Atty Docket No. FABO-041/01US
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`IPR2016-01155
`IPR2017-00622
`Petitioner’s Reply Brief
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`(309101-2103)
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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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`FACEBOOK, INC.
`Petitioner
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`v.
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`WINDY CITY INNOVATIONS, LLC
`Patent Owner
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`Case No. IPR2016-01155
`Case No. IPR2017-00622
`Patent No. 8,694,657
`__________________
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`PETITIONER’S REPLY BRIEF
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`Table of Contents
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`I.
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`II.
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`Page
`CLAIM CONSTRUCTION ........................................................................... 1
`A.
`“database” ............................................................................................. 1
`Patent Owner’s Construction Lacks Intrinsic Support .............. 2
`1.
`2.
`Patent Owner’s Extrinsic Evidence Fails ................................... 4
` “censor” ............................................................................................... 5
`B.
`C.
`Other Claim Terms ............................................................................... 6
`THE CHALLENGED CLAIMS ARE INVALID FOR
`OBVIOUSNESS ............................................................................................. 7
`A.
`Every Reference Supporting the Instituted Grounds Is Prior Art ........ 7
`1.
`The Sociable Web Exhibit Is Prior Art ...................................... 7
`All Challenged Claim Limitations Are Disclosed in the Prior
`Art ......................................................................................................... 8
`“database which serves as a repository of tokens for other
`1.
`programs to access” ................................................................... 9
`“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” ..................................... 12
`A Clear Motivation to Combine the Prior Art Existed ...................... 17
`Neither Petitioner Nor Its Expert Applied Hindsight .............. 17
`1.
`2.
`A Person of Ordinary Skill Would Have Been Motivated
`To Use Prior Art Internet Connectivity ................................... 17
`A Person of Ordinary Skill Would Have Been Motivated
`to Combine the Teachings of Brown with Social Web ........... 21
`The Lack of Unexpected Results Underscores the Obviousness
`of the Claims ...................................................................................... 24
`III. CONCLUSION ............................................................................................. 25
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`D.
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`B.
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`C.
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`2.
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`3.
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`-i-
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`Atty Docket No. FABO-041/01US
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`IPR2016-01155
`IPR2017-00622
`Petitioner’s Reply Brief
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Apple, Inc. v. Ameranth, Inc.,
`CBM2015-00080, ............................................................................................... 17
`Biogen, Inc. v. Berlex Labs., Inc.,
`318 F.3d 1132 (Fed. Cir. 2003) ............................................................................ 5
`Clare v. Chrysler Group LLC,
`819 F.3d 1323 (Fed. Cir. 2016) ...................................................................... 4, 12
`Egyptian Goddess, Inc. v. Swisa, Inc.,
`543 F.3d 665 (Fed. Cir. 2008) (en banc) .............................................................. 3
`Finjan Inc. v. Fireeye, Inc.,
`IPR2014-00492, (P.T.A.B. July 10, 2015) ................................................... 20, 23
`
`In re Google Litigation
`2011 WL 8603085 (N.D. Cal. 2011) .................................................................... 4
`KSR Int’l, Co. v Teleflex, Inc.,
`550 U.S. 398 (2007) ...................................................................................... 19, 25
`Medichem, S.A. v. Rolabo, S.L.,
`437 F.3d 1157 (Fed. Cir. 2006) .................................................................... 20, 23
`Moleculon Research Corp. v. CBS, Inc.,
`793 F.2d 1261 (Fed. Cir. 1986) ........................................................................ 3, 4
`SRI Int’l, Inc. v. Internet Sec. Sys., Inc.,
`511 F.3d 1186 (Fed. Cir. 2008) ............................................................................ 7
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) .............................................................................. 1
`Statutes
`35 U.S.C. § 311(b) ..................................................................................................... 7
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`-ii-
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`Atty Docket No. FABO-041/01US
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`IPR2016-01155
`IPR2017-00622
`Petitioner’s Reply Brief
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`(309101-2103)
`Trial was instituted in this matter as to several claims of the ʼ657 patent.
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`(See Paper 12 at 36-37.) Pursuant to the Board’s granting of Petitioner Facebook’s
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`joinder motion, and dismissal of Petitioner Microsoft, only claims 189 and 465
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`remain at issue in this proceeding. (Paper 32 at 15-16.) Petitioner respectfully
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`submits this Reply in support of Inter Partes Review of the ’657 patent and
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`addressing Patent Owner’s Response (Paper 27 (“Response”)). This Reply is
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`supported by the Reply Declaration of Christopher Schmandt (Ex. 1100).
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`I.
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`CLAIM CONSTRUCTION
`A.
`“database”
`Patent Owner proposes to construe “database” to mean “a collection of
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`logically related data which is stored with persistence and associated with tools for
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`interacting with the data such as a DBMS.” (Response at 11-15.) The Board
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`should reject this proposal.
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`First, Patent Owner never argues that construction of this claim term affects
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`any disputed issue in the case. Though it disputes that the prior art discloses a
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`database acting as a repository of tokens for “other programs” to access (Response
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`at 20-22), those arguments do not turn on the construction of “database.” Thus
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`this term need not be construed in this case. See Vivid Techs., Inc. v. Am. Sci. &
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`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also e.g. PGR2015-00022,
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`Paper 8 at 18 (declining to perform construction requested by Patent Owner
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`1
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`IPR2016-01155
`IPR2017-00622
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`because no arguments were raised concerning disclosure of the limitation in the
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`prior art).
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`If the term is to be construed the Board should construe “database” as “a
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`collection of logically related data.” (See Ex. 1100, ¶6-10.) As the Board
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`observed in a related proceeding, the shared patent specification uses the term
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`“database” consistent with this broad ordinary meaning. (IPR2016-01158, Paper 7
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`at 9-10; Ex. 1100, ¶8.)
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`1.
`Patent Owner’s Construction Lacks Intrinsic Support
`The written description contains only a few sentences that mention
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`“database,” and none of those sentences require that the database be implemented
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`in any particular way. (ʼ657, 7:49-59.) The specification says nothing about data
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`in the database being “stored with persistence,” or the database having “associated
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`tools for interacting with the data such as a DBMS,” as the patent owner proposes.
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`The terms “DBMS” or “database management system” appear nowhere in the
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`written description or claims. There is no support in the intrinsic record for the
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`patent owner’s proposed construction. (Ex. 1100 ¶7.)
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`The only intrinsic evidence the patent owner can muster is its own self-
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`serving arguments submitted to the PTO on an IDS filed on January 14, 2017
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`during prosecution of a related application (14/246,965). (Response at 12.) These
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`statements carry no weight in these proceedings for at least two reasons.
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`2
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`IPR2016-01155
`IPR2017-00622
`Petitioner’s Reply Brief
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`(309101-2103)
`First, the Federal Circuit has made clear that self-serving statements during
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`the pendency of another proceeding, such as those made in the IDS, are entitled to
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`no weight. The IDS was not submitted in response to any action by the PTO, and
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`was filed by the patent owner after IPR was instituted and after the PTAB
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`expressly rejected the patent owner’s narrow construction of “database.” The
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`statements in the IDS conveniently track the construction the patent owner seeks
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`here. And although the IDS claims to have been submitted to furnish additional
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`prior art to the PTO, its gratuitous statements about “database” do not mention or
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`discuss any specific reference. (Ex. 2010, at 2.) The IDS was obviously submitted
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`to place the patent owner’s “database” arguments into the file of a related
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`application, in the hope of bolstering those arguments here.
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`The Federal Circuit confronted a nearly identical situation in Moleculon
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`Research Corp. v. CBS, Inc., in which a patent owner submitted self-serving
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`statements to the PTO during the pendency of litigation involving the patent. 793
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`F.2d 1261 (Fed. Cir. 1986), disapproved on another point, Egyptian Goddess, Inc.
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`v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc). In affording no weight to
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`the patent owner’s statements, the Federal Circuit cautioned that statements made
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`to the PTO during litigation “might very well contain merely self-serving
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`statements which likely would be accorded no more weight than testimony of an
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`interested witness or argument of counsel. Issues of evidentiary weight are
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`resolved on the circumstances of each case.” Id. at 1270 (underlining added). In
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`this case, the patent owner’s statements were an obvious attempt to bolster its
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`narrow definition of “database” in this proceeding, and as such are meritless.
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`Second, Federal Circuit law is clear that statements during the prosecution of
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`a patent cannot expand the disclosures of its specification. See, e.g. Clare v.
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`Chrysler Group LLC, 819 F.3d 1323, 1332 (Fed. Cir. 2016) (quoting Biogen, Inc.
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`v. Berlex Labs., Inc., 318 F.3d 1132, 1140 (Fed. Cir. 2003) (“Representations
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`during prosecution cannot enlarge the content of the specification…”)); see also In
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`re Google Litig., 2011 WL 8603085, at *4 (N.D. Cal. 2011) (noting that
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`“prosecution is not a platform for a patentee to ‘enlarge, diminish, or vary the
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`limitations in the claims.’”) (citation omitted). As noted above, the specification
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`here does not say anything about the database storing the data with persistence or
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`including a DBMS or other tools for interacting with the data. The patent owner’s
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`self-serving arguments to the PTO cannot change the content of the specification
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`and should be afforded no weight.
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`2.
`Patent Owner’s Extrinsic Evidence Fails
`Having no legitimate intrinsic evidence to support its position, the patent
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`owner relies primarily on extrinsic evidence in the form of testimony from Dr.
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`Carbonell. The key to Dr. Carbonell’s opinion about the meaning of “database” is
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`his assumption that “[t]wo hallmarks of a database are (1) persistence of the data,
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`IPR2016-01155
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`Petitioner’s Reply Brief
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`(309101-2103)
`and (2) interactivity with the data via a database management system (DBMS).”
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`(Ex. 2006, ¶26.) Dr. Carbonell cites no technical treatises or other materials to
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`support his “two hallmarks” point.
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`Dr. Carbonell’s opinions overlook the fact that a “database” and a “database
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`management system” (DBMS) are two different things. The term “database”
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`refers to the actual collection of data whereas the DMBS refers to software tools
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`for managing the data. (Ex. 1100 ¶8 (citing Ex. 1102).) A DBMS is thus not
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`properly part of the definition of a “database.” (Id.)
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`The other flaw with Dr. Carbonell’s opinion is that a “database,” i.e., a
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`collection of logically related data under the Board’s definition, does not require a
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`DBMS. (Ex. 1100 ¶9.) It was well-known to persons of ordinary skill in the art
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`that software programs could store and retrieve data using their own internal logic
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`and programming, without relying on a DBMS. Contrary to Dr. Carbonell’s
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`suggestions otherwise, the extrinsic encyclopedia he cites does not describe DBMS
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`as a “criteria of a database.” (Id.)
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`B.
`“censor”
`In the Institution Decision, the Board construed “censorship” in accordance
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`with the specification as “control of what is said in a group.” (DI at 12-15.) As the
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`Board correctly noted, the term as used in the claims covers actions taken with
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`respect to a user, not solely with respect to regulation of the content of data itself.
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`Petitioner’s Reply Brief
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`(See id.) Like “database” above, construction of this term is unnecessary in this
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`case, because Patent Owner does not dispute that the prior art discloses the
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`“censor” limitations. (Response at 2-3.)
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`If considered, Patent Owner’s new proposed construction should be rejected
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`because, like its prior proposal that the Board rejected, it contradicts the intrinsic
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`evidence. (DI at 13-14; Ex. 1100, ¶¶11-12.) Patent Owner’s proposed
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`construction attempts to narrow the claims by requiring the new step of
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`“examin[ing] in order to suppress or delete anything considered objectionable.”
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`This construction lacks any support in the specification or claims. As the Board
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`already noted, Patent Owner’s selective citations to dictionaries cannot rewrite the
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`claim language chosen by the inventor. (DI at 14.) The Board’s previous
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`construction is directly supported by the express teachings of the specification,
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`which states that “[c]ensorship … broadly encompasses control of what is said in a
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`group” and that “[c]ensorship can control of [sic] access to system 1 by identity of
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`the user, which is associated with the user’s tokens.” (ʼ657 at 8:10-19.)
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`C. Other Claim Terms
`Patent Owner does not dispute the Board’s previous construction of the term
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`“token” as meaning “a piece of information associated with user identity.” (See
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`Response at 11.) As explained below, applying this construction, the prior art
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`discloses the claimed tokens and other claim elements referencing the tokens. (Ex.
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`6
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`1100, ¶ 13.)
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`IPR2016-01155
`IPR2017-00622
`Petitioner’s Reply Brief
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`II. THE CHALLENGED CLAIMS ARE INVALID FOR OBVIOUSNESS
`A. Every Reference Supporting the Instituted Grounds Is Prior Art
`Patent Owner challenges the status of “Sociable Web” as a prior art printed
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`publication. (Response at 8-9.) Patent Owner’s challenge lacks merit because
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`Sociable Web was publicly accessible to those skilled in the art, and thus qualifies
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`as a prior art printed publication under 35 U.S.C. § 311(b). SRI Int’l, Inc. v.
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`Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (“A given reference
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`is ‘publicly accessible’ upon a satisfactory showing that such document has been
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`disseminated or otherwise made available to the extent that persons interested and
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`ordinarily skilled in the subject matter or art exercising reasonable diligence, can
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`locate it.”).
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`1.
`The Sociable Web Exhibit Is Prior Art
`In the Institution Decision, the Board accepted Dr. Donath’s sworn
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`statements as sufficient to support the public accessibility of Sociable Web, absent
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`evidence to the contrary. (DI at 21.) Patent Owner’s Response gives no reason to
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`disturb this correct conclusion.
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`Instead, Patent Owner simply rehashes its previously rejected reliance on the
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`1998 Web Archive date, ignoring Dr. Donath’s unrebutted testimony that the paper
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`was publicly available no later than 1994. Patent Owner’s focus on testimony that
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`7
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`IPR2016-01155
`IPR2017-00622
`Petitioner’s Reply Brief
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`Dr. Donath’s website intermittently may not have correctly displayed “images” is
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`irrelevant to the disclosures of Sociable Web as a printed publication (Response at
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`8.) As explained in the Petition, Dr. Donath presented the disclosures of the paper
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`at a live conference in 1994, distributed copies of the paper at that conference, and
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`made the paper available on the conference’s website. (Pet. at 17-18; Ex. 1031 at
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`¶¶6-7, 12.) Dr. Donath’s testimony on all these points was not undermined during
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`cross-examination, and Patent Owner’s Response fails to address the corroborating
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`evidence of conference proceedings submitted with the Petition. (See Pet. at 18,
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`Ex. 1015 at ix.)
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`Finally, Patent Owner’s challenge based on Dr. Donath’s compensation for
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`the time she spent working in connection with the case—which is a routine and
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`commonplace arrangement—does not undermine the probative value of her sworn,
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`unrebutted testimony. Dr. Donath testified that she was compensated a small sum
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`in connection with her work in preparing her declaration, which included gathering
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`emails from 1994 to corroborate the factual statements made in her declaration.
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`(Ex. 2009 at 10:16-12:9; 18:22-20:12.) Dr. Donath’s testimony is more than
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`sufficient to show public accessibility by a preponderance of the evidence.
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`B. All Challenged Claim Limitations Are Disclosed in the Prior Art
`It is undisputed that all limitations of the challenged claims are disclosed by
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`the instituted prior art, save two: 1) the database serving as a repository of tokens
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`8
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`IPR2016-01155
`IPR2017-00622
`Petitioner’s Reply Brief
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`for other programs to access; and 2) determining whether the first user identity and
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`the second user identity are able to form a group to send and to receive real-time
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`communications. (See Response at 20-22, 25-27.) As discussed below, these
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`limitations are taught in the prior art, contrary to Patent Owner’s arguments.
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`1.
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`“database which serves as a repository of tokens for other
`programs to access”
`The testimony of Mr. Schmandt cited by Patent Owner in regards to this
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`claim limitation has no bearing on this case, as that line of questioning was in the
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`context of the ʼ245 patent where Major BBS is at issue and Brown is not part of the
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`case. (See Response at 21; see also Ex. 2007 at 73:17-74:19.) Mr. Schmandt was
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`not asked about the “other programs” disclosures of Brown. (Ex. 1100, ¶ 19.) As
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`a result, Patent Owner’s Response substantively ignores the arguments presented in
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`the Petition and Mr. Schmandt’s written testimony.
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`In particular, the Petition and supporting testimony explained in detail
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`Brown’s disclosures of “other programs.” (Ex. 1100, ¶ 20.) For example, the
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`Petition explained that “various application servers and gateways generate user-
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`specific access rights queries [to the access rights database] in response to user
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`requests.” (See Pet. at 20-21; citing Ex. 1012 at 3:27-30; 3:48-62; 20:8-27; 24:1-
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`11; 25:23-27; 25:64-26:2.) And as Mr. Schmandt explained in his opening
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`declaration, the “various service applications” of Brown are a disclosure of the
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`“other programs” of this claim limitation because they check the tokens in the
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`access rights database when a user attempts to use a service of the system. (See
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`Ex. 1003 at ¶ 186, citing Ex. 1012 at 17:25-34; 20:8-27; 22:44-48; 24:1-11; 27:24-
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`33; see also id. at ¶¶ 179-185.) Mr. Schmandt also explained that “cached access
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`rights lists are stored on applications servers and/or gateway computers for use by
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`service applications (“other programs.”) (See Ex. 1003 at ¶ 186, citing Ex. 2012 at
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`24:13-18; 25:48-51; 28:4-15; 27:53-58; 28:29-45.) Patent Owner’s Response and
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`Dr. Carbonell’s declaration do not dispute the above disclosures of Brown and
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`testimony of Mr. Schmandt. (Ex. 1100, ¶ 20.)
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`Patent Owner’s argument that telnet client software cannot be “other
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`programs” is an attempt to add new limitations to the claim that hinges on the term
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`“access.” As noted above, Patent Owner accepted the Board’s construction of
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`token as “a piece of information associated with user identity.” Under this
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`undisputed construction, as Mr. Schmandt explained, the telnet client programs do
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`access the tokens. Telnet software communicates “strings” of information to the
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`Major BBS controller computer, which queries tokens stored the user account
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`database in order to determine appropriate action. Because each telnet client
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`program receives information associated with a user identity (i.e., a token) in
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`response to a query, it has “access” to the tokens within the meaning of the
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`challenged claims. (Ex. 2007, 84:14-86:20; Ex. 1100, ¶¶ 20-21, 24-25.)
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`Patent Owner’s argument that telnet client software cannot be the “other
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`programs” of the claims also contradicts the specification of the ’657 patent, which
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`makes extensive use of telnet client programs as a preferred embodiment. (Ex.
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`1100, ¶¶21-23.) For example, the patent figures provide several examples of the
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`use of telnet client software running on a participator computer connected to a
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`controller computer:
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`(ʼ657 at Fig. 28 (highlighting added), Figs. 29-34 (depicting additional telnet
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`implementations). Each figure is an illustration of “the present invention.” (Id.,
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`3:39-51.) The specification further describes these telnet implementations in
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`connection with channel, group, and private message functions. (ʼ657, 10:54-
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`11:31.)
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`2.
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`“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”
`Patent Owner’s position boils down to a claim interpretation argument,
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`namely that this limitation “require[s] a determination where information about
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`both users is considered in the determination step.” (See Response at 25-27.) But
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`nothing in the claims or specification requires that the “determining” step must
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`perform a simultaneous evaluation of multiple user identities, as Patent Owner
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`erroneously suggests. On the contrary, the ’657 patent specification describes that
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`each user’s group access permissions are controlled on a group basis: the system
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`determines whether a particular user can join a particular group, regardless of the
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`identities of any other users who might be currently present in that group. (See Ex.
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`ʼ657 at 7:60-8:4 (describing that tokens are used “to control a user’s group priority
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`and moderation privileges, as well as controlling who joins the group, who leaves
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`the group, and the visibility of members in the group”), 8:14-16 (“By checking the
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`tokens, a user’s access can be controlled per group . . .”), 8:57-9:23 (describing that
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`a first user creates and enters a group, and later a second user may enter that group
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`if permitted), Fig. 3 and 6:10-24 (describing “member list of group” identifying
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`permitted members, “stored per channel attributes under each member,” and step
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`of “confirmation or denial of access”).) The specification also states that in the
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`context of “controlling communications,” a “group” is “in essence a collection of
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`user identities.” (Id. at 8:20-21.)
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`IPR2016-01155
`IPR2017-00622
`Petitioner’s Reply Brief
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`The disclosed system in the specification thus determines whether multiple
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`user identities are able to form a group, as recited in the claims at issue, by
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`determining whether each user is permitted to join the group (collection of user
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`identities) that will include that member. (Ex. 1100, ¶ 26.) There is no basis to
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`interpret the claim language to exclude this disclosed embodiment. Patent
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`Owner’s expert, Dr. Carbonell, likewise agreed at deposition that this claim
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`limitation does not require anything more than a determination that “both users
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`have the appropriate rights to join the same chat room.” (See Ex. 1101 at 126:16-
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`127:13; Ex. 1100, ¶ 26.)
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`Patent Owner does not dispute that Brown extensively discloses this claim
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`limitation under the plain meaning disclosed in the specification and endorsed by
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`Patent Owner’s expert at deposition. For example, as detailed in the Petition,
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`Brown discloses creation of chat rooms using Sysop tools wherein new chat rooms
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`are defined based on tokens specifying “user groups” that will be given access to a
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`particular chat room area. (See Pet. at 25-26; Ex. 1003, ¶¶ 211-212; Ex. 1100, ¶¶
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`27-28.)
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`Brown also discloses this limitation even under Patent Owner’s erroneous
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`narrower claim interpretation. For example, Brown teaches the creation of a
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`“family” group in which only designated members of a family have appropriate
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`Atty Docket No. FABO-041/01US
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`IPR2016-01155
`IPR2017-00622
`Petitioner’s Reply Brief
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`(309101-2103)
`permission to join the group that was created for them. (See Ex. 1012, 15:27-37.)
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`Thus, the system determines whether two or more specified user identities are the
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`designated members of the family who are able to form the “family” group, for
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`example by joining a chat room created for those designated members. (Ex. 1100,
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`¶ 27.)
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`Brown discloses this limitation (both under its plain meaning and under
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`Patent Owner’s erroneous interpretation) through its disclosure that groups may be
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`formed subsequent to a determination by the system that users have appropriate
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`access rights to join specific “BBS objects” within Brown’s system, such as chat
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`rooms, BBS folders, and BBS messages. (Ex. 1100, ¶ 29.) As Brown explains:
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`“As with Chat objects, the access rights of users with respect to
`different BBS objects (e.g., BBS folders and messages) may vary
`from user to user. For example, certain BBS folders may be
`designated as "public," meaning that they can generally be accessed
`by all users, while other BBS folders may be designated as "private,"
`meaning that access to such folders is restricted to some subgroup of
`users. A private folder may be used, for example, to permit private
`personal correspondence between a user-specified group of family and
`friends.”
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`(See Ex. 1012 at 10:36-45; see also Pet. at 26; Ex. 1003 at ¶217.) In “private”
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`correspondence, for example, the system will determine whether a first user
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`identity and a second user identity are among the user-specified group of family
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`14
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`Atty Docket No. FABO-041/01US
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`IPR2016-01155
`IPR2017-00622
`Petitioner’s Reply Brief
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`(309101-2103)
`and friends able to form the group participating in the private personal
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`correspondence—for example, by permitting the private communication between
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`two specific users who thereby form a two-person group communication.
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`Although Brown discusses this particular example in the context of a “private
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`folder,” Brown makes clear that the same techniques apply to real-time Chat
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`objects. (Ex. 1012 at 10:36-45, 31:1-8 (explicitly applying this teaching of “family
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`and friends” type service areas to the Chat context).)
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`Brown further provides an express disclosure of the stepwise method
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`process that the system uses to implement these controls, providing user access to
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`specific nodes (which include real-time Chat) only after checking access rights.
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`(See Ex. 1012 at 15:5-26, 15:66-16:11, 25:55-26:62 and Fig. 8; see also id. at
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`12:65-13:13 (describing chat room nodes).)
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`Brown also discloses setting “user-specific” permissions with a token table
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`to create a chat room that can only be formed from the specific user identities who
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`are intended to have permission to join that chat room, where the group may be
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`defined with “one user-specific row” for each permitted user identity. (See id. at
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`31:5-21.) Indeed, Brown links this discussion specifically to its above-cited
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`disclosures of “family and friends type service areas.” (See id. at 31:1-5.) Again,
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`the system thereby determines whether a first user identity and second user identity
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`are able to form the group, as claimed. (Ex. 1100, ¶ 28.) Once afforded access to
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`15
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`Atty Docket No. FABO-041/01US
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`
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`(309101-2103)
`the chat room,
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`the permitted users may
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`IPR2016-01155
`IPR2017-00622
`Petitioner’s Reply Brief
`then participate
`in real
`time
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`communications, as the claims recite. (See id. at 9:45-47 (discussing “Chat rooms”
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`as a “real time conversation” service); see also Ex. 1101 at 123:4-16; Pet. at 27.)
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`Indeed, Patent Owner concedes that “joining a chat room may satisfy the
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`determination as to whether two users can ‘receive real-time communications.’”
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`(See Response at 27.) To the extent Patent Owner contends that the steps of the
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`challenged method claims must be performed in the order recited in the claims,
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`doing so also would have been obvious in light of these extensive disclosures in
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`Brown. (See Ex. 1100, ¶ 30.)
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`Petitioner notes that the initial portion of Patent Owner’s Response
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`pertaining to this claim limitation is jumbled and incomprehensible. (See
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`Response at 25-26.) Petitioner has done its best to discern Patent Owner’s
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`positions from this garbled text and respond accordingly in this Reply. However,
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`to the extent that Patent Owner later attempts to offer new argument regarding this
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`16
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`Atty Docket No. FABO-041/01US
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`IPR2016-01155
`IPR2017-00622
`Petitioner’s Reply Brief
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`(309101-2103)
`claim limitation, Petitioner respectfully submits that any such argument is waived.1
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`
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`C. A Clear Motivation to Combine the Prior Art Existed
`1.
`Neither Petitioner Nor Its Expert Applied Hindsight
`Patent Owner’s complaint that Petitioner and Mr. Schmandt applied
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`hindsight in their analysis of the claims is unfounded. (Response at 19-20.) Patent
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`Owner cites an extraneous snippet of deposition testimony in which Mr. Schmandt,
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`who has been a researcher of computer science at MIT for nearly four decades,
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`expresses his opinion that the claims lack inventiveness. But Mr. Schmandt’s
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`personal belief as to whether the claims are inventive does not evidence any
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`improper hindsight in the technical obviousness analysis that he conducted, and
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`Patent Owner does not identify any error in his methodology or opinions in
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`analyzing the claims and prior art. (Ex. 1100, ¶ 31.)
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`2.
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`A Person of Ordinary Skill Would Have Been Motivated To
`Use Prior Art Internet Connectivity
`As an initial matter, Patent Owner does not meaningfully contest that the
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`1 See Paper 13 at 3 (“Patent Owner is cautioned that any arguments for
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`patentability not raised in the response will be deemed waived.”); see also Apple,
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`Inc. v. Ameranth, Inc., CBM2015-00080, Paper 44 at 7 (“Arguments that are not
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`developed and presented in the Patent Owner Response, itself, are not entitled to
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`consideration.”)
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`17
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`Atty Docket No. FABO-041/01US
`
`IPR2016-01155
`IPR2017-00622
`Petitioner’s Reply Brief
`
`(309101-2103)
`combination of Brown and Sociable Web discloses the Internet network limitations
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`of the challenged claims. As Patent Owner concedes, the Board “instituted based
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`on the teaching in Brown of a ‘WAN’ and IP communications.” (See Response at
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`23, citing DI at 25.) Contrary to Patent Owner’s suggestion (Response at 22-23),
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`Brown’s Internet Protocol-based WAN handles communications between users
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`and the servers, as shown in Brown Figure 2. (Ex. 1012, Fig. 2, 6:62-7:6; Pet. at
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`19; Ex. 1100 ¶ 32-34.) Patent Owner directs its entire challenge to the issue of
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`motivation to combine, and tacitly accepts that Brown does indeed disclose the
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`Internet network limitations of the claims. Although the Institution Decision was
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`based on the record as developed up to that point, by failing to substantively
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`address this issue in its Response, Patent Owner has given the Board no reason to
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`depart from its prior correct conclusion that Brown discloses the Internet network
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`limitations.
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`Patent Owner ignores the express suggestions of the prior art and argues
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`against motivation to combine. This argument rests on a single article by a lone
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`author, Bob Metcalfe, whose “prediction” that the Internet would collapse was
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`publicly retracted almost immediately. Indeed, the Metcalfe prediction was so
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`spectacularly incorrect that Metcalfe pulped a copy of his erroneous column and
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`literally ate his wo