Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 52
`Entered: December 6, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-011561
`Patent 8,458,245 B1
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`1 Case IPR2017-00709 has been joined with this proceeding.
`
`
`571-272-7822
`
`
`
`Paper No. 52
`Entered: December 6, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-011561
`Patent 8,458,245 B1
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`1 Case IPR2017-00709 has been joined with this proceeding.
`
`
`
`IPR2016-01156
`Patent 8,458,245 B1
`
`
`A. Background
`
`I. INTRODUCTION
`
`Facebook, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) seeking
`
`inter partes review of claims 1–15, 17, and 18 of U.S. Patent No. 8,458,245
`
`B1 (Ex. 1001, “the ’245 Patent”). Windy City Innovations, LLC (“Patent
`
`Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
`
`Pursuant to 35 U.S.C. § 314, in our Institution Decision (Paper 7,
`
`“Dec.”), we instituted this proceeding as to claims 1–15, 17, and 18.
`
`Patent Owner filed a Patent Owner’s Response (Paper 22, “PO
`
`Resp.”), and Petitioner filed a Reply to the Patent Owner’s Response
`
`(Paper 31, “Reply”).
`
`Petitioner relies on the Declarations of Tal Lavian, Ph.D. (Ex. 1002,
`
`“Lavian Decl.”; Ex. 1021, “2nd Lavian Decl.”). Patent Owner relies on the
`
`Declaration of Jaime G. Carbonell, Ph.D. (Ex. 2005, “Carbonell Decl.”).
`
`On January 17, 2017, Petitioner filed a petition seeking inter partes
`
`review of claims 19 and 22–25 of the ’245 patent and sought to join that
`
`proceeding to this proceeding. IPR2017-00709, Paper 2 (“the ’709 Pet.”),
`
`Paper 3 (Mot. for Joinder). We instituted a trial in that proceeding and
`
`joined it to this proceeding. Paper 34 (“the ’709 Dec.”). Petitioner relies on
`
`the Declaration of Dr. Lavian in the ’709 proceeding (IPR2017-00709,
`
`Ex. 1002 (“Lavian ’709 Decl.”).
`
`As to the additional claims challenged in the ’709 Petition, Patent
`
`Owner filed a Supplemental Patent Owner’s Response (Paper 45, “Supp. PO
`
`Resp.”) and Petitioner filed a Supplemental Reply (Paper 46, “Supp.
`
`Reply”).
`
`An oral argument was held on October 19, 2017 (Paper 51, “Tr.”).
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`2
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`IPR2016-01156
`Patent 8,458,245 B1
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`We have jurisdiction under 35 U.S.C. § 6. This Decision is a final
`
`written decision under 35 U.S.C. § 318(a) as to the patentability of claims 1–
`
`15, 17–19, and 22–25. Based on the record before us, Petitioner has not
`
`proved, by a preponderance of the evidence, that any claim of the ’245
`
`patent is unpatentable.
`
`
`
`B. Related Matters
`
`The parties indicate that the ’245 patent has been asserted in Windy
`
`City Innovations, LLC v. Microsoft Corp., Civ. A. No. 15-cv-00103-GM
`
`(W.D.N.C.) (transferred to 16-cv-1729 (N.D. Cal.)), and Windy City
`
`Innovations, LLC v. Facebook, Inc., Civ. A. No. 15-cv-00102-GM
`
`(W.D.N.C.) (transferred to 16-cv-1730 (N.D. Cal.)). Pet. 1; Paper 4, 1. The
`
`’245 patent also is the subject of inter partes review petitions in IPR2016-
`
`01141, Paper 4, 1, and IPR2017-00655, which was joined to IPR2016-
`
`01141. The ’245 patent was the subject of IPR2017-00669 (now
`
`terminated), which Microsoft Corp. filed and sought to join with this
`
`proceeding prior to settling with Patent Owner. Patents related to the ’245
`
`patent are subjects of additional inter partes review petitions.
`
`
`
`C. Asserted Prior Art References
`
`Petitioner relies on the following prior art:
`
`U.S. Patent No. 6,608,636 B1, issued Aug. 19, 2003, filed May 13,
`
`1992 (Ex. 1003, “Roseman”);
`
`Published European Pat. App. No. 0 621 532 A1, published Oct. 26,
`
`1994 (Ex. 1004, “Rissanen”);
`
`3
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`IPR2016-01156
`Patent 8,458,245 B1
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`Ronald J. Vetter, Videoconferencing on the Internet, IEEE COMPUTER
`
`SOCIETY 77–79 (Jan. 1995) (Ex. 1005, “Vetter”);
`
`MARY ANN PIKE ET AL., USING MOSAIC (1994) (Ex. 1006, “Pike”);
`
`U.S. Patent No. 5,226,176, issued July 6, 1993 (Ex. 1007,
`
`“Westaway”); and
`
`TOM LICHTY, THE OFFICIAL AMERICA ONLINE FOR MACINTOSH
`
`MEMBERSHIP KIT & TOUR GUIDE (2nd ed. 1994) (Ex. 1008,
`
`“Lichty”).
`
`
`
`
`
`D. The Instituted Grounds
`
`We instituted a trial on the following grounds of unpatentability.
`
`Dec. 30; ’709 Dec. 6–7.
`
`References
`
`Basis
`
`Claims Challenged
`
`Roseman, Rissanen, Vetter, Pike,
`and Westaway
`
`§ 103(a)
`
`1–5, 7, 9–14, 19, and
`22–25
`
`Roseman, Rissanen, Vetter, Pike,
`Westaway, and Lichty
`
`
`
`E. The ’245 Patent
`
`§ 103(a)
`
`6, 8, 15, 17, and 18
`
`The ’245 patent describes an Internet “chat room.” According to the
`
`’245 patent, it was known to link computers together to form chat rooms in
`
`which users communicated by text, graphics, and multimedia, giving the
`
`example of the Internet service provider “America On Line.” Ex. 1001,
`
`1:40–46. The ’245 patent acknowledges that chat rooms have been
`
`implemented on the Internet, albeit with “limited chat capability,” but
`
`contends that the complex chat room communications capable with Internet
`
`service providers had not been developed on the Internet “at least in part
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`4
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`IPR2016-01156
`Patent 8,458,245 B1
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`because [the] Internet was structured for one-way communications
`
`analogous to electronic mail, rather than for real time group chat room
`
`communications” and because “there is no particular control over the
`
`platform that would be encountered on the Internet.” Id. at 1:47–54, 1:60–
`
`62.
`
`Figure 1, reproduced below, illustrates an embodiment of the
`
`invention:
`
`
`
`Figure 1 is a block diagram showing the components and data flow of a
`
`computerized human communication arbitrating and distributing system.
`
`Id. at 4:60–64. The system includes a controller computer (shown as 1 in
`
`Figure 1 but described as 3 in the written description) in communication
`
`with several participator computers 5 (e.g., IBM-compatible personal
`
`5
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`computers) over connection 13 (e.g., an Internet connection or a World
`
`Wide Web connection). Id. at 4:65–5:17.
`
`The controller computer runs under the control of controller software
`
`2, and the software arbitrates, in accordance with predefined rules (including
`
`user identities), which participator computers 5 can interact in a group
`
`through the controller computer, and directs real-time data to the members
`
`of the group. Id. at 5:19–25. The software uses “identity tokens,” or pieces
`
`of information associated with user identity, in the arbitration. Id. at 8:6–9.
`
`The tokens are stored in memory 11 in a control computer database along
`
`with personal information about the users. Id. at 8:9–14.
`
`The arbitration can be used to control a user’s ability to join or leave a
`
`group of participator computers, to moderate communications involving the
`
`group, and to see other users in the group. Id. at 8:21–32. Arbitration using
`
`tokens also can be used to perform censorship:
`
`Censorship, which broadly encompasses control of what
`is said in a group, is also arbitrated by means of the tokens.
`Censorship can control of access [sic] to system 1 by identity of
`the user, which is associated with the user’s tokens. By checking
`the tokens, a user’s access can be controlled per group, as well
`as in giving group priority, moderation privileges, etc.
`
`Censorship also 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 [Uniform Resource Locators]—
`quantity, type, and subject.
`
`Id. at 8:36–44.
`
`According to the specification, “[t]he present invention comprehends
`
`communicating all electrically communicable multimedia information as
`
`Message 8, by such means as pointers, for example, URLs. URLs can point
`
`to pre-stored audio and video communications, which the Controller
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`6
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`IPR2016-01156
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`Computer 3 can fetch and communicate to the Participator Computers 5.”
`
`Id. at 5:36–41.
`
`The ’245 patent also describes a participator computer that can locate
`
`an agent for presenting a communication that the participator computer, on
`
`its own, cannot present. See id. at 7:34–43. Figure 6, reproduced below,
`
`illustrates an example:
`
`7
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`IPR2016-01156
`Patent 8,458,245 B1
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`Figure 6 is a flow diagram of participator software for out-of-band
`
`multimedia handling. Id. at 2:64–65, 7:34–45. When the software identifies
`
`a type of multimedia (step 26), the software determines whether it is an
`
`
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`8
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`internally handlable multimedia type (step 102). Id. at 7:35–38. If not, the
`
`software looks up a suitable agent for presentation of that data type (step
`
`104) and, if a suitable agent is found (step 106), the agent is invoked with a
`
`data reference (e.g., URL) to present the data (step 110). Id. at 7:38–43.
`
`Claim 1, reproduced below, is illustrative of the claimed subject
`
`matter:
`
`A computer apparatus distributing a communication
`1.
`over an Internet network, the apparatus including:
`
`a controller computer system adapted to communicate
`responsive to a respective authenticated user identity
`corresponding respectively to each of a plurality of
`participator computers,
`
`said participator computer communicatively
`each
`connected
`to said Internet network, each said
`participator computer programmed to enable the
`communication, the communication including at least
`one of a pre-stored sound, video, graphic, and
`multimedia,
`
`the controller computer system including a controller
`computer and a database which serves as a repository
`of tokens for other programs to access, thereby
`affording information to each of the participator
`computers which are otherwise independent of each
`other;
`
`wherein
`
`one said authenticated user identity is used to
`communicate a pointer-triggered private message
`from a first of said participator computers to said
`controller computer and from said controller
`computer to a second of said participator computers
`that invokes said pointer-triggered private message
`to fetch and receive the communication from a
`computer other than said first or said second said
`
`9
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`IPR2016-01156
`Patent 8,458,245 B1
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`participator computers in real time over the Internet
`network
`
`such that the second of said participator computers
`internally determines whether or not the second
`of the participator computers can present the
`communication, if it is determined that the
`second of the participator computers can not
`present the communication then obtaining an
`agent with
`an
`ability
`to present
`the
`communication, and otherwise presenting the
`communication independent of the first of the
`independent participator computers and the
`computer.
`
`
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`We interpret claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`
`136 S. Ct. 2131, 2144–45 (2016). In applying a broadest reasonable
`
`construction, claim terms generally are given their ordinary and customary
`
`meaning, as would be understood by one of ordinary skill in the art in the
`
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007).
`
`
`
`1. Constructions in the Institution Decision
`
`In the Institution Decision, we preliminarily construed the following
`
`terms (Dec. 6–9):
`
`10
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`IPR2016-01156
`Patent 8,458,245 B1
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`Claim Term
`
`Preliminary Construction
`
`“token”
`
`“censored”
`
`
`
`“piece of information associated with user
`identity”
`
`“controlled with respect to what is said in a
`group”
`
`Patent Owner adopts our construction of “token” (which Petitioner
`
`initially proposed), PO Resp. 8, and challenges our construction of
`
`“censored,” id. at 12–13. Petitioner accepts our construction of “censored”
`
`and presents arguments in favor of that construction. Reply 3. The parties
`
`also dispute the meaning of “database,” PO Resp. 8–12; Reply 3–6.
`
`Nevertheless, we determine that construction of these terms is not necessary
`
`to resolve the dispute in this proceeding. See Vivid Techs., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`
`construed that are in controversy, and only to the extent necessary to resolve
`
`the controversy.”).
`
`
`
`B. Asserted Grounds of Unpatentability
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`
`between the claimed subject matter and the prior art are “such that the
`
`subject matter as a whole would have been obvious at the time the invention
`
`was made to a person having ordinary skill in the art to which said subject
`
`matter pertains.” We resolve the question of obviousness 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) objective evidence of
`
`11
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`IPR2016-01156
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`nonobviousness, i.e., secondary considerations.2 See Graham v. John Deere
`
`Co., 383 U.S. 1, 17–18 (1966).
`
`In an obviousness analysis, some reason must be shown as to why a
`
`person of ordinary skill would have combined or modified the prior art to
`
`achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512
`
`F.3d 1363, 1374 (Fed. Cir. 2008). A reason to combine or modify the prior
`
`art may be found explicitly or implicitly in market forces; design incentives;
`
`the “interrelated teachings of multiple patents”; “any need or problem
`
`known in the field of endeavor at the time of invention and addressed by the
`
`patent”; and the background knowledge, creativity, and common sense of
`
`the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587
`
`F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc.,
`
`550 U.S. 398, 418–21 (2007)).
`
`
`
`1. Level of Ordinary Skill
`
`Neither party proposes a level of ordinary skill in the art.
`
`Nevertheless, both parties’ experts testify to similar levels of skill.
`
`Specifically, Dr. Lavian testifies that a skilled artisan “would possess at least
`
`a bachelor’s degree in electrical engineering or computer science (or
`
`equivalent degree or experience) with practical experience or coursework in
`
`the design or development of systems for network-based communication
`
`between computer systems.” Ex. 1002 ¶ 14. For his part, Dr. Carbonell
`
`testifies that a skilled artisan “would have had a bachelor’s degree in
`
`
`2 The record does not include arguments or evidence regarding objective
`indicia of nonobviousness.
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`12
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`computer science (or a related field) and at least one year of work experience
`
`in programming in computer communication methods” and notes that his
`
`“opinions herein would not change even if the person having ordinary skill
`
`in the art were to be found to have the level of skill proposed by Dr.
`
`Lavian.” Ex. 2005 ¶ 18. We adopt Dr. Lavian’s proposal, as it is consistent
`
`with the level of skill reflected in the prior art of record. Nevertheless, we
`
`discern no material difference between his proposal and that of Dr.
`
`Carbonell. Thus, our findings and conclusions would be the same under
`
`either proposal.
`
`
`
`2. Scope and Content of the Prior Art
`
`Petitioner contends that the challenged claims would have been
`
`obvious over Roseman, alone or in combination with Rissanen, Vetter, Pike,
`
`Westaway, and Lichty. Pet. 7–8; ’709 Pet. 6.
`
`
`
`a. Overview of Roseman
`
`Roseman describes a system for multimedia conferencing, in which
`
`parties are linked by both video and audio media. Ex. 1003, Abstract. In
`
`Roseman, a conference is represented visually as a common virtual
`
`conference table, in which each participant can place a document onto the
`
`table electronically, manipulate and write on the document, write on a virtual
`
`notepad, and move a pointer to draw other users’ attention. Id. at 2:38–45,
`
`7:55–8:37. Participants can see the events as they occur. Id. at 2:46–47.
`
`Figure 9, reproduced below, illustrates an example conference room:
`
`13
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`Figure 9 is a picture of a video screen that is generated by a host computer
`
`and distributed to all participants in a conference. Id. at 2:16–18.
`
`The parties operate their own local computers (which include video
`
`cameras and speaker-type telephones) and, when a conference is established,
`
`connect to a host computer via commercially available local area networks
`
`(“LANs”) and wide area networks (“WANs”). Id. at 1:34–41. In the
`
`conference, the host computer generates a common video screen (e.g.,
`
`Figure 9, reproduced above) displayed at each of the local computers, and
`
`the parties send information, such as drawings, to be displayed on the
`
`common screen. Id. at 1:42–46. The telephones and video cameras allow
`
`the parties to see and speak with each other. Id. at 1:47–49.
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`14
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`Roseman includes a pseudo code appendix that details how its
`
`features are implemented. Id. at 12:66–13:2. According to the pseudo code,
`
`a participant interacts with the conference table, for example, by dragging an
`
`icon onto the table, which causes a data file to be transmitted to the host.
`
`Id. at 14:53–55. The host then transmits the icon to the table of each
`
`participant. Id. at 14:56–57. If another participant activates the icon, the
`
`host sends the open file to the tables of all participants. Id. at 14:58–61. If
`
`the participant drags the icon from the table to his own screen and activates
`
`the icon on his screen, the data file is presented to the participant. Id. at
`
`14:62–66.
`
`Roseman describes additional features, such as a party’s ability to
`
`“whisper” to another party without being heard by others in the conference
`
`room, and the ability to “pass notes” by dragging a note to the picture of
`
`another party, while the other parties are unaware of the note. Id. at 9:16–
`
`31. Each room may also have “doors” to committee rooms or child-rooms.
`
`A child-room is created in the same way as a parent room and is dependent
`
`upon the parent room for access and existence. Id. at 10:18–23.
`
`A meeting requester creates a conference by selecting the participants,
`
`the attributes of the virtual conference room (e.g., virtual equipment and
`
`room décor), and the rules of the conference (e.g., whether the requester has
`
`absolute control over voice and message interaction of the parties). Id. at
`
`3:22–56. According to Roseman, “[t]he conference room itself is actually a
`
`combination of stored data and computer programs,” the stored data can
`
`include conference proceedings, and “both the conference room and the
`
`proceedings of the conference have persistence in time.” Id. at 12:16–25.
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`15
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`The meeting requester specifies a level for each invitation and
`
`compiles an invitation list. Id. at 9:34–36. Invitations include “keys”
`
`specifying the level, e.g., whether the invitation is for the invitee only or can
`
`be passed to a delegate or to anyone. Id. at 9:35–48. For example, “Level 1
`
`keys may not be passed to any other person and may not be copied” while
`
`“Level 2 keys may be passed to exactly one other person and may not be
`
`copied.” Id. at 9:42–45. According to Roseman, “[t]he meeting room
`
`‘knows’ about each key and its invitation level. Persons with improper keys
`
`are not admitted to the room.” Id. at 9:49–51. A key is distributed
`
`electronically as an object attached to the invitation. Id. at 9:54–55. To
`
`attend a meeting, a party walks a virtual “hallway” to the meeting room and
`
`opens the meeting room door by dropping the key onto a virtual “door lock.”
`
`Id. at 10:30–32, 10:61–65. Moreover, the host “can automatically prevent
`
`filibustering” by “monitor[ing] the speech of each person, and plac[ing] a
`
`limit on the total time allowed to each person.” Id. at 12:29–38.
`
`
`
`b. Overview of Rissanen
`
`Rissanen describes a system and method for validation of spoken
`
`passwords. Ex. 1004, 2:17–21. Rissanen’s Background of the Invention
`
`discusses systems in which “business computer systems are arranged to
`
`initially record and store passwords assigned to users,” a user is prompted
`
`for entry of a password, and “the system compares the keyboard entered
`
`password with the stored passwords and enables the user to access the
`
`system when the entered password matches the previously stored password.”
`
`Id. at 1:21–28. In Rissanen’s proposed solution, “[u]sers are initially entered
`
`into a password database stored in the computer system by assigning each
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`user an account code and a password, such as consisting of a number of
`
`numerical digits.” Id. at 2:26–29.
`
`Petitioner makes clear that “[a]lthough Rissanen also describes using
`
`spoken voice passwords, this Petition cites it for its more pedestrian
`
`teachings relating to database storage of passwords of any form.” Pet. 12.
`
`
`
`c. Overview of Vetter
`
`Vetter is an IEEE Computer Society Magazine article discussing
`
`available tools for conducting teleconferencing over the Internet. According
`
`to Vetter, “[v]ideoconferences are becoming increasingly frequent on the
`
`Internet and are generating much research interest.” Ex. 1005, 77. Vetter
`
`states that “the emerging multicast backbone (or MBone) can efficiently
`
`send traffic from a single source over the network to multiple recipients,”
`
`and, “[a]t the same time, many workstations attached to the Internet are
`
`being equipped with video capture and sound cards to send and receive
`
`video and audio data streams.” Id. Vetter concludes that “[t]he price/
`
`performance of these hardware devices has finally reached a level that
`
`makes wide-scale deployment possible, which is perhaps the most important
`
`factor in the recent growth of videoconferencing applications.” Id.
`
`Vetter also describes challenges that faced implementation of audio,
`
`graphic, and video tools on the Internet, including “disturbing feedback
`
`when the microphones at multiple sites were left ‘open’ during a
`
`discussion,” taking too much time to broadcast a simple graphic image to
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`multiple participants when using “Whiteboard tools” (collaborative software
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`tools that support a shared desktop whiteboard among a group of distributed
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`users on the Internet), and use of video during a classroom presentation that
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`caused the workstations in the classroom lab to lock up. Id. at 78–79.
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`Vetter also notes that the physical distance between two points on the
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`Internet can be different from the electronic distance between those points.
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`Id. at 79.
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`Vetter discusses in particular a CU-SeeMe platform from Cornell
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`University that supported video and audio conferencing over the Internet,
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`and a CU-SeeMe Reflector that allowed multiparty conferencing with CU-
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`SeeMe. Id. at 78.
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`
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`d. Overview of Pike
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`Pike is a reference and guide book for using the Web browser Mosaic.
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`Ex. 1006, 2. Petitioner cites to Pike’s discussion of URLs and hyperlinks.
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`According to Pike, URLs were developed as a standard way of referencing
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`items on the World Wide Web. Id. at 38. “A URL is a complete description
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`of an item, containing the location of the item that you want to retrieve. The
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`location of the item can range from a file on your local disk to a file on an
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`Internet site halfway around the world.” Id.
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`Pike also describes adding auxiliary software to Mosaic to allow
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`Mosaic to handle documents it otherwise would not be able to handle. Id. at
`
`55. For example, a user “may want to obtain additional software to allow
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`Mosaic to handle things such as pictures, sounds, and animations (movies)”
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`and could find such additional software at an anonymous FTP site identified
`
`in Pike. Id. at 55–56. According to Pike, “[a]fter you have a viewer
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`installed and Mosaic knows where to find it and what type of files it
`
`displays, you can load files of that type and Mosaic automatically starts the
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`viewer to display them.” Id. at 96.
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`e. Overview of Westaway
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`Westaway is directed to “methods and apparatus for automatically
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`loading missing system software without terminating current processing
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`operations being executed by the data processing device in a data processing
`
`system.” Ex. 1007, 1:10–16. Specifically, Westaway describes a system
`
`including “a plurality of data processing devices (‘agents’)” coupled to a
`
`network. Id. at 1:18–20. “System software resources,” such as a disk drive
`
`or optical storage device coupled to the network, provide system software to
`
`agents on the network. Id. at 1:20–24. “In the event an agent requires
`
`certain software for execution, and the software is not available on the
`
`agent’s local hard disk drive or internal memory, then it [is] accessed from
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`one of the system software resources such as a disk drive, tape drive or the
`
`like.” Id. at 1:24–29.
`
`
`
`f. Overview of Lichty
`
`Lichty is a book intended as a “tour guide” of America Online
`
`(“AOL”), an online email service, Internet gateway, and community.
`
`Ex. 1008, 1–3. Petitioner (Pet. 58–59) focuses on Lichty’s description of
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`AOL’s real-time interactive “People Connection” feature. Ex. 1007, 251–
`
`78. People Connection includes chat rooms in which a user communicates
`
`with others by posting text messages to the other participants in a chat room.
`
`Id. at 252–55. Lichty describes, in particular, that a People Connection
`
`interface includes an “Ignore” button. Id. at 268–69. According to Lichty,
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`“[i]f you wish to exclude a member’s comments (or those of all the members
`
`in a conversation in which you’re not interested), select the member’s name
`
`in the People in this Room window and click the Ignore button. From then
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`on, that member’s text will not appear on your screen.” Id. at 269; see also
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`id. at 510 (glossary definition of “Ignore—(1) Chat blinders; a way of
`
`blocking a member’s chat from your view in a chat/conference room
`
`window. Ignore is most useful when the chat of another member becomes
`
`disruptive in the chat room.”).
`
`
`
`3. Claim 1, Differences Between the Claimed Subject Matter
`and the Prior Art, and Reasons to Modify or Combine
`
`For the reasons given below, we conclude that Petitioner has not
`
`shown that claim 1 would have been obvious over Roseman, Rissanen,
`
`Vetter, Pike, and Westaway.
`
`Petitioner contends that Roseman teaches the majority of the
`
`limitations of claim 1, but cites the remaining references for the following,
`
`should we determine that Roseman lacks such a teaching:
`
`Rissanen for a teaching that tokens could have been stored in a
`
`database;
`
`Vetter for a teaching that Roseman’s communications could have
`
`been over the Internet;
`
`Pike for a teaching of URLs; and
`
`Pike and Westaway teachings of external software applications used
`
`to view certain types of content.
`
`Pet. 7–8.
`
`Claim 1 recites “a controller computer system,” including a
`
`“controller computer,” that communicates with “each of a plurality of
`
`participator computers.” Petitioner contends (Pet. 17) that Roseman
`
`describes a “host computer” that communicates with “local computers” that
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`are used by the parties to a videoconference, the host computer overseeing
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`the conference. Ex. 1003, 1:42–52; 3:14–19. With respect to the “Internet
`
`network” limitations, the Petition relies on combining the teachings of
`
`Roseman with Vetter. Pet. 17–19, 24. As Petitioner notes (id.), Vetter
`
`indicates explicitly that “[v]ideoconferences are becoming increasingly
`
`frequent on the Internet,” and describes software that supports “video and
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`audio conferencing over the Internet,” including “multiparty conferencing.”
`
`Ex. 1005, 77–78. Further, relying on Dr. Lavian’s testimony, Petitioner
`
`asserts that a person of ordinary skill would have recognized Roseman’s
`
`reference to connections via commercially available WANs to implicate the
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`Internet. Pet. 17–18 (citing Ex. 1002 ¶ 51). According to Dr. Lavian, a
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`person of ordinary skill in the art would have been motivated to combine the
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`teachings of Roseman and Vetter, such that the videoconference
`
`communications described in Roseman occur over the Internet, based on the
`
`above disclosures of Vetter and Roseman, as well as the artisan’s
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`background knowledge regarding the Internet. Ex. 1002 ¶ 54.
`
`As to “a respective authenticated user identity corresponding
`
`respectively to each of a plurality of participator computers,” the Petition
`
`relies on Roseman’s discussion of “keys” provided to invitees to a
`
`videoconference—for example, a “Level 1 key” that is restricted to a
`
`specific user only—which are used by the invitees to access the conference
`
`and enable communications among the users and the host computer.
`
`Pet. 21–23 (citing Ex. 1003, 9:34–55, 10:61–65, 11:10–17).
`
`With respect to “a database which serves as a repository of tokens for
`
`other programs to access,” as recited in claim 1, Petitioner cites to the
`
`combination of Roseman and Rissanen. Pet. 26–33. Petitioner contends that
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`Roseman’s “keys” are blocks of data that are associated with users’
`
`identities and, thus, are tokens. Id. at 26–27. As explained above, Roseman
`
`describes that an invitor, in setting up a meeting, creates an invitation that
`
`includes a key that conforms to an invitation level. Ex. 1003, 9:34–48. A
`
`key “is an electronic object attached to the invitation.” Id. at 9:54–55. The
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`“level” of a key determines who can use it. For example, “Level 1 keys may
`
`not be passed to any other person and may not be copied.” Id. at 9:42–44.
`
`According to Roseman, “[t]o open a door with a key, the user drops the key
`
`onto the door lock. If the key is valid and the user has the authority to use
`
`the key, the door opens and the user is admitted to the room.” Id. at 10:61–
`
`64.
`
`As to “a database which serves as a repository of tokens for other
`
`programs to access,” as recited in claim 1, Petitioner argues that Roseman
`
`explains that each conference room “knows” about each key to that room,
`
`reasoning that Roseman, thus, teaches the host computer storing each key so
`
`users’ keys can be recognized. Pet. 27–28 (citing Ex. 1003, 9:49–51;
`
`Ex. 1002 ¶ 68). Once a key is recognized and a user is granted access to a
`
`room, each of the participants in the room are notified of the user’s entry,
`
`and data (e.g., the video signal of the user) is communicated to the
`
`participants. Ex. 1003, 10:61–65, 11:11–17. According to Petitioner,
`
`Roseman indicates that each virtual conference room provided by the host
`
`computer “is actually a combination of stored data and computer programs.”
`
`Pet. 30 (quoting Ex. 1003, 12:16–18). Therefore, Petitioner asserts that
`
`Roseman teaches “other programs” (i.e., the conference rooms) accessing a
`
`central repository of tokens (i.e., keys), thereby affording information to
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`each of the participator computers (i.e., communicating data to each
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`participant in a conference).
`
`Petitioner additionally argues that Rissanen teaches storing user
`
`authentication information, such as user identity information and passwords,
`
`in a database, and that such teaching would have been applicable to the keys
`
`of Roseman. Pet. 28–29. Petitioner argues that Roseman’s keys are
`
`analogous to user identity and passwords. Id. Petitioner further argues that
`
`storing keys in a database is one of a finite number of known solutions for
`
`verifying whether a previously issued key matches to a key later presented
`
`by a user to access a conference room. Pet. 30 (citing Ex. 1002 ¶¶ 71–72).
`
`As to “affording information to each of the participator computers,” as
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`recited in claim 1, Petitioner argues that Roseman describes allowing a user
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`to communicate with others in the conference (e.g., by audio and video
`
`links, and by placing do
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