`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________________________
`
`
`
`FACEBOOK, INC.,
`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 RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,694,657
`
`Case No. IPR2016-01159
`___________________________________________________________
`
`
`
`
`
`
`

`

`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`
`
`I.
`
`Page No(s).
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`SUMMARY OF THE ’657 PATENT ............................................................. 3
`
`III.
`
`SUMMARY OF THE ALLEGED PRIOR ART ............................................ 5
`
`A. U.S. Patent No. 6,608,636 to Roseman -“Server based virtual
`conferencing” ........................................................................................ 5
`
`B.
`
`EP 0621532 A1 to Eugene Rissanen - “Password Verification
`System”.................................................................................................. 6
`
`C.
`
`Ronald J. Vetter, “Videoconferencing on the Internet” ........................ 6
`
`D. Mary Ann Pike et al., “Using Mosaic” ................................................. 6
`
`E.
`
`Tom Lichty, “The Official America Online for Macintosh
`Membership Kit & Tour Guide” ........................................................... 7
`
`IV. PROPER CONSTRUCTION OF DISPUTED TERMS ................................. 7
`
`A.
`
`Token ..................................................................................................... 7
`
`B.
`
`Database ................................................................................................ 8
`
`V.
`
`IT WOULD NOT HAVE BEEN OBVIOUS TO COMBINE THE
`REFERENCES AS SET FORTH BY PETITIONER ................................... 12
`
`A.
`
`Claim 189 is Not Obvious Over Roseman, Rissenan Vetter,
`Pike and Lichty .................................................................................... 15
`
`1.
`
`2.
`
`Repository of Tokens ................................................................ 18
`
`Database … for Other Programs to Access, Thereby
`Affording Information to Each of a Plurality of
`Participator Computers ............................................................. 20
`
`3.
`
`Via the Internet Network .......................................................... 25
`
`B.
`
`Independent Claim 465 Is Not Unpatentable ...................................... 30
`
`
`
`i
`
`

`

`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`
`
`
`Dependent Claims 334, 342, 348, 580, 584, and 592 Are Not
`Unpatentable ........................................................................................ 31
`
`
`
`
`
`C.
`
`D. Dependent Claims 334 and 580 Are Not Unpatentable ...................... 31
`
`VI. CONCLUSION .............................................................................................. 35
`
`
`
`
`
`
`
`ii
`
`

`

`
`
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
` Page(s)
`
`Federal Cases
`
`Amgen Inc. v. F. Hoffman-La Roche Ltd.,
`580 F.3d 1340 (Fed. Cir. 2009) .......................................................................... 14
`
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) .......................................................................... 14
`
`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009) .......................................................................... 31
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 15
`
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) .......................................................................... 14
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .................................................................... 13, 14
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 12
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 12, 18
`
`Los Angeles Biomedical Research Inst. at Harbor-UCLA Med. Ctr. v.
`Eli Lilly & Co.,
`849 F.3d 1049 (Fed. Cir. 2017) .......................................................................... 13
`
`Medichem, S.A. v. Rolabo, S.L.,
`437 F.3d 1157 (Fed. Cir. 2006) .................................................................... 14, 15
`
`Pers. Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................................ 13
`
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) .......................................................................... 13
`
`
`
`iii
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`In re Van Os,
`844 F.3d 1359 (Fed. Cir. 2017) .......................................................................... 14
`
`Verizon Servs. Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007) ............................................................................ 9
`
`W.L. Gore & Assocs., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) .......................................................................... 15
`
`Other Authorities
`
`37 C.F.R. 1.75(c) ...................................................................................................... 31
`
`37 CFR § 42.120 ........................................................................................................ 1
`
`
`
`
`
`iv
`
`

`

`
`
`
`
`
`
`
`EXHIBIT LIST
`
`
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`Exhibit #
`
`Exhibit Name
`
`Declaration of Chandrajit Bajaj, Ph.D.
`
`Merriam-Webster’s Collegiate Dictionary, Tenth Edition
`(1994)
`Microsoft Press Computer Dictionary, Third Edition (1997)
`
`Macmillan Encyclopedia of Computers (Gary G. Bitter ed.,
`Macmillan Publ. Co. 1992)
`Declaration of Jaime G. Carbonell, Ph.D.
`
`Deposition Transcript of Tal Lavian, Ph.D. dated March 8,
`2017
`
`Errata Sheet to Deposition Transcript of Tal Lavian, Ph.D.
`March 8, 2017 deposition
`
`IDS filed Jan. 14, 2017 for U.S. Patent Application No.
`14/246,965
`
`Bob Metcalfe, Predicting the Internet’s catastrophic collapse
`and ghost sites galore in 1996, InfoWorld, p.61 (Dec. 4, 1995)
`
`AOL could strike gold with IM patent, CNN.com. (Dec. 19,
`2002)
`
`U.S. Patent No. 6,449,344 to Yair Goldfiner et al.
`
`The Computer and Information Science and Technology
`Abbreviations and Acronyms Dictionary David W. South, CRC
`Press, (6 May 1994)
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`
`
`
`
`v
`
`

`

`I.
`
`INTRODUCTION
`
`Pursuant to 37 CFR § 42.120, Windy City Innovations LLC (“Patent
`
`Owner”) submits this response to the Petition (Paper No. 2) filed by Facebook Inc.
`
`(“Petitioner”) requesting inter partes review (“IPR”) of Claims 189, 334, 342, 348,
`
`465, 580, 584, and 592 (“the Challenged Claims”) of U.S. Patent No. 8,694,657
`
`(Ex. 1001, “the ’657 Patent”). This filing is timely pursuant to the Board’s
`
`Scheduling Order (Paper No. 8) and the parties’ Joint Stipulation to Adjust
`
`Schedule (Paper No. 21), extending the due date of this response to March 31,
`
`2017.
`
`Patent Owner respectfully submits that the arguments presented and the
`
`additional evidence submitted, such as the testimony from Patent Owner’s expert,
`
`Jaime G. Carbonell, Ph.D. (Ex. 2005, “Carbonell Decl.”), demonstrate that the
`
`Challenged Claims are not obvious over combinations based on U.S. Patent
`
`No. 6,608,636 to Roseman (Ex. 1001, “Roseman”) for multiple reasons. While it
`
`is true that virtual teleconferencing and computer-based chat programs had been
`
`known in the art predating the ’657 Patent, the inventive arrangement of hardware
`
`and software disclosed and claimed by the ’657 solves problems in the area that
`
`were endemic to Internet-based connections both in terms of performance as well
`
`as security.
`
`Each of the instituted grounds is based on obviousness over the Roseman
`
`
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`reference alone or in combination with other references. However, Roseman
`
`discloses a different type of system from the Challenged Claims with a virtual
`
`conferencing system in which the host computer generates the display for each of
`
`the participants, i.e. the host creates the display, modifies the display in response to
`
`user’s input, and resends the image of the conference room to each participant.
`
`(Ex. 1003 at 1:30-60.) Additionally, Roseman is concerned with creating a
`
`conference environment that allows for virtual presence in an office. (Id. at 5:11-
`
`19.) Because Roseman attempts to simulate an office setting, Roseman attempts to
`
`make each software feature analogous to real-world office scenarios complete with
`
`“doors,” “knocks,” and “keys.” However, because Roseman is concerned with this
`
`hyper-realistic virtual office setting, it fails to appreciate many of the technical
`
`hurdles that the ’657 Patent addresses, particularly when operating on the Internet
`
`as opposed to an office WAN/LAN setting. (See, e.g., Ex. 1001 at 1:29–37; 1:56-
`
`59.) As a result of the fundamental differences between the claims and the base
`
`Roseman reference, several claim limitations are missing. Petitioner attempts to
`
`fill in these holes with a combination of several other references. However, in
`
`each case, the references either fail to teach the limitation, or the combination
`
`would not have been obvious to one of ordinary skill in the art.
`
`Roseman fails to teach or disclose one or more of (1) “tokens” as construed
`
`by the Board; (2) the “database” and “affords” limitations; (3) “via an Internet
`
`
`
`2
`
`

`

`network”; and (4) “two client software alternatives.” Moreover, these limitations
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`are either not taught by the additional prior art references, or Petitioner has not set
`
`forth adequate motivation to combine the references to arrive at the claims and
`
`prove obviousness by a preponderance of the evidence.
`
`In support of its Response, Patent Owner submits a declaration of its expert,
`
`Jaime G. Carbonell, Ph.D. (Ex. 2005, “Carbonell Decl.”), a technical expert with
`
`approximately four decades of experience in computer science including teaching,
`
`research and innovation. The Board, on a full record, including testimony from
`
`Patent Owner’s expert, should find that Petitioner failed to establish by a
`
`preponderance of the evidence the invalidity of any Challenged Claim.
`
`II.
`
`SUMMARY OF THE ’657 PATENT
`
`The ’657 Patent was filed during the infancy of the Internet, over 20 years
`
`ago, long before real-time digital communications were as ubiquitous as they are
`
`today. The inventor, Dr. Daniel Marks, recognized problems with available
`
`communications systems and disclosed a system that solved those problems and
`
`whose relevance is still felt today. The first problem identified by Dr. Marks was
`
`the difficulty in applying the “corporate” conference model to the Internet.
`
`(Ex. 1001 at 1:21-32.) In the corporate model, systems were often connected over
`
`private connections such as leased lines, LANs, or WANs. Because of the
`
`architecture of these corporate solutions, less emphasis was placed on security,
`
`
`
`3
`
`

`

`privacy, and platform independence and these solutions were ill-suited for real-
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`time Internet communications. The second problem was that “chat rooms,” such
`
`as America Online (“AOL”), had not yet reached Internet maturity. Chat rooms
`
`were closed platforms that provided limited options for users to access the systems.
`
`(Id. at 1:38-46.) Additionally, these chat rooms utilized proprietary connections
`
`and protocols and, prior to April 1996, AOL did not offer Internet-based real-time
`
`communications.1 The problems with these prior systems also included security
`
`issues, privacy issues, and real-time multimedia communication issues.
`
`Dr. Marks described a system to overcome the problems of both the
`
`“corporate” conference environments, such as those disclosed in Roseman, as well
`
`as the problems with the ISP environment such as AOL. Dr. Marks’ solution
`
`focused on the control computer, which included a database that stores tokens and
`
`which affords information to other programs, a concept that did not exist in the
`
`prior art. The database and tokens provided for the persistence necessary in a
`
`distributed environment such as the Internet. The tokens also provided security
`
`and privacy solutions that were implemented through other mechanisms and,
`
`therefore, not relevant in the context of corporate systems like Roseman.
`
`
`
`1 AOL Instant Messenger (AIM) was not released until 1997. AOL filed a patent
`
`for AIM with a priority date of 1997. (See, e.g., Ex. 2010; see also, Ex. 2011.)
`
`
`
`4
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`III. SUMMARY OF THE ALLEGED PRIOR ART
`
`A. U.S. Patent No. 6,608,636 to Roseman - “Server based virtual
`conferencing”
`
`Roseman discloses a server-based virtual conferencing system. Roseman
`
`describes a system for multimedia conferencing, in which parties are linked by
`
`both video and audio media. (Ex. 1003 at Abstract.) In Roseman, a conference is
`
`represented visually as a common virtual conference table on which each
`
`participant can place a document 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.) Unlike the ’657 Patent, Roseman discloses that the
`
`host computer makes modifications to the common conference table based on input
`
`received from users. (Id. at 7:54–60.) Each user can transmit a file by dragging it
`
`from the portion of his window outside the conference to the table of the
`
`conference and double-clicking the icon associated with the file. (Id. at 8:1-13.)
`
`Roseman is concerned with sharing a common display generated by a server where
`
`the program, data, and multimedia objects all exist on the server itself and not on
`
`the user computers. This results in a common display controlled by the host server
`
`with minimal user interaction and little participant control––a critical distinction
`
`from the Challenged Claims, as described in further detail below.
`
`In order to enter a closed conference room, a user needs an appropriate key.
`
`(Id. at 6:49-51.) Keys are essentially, a block of data, or a code. (Id. at 6:60-61.)
`
`
`
`5
`
`

`

`They are distributed electronically as part of invitations. (Id. at 54.) Certain types
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`of keys may not be copied or transferred while other types of keys may be passed
`
`to exactly one person, and a third type of key may be freely distributed and copied.
`
`(Id. at 43-47.)
`
`B.
`
`EP 0621532 A1 to Eugene Rissanen - “Password Verification
`System”
`
`Rissanen, entitled “Password Verification System,” discloses a system for
`
`storing voice templates in a database for authentication. (Ex. 1004 at 1:29-56.)
`
`Rissanen does not disclose a general purpose database for use in other contexts.
`
`C. Ronald J. Vetter, “Videoconferencing on the Internet”
`
`Vetter is an article that discusses the challenges in performing
`
`videoconferencing over the Internet in the 1995 context. In particular, it mentions
`
`issues relating to conferencing tools, operating systems and hardware limitations.
`
`More specifically, Vetter describes “video streams” that “overwhelmed the
`
`network and caused all lab work stations to ‘lock up.’” (Ex. 1005 at 5.) Vetter
`
`also describes that available whiteboard tools were “unacceptable,” because they
`
`“sometimes took several minutes to broadcast a simple graphic image to multiple
`
`participants.” (Ex. 1005 at pp. 4-5.)
`
`D. Mary Ann Pike et al., “Using Mosaic”
`
`Pike is a document that describes the Mosaic web browser in the 1994
`
`timeframe. (Ex. 1006 at 1.) Mosaic was one of the first web browsers and was
`
`
`
`6
`
`

`

`initially released in 1993. (Carbonell Decl at ¶25.) Petitioner’s expert, Dr. Lavian,
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`includes discussions of Pike for two purposes: (1) to establish the prevalence of
`
`URLs as uniform resource locators on the Internet, and (2) to establish that web
`
`browser software existed in the relevant time period, such that web browser
`
`software could access links and open external viewer software. (Ex. 1006 at p 41-
`
`46.) However, neither the Roseman reference nor the claims are directed to web
`
`browsers. (Carbonell Decl at ¶26.)
`
`E.
`
`Tom Lichty, “The Official America Online for Macintosh
`Membership Kit & Tour Guide”
`
`Lichty describes America Online (AOL) software from a high level with a
`
`focus on user interface. Lichty describes an “ignore” feature. (Ex. 1007 at p. 269).
`
`While Lichty describes this feature at a high level, Patent Owner’s expert’s
`
`understanding of AOL software including the level of skill in the art at the time,
`
`one would have understood that such ignore features were implemented locally on
`
`the user’s computer as a filter, i.e. as a user-interface or presentation feature.
`
`(Carbonell Decl at ¶27.) One of ordinary skill in the art would not have
`
`understood such features to be implemented at the server level. (Id.)
`
`IV. PROPER CONSTRUCTION OF DISPUTED TERMS
`
`A. Token
`
`The specification of the ’657 Patent describes “identity tokens,” and defines
`
`these tokens as “pieces of information associated with user identity.” (Ex. 1001 at
`
`
`
`7
`
`

`

`7:5-52.) The specification further adds that the tokens are “stored in memory 11 in
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`a control computer database,” which “serves as a repository of tokens.” (Id.at
`
`7:52-54.) Petitioner and the Board in its institution decision have both adopted a
`
`construction of “token” as “piece of information associated with user identity.”
`
`For the purpose of this Petition only, Patent Owner also adopts a similar
`
`construction.
`
`B. Database
`
`In its institution decision, the Board adopted a construction of “database” as
`
`“a collection of logically related data” based in part on Macmillan Encyclopedia of
`
`Computers which was published several years after the priority date of the ’657
`
`Patent. (Ex. 3001.) Patent Owner respectfully urges a narrower construction based
`
`on intrinsic evidence and the understanding of a person of ordinary skill in the art
`
`but provides analysis under both the Board’s construction and its own construction.
`
`The specification of the ’657 Patent describes the storage of tokens within a
`
`database as follows:
`
`The pieces of information are stored in memory 11 in a control
`
`computer database, along with personal information about the user,
`
`such as the user’s age. 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
`
`
`
`8
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`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.
`
`(Ex. 1001 at 7:52-59)
`
`Further, within the prosecution history of U.S. Patent Application No.
`
`14/246,965 which shares the same parent application (08/617,658) as the ’657
`
`Patent, the Patent Owner has already stated that:
`
`Because the database affords information to other programs and
`
`computers, it must store the data, such as the tokens, with persistence,
`
`such that tools can interact with the data such as a DBMS when
`
`providing the data to the participator computers of the authenticated
`
`users. The persistence and access features of the database are also
`
`critical because the “other programs” of the invention are separate and
`
`distinct programs that do not share the same memory space and which
`
`are linked by virtue of the inventive database and tokens.
`
`(Ex. 2008 (IDS filed Jan. 14, 2017 for U.S. Patent Application No.
`
`14/246,965); emphasis added). Thus the prosecution history supports the
`
`construction that a database is limited to “a collection of logically-related data
`
`which is stored with persistence and associated tools for interacting with the data
`
`such as a DBMS.” Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d
`
`
`
`9
`
`

`

`1295, 1306 (Fed. Cir. 2007) (“a statement made by the patentee during prosecution
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`history of a patent in the same family as the patent-in-suit can operate as a
`
`disclaimer,” even when “disclaimer occurred after patent-in-suit had issued”).
`
`As of the early 1990’s, there existed several known ways to store data for
`
`access by one or more computer programs. These storage arrangements included
`
`temporary storage such as random access memory (RAM) and other forms of
`
`cached storage. (Carbonell Decl. at ¶32.) Long term storage arrangements, such
`
`as floppy disks, magnetic disks, optical disks, and magnetic tape, were also known
`
`and used. (Id.)
`
`The concept of a “database” was also well-known in the early 1990’s and
`
`databases were used to store multimedia data. (Id. at ¶33.) Although databases
`
`often were associated with some storage or memory, storage is not equivalent to a
`
`database. (Id.) Two hallmarks of a database are (1) persistence of the data, and
`
`(2) interactivity with the data via a database management system (DBMS). Id.
`
`One exemplary source, the Macmillan Encyclopedia of Computers, describes a
`
`database as “a collection of related data that contains information about an
`
`enterprise such as a university or an airline.” (Ex. 2004.) Macmillan further states
`
`that “data include facts and figures that can be represented as numbers, text strings,
`
`images, or voices stored in files on disk or other media.” Macmillan then describes
`
`another criteria of a database, the database management system: “[a] database
`
`
`
`10
`
`

`

`management system (DBMS) is a set of programs (a software package) that allows
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`accessing and/or modification of the database.” (Id.)
`
`When data is stored in memory, there is often no persistence of that data.
`
`For example, if a program were to store information relating to a user in memory,
`
`that data is typically lost when the program completes its processes and exits.
`
`In a database, stored data is typically associated with meta-data. (Carbonell
`
`Decl. at ¶35.) The meta-data could then be interactively queried using a Simple
`
`Query Language (SQL) for rapid access of information contained in the data
`
`repository. (Id.) Standard storage either in temporary or permanent memory does
`
`not come equipped with this type of searching and retrieval architecture. (Id.)
`
`Interactive queries are particularly useful when data needs to be accessed
`
`simultaneously by multiple other users and their programs. (Id.) The DBMS
`
`typically handles all these queries.
`
`When individual user programs store information in program memory and
`
`not in a database, that information is generally unavailable to other users and their
`
`programs. (Id. at ¶36.) This is because operating systems generally enforce
`
`program execution consistency and security protocols so that a malicious user’s
`
`program does not have access to other user programs’ data. (Id.) Databases were
`
`known to handle data consistency and security across multiple applications, and
`
`especially across multiple remote applications. (Id.) Even if other user’s programs
`
`
`
`11
`
`

`

`were to somehow gain access to the information stored in program memory, it
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`would likely be raw data without any meaningful context.
`
`Based on the disclosure of the ’657 Patent, the “database” of the ’657 Patent
`
`would include both persistence, as well as a way to interact with the data such as a
`
`DBMS. This is because the claimed database is responsible for storing security
`
`information such as “tokens,” for other user programs to access. One of ordinary
`
`skill in the art would have expected that this type of security feature would persist
`
`in a location other than in program memory so that other user programs could
`
`access the information. The ’657 Patent describes the tokens as existing in
`
`hierarchies of tokens. Hierarchies are typical of database storage organization, and
`
`natural schema when storing and managing access to diverse information.
`
`In light of the foregoing, for the purpose of this Petition only, a database
`
`should be construed as “a collection of logically-related data which is stored with
`
`persistence and associated tools for interacting with the data such as a DBMS.”
`
`V.
`
`IT WOULD NOT HAVE BEEN OBVIOUS TO COMBINE THE
`REFERENCES AS SET FORTH BY PETITIONER
`
`Obviousness is a question of law premised on underlying facts. Kinetic
`
`Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1356–57 (Fed. Cir. 2012).
`
`Those predicated facts include: the scope and content of the prior art; the
`
`differences between the prior art and the claims; and the level of ordinary skill in
`
`the pertinent art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
`
`12
`
`
`
`

`

`question is not whether the differences themselves would have been obvious, but
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`whether the claimed invention as a whole would have been obvious. Stratoflex,
`
`Inc. v. Aeroquip Corp., 713 F.2d 1530, 1537 (Fed. Cir. 1983).
`
`In arriving at an obviousness determination, the Board must sufficiently
`
`explain and support the conclusions that the prior art references disclose all the
`
`elements recited in the Challenged Claims and a relevant skilled artisan not only
`
`could have made, but would have been motivated to combine all the prior art
`
`references in the way the patent claims, and reasonably expected success. Pers.
`
`Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017). That is, even
`
`if all the claim elements are found across a number of references, an obviousness
`
`determination must consider whether a person of ordinary skill in the art would
`
`have been motivated to combine those references. Intelligent Bio-Sys., Inc. v.
`
`Illumina Cambridge Ltd., 821 F.3d 1359, 1368 (Fed. Cir. 2016); Los Angeles
`
`Biomedical Research Inst. at Harbor-UCLA Med. Ctr. v. Eli Lilly & Co., 849 F.3d
`
`1049, 1067 (Fed. Cir. 2017) (vacating and remanding an obviousness
`
`determination, in part, because the Board did not make factual finding as to
`
`whether there was an apparent reason to combine all three prior art references to
`
`achieve the claimed invention and whether a person of skill in the art would have
`
`had a reasonable expectation of success from such a combination.) This
`
`combinability determination, as supported by an articulated motivation to combine,
`
`
`
`13
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`requires a plausible rationale as to why those prior art references would have
`
`worked together.” Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed.
`
`Cir. 2013). Absent some articulated rationale, a “common sense” finding is no
`
`different than the conclusory statement “would have been obvious.” In re Van Os,
`
`844 F.3d 1359, 1361 (Fed. Cir. 2017). Of additional importance, “knowledge of a
`
`problem and motivation to solve it are entirely different from motivation to
`
`combine particular references.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363,
`
`1373 (Fed. Cir. 2008).
`
`Moreover, even if all the claim elements are found across a number of
`
`combinable references with sufficient motivation to combine those references, a
`
`person of ordinary skill in the art would have had a reasonable expectation of
`
`success in making the claimed invention as a whole. Intelligent Bio-Sys., 821 F.3d
`
`at 1368 (Fed. Cir. 2016); Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340,
`
`1362 (Fed. Cir. 2009). To possess the requisite “reasonable expectation of
`
`success” in combining all the references to make the claimed invention as a whole,
`
`the person of ordinary skill in the art must be motivated to do more than merely
`
`vary all parameters with no indication of critical parameters or try all of a number
`
`of possible choices with no direction until successful. Medichem, S.A. v. Rolabo,
`
`S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Instead, the prior art must provide
`
`more than a mere “general guidance” that seems to be a “promising field of
`
`
`
`14
`
`

`

`experimentation.” Id.
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`The obviousness inquiry must exclude hindsight and avoid reading into the
`
`prior art the patent’s teachings. Graham v. John Deere Co., 383 U.S. 1, 36 (1966).
`
`“To imbue one of ordinary skill in the art with knowledge of the invention in suit,
`
`when no prior art reference or references of record convey or suggest that
`
`knowledge, is to fall victim to the insidious effect of a hindsight syndrome wherein
`
`that which only the inventor taught is used against its teacher.” W.L. Gore &
`
`Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983). Invoking
`
`design choice to add three to four distinct components to a system evidences
`
`impermissible hindsight, not obviousness. Graham, 383 U.S. at 36.
`
`A. Claim 189 is Not Obvious Over Roseman, Rissenan Vetter, Pike
`and Lichty
`
`Petitioner relies primarily on the Roseman reference which does not teach or
`
`disclose each limitation of the Challenged Claims, even when combined with
`
`numerous secondary references.
`
`Roseman describes a virtual conferencing system whereby a host computer,
`
`via software running on the host computer itself, controls the events of the virtual
`
`chat. Roseman is not concerned with the operation of the participating computers.
`
`In fact, the Roseman system describes the host computer as the component that
`
`“generates a common video screen.” (Ex. 1003 at 1:44.) This structure is
`
`fundamentally different from the system and methods claimed by the ’657 Patent,
`
`
`
`15
`
`

`

`which includes requirements for the control computer, as well as the participator
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`computers. These fundamental differences between Roseman and the claimed
`
`system and methods of the ’657 Patent lead to numerous other differences and
`
`discrepancies that Petitioner attempts to patch up with secondary references.
`
`However, several of these discrepancies, as discussed in more detail below, are
`
`simply not resolved by the combinations as set forth by Petitioner.
`
`Petitioner admits that the secondary references of Rissenan, Vetter, Pike, and
`
`Westaway do not instruct one of ordinary skill in the art to make the changes
`
`required to rewrite Roseman into the claims of the ’657 Patent. Petitioner states as
`
`follows:
`
`Rissenan is cited to show that the tokens of Roseman could be stored
`
`in a “database,” Vetter to show that Roseman could have been
`
`adapted to communicate over the “Internet,” Pike to show that
`
`Roseman could have used “URLs,” and Lichty to show basic and
`
`known features of America Online chat rooms.
`
`(Pet. at 8 (emphasis added).) It is apparent from Petitioner’s own statements that it
`
`is merely advancing a set of “obvious to try” arguments, none of which result in
`
`the Challenged Claims.
`
`Claim 189 is particularly worrisome. Petitioner submits only 4 rationales
`
`(Pet. at 19, 25, 37, 43) to make 8 distinct obviousness conclusions (Pet. at 18, 23,
`
`
`
`16
`
`

`

`27, 30, 36, 42, 46, 47). The reason for this is glaringly obvious: Petitioner submits
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01159
`
`PATENT NO. 8,694,657
`
`the same rationale for different limitations, ignoring the differences between
`
`limitations.
`
`Moreover,