IPR2016-01159
`Petitioner’s Reply
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC.
`Petitioner
`
`v.
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`WINDY CITY INNOVATIONS, LLC
`Patent Owner.
`
`
`Case IPR2016-01159
`Patent 8,694,657
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`PETITIONER’S REPLY
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`Petitioner’s Reply
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`FACEBOOK, INC.
`Petitioner
`
`v.
`
`WINDY CITY INNOVATIONS, LLC
`Patent Owner.
`
`
`Case IPR2016-01159
`Patent 8,694,657
`
`
`PETITIONER’S REPLY
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`
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`TABLE OF CONTENTS
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`Page
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`2.
`3.
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`I.
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`II.
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`B.
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`C.
`D.
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`CLAIM CONSTRUCTION ........................................................................... 1
`A.
`“Censorship” ........................................................................................ 3
`B.
`“Database” ............................................................................................ 3
`1.
`Patent Owner’s Construction Lacks Intrinsic Support .............. 3
`2.
`Patent Owner’s Extrinsic Evidence Fails ................................... 6
`CLAIMS 189, 334, 342, 348, 465, 580, 584, AND 592 ARE
`UNPATENTABLE ......................................................................................... 8
`A.
`“Internet” .............................................................................................. 8
`1.
`Dr. Metcalfe’s Inaccurate Prediction of Internet Collapse ........ 8
`2.
`The Existence of IDSN and ATM Would Not Have
`Discouraged Use of the Internet As Disclosed in Vetter ........... 9
`“Database” .......................................................................................... 10
`1.
`The Patent Owner’s Speculative “Hash Function”
`Argument ................................................................................. 10
`Roseman and Rissanen Are Properly Combinable .................. 12
`Roseman + Rissanen Disclose A “Database” Even Under
`The Patent Owner’s Erroneous Construction .......................... 14
`The Patent Owner’s “Tokens” Arguments Fail ................................. 15
`“Other Programs to Access” .............................................................. 17
`1.
`Conference Rooms in Roseman Are Separate Programs ........ 18
`2.
`Programs on Participator Computers ....................................... 19
`“Two Client Software Alternatives” .................................................. 20
`E.
`III. CONCLUSION ............................................................................................. 21
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`-i-
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
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`Allied Erecting and Dismantling Co., Inc. v. Genesis Attachments,
`LLC,
`825 F.3d 1373 (Fed. Cir. 2016) .......................................................................... 12
`Biogen, Inc. v. Berlex Labs., Inc.,
`318 F.3d 1132 (Fed. Cir. 2003) ............................................................................ 5
`Clare v. Chrysler Group LLC,
`819 F.3d 1323 (Fed. Cir. 2016) ............................................................................ 5
`Egyptian Goddess, Inc. v. Swisa, Inc.,
`543 F.3d 665 (Fed. Cir. 2008) (en banc) .............................................................. 4
`In re Etter,
`756 F.2d 852 (Fed. Cir. 1985) (en banc) ............................................................ 13
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) ............................................................................ 9
`In re Google Litigation,
`2011 WL 8603085 (N.D. Cal. 2011) .................................................................... 5
`In re Keller,
`642 F.2d 413 (C.C.P.A. 1981) ............................................................................ 12
`In re Merck & Co., Inc.,
`800 F.2d 1091 (Fed. Cir. 1986) .......................................................................... 11
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .................................................................... 12, 13
`Moleculon Research Corp. v. CBS, Inc,
`793 F.2d 1261 (Fed. Cir. 1986) ............................................................................ 4
`PAR Pharm., Inc. v. TWI Pharm., Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) ............................................................................ 9
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`-ii-
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 1
`Statutes
`35 U.S.C. § 103 ........................................................................................................ 18
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`IPR2016-01159
`Petitioner’s Reply
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`List of Exhibits
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`Description of Document
`Ex. No
`1001 U.S. Patent No. 8,694,657 to Daniel L. Marks
`1002 Declaration of Tal Lavian, Ph.D.
`1003 U.S. Patent No. 6,608,636 to Robert D. Roseman
`1004
`EP 0621532 A1 to Eugene Rissanen, published on April 13, 1994
`1005
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`Ronald J. Vetter, Videoconferencing on the Internet, Computer, IEEE
`Computer Society, Vol. 28, No. 1, at pp.77-79 (Jan. 1995)
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`1006
`1007
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`1008
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`Excerpts from Mary Ann Pike et al., Using Mosaic (1994)
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`Excerpts from Tom Lichty, The Official America Online for Macintosh
`Membership Kit & Tour Guide (2d ed. 1994)
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`Tim Berners-Lee et al., Request for Comments (RFC) 1738, Uniform
`Resource Locators (URL), Dec. 1994
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`1009
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`James Coates, A Mailbox in Cyberspace Brings World to Your PC,
`Chicago Tribune, Mar. 1995
`1010 Date-stamped excerpts from Mary Ann Pike et al., Using Mosaic
`(1994)
`1011 Date-stamped excerpts from Tom Lichty, The Official America Online
`for Macintosh Membership Kit & Tour Guide (2d ed. 1994)
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`1012
`Biography of Mark. R. Weinstein
`1013 Declaration of Mark R. Weinstein ISO Motion for Pro Hac Vice
`Admission
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`[Reserved]
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`1014
`1015
`[Reserved]
`1016 Deposition Transcript of Jaime G. Carbonell (June 26, 2017)
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`IPR2016-01159
`Petitioner’s Reply
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`List of Exhibits
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`1017
`1018
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`1019
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`1020
`1021
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`Excerpts from Henry F. Korth et al., Database System Concepts (1991)
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`Excerpts from IEEE Internet Computing, “Bob Metcalfe on What’s
`Wrong with the Internet: It’s the Economy, Stupid” (March 1997)
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`Reuters article entitled “Sage who warned of Net’s collapse eats his
`words” (April 11, 1997)
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`Excerpts from Mary Loomis, The Database Book (1988)
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`Second Declaration of Tal Lavian, Ph.D.
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`IPR2016-01159
`Petitioner’s Reply
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`Petitioner respectfully submits this Reply in support of Inter Partes Review
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`of U.S. Patent No. 8,694,657 (Ex. 1001) (“’657 patent”) and addressing Patent
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`Owner’s Response (Paper 22 (“Response”)). This Reply is supported by the
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`Second Declaration of Tal Lavian, Ph.D. (Ex. 1021 (“Second Lavian Decl.”)).
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`I.
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`CLAIM CONSTRUCTION
`The patent owner’s response recycles the failed claim construction
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`arguments made in its Preliminary Response with respect to the terms
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`“censorship” and “database.” The patent owner’s arguments rely entirely on
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`extrinsic evidence and ignore the patent specification, which the Federal Circuit
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`has instructed is “the single best guide to the meaning of a disputed term.” Phillips
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`v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc).
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`The Institution Decision correctly rejected the patent owner’s narrow
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`constructions of “censorship” and “database,” and the patent owner has done
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`nothing to justify any deviation from that decision. To the contrary, the patent
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`owner has doubled down on those positions by simply recycling verbatim, through
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`a different expert witness (Dr. Carbonell), the failed opinions made by the patent
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`owner’s previous expert (Dr. Bajaj) submitted with the Patent Owner Preliminary
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`Response. (Compare Carbonell Decl., Ex. 2005, ¶64 (censorship), ¶¶32-37
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`(database) with Bajaj Decl., Ex. 2001, ¶29 (identical language re censorship), ¶¶19-
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`24 (identical language re database).) Because the patent owner simply recycled its
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`IPR2016-01159
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`pre-institution arguments,1 the patent owner and its expert do not acknowledge, let
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`alone address, the valid criticisms made by the Board. The Board should therefore
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`adhere to its claim construction positions.
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`1 The verbatim recycling of patent owner’s pre-institution argument raises a
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`credibility issue with respect to patent owner’s current expert, Dr. Carbonell.
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`Substantial portions of Dr. Carbonell’s declaration were copied directly, with little
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`or no change, from the declaration of Dr. Bajaj (Ex. 2001) filed six months earlier
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`with the patent owner’s Preliminary Response. (Compare Ex. 2001 (Bajaj), ¶¶19-
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`24, 29 with Ex. 2005 (Carbonell), ¶¶32-37, 64.) Although one expert may in
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`appropriate circumstances review and adopt the opinions of another expert, Dr.
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`Carbonell’s declaration never acknowledges or references Dr. Bajaj’s declaration,
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`and Dr. Carbonell claimed to have no knowledge of Dr. Bajaj’s declaration when
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`asked about it during his deposition. (Ex. 1016, 132:2-12.) The Petitioner
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`respectfully submits that the wholesale copying (without attribution) of entire
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`portions Dr. Bajaj’s declaration is a factor the Court should consider in
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`determining the evidentiary weight, if any, to which Dr. Carbonell’s opinions
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`should be afforded.
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`IPR2016-01159
`Petitioner’s Reply
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`A.
`“Censorship”
`The Board correctly observed in the Institution Decision that the patent
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`owner’s proposed construction of “censorship” ignores express statements in the
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`patent specification and instead relies on extrinsic evidence. (IPR2016-01159
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`Paper 7 (“Decision”) at 11-12; Second Lavian Decl. ¶¶8-9.) Because the patent
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`owner has simply presented the identical argument it made pre-institution, the
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`Board should again reject the patent owner’s narrow construction.
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`B.
`“Database”
`The patent owner repeats its arguments from its Preliminary Response that
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`“database” should be construed as “a collection of logically-related data which is
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`stored with persistence and associated tools for interacting with the data such as a
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`DBMS.” (Response at 12.) In related IPR2016-01158, the Board construed
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`“database” to mean “a collection of logically related data.” (IPR2016-01158 Paper
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`7 at 10.) That construction is generally consistent with the plain and ordinary
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`meaning of “database” to a person of ordinary skill in the art in 1996. (Lavian
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`Second Decl. ¶11.) The patent owner’s construction should again be rejected.
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`1.
`Patent Owner’s Construction Lacks Intrinsic Support
`The written description contains only a few sentences that mention the
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`database, and none of those sentences require that the database be implemented in
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`any particular way. (’245, 8:6-15; ’356, 8:9-21; ’552, 7:61-8:5; ’657, 7:49-59.)
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`The specification says nothing about data in the database being “stored with
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`persistence,” or the database having “associated tools for interacting with the data
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`such as a DBMS,” as the patent owner proposes. The terms “DBMS” or “database
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`management system” appear nowhere in the written description or claims. There is
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`simply no support in the intrinsic record for the patent owner’s proposed
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`construction of “database.”
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`The only intrinsic evidence the patent owner can muster is its own self-
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`serving arguments submitted to the PTO on an IDS filed on January 14, 2017 (Ex.
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`2008) during prosecution of a related application (14/246,965). (Response at 9.)
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`These statements carry no weight in these proceedings for at least two reasons.
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`First, the Federal Circuit has made clear that self-serving statements during
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`the pendency of another proceeding, such as those made in the IDS, are entitled to
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`no weight. The IDS was not submitted in response to any action by the PTO, and
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`was filed by the patent owner after IPR was instituted and after the PTAB
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`expressly rejected the patent owner’s narrow construction of “database.” The
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`statements in the IDS conveniently track the construction the patent owner seeks
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`here. And although the IDS claims to have been submitted to furnish additional
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`prior art to the PTO, its gratuitous statements about “database” do not mention or
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`discuss any specific reference. (Ex. 2008, at 2.) In short, the IDS was obviously
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`submitted to place the patent owner’s “database” arguments into the file wrapper
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`of a related application, in the hope of bolstering those arguments here.
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`The Federal Circuit confronted a nearly identical situation in Moleculon
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`Research Corp. v. CBS, Inc., in which a patent owner submitted self-serving
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`statements to the PTO during the pendency of litigation involving the patent. 793
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`F.2d 1261 (Fed. Cir. 1986), disapproved on another point, Egyptian Goddess, Inc.
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`v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc). In affording no weight to
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`the patent owner’s statements, the Federal Circuit cautioned that statements made
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`to the PTO during litigation “might very well contain merely self-serving
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`statements which likely would be accorded no more weight than testimony of an
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`interested witness or argument of counsel. Issues of evidentiary weight are
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`resolved on the circumstances of each case.” Id. at 1270 (underlining added). In
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`this case, the patent owner’s statements were an obvious attempt to bolster its
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`narrow definition of “database” in this proceeding, and as such, are just as
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`meritless there as they are in the patent owner’s response.
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`Second, Federal Circuit law is clear that statements during the prosecution of
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`a patent cannot expand the disclosures of its specification. See, e.g. Clare v.
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`Chrysler Group LLC, 819 F.3d 1323, 1332 (Fed. Cir. 2016) (quoting Biogen, Inc.
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`v. Berlex Labs., Inc., 318 F.3d 1132, 1140 (Fed. Cir. 2003) (“Representations
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`during prosecution cannot enlarge the content of the specification…”)); see also In
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`re Google Litig., 2011 WL 8603085, at *4 (N.D. Cal. 2011) (noting that
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`“prosecution is not a platform for a patentee to ‘enlarge, diminish, or vary the
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`limitations in the claims.’”) (citation omitted). As noted above, the specification
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`here does not say a word about the database storing the data with persistence or
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`including a DBMS or other tools for interacting with the data. The patent owner’s
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`self-serving arguments to the PTO cannot change the content of the specification
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`and should be afforded no weight.
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`2.
`Patent Owner’s Extrinsic Evidence Fails
`Having no legitimate intrinsic evidence to support its position, the patent
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`owner relies primarily on extrinsic evidence in the form of testimony from its
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`retained expert, Dr. Carbonell. The key to Dr. Carbonell’s opinion about the
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`meaning of “database” is his assumption that “[t]wo hallmarks of a database are (1)
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`persistence of the data, and (2) interactivity with the data via a database
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`management system (DBMS).” (Carbonell Decl. ¶39.) Dr. Carbonell cites no
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`technical treatises or other materials to support his “two hallmarks” point.
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`But Dr. Carbonell’s opinions overlook the fact that a “database” and a
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`“database management system” (DBMS) are two different things. The term
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`“database” refers to the actual collection of data whereas the DMBS refers to
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`IPR2016-01159
`Petitioner’s Reply
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`software tools for managing the data. (Lavian Second Decl. ¶12 (citing Korth, Ex.
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`1017).) A DBMS is thus not properly part of the definition of a “database.” (Id.)
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`The other flaw with Dr. Carbonell’s opinion is that a “database,” i.e., a
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`collection of logically related data under the Board’s definition, does not require a
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`DBMS. (Lavian Second Decl. ¶13.) It was well-known to persons of ordinary
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`skill in the art that software programs could store and retrieve data using their own
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`internal logic and programming, without relying on a DBMS. (Id. ¶¶13-14
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`(discussing Mary Loomis, The Database Book (1987), Ex. 1020.) For example, it
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`was well-known that software applications could create their own databases by
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`accessing files using their own internal logic, without requiring separate software
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`tools such as a DBMS. (Id. ¶13.) A person of ordinary skill in the art would have
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`appreciated that, in fact, it might have been preferable not to use a DBMS in
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`implementing the claimed “database” to avoid the complexity and overhead that a
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`DBMS would have imposed. (Id. ¶16.) The Board should therefore reject the
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`patent owner’s unsupported definition of “database.”2
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`2 As explained in more detail in Part II.B, infra, even if the Board were to adopt
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`the patent owner’s “database” construction, it would not distinguish the prior art.
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`IPR2016-01159
`Petitioner’s Reply
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`II. CLAIMS 189, 334, 342, 348, 465, 580, 584, AND 592 ARE
`UNPATENTABLE
`A.
`“Internet”
`The patent owner presents various arguments for why, according to the
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`patent owner, Roseman and Vetter cannot be combined to show the “Internet” as
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`recited in the claims. These arguments are baseless.
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`1.
`Dr. Metcalfe’s Inaccurate Prediction of Internet Collapse
`In arguing that a person of ordinary skill in the art would not have been
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`motivated to use the Internet to implement the system of Roseman, the patent
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`owner and its expert point to a statement by Bob Metcalfe in late 1995 predicting
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`that the Internet “will soon go spectacularly supernova and in 1996 catastrophically
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`collapse.” (Carbonell Decl. ¶57; Response at 28.) But the incorrect prediction of a
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`single individual would not have discouraged (and did not discourage) the industry
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`from using the Internet. (Lavian Second Decl. ¶¶22, 25.) History quickly proved
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`Dr. Metcalfe’s prediction to be wrong, and he retracted it. (Id., ¶22.) There is no
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`evidence that people in the industry, including Dr. Metcalfe, took the prediction
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`seriously or altered their behavior based on it.3
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`3 Dr. Metcalfe retracted his prediction in dramatic fashion by literally eating his
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`words. In 1997, he reportedly took a printed copy of his article that predicted the
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`collapse of the Internet, placed it in a blender with some liquid, and then consumed
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`IPR2016-01159
`Petitioner’s Reply
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`2.
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`The Existence of IDSN and ATM Would Not Have
`Discouraged Use of the Internet As Disclosed in Vetter
`The patent owner also asserts that a person of ordinary skill in the art would
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`not have used the Internet to implement the system of Roseman because other
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`communication technologies, such as ISDN and ATM, were allegedly more
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`suitable. But Federal Circuit law is clear that the existence of alternatives to the
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`Internet, even if those alternatives might have been advantageous in some respects,
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`does not teach away from use of the Internet or render the Internet non-obvious.
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`See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[O]ur case law does not
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`require that a particular combination must be the preferred, or the most desirable,
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`combination described in the prior art in order to provide motivation for the current
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`invention.”); PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1197–98 (Fed.
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`Cir. 2014) (“Our precedent, however, does not require that the motivation be the
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`best option, only that it be a suitable option from which the prior art did not teach
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`away.”). The patent owner’s arguments are also undermined by statements in
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`Vetter demonstrating that the Internet was entirely suitable for conferencing
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`systems such as the one described in Roseman. (Lavian Second Decl. ¶21.)
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`the pulp. (Ex. 1019.) Dr. Metcalfe also reportedly predicted (again incorrectly)
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`that wireless networking technologies would die out by the mid 1990s.
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`<https://en.wikipedia.org/wiki/Robert_Metcalfe> (last visited July 12, 2017).
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`IPR2016-01159
`Petitioner’s Reply
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`For example, the patent owner does not address Vetter’s unequivocal
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`statement that “[v]ideoconferences are becoming increasingly frequent on the
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`Internet and generating much research interest.” (Vetter, Ex. 1005, p.77.)
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`Although Vetter describes various challenges encountered during the virtual
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`classroom project he described, it provides clear motivation to use conferencing
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`systems over the Internet and an expectation that doing so would be successful.
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`(Lavian Second Decl. ¶21.) Dr. Lavian provided a full explanation in his opening
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`declaration as to why the challenges reported in Vetter were nothing more than
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`garden variety networking issues that would not have discouraged a person of
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`ordinary skill in the art from combining with Roseman, particularly given the
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`numerous express motivations to combine in Vetter. (Ex. 1002, Lavian Decl.
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`¶¶61-66.) The patent owner did not address any of those arguments.
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`B.
`“Database”
`The patent owner next presents a series of arguments asserting that Roseman
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`and Rissanen do not disclose the claimed “database which serves as a repository of
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`tokens for other programs to access.” These arguments fail.
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`1.
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`The Patent Owner’s Speculative “Hash Function”
`Argument
`As explained in the Petition, the “keys” in Roseman correspond to the
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`claimed “tokens.” Roseman explains that “meeting room ‘knows’ about each key
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`and its invitation level.” (Roseman, 9:49-50 (emphasis added).) The meeting
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`room is, in turn, stored on the host. (Id., 9:61-63, 7:30-31, 12:16-18.)
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`The patent owner speculates that the host computer in Roseman may not
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`actually store the keys because, according to the patent owner, the meeting room in
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`Roseman could have applied a “hash function” to determine if a key is valid. “In
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`this manner,” according to the patent owner, “a room can ‘know’ about a key
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`without storing any particular keys.” (Carbonell Decl. ¶40; see also Response at
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`21.) This argument should be rejected for at least two reasons.
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`First, the patent owner’s “hash function” argument is legally irrelevant to the
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`legal question of obviousness. Federal Circuit law is clear that “[n]on-obviousness
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`cannot be established by attacking references individually where the rejection is
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`based upon the teachings of a combination of references.” In re Merck & Co., Inc.,
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`800 F.2d 1091, 1097 (Fed. Cir. 1986). The patent owner’s hash function argument
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`attacks Roseman individually but ignores the fact that the Petition cited Roseman
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`in combination with Rissanen to show that it would have been obvious to store the
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`“keys” in a database. (Petition at 18-20.) The patent owner concedes in its
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`Response that “Rissenan [sic] does disclose a database” (Response at 22), so
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`whether Roseman itself discloses storage of keys is beside the point. Even if the
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`IPR2016-01159
`Petitioner’s Reply
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`“hash function” argument had merit (which it does not), it would not diminish the
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`fact that the claimed storage of tokens in a database is obvious in view of Rissanen.
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`Second, the patent owner’s “hash function” argument is based on pure
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`speculation and conjecture. Roseman does not suggest, let alone disclose, the use
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`of any hash function for checking the validity of keys. (Second Lavian Decl. ¶29.)
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`The use of such a “hash function” is also inconsistent with the teachings in
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`Roseman. (Id., ¶¶29-30.) For example, the host computer in Roseman can
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`distribute invitations to other users, the invitations including the keys associated
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`with the meeting room. (Roseman, 4:23-25, 9:42-43, 9:54-55.) Roseman could
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`not distribute meeting room keys to other users if, as the patent owner asserts, the
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`host simply used a hash function and did not store any actual meeting room keys.
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`(Second Lavian Decl. ¶29.) Nothing in Roseman suggests that the meeting room
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`keys are somehow deleted by the host after they are distributed to other users. (Id.,
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`¶30.) Nor would this make any sense considering Roseman’s express statement
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`that the “meeting room ‘knows’ about each key and its invitation level” (9:49-50
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`(emphasis added)).
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`2.
`Roseman and Rissanen Are Properly Combinable
`The patent owner also argues that a person of ordinary skill in the art would
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`not have been motivated to combine Rissanen and Roseman. The patent owner’s
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`argument is based on an attempt to make the combination of Roseman and
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`IPR2016-01159
`Petitioner’s Reply
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`Rissanen appear more complex than it is. (Response at 22-23.) The patent owner
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`and its expert have conjured various excuses for why the combination might be
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`technically complicated or difficult to implement if one were to attempt to
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`physically combine the two systems. (Id.)
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`But this argument is contrary to established law. “The test for obviousness
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`is not whether the features of a secondary reference may be bodily incorporated
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`into the structure of the primary reference.” Allied Erecting and Dismantling Co.,
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`Inc. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (quoting
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`In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981)); see also In re Mouttet, 686 F.3d
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`1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of
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`obviousness based on teachings from multiple references does not require an
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`actual, physical substitution of elements.”). The test for obviousness, in other
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`words, is “not whether the references could be physically combined but whether
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`the claimed inventions are rendered obvious by the teachings of the prior art as a
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`whole.” Id. (quoting In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc)).
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`The Petition cites Rissanen for a narrow purpose of showing disclosure of
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`storing user identity and authentication information in a database. (Lavian Second
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`Decl. ¶38.) There is simply nothing complicated about storing the “keys”
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`Roseman in a database, as suggested by Rissanen. (Id.) The patent owner’s
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`attempt to obfuscate this straightforward combination through arguments about
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`physical combinability should be rejected.
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`Dr. Carbonell himself admitted at his deposition that databases as of early
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`1996 could be used to store user identity and authentication information. (Ex.
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`1014, Carbonell Depo. Tr., 43:17-44:7.) He further agreed that nothing in
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`Roseman prevents storage the keys in a database. (Id., 53:16-55:3.) It would have
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`been obvious to combine Roseman and Rissanen. (Second Lavian Decl. ¶40.)
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`3.
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`Roseman + Rissanen Disclose A “Database” Even Under
`The Patent Owner’s Erroneous Construction
`As explained in Part I.B above, the patent owner proposed a narrow
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`construction of “database” that has no support in the intrinsic record. That
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`construction is incorrect for the reasons previously identified, but even if the Board
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`were to adopt it, the claimed “database” would still be disclosed by the
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`combination of Roseman and Rissanen.
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`There appears to be no dispute on this point. The patent owner devotes most
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`of its argument about the “database” limitation to Roseman and does not appear to
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`dispute that Rissanen discloses the claimed database. The patent owner
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`specifically concedes in its Response that “Rissenan [sic] does disclose a
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`database” (Response at 22), as noted above. The combination of Roseman and
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`IPR2016-01159
`Petitioner’s Reply
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`Rissanen clearly disclose the claimed “database” even under the patent owner’s
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`improperly narrow construction. (Lavian Second Decl. ¶¶36-38.)
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`C. The Patent Owner’s “Tokens” Arguments Fail
`The Board construed “token” as a “piece of information associated with
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`user identity,” and the patent owner does not dispute that construction. The patent
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`owner instead argues that the keys in Roseman do not qualify as “tokens” because,
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`according to the patent owner, they are associated with a conference room and not
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`a user identity. (Response at 18.)
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`The patent owner’s arguments cannot be reconciled with the plain
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`disclosures in Roseman. For example, Roseman discloses a “Level 1” key that is
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`“for the invitee only” and “may not be passed to any other person and may not be
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`copied.” (Roseman, 9:37, 9:43-44.) Roseman thus clearly discloses a piece of
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`information associated with user identity, i.e., the identity of the Invitee.
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`The patent owner’s attempt to distinguish the “Level 1” key teachings in
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`Roseman is confusing and hard to follow. (Response at 19-20.) The patent owner
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`ambiguously states that the “Level 1” invitation in Roseman “offers only the
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`suggestion of association with a specific invitee.” (Id. at 19) The patent owner
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`continues by asserting that the key in Roseman is electronically sent with an
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`invitation and that the invitation serves no purpose after its distribution. (Id.)
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`“Thus, sending an invitation to a specific invitee,” the patent owner argues, “is a
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`Petitioner’s Reply
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`far stretch from disclosing a key being associated with a specific user.” (Id.) “In
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`the case of a key being distributed as part of a Level 1 invitation,” the patent owner
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`continues, “Roseman does not require recording any user information in the key to
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`restrict transferability.” (Id.)
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`But the patent owner’s argument ignores the plain language of the agreed-
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`upon construction of “token,” which merely requires a piece of information
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`associated with user identity. The claims do not require that the association with
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`user identity be implemented in any particular way. Roseman expressly discloses
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`that the “Level 1” key is “for the invitee only” and “may not be passed to any other
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`person and may not be copied.” (Roseman, 9:37, 9:43-44.) It is hard to imagine a
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`clearer example of a “piece of information associated with user identity” than a
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`key that can be used only by the particular invitee.
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`The patent owner’s argument that “Roseman does not require recording of
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`any information in the key to restrict transferability” (Response at 19), is irrelevant
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`because Roseman clearly discloses that transferability is in fact restricted.
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`Restrictions on a key are enforced when the person associated with the key
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`attempts to use the key to access the conference room. (Roseman, 10:61-64 (“To
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`open a door with a key, the user drops the key onto the door lock. If the key is
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`valid and the user has authority to use the key, the door opens and the user is
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`IPR2016-01159
`Petitioner’s Reply
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`admitted to the room.”); Lavian Second Decl. ¶46.) The claim also does not
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`require that the “association” with user identity be encoded into the key itself.
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`Finally, the patent owner argues that “the tokens must be capable of serving
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`purposes beyond authentication,” and lists five functions from the patent
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`specification. (Response at 20.) But those functions are not recited in the claims
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`or in the agreed-upon definition of “token.” There is no basis to argue that the
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`claimed tokens must perform those unclaimed functions.
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`D.
`“Other Programs to Access”
`The challenged claims also recite a “database which serves as a repository of
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`tokens for other programs to access.” The Petition provided two separate theories
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`for why Roseman disclosed this limitation. First, the Petition explained that the
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`“other programs” in Roseman took the form of the various meeting and
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`conference rooms maintained on the host computer. (Petition at 19-20.) Roseman
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`itself states that the conference room ‘itself is actually a combination of stored data
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`and computer programs.’” (Id. (quoting Roseman, 12:16-18).) Second, the
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`Petition provided an alternative mapping in which the “other programs” took the
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`form of the programs on the participator computers of invitees who present their
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`key to the host to gain access to a conference room. (Id. at 21-22.) The patent
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`owner addresses only the first theory and ignores the second.
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`IPR2016-01159
`Petitioner’s Reply
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`1.
`Conference Rooms in Roseman Are Separate Programs
`With respect to the first theory identified in the Petition, the patent owner
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`asserts that Roseman does not disclose “other programs,” plural. The gist of the
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`patent owner’s argument is that the conference rooms in Roseman are actually just
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`a single program. The fact that Roseman maintains multiple conference rooms,
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`according
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