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`IPR2016-01155
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`PATENT NO. 8,694,657
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`MICROSOFT CORPORATION
`Petitioner
`v.
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`WINDY CITY INNOVATIONS LLC
`Patent Owner
`
`
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`Patent No. 8,694,657
`Issue Date: April 8, 2014
`Title: REAL TIME COMMUNICATIONS SYSTEM
`__________________________________________________________________
`
`PATENT OWNER’S RESPONSE PURSUANT TO 37 CFR § 42.120
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`Case No. IPR2016-01155
`__________________________________________________________________
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`TABLE OF CONTENTS
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`IPR2016-01155
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`PATENT NO. 8,694,657
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`I.
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`II.
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`III.
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`Page(s)
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`INTRODUCTION ........................................................................................... 1
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`THE ’657 PATENT PRESENTS A NOVEL APPROACH TO REAL-
`TIME COMMUNICATION OVER THE INTERNET .................................. 3
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`SUMMARY OF THE ALLEGED PRIOR ART AND THE PRIOR
`DECISIONS DENYING INSTITUTION OF IPR2016-01137,
`IPR2016-01138, IPR2016-01146, AND IPR2016-01147 ............................... 5
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`A.
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`Brown .................................................................................................... 5
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`B.
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`C.
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`The Sociable Web ................................................................................. 7
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`The Decisions Denying Institution of IPR2016-01137......................... 9
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`IV. CLAIM CONSTRUCTION .......................................................................... 11
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`A.
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`TOKEN................................................................................................ 11
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`B.
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`C.
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`DATABASE ........................................................................................ 11
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`CENSOR ............................................................................................. 15
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`V.
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`THE BROWN REFERENCE DOES NOT TEACH OR DISCLOSE
`CERTAIN LIMITATIONS ........................................................................... 16
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`A.
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`The Instituted Claims are Not Obvious Over Combinations
`Based On Brown ................................................................................. 19
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`1.
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`2.
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`The Prior Art Does Not Teach Or Disclose a Database
`Which Serves as a Repository of Tokens for Other
`Programs to Access, Thereby Affording Information to
`Each of the Participator Computers .......................................... 20
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`Communicating Over an Internet Network Would Not
`Have Been Obvious .................................................................. 22
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`3.
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`4.
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`IPR2016-01155
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`PATENT NO. 8,694,657
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`The Prior Art Does Not Teach Or Disclose Determining
`Whether The First User Identity And The Second User
`Identity Are Able To Form A Group To Send And To
`Receive Real-Time Communications ....................................... 25
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`Petitioner Has Not Set Forth a Sufficient Motivation to
`Combine Brown With The Sociable Web and The
`Combination Would Not Have Been Obvious ......................... 27
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`5.
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`Two Client Software Alternatives ............................................ 28
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`VI. CONCLUSION .............................................................................................. 31
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`TABLE OF AUTHORITIES
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`IPR2016-01155
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`PATENT NO. 8,694,657
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` Page(s)
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`Federal Cases
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`Amgen Inc. v. F. Hoffman-La Roche Ltd.,
`580 F.3d 1340 (Fed. Cir. 2009) .......................................................................... 18
`
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) .......................................................................... 18
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`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 19
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`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) .......................................................................... 18
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .................................................................... 17, 18
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`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 16
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 17
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`Los Angeles Biomedical Research Inst. at Harbor-UCLA Med. Ctr. v.
`Eli Lilly & Co.,
`849 F.3d 1049 (Fed. Cir. 2017) .......................................................................... 17
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`Medichem, S.A. v. Rolabo, S.L.,
`437 F.3d 1157 (Fed. Cir. 2006) .......................................................................... 19
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`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) .......................................................................... 17
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`In re Van Os,
`844 F.3d 1359 (Fed. Cir. 2017) .......................................................................... 18
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`W.L. Gore & Assocs., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) .......................................................................... 19
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`Other Authorities
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`IPR2016-01155
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`PATENT NO. 8,694,657
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`37 CFR § 42.120 ........................................................................................................ 1
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`v
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`EXHIBITS
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`IPR2016-01155
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`PATENT NO. 8,694,657
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`Exhibit #
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`Exhibit Name
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`2001
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`2002
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`2003
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`2004
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`2005
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`Declaration of Chandrajit Bajaj, Ph.D.
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`Merriam-Webster’s Collegiate Dictionary, Tenth Edition
`(1994)
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`Microsoft Press Computer Dictionary, Third Edition
`(1997)
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`Macmillan Encyclopedia of Computers (Gary G. Bitter
`ed., Macmillan Publ. Co. 1992)
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`Excerpt from David W. South, The Computer and
`Information Science and Technology Abbreviations and
`Acronyms Dictionary, CRC Press, May 6, 1994
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`2006
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`Declaration of Jaime G. Carbonell, Ph.D.
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`2014
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`Deposition Transcript of Christopher M. Schmandt,
`dated February 22, 2017
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`Deposition Transcript of Robert Stein, dated March 1,
`2017
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`Deposition Transcript of Judith S. Donath, dated
`February 23, 2017
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`IDS filed Jan. 14, 2017 for U.S. Patent Application No.
`14/246,965
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`Bob Metcalfe, Predicting the Internet’s catastrophic
`collapse and ghost sites galore in 1996, InfoWorld,
`p.61 (Dec. 4, 1995)
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`AOL could strike gold with IM patent, CNN.com. (Dec.
`19, 2002)
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`U.S. Patent No. 6,449,344 to Yair Goldfiner et al.
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`Decision Denying Institution in IPR2016-01137
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`vi
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`I.
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`INTRODUCTION
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`Pursuant to 37 CFR § 42.120, Windy City Innovations LLC (“Patent
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`Owner”) submits this response to the Petition (Paper No. 1) filed by Microsoft
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`Corporation (“Petitioner”) requesting inter partes review (“IPR”) of independent
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`claims 1, 189, 353, 465, 597, 606, 616, 625, 633, 341, 649-663, and 666-671, and
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`dependent claims 2, 18, 27, 35, 43, 51, 65, 79, 93, 100, 108, 114, 126, 138, 150,
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`156, 168, 170, 172, 176, 178, 180, 182-188, 190, 202, 208, 214, 220, 226, 238,
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`250, 262, 268, 274, 280, 292, 304, 316, 322, 328, 334, 336, 340, 342, 344, 346,
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`348, 350, 352, 354, 362, 366, 370, 374, 378, 386, 394, 402, 406, 410, 414, 422,
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`430, 438, 442, 450, 452, 454, 456, 458, 460, 462, 464, 466, 476, 481, 486, 491,
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`496, 505, 515, 525, 530, 535, 545, 555, 565, 570, 580, 582, 584, 586, 588, 590,
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`592, 594, 596, 598, 607, 615, 617, 619, 621, 622, 624, 626, 628, 630, 632, 634,
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`636, 638, 640, 642, 644, 646, 648, 664, and 665 (collectively, the “Challenged
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`Claims”) of U.S. Patent No. 8,694,657 (“the ’657 Patent”) (Ex. 1001). This
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`response is filed timely pursuant to the Board’s Scheduling Order (Paper No. 13)
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`and the parties’ Joint Stipulation to Adjust Schedule (Paper No. 25), extending the
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`due date of this response to March 31, 2017.
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`Patent Owner respectfully submits that the arguments presented and the
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`additional evidence submitted, such as the testimony from Patent Owner’s expert,
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`Jaime G. Carbonell, Ph.D. (see, e.g., Ex. 2006, Declaration of Dr. Jaime G.
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`Carbonell, Ph.D.), demonstrate that the instituted claims are not obvious over
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`PATENT NO. 8,694,657
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`combinations based on U.S. Patent No. 5,941,947 to Brown (Ex. 1012, “Brown”).
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`While It is true that virtual teleconferencing and computer-based chat programs
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`had been known in the art predating the ’657 Patent, the inventive arrangement of
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`hardware and software disclosed and claimed by the ’657 solves problems in the
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`area that were endemic to Internet-based connections both in terms of performance
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`as well as security.
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`The instituted ground is based on obviousness over Brown in combination
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`with the a purported publication entitled “The Sociable Web” (Ex. 1019).
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`However, Brown discloses a different type of system from the challenged claims;
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`Brown discloses a bulletin board (“BBS”) system that did not operate over the
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`Internet. Moreover, the chat system disclosed by Brown was limited in the very
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`ways that that the inventor of the ’657 Patent sought to overcome with his
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`invention. (Ex. 1001 at 1:33-37; 1:56-59). Additionally, Brown was cited during
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`prosecution, and the patentee overcame all rejections based on Brown. As a result,
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`Brown is missing many of the limitations of the claims and the present
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`combination with the Sociable Web does not cure these deficiencies.
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`The cited art fails to teach or disclose one or more of (1) a “database” that
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`“affords” information to other programs, (2) “via the Internet network”, (3)
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`“determining whether the first user identity and the second user identity are able to
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`form a group to send and to receive real-time communications”, and (4) “two client
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`PATENT NO. 8,694,657
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`software alternatives” (dependent claims 168, 334, 454, 456, and 580). Moreover,
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`even if the references were to disclose all of the limitations of the claims
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`individually, Petitioner has not set forth adequate motivation to combine the
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`references to arrive at the claims and prove obviousness by a preponderance of the
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`evidence.
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`In support of its Response, Patent Owner submits a declaration of its expert,
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`Jaime G. Carbonell, Ph.d. (Carbonell Decl., Ex. 2006) a technical expert with
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`approximately four decades of experience in computer science including teaching,
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`research and innovation. The Board, on a full record, including testimony from
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`Patent Owner’s expert, Dr. Carbonell, should find that Petitioner failed to establish
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`by a preponderance of the evidence the invalidity of any challenged claim.
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`II. THE ’657 PATENT PRESENTS A NOVEL APPROACH TO REAL-
`TIME COMMUNICATION OVER THE INTERNET
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`The ’657 Patent was filed during the infancy of the Internet, over 20 years
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`ago, long before real-time digital communications were as ubiquitous as they are
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`today. The Inventor, Dr. Daniel Marks, recognized problems with available
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`communications systems and disclosed a system that solved those problems and
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`whose relevance is still felt today. The first problem identified by Dr. Marks was
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`the difficulty in applying the “corporate” conference model (like Brown) to the
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`Internet. Ex. 1001 at 1:34-45. In the corporate model, systems were often
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`connected over private connections such as leased lines, LANs, or WANs.
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`PATENT NO. 8,694,657
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`Because of the architecture of these corporate solutions, less emphasis was placed
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`on security, privacy, and platform independence, and these solutions were ill suited
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`for real time Internet communications. The second problem was that “chat rooms”
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`such as America On Line (“AOL”) had not yet reached Internet maturity. Chat
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`rooms were closed platforms that provided limited options for users to access the
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`systems. Ex. 1001 at 53-63. Additionally, these chat rooms utilized proprietary
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`connections and protocols and prior to April 1996, AOL did not offer Internet-
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`based real time communications.1 The problems with these prior systems also
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`included security issues, privacy issues, and real time multimedia communication
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`issues. Ex. 2006 at ¶¶ 25-26.
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`Dr. Marks described a system to overcome the problems of both the
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`“corporate” conference environments, such as those disclosed in Brown, as well as
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`the problems with the ISP environment such as AOL. Dr. Marks’ solution focuses
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`on a control computerthat includes a database that stores tokens and that affords
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`information to other programs––a concept that did not exist in the prior art. The
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`database and tokens provided for the persistence necessary in a distributed
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`1 AOL Instant Messenger (AIM) was not released until 1997. See, e.g, Ex. 2012
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`(CNN Article describing AOL’s patent on Instant Messenger technology, which
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`was only available as of 1997, one year after the priority date of the ’657 Patent.
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`environment such as the Internet. The tokens also provided security and privacy
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`solutions that were not relevant in the context of corporate systems like Brown.
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`III. SUMMARY OF THE ALLEGED PRIOR ART AND THE PRIOR
`DECISIONS DENYING INSTITUTION OF IPR2016-01137, IPR2016-
`01138, IPR2016-01146, AND IPR2016-01147
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`A. Brown
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`Brown describes a system that provides access to applications that are
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`housed in a “data center 104” by a wide area network. Although one of the
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`program modules available in the Brown reference is “chat,” the focus of the
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`system is not to provide real time communication of multimedia. All of the
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`software disclosed by Brown is located within that very data center as depicted in
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`Figure 1 of Brown below and Petitioner points only to the data center for the
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`limitations of the claims:
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` Ex. 1012 at Fig. 1. Petitioner’s expert Dr. Schmandt testified that none of the users
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`directly communicate with the security servers and that the security servers only
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`provide information within the host data center. Ex. 2007 at 186:9-22.
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`In these embodiments described by Petitioner, and as shown in Figure 1 of Brown,
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`the software is encapsulated within the host data center and there is not a one-to-
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`one relationship of gateway computers to terminals. While Brown does describe a
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`“client application,” (Ex. 1012 at 8:53-59), the only software contemplated is the
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`“Sysop Tools,” which is a client application of the Directory Service responsible
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`for editing properties of the system (Ex. 1012 at 14:52-15:4). Ex. 2006 at ¶ 20.
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`Also absent from Brown is any disclosure of a connection over the Internet.
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`This is because Brown does not describe an Internet-capable system. Brown
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`describes exactly the types of systems that the ’657 Patent acknowledges are part
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`of the prior art, and the very systems that the inventor of the ’657 Patent sought to
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`improve. For example, the ’657 Patent acknowledges email, chat, and conference
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`abilities were known in the prior art, but that those systems, like the Brown,
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`required control of the software and hardware of the network. Ex. 1001 at 1:38-52;
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`Ex. 2006 at ¶ 20.
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`B.
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`The Sociable Web
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`The Sociable web is advanced by Petitioner to allegedly teach the “Internet”
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`and “chat functionality.” Pet. at 19, 29. However, the sociable web merely
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`describes a web-based chat functionality that would have run on a web server and
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`not over the type of LAN/WAN server system that operates in Brown. (Ex. 2009
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`at 26:6-8.) The Sociable web teaches two distinct embodiments, a first
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`embodiment (“public”), that uses the webserver for communications, and a second
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`embodiment (“private”) where the users communicate directly over a data link:
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`Private conversations and public conferences are handled differently,
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`to minimize the load on the server. For private conversations, the
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`server simply provides the two parties with each other's address; the
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`connection is made directly between the two. For public conferences,
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`the server acts as a conduit; the user sends the message to the server,
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`which relays it to the other participants.
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`Ex. 1012 at 5. Ex. 2006 at ¶ 21.
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`One of ordinary skill in the art would have understood that in the context of
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`public communication over a web server, the chats would have been in the form of
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`hypertext for display in a browser. Ex. 2006 at ¶ 21.Because the chats would have
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`been hypertext, the actual images, graphics, sounds, or other multimedia would not
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`have been transferred between users. Instead hyperlink URLs would be provided
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`to link to content. To the extent that the private communications would have
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`allowed for direct exchange of content other than text, that content would bypass
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`the server on a separate data connection. Ex. 2006 at ¶ 20.
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`Additionally, Microsoft bears the burden of proving that the Donath article
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`qualifies as actually prior art. However, the article is a web resource which, on its
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`face, lists a date from the Web Archive in 1998––well after the priority date of the
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`’657 Patent. Microsoft’s declarant, Dr. Donath, testified that she managed her
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`MIT web page prior to 1998 where the article was allegedly located. However, she
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`does not have any copies or backups of the web page bearing a date prior to 1998.
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`Ex. 2009 at 14:2-11. Additionally, Dr. Donath testified that there was a time when
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`the images of her web page were not working. Ex. 2009 at 14:22-15:2.
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`Accordingly, Microsoft has not met its burden to prove that the Sociable Web is
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`prior art. Finally, Dr. Donath is a paid consultant of Microsoft, who omitted the
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`material fact regarding her compensation from her declaration. Ex. 2009 at 10:19-
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`21; 11:3-8. Accordingly, Dr. Donath’s testimony corroborating the publication
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`date of the Sociable Web article should be given little to no weight and the Board
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`should find that this article does not qualify as prior art in this proceeding.
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`C. The Decisions Denying Institution of IPR2016-01137
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`In IPR 2016-01137 (the “-01137 IPR”), the Board denied institution of the
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`challenged claims of U.S. Patent No. 8,473,552 (the “’552 Patent”), which is a
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`continuation of the ’657 Patent, because the Brown reference did not disclose two
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`client software applications that enable real-time group member communications.
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`Ex. 2014 IPR2016-01137, Termination Decision, Paper 8 at 9.
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`Claim 1 of the ’552 Patent, which was challenged in the -01137 IPR,
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`provides:
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`1. Apparatus to control communication, the apparatus including:
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`a controller computer system including a controller computer and a
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`database which serves as a repository of tokens for other programs to access,
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`thereby affording information to each of a plurality of participator computers
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`which are otherwise independent of each other, through an Internet network,
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`responsive to a respective authenticated user identity, wherein the controller
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`computer system is programmed to provide access to the controller
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`computer system via any of two client software alternatives, wherein both of
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`the two client software alternatives allow the respective user identities to be
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`recognized by the controller computer system and allow at least some of the
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`participator computers to form at least one group in which members can
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`send communications and receive communications from another of the
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`members, wherein at least some of the communications are received in real
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`time via the Internet network, and wherein the at least one of client software
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`alternatives allows the controller computer system to determine whether at
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`least one of the user identities, individually, is censored from data
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`representing at least one of a pointer, video, audio, graphic, and multimedia
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`such that the data that is censored is not presented by the corresponding
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`participator computer, the controller computer system controlling real-time
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`communications by:
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`storing each said user identity and a respective authorization to send
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`multimedia data, the multimedia data comprising graphical data; and
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`if permitted by the user identity corresponding to one of the
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`participator computers, allowing the one of the participator computers to
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`send multimedia data to another of the participator computers.
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`Ex. 2014 IPR2016-01137, Ex. 1001, ’552 Patent, Claim 1 (emphasis added).
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`In the -01137 IPR, the Board found that Brown did not disclose this
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`limitation because Brown discloses only one client software alternative that
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`provides real-time communications: Brown’s chat services. Ex. 2014 IPR2016-
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`01137, Termination Decision, Paper 8 at 9. The Board found no evidence that the
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`Sysop Tools provided for real-time communications, and also found that the BBS
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`application was specifically used for non-real-time communications. See id. For
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`this reason, the Board denied institution of the -01137 Petition.
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`IPR2016-01155
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`IV. CLAIM CONSTRUCTION
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`A. TOKEN
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`The specification of the ’657 Patent describes “identity tokens,” and
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`defines these tokens as “pieces of information associated with user identity.”
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`Ex 1001 at 8:6–9. The specification further adds that the tokens are “stored in
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`memory 11 in a control computer database,” which “serves as a repository of
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`tokens.” Id.at 8:9–11. Petitioner and the Board in its institution decision have both
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`adopted a construction of “token” as “piece of information associated with user
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`identity.” For the purpose of this Petition only, Patent Owner also adopts the
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`PTAB’s construction.
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`B. DATABASE
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`The specification of the ’657 Patent describes the storage of tokens within a
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`database as follows:
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`The pieces of information are stored in memory 11 in a control
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`computer database, along with personal information about the user,
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`such as the user’s age. The control computer database serves as a
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`repository of tokens for other programs to access, thereby affording
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`information to otherwise independent computer systems. In the
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`database, the storage of tokens can be by user, group, and content, and
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`distribution controls can also be placed on the user’s tokens as well as
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`the database.
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`Ex. 1001 at 8:9-18. Further, within the prosecution history of U.S. Patent
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`Application No. 14/246,965, which shares the same parent application
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`(08/617,658) as the ’657 Patent, the Patent Owner stated:
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`Because the database affords information to other programs and
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`computers, it must store the data, such as the tokens, with persistence,
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`such that tools can interact with the data such as a DBMS when
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`providing the data to the participator computers of the authenticated
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`users. The persistence and access features of the database are also
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`critical because the “other programs” of the invention are separate and
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`distinct programs that do not share the same memory space and which
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`are linked by virtue of the inventive database and tokens.
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`Ex. 2010 (IDS filed Jan. 14, 2017 for U.S. Patent Application No.
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`14/246,965; emphasis added). Thus the prosecution history supports the
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`construction that a database is limited to “a collection of logically-related
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`data which is stored with persistence and associated tools for interacting
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`with the data such as a DBMS.” Verizon Servs. Corp. v. Vonage Holdings
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`Corp., 503 F.3d 1295, 1306 (Fed. Cir. 2007) (“a statement made by the
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`patentee during prosecution history of a patent in the same family as the
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`patent-in-suit can operate as a disclaimer,” even when “disclaimer occurred
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`after patent-in-suit had issued”).
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`As of the early 1990’s there existed several known ways to store data for
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`access by one or more computer programs. These storage arrangements included
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`temporary storage such as random access memory (RAM) and other forms of
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`cached storage. Ex. 2006 at ¶ 25. Long term storage arrangements such as floppy
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`disks, magnetic disks, optical disks, and magnetic tape were also known and used.
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`Id.
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` The concept of a “database” was also well known in the early 1990’s and
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`databases were used to store multimedia data. Id. at ¶26. Although databases
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`often were associated with some storage or memory, storage is not equivalent
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`to a database. Id. Two hallmarks of a database are (1) persistence of the data,
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`and (2) interactivity with the data via a database management system
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`(DBMS). Id. One exemplary source, the Macmillan Encyclopedia of Computers,
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`describes a database as “a collection of related data that contains information about
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`an enterprise such as a university or an airline.” Macmillan Encyclopedia of
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`Computers (Gary G. Bitter ed., Macmillan Publ. Co. 1992). Ex. 2004.
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`Macmillan further states that “data include facts and figures that can be represented
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`as numbers, text strings, images, or voices stored in files on disk or other media.”
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`Macmillan then describes another criteria of a database, the database management
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`system: “[a] database management system (DBMS) is a set of programs (a
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`software package) that allows accessing and/or modification of the database.”
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`Id.
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`When data is stored in memory, there is often no persistence of that data.
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`For example, if a program were to store information relating to a user in
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`memory, that data is typically lost when the program completes its processes and
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`exits. Ex. 2006 at ¶ 27.
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`PATENT NO. 8,694,657
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` In a database, stored data is typically associated with meta-data. Ex. 2006
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`at ¶ 28. The meta-data could then be interactively queried using a Simple Query
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`Language (SQL) for rapid access of information contained in the data repository.
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`Id. Standard storage either in temporary or permanent memory does not
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`come equipped with this type of searching and retrieval architecture. Id.
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`Interactive queries are particularly useful when data needs to be accessed
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`simultaneously by multiple other users and their programs. Id. The DBMS
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`typically handles all these queries.
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`When individual user programs store information in program memory,
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`and not in a database, that information is generally unavailable to other users and
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`their programs. Ex. 2006 at ¶ 29. This is because operating systems
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`generally enforce program execution consistency and security protocols so
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`that a malicious user’s program does not have access to other user programs’
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`data. Id. Databases were known to handle data consistency and security
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`across multiple applications, and especially across multiple remote
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`applications. Id. Even if other user’s programs were to somehow gain access
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`to the information stored in program memory, it would likely be raw data
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`without any meaningful context.
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`Based on the disclosure of the ’657 patent, the “database” of the ’657 patent
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`would include both persistence as well as a way to interact with the data such as a
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`PATENT NO. 8,694,657
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`DBMS. This is because the claimed database is responsible for storing security
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`information such as “tokens,” for other user programs to access. One of
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`ordinary skill in the art would have expected that this type of security feature
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`would persist in a location other than in program memory so that other user
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`programs could access the information. The ’657 Patent describes the tokens as
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`existing in hierarchies of tokens. Hierarchies are typical of database storage
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`organization, and natural schema when storing and managing access to diverse
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`information.
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`In light of the foregoing, for the purpose of this Petition only, a database
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`should be construed as “a collection of logically related data which is stored with
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`persistence and associated with tools for interacting with the data such as a
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`DBMS.”
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`C. CENSOR
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`The specification of the ’657 Patent states that “[c]ensorship, which broadly
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`encompasses control of what is said in a group, is also arbitrated by means of the
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`tokens.” Ex. 1001 at 8:36-37. In order to control what is said in a group, it is
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`necessary to first know what is said (or proposed to be said). This is also in accord
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`with the plain and ordinary meaning of that term. For example, the ordinary
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`English meaning in the mid-1990’s of censorship was “examine in order to
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`PATENT NO. 8,694,657
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`suppress or delete anything considered objectionable.” Ex. 2002. Microsoft
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`published, albeit in 1997, a definition of “Censorship” that is consistent the
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`understanding of one of ordinary skill in the art in the mid-1990’s: “[t]he action
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`of preventing material that a party considers objectionable from circulating within
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`a system of communication over which that party has some power.” Ex. 2003.
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`The Microsoft Dictionary further states: “[a] moderated newsgroup or mailing
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`list may be considered to be ‘censored’ because the moderator will usually
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`delete highly controversial and obscene content or content that is on a different
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`topic from that followed by a newsgroup.” Ex. 2003; Ex. 2006 at ¶ 33.
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`Accordingly, for the purpose of this proceeding only, Patent Owner proposes
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`that censorship be construed as “examine in order to suppress or delete anything
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`considered objectionable.”
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`V. THE BROWN REFERENCE DOES NOT TEACH OR DISCLOSE
`CERTAIN LIMITATIONS
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`Obviousness is a question of law premised on underlying facts. Kinetic
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`Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1356–57 (Fed. Cir. 2012).
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`Those predicated facts include: the scope and content of the prior art; the
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`differences between the prior art and the claims; and the level of ordinary skill in
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`the pertinent art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
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`question is not whether the differences themselves would have been obvious, but
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`whether the claimed invention as a whole would have been obvious. Stratoflex,
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`PATENT NO. 8,694,657
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`Inc. v. Aeroquip Corp., 713 F.2d 1530, 1537 (Fed. Cir. 1983).
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`In arriving at an obviousness determination, the Board must sufficiently
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`explain and support the conclusions that the prior-art references disclose all the
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`elements recited in the challenged claims and a relevant skilled artisan not only
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`could have made but would have been motivated to combine all the prior-art
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`references in the way the patent claims and reasonably expected success. Pers.
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`Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017). That is, even
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`if all the claim elements are found across a number of references, an obviousness
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`determination must consider whether a person of ordinary skill in the art would
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`have been motivation to combine those references. Intelligent Bio-Sys., Inc. v.
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`Illumina Cambridge Ltd., 821 F.3d 1359, 1368 (Fed. Cir. 2016); Los Angeles
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`Biomedical Research Inst. at Harbor-UCLA Med. Ctr. v. Eli Lilly & Co., 849 F.3d
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`1049, 1067 (Fed. Cir. 2017) (vacating and remanding an obviousness
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`determination, in part, because the Board did not make factual finding as to
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`whether there was an apparent reason to combine all three prior art references to
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`achieve the claimed invention and whether a person of skill in the art would have
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`had a reasonable expectation of success from such a combination.) This
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`combinability determination, as supported by an articulated motivation to combine,
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`requires a plausible rationale as to why those prior art references would have
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`worked together.” Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed.
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`Cir. 2013). Absent some articulated rationale, a “common sense” finding is no
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`IPR2016-01155
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`PATENT NO. 8,694,657
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