [Column 4, lines 7-17]
`
`Mages also raises a substantial new question of patentability for Claims 3, 7, 8 and 9.
`
`Claim 3 recites the addition of “a security protocol system, said security protocol system
`
`being structured to limit said remote server assembly's access to said local processor
`
`assembly by only permitting access to said compact, portable, interchangeable computer
`
`readable medium associated with said local processor assembly.” Mages anticipates this
`
`claim. With regard to Mages, a security protocol may correspond to (i) the CD-Rom of
`
`Mages being crippled, and (ii) the server of Mages only being able to communicate a key
`
`for use by the terminal on which the CD-Rom is provided. [Column 6, lines 17-65]
`
`Reexamination of U.S. Patent No. 6,101,534
`Page 9 of 37
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`PETITIONER EX. 1003 Page 11
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`

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`Claim 7 recites that the “compact, portable and interchangeable computer readable
`
`medium is structured to store at least one video image.” Claim 8 states that the “compact,
`
`portable and interchangeable computer readable medium is structured to store at least one
`
`audio signal.” Mages anticipates both of these claims, as Mages teaches that the CD-
`
`Rom contains audio and/or video. [See e.g. Column 5, lines 6-8]
`
`Mages also anticipates Claim 9, which states “wherein said primary and said remotely
`
`accessible auxiliary site addresses include URL addresses accessible through an online
`
`connection.” Mages teaches in Column 6, lines 17-65, that the CD-Rom may contain a
`
`URL as its remote and auxiliary site addresses.
`
`Claim 1, 6-19 and 21 of U.S. Patent No. 6,101,534 are unpatentable under 35 U.S.C.
`
`Section 102 e as bein antici ated b “Reisman” U.S. Patent No. 6 594 692 .
`
`Reisman recites several embodiments relating to use of a portable storage medium
`
`(recited examples include CD-Rom or DVD) in connection with an online server. The
`
`claim chart on the next page provides a detailed explanation as to how Reisman applies
`
`to Claim 1 ofthe ‘534 Patent.
`
`As noted above, Reisman is a continuation-in-part of a patent (U.S. Patent 5,694,546;
`
`“Reisman Parent”) that is of record in the file of the ‘S34 Patent. It will be appreciated
`
`that Reisman is almost twice as long as the Reisman Parent and contains numerous
`
`-
`
`embodiments and functionality not contained in the Reisman Parent. Portions of Reisman
`
`that are presented herein as raising a new question of patentability are not subject matter
`
`contained in the Reisman Parent.
`
`As detailed below in the claim chart, Reisman teaches a server or server system that
`
`delivers web pages to a client terminal, for storage on a disk, CD-Rom or other memory
`
`device. The web pages are configured to be offline web pages, and to contain internal
`
`links which point to other offline pages. The server or server system of Reisman is
`
`Reexamination of U.S. Patent No. 6,101,534
`
`Page 10 of 37
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`PETITIONER EX. 1003 Page 12
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`

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`configured to alter URLs from the server, so that online pages with internal links to other
`
`online pages become locally stored pages (i.e. on a disk) that contain links to other
`
`locally stored (i.e. on disk) pages. [See Columns 40-44, and detailed pin cites in the chart
`
`below]
`
`Reisman teaches that the server can, for a given online page, (i) deliver that page for
`
`local storage, (ii) alter the file path and URL of the page so the URL becomes a local
`
`pointer within the storage disk or CD-Rom, (iii) deliver or identify other pages referenced
`
`by the original online page and alter the file path and URL for those referenced pages, so
`
`that each URL to one of the referenced pages also becomes a local pointer, and (iv)
`
`embed, in the delivered page, the altered links in the manner that simulates or replicates
`
`the online version of the page. [See Columns 40-44, and detailed pin cites in the chart
`
`below] Moreover, the offline experience may be combined (or use “in conjunction”) with
`
`an online experience (e. g. some links in an offline page may be online links). [See
`
`Column 43] Thus, this teaching of Reisman teaches a remote server that handles (and
`
`thus accesses) local URLs (i.e. auxiliary site addresses) and enables the use of such local
`
`URLs in conjunction with an online browsing experience.
`
`Reisman is not part of the file for the ‘S34 Patent, and its teachings are not reflected in
`
`any art considered by the U.S. Patent Office in issuing this patent. As such, Reisman
`
`presents a substantial new question of patentability under 35 U.S.C. Section 102(e).
`
`Reexamination of U.S. Patent No. 6,101,534
`Page 11 of 37
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`PETITIONER EX. 1003 Page 13
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`

`
`Claim 1 of'534 Patent
`
`U.S. Patent No. 5,857,187 ("Reisman")
`
`1. An interactive, remote, computer
`interface system comprising:
`
`Reisman shows FIG. 12, including local
`station 122, web package server 126, and web
`site server 122. [Column 42-43]
`
`a remote server assembly, said remote
`server assembly including a quantity of
`rimary site data;
`
`Reisman: "Web server 132 supplies web
`pages 138. .
`. " [Column 43, lines 3-5]
`
`said remote server assembly including at Reisman provides a web server 132 provides
`least one primary site address, said
`a remote web site. [Column 43, line 56] The
`primary site address including at least a
`web server 132 supplies web pages 138.
`portion of said primary site data and
`being distinct so as to identify a location
`thereof on a computer network;
`a local processor assembly;
`said local processor assembly being
`coupled in data transmitting and
`receiving communication with said
`remote server assembly;
`
`See local station 122 of Reisman. [FIG. 12
`and Colurrms 43-45] Connections 128, 142
`are used by the local station to connect and
`communicate with web server 132 and web
`package server 136. [Column 43, lines 25-30]
`
`said local processor assembly being
`structured to access said primary site
`address so as to achieve said data
`transmitting and receiving
`communication with said remote server
`
`assembly;
`
`at least one data storage assembly
`associated with said local processor
`assembly
`and structured to contain a quantity of
`auxiliary site data thereon,
`
`said auxiliary site data being associated
`with said primary site data;
`
`said data. storage assembly including a
`compact, portable and interchangeable
`computer readable medium;
`
`Reisman provides that numerous instances,
`including as stated with connections 128, 142.
`[Column 43, lines 14-24]
`
`In Reisman, Local host 122 has various
`storage media. [Column 42, lines 55-59]
`
`Reisman: "[L]ocal content 124 is available at
`an of various storage media" [Column 42,
`lines 55-56]
`Reisman provides that local content 124
`includes off-line web pages supplied from the
`web server 132 or web package server 136.
`[Column 43, lines 14-24]
`
`Reisman teaches that the storage media on
`which local content 124 may be stored is
`recited as including "various storage media,
`removable or fixed, such as disk, diskette,
`
`CD-Rom." [Column 42, lines 54-58]
`
`Reexamination of U.S. Patent No. 6,101,534
`Page 12 of 37
`
`PETITIONER EX. 1003 Page 14
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`

`
`said compact, portable and
`interchangeable computer readable
`medium including a plurality of
`remotely accessible, auxiliary site
`addresses encoded therein,
`
`each of said remotely accessible,
`auxiliary site addresses including select
`portions of said quantity of auxiliary site
`data; and
`
`said remotely accessible, auxiliary site
`addresses being structured to be
`remotely accessed by said remote server
`assembly
`
`so as to initiate utilization of said select
`
`portions of said quantity of auxiliary site
`data by said local processor assembly in
`conjunction with said primary site data.
`
`In Reisman, the offline pages have local paths
`or resource locators. These local paths or
`URLs cause links on a local and offline page
`to point to another local and offline page (if
`present) rather than to an online source.
`"Local pages 140, with relevant web page
`URLs replaced with appropriate local paths or
`other local resource locators...." [Column 43,
`lines 5-13] Thus, the storage media may be
`provided with pages that include links to other
`locally stored pages, where all the locally
`stored 9 ages originate from the online source.
`As stated above, Reisman teaches that the
`
`local paths/URLs locate the local pages 140.
`Additionally, the local paths/URLs also
`include auxiliary site data (e. g. the file path
`identifier). The URLs may also be provided
`with local ages.
`In Reisman, the construction of local
`
`paths/URLs may be performed by a dynamic
`link locator, which may reside on the server.
`[Column 40, lines 41-46] The "dynamic
`locator can work with pre—existing URLs, as
`found on the Web site and redirect them on-
`
`the-fly to local resource