IPR2016-01155
`
`PATENT NO. 8,694,657
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`MICROSOFT CORPORATION
`Petitioner
`v.
`
`WINDY CITY INNOVATIONS LLC
`Patent Owner
`
`
`
`Patent No. 8,694,657
`Issue Date: April 8, 2014
`Title: REAL TIME COMMUNICATIONS SYSTEM
`__________________________________________________________________
`
`WINDY CITY INNOVATIONS LLC’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`8,694,657
`
`Case No. IPR2016-01155
`________________________________________________________________
`
`
`
`
`
`

`
`
`I.
`II.
`
`III.
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`INTRODUCTION ........................................................................................... 1
`THE PETITION SHOULD NOT BE INSTITUTED BECAUSE
`PETITIONER'S CLAIM CONSTRUCTIONS ARE INCORRECT IN
`LIGHT OF THE SPECIFICATION, CLAIMS, AND THE LAW ................. 4
`A.
`Petitioner’s Proposed Construction of “Token” Is Incorrect and
`Reads Out of the Database Requirement .............................................. 4
`
`B.
`
`Petitioner’s Proposed Construction of “Multimedia” Is
`Incorrect and Relies on an Overly Narrow Reading of a Single
`Sentence of the Specification and Ignores the Context of the
`Specification, the File History and the Extrinsic Evidence .................. 5
`
`C.
`
`Petitioner Does Not Propose a Construction for the Term
`“Censor” and Ultimately Reads the Term Out of the Claims ............... 7
`PETITIONER HAS NOT DEMONSTRATED A REASONBLE
`LIKELIHOOD OF SUCCESS FOR THE SINGLE GROUND
`ADVANCED IN THE PETITION AND THE PETITION SHOULD
`BE DENIED. ................................................................................................... 9
`A.
`Requirements for Showing Obviousness Under 35 U.S.C. §
`103. ........................................................................................................ 9
`
`B.
`
`Claim 1 is Not Obvious Over Brown in View of the Sociable
`Web ...................................................................................................... 12
`
`1.
`
`2.
`
`3.
`
`Database Which Serves as a Repository of Tokens for
`Other Programs to Access, Thereby Affording
`Information to Each of a Plurality of Participator
`Computers ................................................................................. 16
`
`Affording Some of the Information . . . Via the Internet
`Network ..................................................................................... 18
`
`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 ............................ 21
`
`
`
`i
`
`

`
`4.
`
`
`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`
`
`
`If the First User Identity is Censored from the Receiving
`of the Data, Not Allowing the Data That is Censored to
`be Presented from the Second Participator Computer to
`the Output Device ..................................................................... 22
`
`C.
`
`Claims 189, 353, 465, 597, 606, 616, 625, 633, 341, 649-663,
`and 666-671 are Not Unpatentable...................................................... 23
`
`D. Dependent Claims 2, 18, 27, 35, 43, 51, 65, 79, 93, 100, 108,
`114, 126, 138, 150, 156, 168, 170, 172, 176, 178, 180, 182-188,
`190, 202, 208, 214, 220, 226, 238, 250, 262, 268, 274, 280,
`292, 304, 316, 322, 328, 334, 336, 340, 342, 344, 346, 348,
`350, 352, 354, 362, 366, 370, 374, 378, 386, 394, 402, 406,
`410, 414, 422, 430, 438, 442, 450, 452, 454, 456, 458, 460,
`462, 464, 466, 476, 481, 486, 491, 496, 505, 515, 525, 530,
`535, 545, 555, 565, 570, 580, 582, 584, 586, 588, 590, 592,
`594, 596, 598, 607, 615, 617, 619, 621, 622, 624, 626, 628,
`630, 632, 634, 636, 638, 640, 642, 644, 646, 648, 664, and 665,
`are Not Unpatentable ........................................................................... 23
`
`E.
`
`Claims 597, 606, 616, 625, 633, and 641 are Not Obvious Over
`Brown in View of Sociable Web Because They Require a
`“Pointer-Triggered Message On Demand” ......................................... 25
`IV. CONCLUSION .............................................................................................. 26
`
`ii
`
`
`
`
`
`

`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`Apple, Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00355 (PTAB, June 26, 2015) ............................................................ 10
`
`C.B. Distributors, Inc. v. Fontem Holdings 1 B.V.,
`IPR2013-00387 (PTAB, Dec. 24, 2014) ............................................................ 11
`
`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009) .......................................................................... 24
`
`Cisco Sys., Inc., v. C-Cation Techs., LLC,
`IPR2014-00454 (PTAB, Aug. 29, 2014) ............................................................ 11
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ...................................................................................... 3, 10, 11
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 10
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................ 10, 11, 20
`
`Plant Science, Inc. v. The Andersons, Inc.,
`IPR2014-00939 (PTAB, Dec. 17, 2014) ............................................................ 11
`
`Whole Space Indus. v. Zipshade Indus.,
`IPR2015-00488 (PTAB, July 24, 2015) ............................................................. 10
`
`Federal Statutes
`
`35 U.S.C. § 102 .......................................................................................................... 2
`
`35 U.S.C. § 103 .......................................................................................................... 9
`
`35 U.S.C. § 314(a) ..................................................................................................... 3
`
`
`
`iii
`
`

`
`Other Authorities
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`37 C.F.R. 1.75(c) ...................................................................................................... 24
`
`37 C.F.R. § 42.6(a)(3) .......................................................................................... 3, 11
`
`37 C.F.R. § 42.104(b) ................................................................................................ 2
`
`iv
`
`
`
`
`
`

`
`I.
`
`INTRODUCTION
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`On June 3, 2016, Microsoft Corporation (“Petitioner”) submitted a Petition
`
`(the “Petition”) to institute inter partes review (“IPR”) of U.S. Patent No.
`
`8,694,657 (Ex. 1001, “the ’657 Patent”), challenging independent claims 1, 189,
`
`353, 465, 597, 606, 616, 625, 633, 341, 649-663, and 666-671, and dependent
`
`claims 2, 18, 27, 35, 43, 51, 65, 79, 93, 100, 108, 114, 126, 138, 150, 156, 168,
`
`170, 172, 176, 178, 180, 182-188, 190, 202, 208, 214, 220, 226, 238, 250, 262,
`
`268, 274, 280, 292, 304, 316, 322, 328, 334, 336, 340, 342, 344, 346, 348, 350,
`
`352, 354, 362, 366, 370, 374, 378, 386, 394, 402, 406, 410, 414, 422, 430, 438,
`
`442, 450, 452, 454, 456, 458, 460, 462, 464, 466, 476, 481, 486, 491, 496, 505,
`
`515, 525, 530, 535, 545, 555, 565, 570, 580, 582, 584, 586, 588, 590, 592, 594,
`
`596, 598, 607, 615, 617, 619, 621, 622, 624, 626, 628, 630, 632, 634, 636, 638,
`
`640, 642, 644, 646, 648, 664, and 665 (“the Challenged Claims”). Petitioner on
`
`the same day also filed six additional petitions alleging unpatentability of related
`
`(IPR2016-01137, -01138, -01141, -01146, -01147, and -01067).
`
`The Petition should be denied for myriad reasons. First, the Petition should
`
`be denied because there is not a reasonable likelihood that Petitioner will succeed
`
`on any of its allegations of unpatentability, all of which rely on the U.S. Patent
`
`No. 5,941,947 to Brown (“Brown”) as a primary reference for obviousness.
`
`Brown discloses a different type of system from those of the claims, specifically
`1
`
`
`
`

`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`
`
`
`Brown discloses a bulletin board (“BBS”) system that did not operate over the
`
`
`
`Internet. Brown relates to a type of prior art “chat room”, the very limitations of
`
`which the inventor of the ’657 Patent sought to overcome. (Ex. 1001 at 1:33-37;
`
`1:56-59). As a result, Brown is missing many of the limitations of the claims.
`
`Additionally, Petitioner does not even satisfy the basic requirement of an
`
`inter partes Review Petition by pointing out “[t]he specific statutory grounds under
`
`35 U.S.C. § 102 or 103 on which the challenge to the claim is based and the
`
`patents or printed publications relied upon for each ground.” 37 C.F.R.
`
`§ 42.104(b). The word “ground” does not appear in the Petition. It is unclear
`
`whether the Petitioner intended to include all claims in a single ground, or whether
`
`there are additional grounds related to dependent claims. Accordingly, the Petition
`
`should be denied in its entirety for failing to meet the basic statutory criteria for an
`
`inter partes review petition.
`
`In addition to these fundamental deficiencies, Petitioner’s request for inter
`
`partes review should be denied for at least the following reasons addressed more
`
`fully below in this Preliminary Response:
`
`(1) The Petition fails to properly construe several claim terms.
`
`(2) The Petition does not “specify where each element of the claim is found
`
`in the prior art patents or printed publications relied upon,” as required by 37
`
`C.F.R. § 42.104(b)(4), because each Ground has at least one of the following
`2
`
`
`
`

`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`
`
`
`deficiencies: (i) failing to map each claim term to a specific teaching from an
`
`
`
`asserted reference; (ii) providing citations to the asserted references that do not
`
`teach the claim elements against which such citations are applied; and
`
`(iii) mischaracterizing the citations to the asserted references.
`
`(3) The Petition fails to identify the difference(s) between the claims and the
`
`asserted references as required by Graham v. John Deere Co., 383 U.S. 1, 17-18
`
`(1966).
`
`(4) The Petition improperly attempts to support its assertions of obviousness
`
`with mere conclusory statements and by impermissibly incorporating by reference
`
`arguments from the Schmandt Declaration (Ex. 1003) in violation of 37 C.F.R.
`
`§ 42.6(a)(3).
`
`Due to at least these deficiencies, the Petition does not establish “a
`
`reasonable likelihood that the Petitioner would prevail with respect to at least one
`
`of the claims challenged in the petition.” 35 U.S.C. § 314(a). Patent Owner
`
`explicitly reserves the right to provide further distinctions between the prior art and
`
`the challenged claims. The deficiencies of the Petition noted herein, however, are
`
`sufficient for the Board to find that Petitioner has not met its burden to
`
`demonstrate a reasonable likelihood that it would prevail in showing
`
`unpatentability of any of the challenged claims.
`
`
`
`3
`
`

`
`
`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`
`
`
`II. THE PETITION SHOULD NOT BE INSTITUTED BECAUSE
`PETITIONER'S CLAIM CONSTRUCTIONS ARE INCORRECT IN
`LIGHT OF THE SPECIFICATION, CLAIMS, AND THE LAW
`A.
`
`Petitioner’s Proposed Construction of “Token” Is Incorrect and
`Reads Out of the Database Requirement
`
`The construction of the term “token” advocated by Petitioner, “a piece of
`
`information used to control access to content or more services,” is incorrect in light
`
`of the specification because it excludes the requirement that the tokens are stored
`
`in a database.
`
`Tokens are central to the invention of the ’657 Patents. The specification
`
`describes these tokens only in the context of a “database” that affords relationships
`
`and some permanence to the data. For example, the controller computer is
`
`described as arbitrating access to programs based on tokens, and that tokens are
`
`pieces of information associated with a user identity. The specification then goes
`
`on to state: “The pieces of information are stored in memory in a control computer
`
`base, along with personal information about the user, such as the user’s age.”
`
`(Ex. 1001 at 7:52-54.) Moreover, Petitioner's own citations in support of its
`
`construction omit the relevant discussion of a database:
`
`The control computer database serves as a repository of tokens
`for other programs to access, thereby affording information to
`otherwise independent computer systems. In the database, the
`storage of tokens can be by user, group, and content, and distribution
`controls can also be placed on the user’s tokens as well as the
`database.
`
`
`
`4
`
`

`
`
`(Ex. 1001 at 7:54-59) (emphasis added to portion omitted by Petitioner).
`
`
`
`
`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`
`
`
`
`
`
`Divorcing tokens from the concept of a database makes no sense in light of
`
`the specification as there must be some permanence to establish the disclosed
`
`token hierarchies. See, Bajaj Decl., Ex. 2001 at 24. Accordingly, to the extent this
`
`term must be construed, it should include the requirement that the tokens are stored
`
`in a database.
`
`
`
`As described in further detail below, Petitioner’s arguments fail when the
`
`claims are construed to require the storage of tokens in a database. Thus, as set
`
`forth in further detail below, the Petition should be denied on all grounds.
`
`B.
`
`Petitioner’s Proposed Construction of “Multimedia” Is Incorrect
`and Relies on an Overly Narrow Reading of a Single Sentence of
`the Specification and Ignores the Context of the Specification, the
`File History and the Extrinsic Evidence
`
`
`
`Petitioner’s construction of multimedia as “media comprising more than one
`
`data type, such as audio, video, or text, or a link to such media” is incorrect
`
`because it includes “a link to such media.” None of the numerous references relied
`
`on by Petitioner, including Petitioner’s own Microsoft Dictionary, define
`
`“multimedia” as including “a link to such media.”
`
`
`
`In support of its incorrect construction, Petitioner relies on a single sentence
`
`and again omits the surrounding context, which context eviscerates Petitioner’s
`
`construction. The full passage from the specification is as follows:
`5
`
`
`
`

`
`
`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`
`
`
`With regard to multimedia information messages 8, such messages are
`of independent data types, e.g., audio/video data types. The content of
`the message (e.g., a URL) permits the System 1 to automatically
`determine the handling of the message: either the Controller
`Computer 3 passes the content of Message 8 directly, or the Controller
`Computer 3 determines from the Message 8 how to find the content,
`say via Netscape. Accordingly Message 8 can communicate video
`and sound (or other multimedia, e.g., a URL) to users, subject only to
`the server arbitration controls over what can be sent.
`
`(Ex. 1001 at 8:47-56.) (emphasis added). It is apparent from the context of the
`
`specification that the multimedia itself is not a URL, but rather that the message
`
`may contain a URL that resolves to the multimedia itself. If anything, the single
`
`sentence of the specification on which Petitioner relies may have been clearer if it
`
`had said “e.g., via a URL,” but as drafted, one of ordinary skill in the art would
`
`readily understand that the URL refers to the content of a message and not to the
`
`multimedia itself. This explanation is in accord with all of the extrinsic evidence
`
`cited by Petitioner, and fully supports a construction of Multimedia as “media
`
`comprising more than one data type, such as audio, video, or text.”
`
`As described in further detail below, Petitioner’s arguments fail when the
`
`claims are construed with the proper construction of Multimedia, as all of
`
`Petitioner’s arguments rely on URL links. Thus, the Petition should be denied on
`
`all grounds.
`
`
`
`6
`
`

`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`
`
`
`Petitioner Does Not Propose a Construction for the Term
`“Censor” and Ultimately Reads the Term Out of the Claims
`
`
`
`C.
`
`
`
`Petitioner does not proffer a construction for the term “censor” or
`
`“censored,” and Petitioner’s arguments regarding the term “censor[ed]” must fail
`
`for two reasons: (1) Petitioner conflates censorship with access rights, thus reading
`
`the term out of the claims, and (2) Petitioner ignores the relationship between
`
`censorship and tokens.
`
`The term “censor” was understood in both ordinary English, as well as to
`
`one of ordinary skill in the art. Specifically, censorship requires suppression of
`
`unacceptable information such as a message. The ordinary English meaning is:
`
`“examine in order to suppress or delete anything considered objectionable.”
`
`(Ex. 2001 at 29, citing Ex. 2002 at 3.) Even Microsoft’s own dictionary defines
`
`censorship as “[t]he action of preventing material that a party considers
`
`objectionable from circulating within a system of communication over which that
`
`party has some power.” (Ex. 2003 at 4.) The Microsoft Dictionary goes on to state
`
`this example: “[a] moderated newsgroup or mailing list may be considered to be
`
`‘censored’ because the moderator will usually delete highly controversial and
`
`obscene content or content that is on a different topic from that followed by a
`
`newsgroup.” (Id. at 4-5.) In all of the relevant definitions, the common thread is a
`
`focus on the data or content itself and not on the users. The specification does not
`
`
`
`7
`
`

`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`
`
`
`expand the definition beyond the bounds of one of ordinary skill’s understanding.
`
`
`
`Censorship is not merely the decision as to whether to grant a user or person
`
`access to categories of information as Petitioner contends. The specification
`
`describes censorship of a data message an evaluation of the message itself to
`
`determine if the message should be passed on to recipients. Moreover, in the
`
`context of the specification, censoring is discussed only in the context of using
`
`“tokens” to establish relationships between users and the data that is censored.
`
`While censorship uses tokens, it is not synonymous with group access rights
`
`conferred by tokens. The specification states that “[c]ensorship, which broadly
`
`encompasses control of what is said in a group, is also arbitrated by means of the
`
`tokens.” (Ex. 1001 at 8:10-11). The specification further states that, “[c]ensorship
`
`can use the tokens for real time control of data (ascii, text, video, audio) from and
`
`to users, as well as control over multimedia URLs––quantity, type, and subject.”
`
`(Id. at 8:16-18). Censorship can ultimately affect system access rights “by the
`
`identity of the user, which is associated with the user’s tokens,” but censorship
`
`achieves this end by actions taken on the data, i.e., by examining the message
`
`itself, and not based on group membership permissions. This distinction is evident
`
`from the plain language of the challenged claims, which require that a controller
`
`computer can both determine if a user is “censored from receiving data,” and test
`
`“communications that are sent and not censored.” (Ex. 1001 at Claim 1). If
`8
`
`
`
`

`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`
`
`
`censorship were merely a test for group access rights, the censor limitations would
`
`
`
`be read out of the claim.
`
`As described in further detail below, Petitioner’s arguments fail when
`
`considering the proper scope of the term “Censored,” as none of Petitioner’s
`
`arguments draw a distinction between censorship and group access rights and
`
`because none of Petitioner’s arguments refer to any relationship between
`
`“censorship” and tokens. Thus, as set forth in further detail below, the Petition
`
`should be denied.
`
`III. PETITIONER HAS NOT DEMONSTRATED A REASONBLE
`LIKELIHOOD OF SUCCESS FOR THE SINGLE GROUND
`ADVANCED IN THE PETITION AND THE PETITION SHOULD BE
`DENIED.1
`A. Requirements for Showing Obviousness Under 35 U.S.C. § 103.
`The question of obviousness is resolved on the basis of underlying factual
`
`
`
`determinations, including: (1) the scope and content of the prior art, (2) any
`
`differences between the claimed subject matter and the prior art, (3) the level of
`
`skill in the art, and (4) where in evidence, so called secondary considerations.
`
`1 Patent Owner notes that Petitioner does not use the term “Ground” in its Petition
`
`so in order to respond, Patent Owner has assumed that Petitioner is advancing a
`
`single ground that the Challenged Claims are obvious over Brown in view of The
`
`Sociable Web.
`
`
`
`9
`
`

`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`
`
`
`Graham, 383 U.S. 1 at 17-18. The Board has held that a failure to identify the
`
`
`
`differences between the claimed subject matter and the prior art is fatal to an
`
`obviousness challenge. See, Apple, Inc. v. Contentguard Holdings, Inc., IPR2015-
`
`00355, Decision Denying Institution of Inter Partes Review, Paper 9 at 9-10
`
`(PTAB, June 26, 2015) (denying institution for failure to identify the differences
`
`between the claimed subject matter and the prior art).
`
`Furthermore, in proposing that a person of ordinary skill in the art at the time
`
`of the invention would have combined the references in a particular way to meet
`
`the claimed invention, an obviousness analysis must support the proposed
`
`combination with “some articulated reasoning with some rational underpinning.”
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441
`
`F.3d 977, 988 (Fed. Cir. 2006)). A proposed combination cannot be supported
`
`based on “mere conclusory statements.” In re Kahn, 441 F.3d at 988. In a petition
`
`seeking institution of an inter partes review, “articulated reasons with rational
`
`underpinnings” must be found in the petition itself. Whole Space Indus. v.
`
`Zipshade Indus., IPR2015-00488, Decision Denying Institution of Inter Partes
`
`Review, Paper 14 at 17 (PTAB, July 24, 2015) (“[C]onclusory labels do not
`
`substitute for a fact-based analysis in the Petition establishing what is being
`
`modified, and why it would have been obvious to a person of ordinary skill to
`
`make the modification”). The arguments needed to support a conclusion of
`10
`
`
`
`

`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`
`
`
`obviousness may not be incorporated by reference to another document. 37 C.F.R.
`
`
`
`§42.6(a)(3) (“Arguments must not be incorporated by reference from one
`
`document into another document.”); Cisco Sys., Inc., v. C-Cation Techs., LLC,
`
`IPR2014-00454, Decision Denying Institution of Inter Partes Review, Paper 12 at
`
`10 (PTAB, Aug. 29, 2014); see also, Plant Science, Inc. v. The Andersons, Inc.,
`
`IPR2014-00939, Decision Denying Institution of Inter Partes Review, Paper 8 at
`
`15 (PTAB, Dec. 17, 2014).
`
`As set forth below, this Petition is deficient because it fails to meet the
`
`fundamental requirements for demonstrating invalidity. First, the Petition does not
`
`explain how the combinations of references teach each element of each claim. See,
`
`C.B. Distributors, Inc. v. Fontem Holdings 1 B.V., IPR2013-00387, Paper 43 at 30-
`
`31 (PTAB, Dec. 24, 2014). Second, the Petition fails to satisfy the tests of KSR
`
`and Graham because it does not identify the differences between the claims and
`
`the asserted references; neglects to provide a fact-based rationale for combining the
`
`references; and does not explain the specific ways the references are to be
`
`combined. Whole Space Indus., IPR2015-00488, Paper 14 at 9 (“[R]egarding the
`
`grounds based on obviousness, the Petition does not articulate specific
`
`modifications of the references that support its asserted obviousness grounds, nor
`
`does it provide a persuasive rationale for the proposed combinations of
`
`references.”).
`
`
`
`11
`
`

`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`
`
`
`B. Claim 1 is Not Obvious Over Brown in View of the Sociable Web
`Petitioner focuses on the Brown reference, which is a system designed by
`
`
`
`Microsoft, and which has a different structure and different goals from the system
`
`disclosed by the ’657 Patent. As a result, Brown itself does not teach or disclose
`
`each limitation of the challenged claims even when combined with the secondary
`
`reference, The Sociable Web.
`
`
`
`Brown describes a system that provides access to applications that are
`
`housed in a “data center 104” by a wide area network. Although one of the
`
`program modules available in the Brown reference is “chat,” the focus of the
`
`system is not to provide real time communication of multimedia. Petitioner
`
`focuses on Figure 1 of the ’657 Patent and annotates it as follows:
`
`
`
`12
`
`

`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`
`
`Pet. at 6. Notably, Petitioner color codes the components and explains that
`
`“’participator software’ (yellow) runs on each of the participator computers.”
`
`Pet. at 6. Brown, however, does not teach or disclose the participator software of
`
`the ’657 Patent. Instead, Brown discloses a system where users connect their
`
`microcomputers to the data center. All of the software disclosed by Brown is
`
`located within that very data center as depicted in Figure 1 of Brown below and
`
`Petitioner points only to the data center for the limitations of the claims:
`
`
`
`
`
`13
`
`

`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`
`
`Ex. 1012 at Fig. 1. Petitioner characterizes the system of Brown as including
`
`“multiple gateway computers that ‘link incoming calls from end users to the
`
`application servers.’ Pet. at 15. In these embodiments described by Petitioner, and
`
`as shown in Figure 1 of Brown, the software is encapsulated within the host data
`
`center and there is not a one-to-one relationship of gateway computers to terminals.
`
`
`
`14
`
`

`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`
`
`
`While Brown does describe a “client application,” (Ex. 1012 at 8:53-59), the only
`
`
`
`software contemplated is the “Sysop Tools,” which is a client application of the
`
`Directory Service responsible for editing properties of the system (Ex. 1012 at
`
`14:52-15:4.)
`
`
`
`Also absent from Brown is any disclosure of a connection over the Internet.
`
`This is because Brown does not describe an Internet-capable system. Brown
`
`describes exactly the types of systems that the ’657 Patent acknowledges are part
`
`of the prior art, and the very systems that the inventor of the ’657 Patent sought to
`
`improve. For example, the ’657 Patent acknowledges email, chat, and conference
`
`abilities were known in the prior art, but that those systems, like the Brown,
`
`required control of the software and hardware of the network:
`
`The Internet was structured for one-way communications analogous to
`electronic mail, rather than for real time group chat room
`communications. Further, unlike the an Internet service provider,
`which has control over both the hardware platform and the computer
`program running on the platform to create the "chat room", there is no
`particular control over the platform that would be encountered on the
`Internet. Therefore, development of multiplexing technology for such
`an environment has been minimal.
`Even with an emergence of the World Wide Web, which does have
`certain graphical multimedia capability, sophisticated chat room
`communication multiplexing has been the domain of the Internet
`service providers. Users therefore have a choice between the limited
`audience of a particular Internet Service provider or the limited chat
`capability of the Internet.
`(Ex. 1001 at 1:38-52).
`
`
`
`15
`
`

`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`
`
`
`In an attempt to fill in several of the gaps in the Brown disclosure, Petitioner
`
`
`
`
`
`points to yet another reference, The Sociable Web. First, the Sociable Web article
`
`lists an Internet archive date of January 11, 1998 and does not qualify as prior art.
`
`Petitioner includes a declaration from the listed author Judith S. Donath that claims
`
`earlier availability, but Petitioner has not provided a copy of the article with any
`
`indication as to an earlier publication date. Next the Sociable Web article
`
`describes a browser and web server not the multi-system back-end of Brown.
`
`While both the Sociable Web and Brown involve systems with “chat-like”
`
`functionality, the systems are fundamentally different and were known in the art to
`
`be competing technologies. Moreover, Petitioner provides no charts and does not
`
`identify any of the differences between either of the references and the claims
`
`likely because the Sociable Web is so far afield of and incompatible with Brown.
`
`The resulting hindsight-based argument must fail.
`
`
`
`For all of these reasons, and as set forth in more detail below, Petitioner has
`
`not demonstrated that there is a reasonable likelihood that it will prevail on its
`
`amorphous Petition, and the Petition should be denied.
`
`1.
`
`Database Which Serves as a Repository of Tokens for Other
`Programs to Access, Thereby Affording Information to
`Each of a Plurality of Participator Computers
`
`The claim language requiring a “database which serves as a repository of
`
`tokens for other programs to access, thereby affording information to each of a
`16
`
`
`
`

`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`
`
`
`plurality of participator computers” explicitly requires that tokens are stored in a
`
`
`
`database, and that the database is accessible to other programs. While Brown does
`
`disclose a database, the database operates within the four corners of the Host Data
`
`Center and does not serve as a repository of tokens of other programs to access,
`
`thereby affording information to each of a plurality of participator computers.
`
`Petitioner is silent as to what “other programs” have access to the database.
`
`Nowhere in its description of this limitation does Petitioner point to any “other
`
`program” that can access the database. Pet. at 20-22.
`
`Petitioner does not identify any support for this limitation in the Sociable
`
`Web reference. As a result, Petitioner has not identified this limitation in the prior
`
`art in any of its grounds. Accordingly, Petitioner has not demonstrated that there is
`
`a reasonable likelihood that it will prevail and the Petition should be denied.
`
`
`
`17
`
`

`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`
`
`
`Affording Some of the Information . . . Via the Internet
`Network
`
`
`
`2.
`
`Brown does not disclose affording information “via the Internet network.”
`
`Petitioner argues that the “WAN” of Brown would have been known to include the
`
`Internet. However, the author of Brown knew of the Internet and explicitly
`
`disclosed the Internet in connection with other facets of the Brown network as
`
`depicted in Figure 1:
`
`
`
`As depicted in Figure 1, the “Internet Feed” is part of the BBS server and only
`18
`
`
`
`
`
`

`
`IPR2016-01155
`
`PATENT NO. 8,694,657
`
`
`
`
`serves as a connection between that server and the greater Internet. This structure
`
`
`
`was not merely an oversight. Rather, the WAN and Gateway computers are, by
`
`design, not Internet facing. Brown states as follows:
`
`With reference to Fig. 1, one of the application servers 120 of the
`BBS service group 132 is preferably configured as an Internet feed
`server 120. The BBS Internet feed server 120 reads Internet
`newsgroup messages and posts these messages (by submitting update
`transactions to the Arbiter service) within the BBS service group 132,
`thereby providing users with access to such newsgroup messages.
`The BBS Internet feed server 120 is also used to post messages to the
`Internet.
`
`(Ex. 1012 at 10:7-14). Thus, while Brown explicitly contemplates connecting to
`
`the Internet to a BBS server, it does not contemplate connecting to the Gateway
`
`server over the Internet. Brown amounts to nothing more than the system of the
`
`prior art distinguished in the Background of the Invention section of the ’657
`
`Patent:
`
`On a more complex level, corporations may link remote offices to
`have a conference by computer. A central computer can control the
`multiplexing of what appears as electronic equivalent to a discussion
`involving many individuals.
`
`
`Ex. 1001 at 1:29-32.
`
`
`
`Finally, Petitioner attempts to combine Brown with the disclosure of “the
`
`Sociable Web.” The Sociable Web article lists an Internet archive date of