IPR2016-01159
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`PATENT NO. 8,694,657
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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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
`
`Patent No. 8,694,657
`Issue Date: April 8, 2014
`Title: REAL TIME COMMUNICATIONS SYSTEM
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`
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`WINDY CITY INNOVATIONS LLC’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`8,694,657
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`Case No. IPR2016-01159
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`TABLE OF CONTENTS
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`IPR2016-01159
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`PATENT NO. 8,694,657
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`I.
`II.
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`III.
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`INTRODUCTION ........................................................................................... 1
`THE PETITION SHOULD NOT BE INSTITUTED BECAUSE
`PETITIONER'S CLAIM CONSTRUCTIONS ARE INCORRECT IN
`LIGHT OF THE SPECIFICATION, THE CLAIMS, AND THE LAW ........ 4
`A.
`Petitioner’s Proposed Construction of “Token” Is Incorrect and
`Reads Out the Database Requirement ................................................... 4
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`B.
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`Petitioner Does Not Propose a Construction for the Term
`“Censor” and Ultimately Reads the Term Out of the Claims ............... 6
`PETITIONER HAS NOT DEMONSTRATED A REASONBLE
`LIKELIHOOD OF SUCCESS FOR THE GROUNDS ADVANCED
`IN THE PETITION AND THE PETITION SHOULD BE DENIED. ........... 8
`A.
`Requirements for Showing Obviousness Under 35 U.S.C. §
`103. ........................................................................................................ 8
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`B.
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`Claim 189 is Not Obvious Over Roseman, Rissanen, Vetter,
`Pike, and Lichty. .................................................................................. 10
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`1.
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`2.
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`3.
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`Database Which Serves as a Repository of Tokens for
`Other Programs to Access, Thereby Affording
`Information to Each of a Plurality of Participator
`Computers ................................................................................. 13
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`Communicating Via an Internet Network ................................. 17
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`Determining Whether the First User Identity is
`Individually Censored from Sending Data in the
`Communications, the Data Presenting at least One of a
`Pointer, Video, Audio, a Graphic, and Multimedia .................. 19
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`C.
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`Independent Claim 465 Is Not Unpatentable ...................................... 22
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`D. Dependent Claims 334, 342, 348, 580, 584, and 592 Are Not
`Unpatentable ........................................................................................ 23
`IV. CONCLUSION .............................................................................................. 23
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`i
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`EXHIBIT LIST
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`IPR2016-01159
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`PATENT NO. 8,694,657
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`Exhibit #
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`Exhibit Name
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`2001
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`2002
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`2003
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`2004
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`Declaration of Dr. Chandrajit Bajaj, Ph.D.
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`Merriam-Webster’s Collegiate Dictionary, Tenth Edition
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`(1994)
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`Microsoft Press Computer Dictionary, Third Edition (1997)
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`Macmillan Encyclopedia of Computers (Gary G. Bitter ed.,
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`Macmillan Publ. Co. 1992)
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`ii
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`IPR2016-01159
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`PATENT NO. 8,694,657
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`TABLE OF AUTHORITIES
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` Page(s)
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`Federal Cases
`Apple, Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00355 (PTAB June 26, 2015) ............................................................. 10
`
`C.B. Distributors, Inc. v. Fontem Holdings 1 B.V.
`IPR2013-00387 (PTAB, Dec. 24, 2014) ............................................................ 12
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`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009) .......................................................................... 27
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`Cisco Sys., Inc., v. C-Cation Techs., LLC,
`IPR2014-00454 (PTAB. Aug. 29, 2014) ............................................................ 11
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`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ...................................................................................... 3, 10, 12
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 11
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 11, 12
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`Plant Science, Inc. v. The Andersons, Inc.,
`IPR2014-00939 (PTAB Dec. 17, 2014) ............................................................. 11
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`Whole Space Indus. v. Zipshade Indus.,
`IPR2015-00488 (PTAB July 24, 2015) ........................................................ 11, 12
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`Federal Statutes
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`35 U.S.C. § 102 .......................................................................................................... 2
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`35 U.S.C. § 103 ........................................................................................................ 10
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`35 U.S.C. § 311(b) ..................................................................................................... 2
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`35 U.S.C. § 314(a) ..................................................................................................... 3
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`iii
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`IPR2016-01159
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`PATENT NO. 8,694,657
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`Regulations
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`37 C.F.R. 1.75(c) ...................................................................................................... 27
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`37 C.F.R. § 42.6(a)(3) .......................................................................................... 3, 11
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`37 C.F.R. § 42.104(b) ............................................................................................ 2, 3
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`iv
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`I.
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`INTRODUCTION
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`IPR2016-01159
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`PATENT NO. 8,694,657
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`On June 3, 2016, Facebook Inc. (“Petitioner”) submitted a Petition (the
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`“Petition”) to institute inter partes review (“IPR”) of U.S. Patent No. 8,694,657
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`(Ex. 1001, “the ’657 Patent”), challenging Claims 189, 334, 342, 348, 465, 580,
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`584, and 592 (“the Challenged Claims”). Petitioner on the same day also filed
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`three additional petitions alleging unpatentability of related patents over some of
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`the same prior art (IPR2016-01156, -01157, and -01158).
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`The Petition should be denied for myriad reasons. First, the Petition should
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`be denied because there is not a reasonable likelihood that Petitioner will succeed
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`on any of its allegations of unpatentability, all of which rely on U.S. Patent No.
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`6,608,636 to Roseman (“Roseman”) as a primary reference for obviousness.
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`Roseman discloses a different type of system from the Challenged Claims,
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`specifically Roseman discloses a “virtual conferencing system” that did not operate
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`over the Internet. Roseman relates to a type of prior art corporate remote linking
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`software, the very limitations of which the inventor of the ’657 Patent sought to
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`overcome. (Ex. 1001 at 1:33-37; 1:56-59). Additionally, Roseman only discloses
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`terminal-based communication with a server, which cannot satisfy the limitations
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`of the ’657 Patent as it uses a different paradigm. Today, we refer to these
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`different paradigms as a “thick client” in the case of the ’657 claims versus the
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`“dummy terminal” approach of Roseman. As a result, Roseman’s dummy terminal
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`IPR2016-01159
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`PATENT NO. 8,694,657
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`implementation is missing many of the limitations of the claims. Petitioner admits
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`that Roseman has deficiencies and Petitioner looks to four additional references to
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`allegedly disclose all of the limitations of the claims.
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`Additionally, Petitioner does not satisfy the basic requirement of an inter
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`partes review petition by pointing out “[t]he specific statutory grounds under 35
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`U.S.C.§ § 102 or 103 on which the challenge to the claim is based and the patents
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`or printed publications relied upon for each ground.” 37 C.F.R. § 42.104(b)(2).
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`The Petitioner challenges all claims under a single ground containing 8 claims and
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`a single five-reference combination. However, it is unclear whether Petitioner is
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`actually challenging each of the claims based on the five-reference combination.
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`Accordingly, the Petition should be denied in its entirety for failing to meet the
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`basic statutory criteria for an inter partes review petition.
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`In addition to these fundamental deficiencies, Petitioner’s request for inter
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`partes review should be denied for at least the following reasons addressed more
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`fully below in this Preliminary Response:
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`(1) The Petition fails to properly construe several claim terms.
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`(2) The Petition does not “specify where each element of the claim is found
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`in the prior art patents or printed publications relied upon,” as required by
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`37 C.F.R. § 42.104(b)(4), because the Petition has at least one of the following
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`deficiencies: (i) failing to map each claim term to a specific teaching from an
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`IPR2016-01159
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`PATENT NO. 8,694,657
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`asserted reference; (ii) providing citations to the asserted references that do not
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`teach the claim elements against which such citations are applied; and
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`(iii) mischaracterizing the citations to the asserted references.
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`(3) The Petition fails to identify the difference(s) between the claims and the
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`asserted references as required by Graham v. John Deere Co., 383 U.S. 1, 17–18
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`(1966).
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`(4) The Petition improperly attempts to support its assertions of obviousness
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`with mere conclusory statements and by impermissibly incorporating by reference
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`arguments from the Lavian Declaration (Ex. 1002) in violation of 37 C.F.R. §
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`42.6(a)(3).
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`Due to at least these deficiencies, the Petition does not establish “a
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`reasonable likelihood that the Petitioner would prevail with respect to at least one
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`of the claims challenged in the Petition.” 35 U.S.C. § 314(a). Patent Owner
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`explicitly reserves the right to provide further distinctions between the prior art and
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`the Challenged Claims. The deficiencies of the Petition noted herein, however, are
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`sufficient for the Board to find that Petitioner has not met its burden to
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`demonstrate a reasonable likelihood that it would prevail in showing
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`unpatentability of any of the Challenged Claims.
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`IPR2016-01159
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`PATENT NO. 8,694,657
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`II. THE PETITION SHOULD NOT BE INSTITUTED BECAUSE
`PETITIONER'S CLAIM CONSTRUCTIONS ARE INCORRECT IN
`LIGHT OF THE SPECIFICATION, THE CLAIMS, AND THE LAW
`A.
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`Petitioner’s Proposed Construction of “Token” Is Incorrect and
`Reads Out the Database Requirement
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`The construction of the term “token” advocated by Petitioner, “a piece of
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`information associated with user identity,” is incorrect in light of the specification
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`because it excludes the requirement that the tokens are stored in a database.
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`As a preliminary matter, the passage Petitioner points to as allegedly
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`defining the term “tokens” actually defines the term “identity tokens.” Petitioner
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`cites to the specification as follows:
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`With regard to the arbitrating of the controller computer 3 is directed
`by the controller computer program 2 to use “identity tokens”, which
`are pieces of information associated with user identity. 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.
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`(Ex. 1001 at 7:49-54 (underlining added by Petitioner).) Petitioner appears to be
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`arguing that this portion of the specification is defining the term “tokens,”
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`however, if anything, this portion only relates to a different term, “identity tokens”
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`and Petitioner’s arguments are misplaced. (Pet. at 4.)
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`Tokens are central to the invention of the ’657 Patent. The specification
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`describes these tokens only in the context of a “database” that affords relationships
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`PATENT NO. 8,694,657
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`and some permanence to the data. For example, the controller computer is
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`described as arbitrating access to programs based on tokens, and that tokens are
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`pieces of information associated with a user identity. The specification then goes
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`on to state: “The pieces of information are stored in memory 11 in a control
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`computer database, along with personal information about the user, such as the
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`user’s age.” (Ex. 1001 at 7:52-54).
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`The specification further states as follows:
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`The control computer database serves as a repository of tokens for
`other programs to access, thereby affording information to otherwise
`independent computer systems. In the database, the storage of tokens
`can be by user, group, and content, and distribution controls can also
`be placed on the user’s tokens as well as the database.
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`(Ex. 1001 at 7:54-59). Divorcing tokens from the concept of a database makes no
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`sense in light of the specification because there must be some permanence to
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`establish the disclosed token hierarchies. See, Bajaj Decl., Ex. 2001 at 24.
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`Accordingly, to the extent this term must be construed, it should include the
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`requirement that the tokens are stored in a database.
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`As described in further detail below, Petitioner’s arguments fail when the
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`claims are construed to require the storage of tokens in a database. Thus, the
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`Petition should be denied on all grounds.
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`IPR2016-01159
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`PATENT NO. 8,694,657
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`Petitioner Does Not Propose a Construction for the Term
`“Censor” and Ultimately Reads the Term Out of the Claims
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`B.
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`Petitioner does not proffer a construction for the term “censor” or
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`“censored,” and Petitioner’s arguments regarding the term “censor[ed]” must fail
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`for two reasons: (1) Petitioner appears to apply an incorrect definition of
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`“censoring” as “screening out”, and (2) Petitioner ignores the relationship between
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`censorship and tokens. (Pet. at 42.)
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`The term “censor” was understood in both ordinary English and to one of
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`ordinary skill in the art. Censorship requires suppression of unacceptable
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`information such as a message. The ordinary English meaning is:
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`“examine in order to suppress or delete anything considered objectionable.” (Ex.
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`2001 at 29, citing Ex. 2002 at 3). The Microsoft Press Computer Dictionary
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`defines censorship as “[t]he action of preventing material that a party considers
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`objectionable from circulating within a system of communication over which that
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`party has some power.” (Ex. 2003 at 4). Microsoft’s dictionary goes on to state
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`this example: “[a] moderated newsgroup or mailing list may be considered to be
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`‘censored’ because the moderator will usually delete highly controversial and
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`obscene content or content that is on a different topic from that followed by a
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`newsgroup.” (Id. at 4–5). In all of the relevant definitions, the common thread is
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`that censored information is suppressed based on the data or content itself and not
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`IPR2016-01159
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`PATENT NO. 8,694,657
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`on the users. The specification does not expand the definition beyond the bounds
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`of one of ordinary skill’s understanding.
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`Censorship is not merely the decision as to whether to engage in a private
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`communication as between two users as Petitioner contends. (Pet. at 41.) Rather,
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`the specification describes censorship of a data message as an evaluation of the
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`message itself to determine if the message should be passed on to recipients. In the
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`specification, tokens are used in the context of censoring to establish relationships
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`between users and the data that is censored. The specification states that
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`“[c]ensorship, which broadly encompasses control of what is said in a group, is
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`also arbitrated by means of the tokens.” (Ex. 1001 at 8:10-11). The specification
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`further states that, “[c]ensorship also can use the tokens for real time control of
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`data (ascii, text, video, audio) from and to users as well as control over multimedia
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`URLs––quantity, type, and subject.” (Id. at 8:16-18).
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`As described in further detail below, Petitioner’s arguments fail when
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`considering the proper scope of the term “censored,” as none of Petitioner’s
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`arguments draw a distinction between censorship and group access rights and
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`because none of Petitioner’s arguments refer to any relationship between
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`“censorship” and tokens. Thus, as set forth below, the Petition should be denied.
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`IPR2016-01159
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`PATENT NO. 8,694,657
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`III. PETITIONER HAS NOT DEMONSTRATED A REASONBLE
`LIKELIHOOD OF SUCCESS FOR THE GROUNDS ADVANCED IN
`THE PETITION AND THE PETITION SHOULD BE DENIED.
`A. Requirements for Showing Obviousness Under 35 U.S.C. § 103.
`The question of obviousness is resolved on the basis of underlying factual
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`determinations, including: (1) the scope and content of the prior art, (2) any
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`differences between the claimed subject matter and the prior art, (3) the level of
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`skill in the art, and (4) where in evidence, so called secondary considerations.
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`Graham, 383 U.S. 1, at 17–18. The Board has held that a failure to identify the
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`differences between the claimed subject matter and the prior art is fatal to an
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`obviousness challenge. See, Apple, Inc. v. Contentguard Holdings, Inc., IPR2015-
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`00355, Decision Denying Institution of Inter Partes Review, Paper 9 at 9–10
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`(PTAB June 26, 2015) (denying institution for failure to identify the differences
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`between the claimed subject matter and the prior art).
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`Furthermore, in proposing that a person of ordinary skill in the art at the time
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`of the invention would have combined the references in a particular way to meet
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`the claimed invention, an obviousness analysis must support the proposed
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`combination with “some articulated reasoning with some rational underpinning.”
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441
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`F.3d 977, 988 (Fed. Cir. 2006)). A proposed combination cannot be supported
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`based on “mere conclusory statements.” In re Kahn, 441 F.3d at 988.
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`IPR2016-01159
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`PATENT NO. 8,694,657
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`In a petition seeking institution of an inter partes review, “articulated
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`reasons with rational underpinnings” must be found in the petition itself. Whole
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`Space Indus. v. Zipshade Indus., IPR2015-00488, Decision Denying Institution of
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`Inter Partes Review, Paper 14 at 17 (PTAB July 24, 2015) (“[C]onclusory labels
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`do not substitute for a fact-based analysis in the Petition establishing what is being
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`modified, and why it would have been obvious to a person of ordinary skill to
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`make the modification”). The arguments needed to support a conclusion of
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`obviousness may not be incorporated by reference to another document. 37 C.F.R.
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`§42.6(a)(3) (“Arguments must not be incorporated by reference from one
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`document into another document.”); Cisco Sys., Inc., v. C-Cation Techs., LLC,
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`IPR2014-00454, Decision Denying Institution of Inter Partes Review, Paper 12 at
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`10 (PTAB Aug. 29, 2014); see also, Plant Science, Inc. v. The Andersons, Inc.,
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`IPR2014-00939, Decision Denying Institution of Inter Partes Review, Paper 8 at
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`15 (PTAB Dec. 17, 2014).
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`As set forth below, this Petition is deficient because it fails to meet the
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`fundamental requirements for demonstrating invalidity. First, the Petition does not
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`explain how the combinations of references teach each element of each claim. See,
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`C.B. Distributors, Inc. v. Fontem Holdings 1 B.V., IPR2013-00387, Paper 43 at
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`30–31 (PTAB, Dec. 24, 2014). Second, the Petition fails to satisfy the tests of KSR
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`and Graham because it does not identify the differences between the claims and
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`IPR2016-01159
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`PATENT NO. 8,694,657
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`the asserted references; neglects to provide a fact-based rationale for combining the
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`references; and does not explain the specific ways the references are to be
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`combined. Whole Space Indus., IPR2015-00488, Paper 14 at 9 (“[R]egarding the
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`grounds based on obviousness, the Petition does not articulate specific
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`modifications of the references that support its asserted obviousness grounds, nor
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`does it provide a persuasive rationale for the proposed combinations of
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`references.”).
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`B. Claim 189 is Not Obvious Over Roseman, Rissanen, Vetter, Pike,
`and Lichty.
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`Petitioner relies primarily on the Roseman reference, which does not teach
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`or disclose each limitation of the Challenged Claims even when combined with
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`numerous secondary references.
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`Roseman describes a virtual conferencing system whereby a host computer,
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`via software running on the host computer itself, controls the events of the virtual
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`chat. Roseman is not concerned with the operation of the participating computers.
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`In fact, the Roseman system describes the host computer as the component that
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`“generates a common video screen.” (Ex. 1003 at 1:44.) This structure is
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`fundamentally different from the system and methods claimed by the ’657 Patent,
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`which includes requirements for the control computer as well as the participator
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`computers. Additionally, while Roseman discloses authentication, it does not
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`IPR2016-01159
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`PATENT NO. 8,694,657
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`disclose the claimed tokens stored in a database, which serve purposes in addition
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`to authentication. While Roseman's “key” authenticates, the authentication is not
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`personal and is transferable to anyone––like a key to a door lock. This “key” is not
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`the claimed token. Tokens must be capable of serving purposes beyond
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`authentication, such as controlling: a) access to other tokens (e.g. token hierarchy
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`arbitration process); (b) priority and moderation privileges; (c) group membership;
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`(d) member visibilities; and (e) member identities, among other purposes found in
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`the specification and recited in the above claim construction. Ex. 1001 at 8:7:60-
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`8:10 The Roseman Key is incapable of performing these tasks.
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`These fundamental differences between Roseman and the claimed system
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`and methods of the ’657 Patent leads to numerous other differences and
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`discrepancies that Petitioner attempts to patch up with secondary references.
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`However, several of these discrepancies, as discussed in more detail below, are
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`simply not resolved by the combinations as set forth by Petitioner.
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`Petitioner admits that the secondary references of Rissenan, Vetter, Pike, and
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`Lichty do not instruct one of ordinary skill in the art to make the changes required
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`to rewrite Roseman into the claims of the ’657 Patent. Petitioner states as follows:
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`Rissanen is cited to show that the tokens in Roseman could be
`stored in a “database,” Vetter to show that Roseman could have
`been adapted to communicate over the “Internet,” Pike to show
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`IPR2016-01159
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`PATENT NO. 8,694,657
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`that Roseman could have used “URLs,” and Lichty to show basic
`and known features of America Online chat rooms.
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`(Pet. at 8. (emphasis added).) It is apparent from Petitioner’s own statements that
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`it is merely advancing a set of “obvious to try” arguments, none of which result in
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`the Challenged Claims.
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`Claim 189 is particularly worrisome. Petitioner submits only 4 rationales
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`(Pet. at 19, 25, 37, 43) to make 8 distinct obviousness conclusions (Pet. at 18, 23,
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`27, 30, 36, 42, 46, 47). The reason for this is glaringly obvious: Petitioner submits
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`the same rationale for different limitations, ignoring the differences between
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`limitations.
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`Moreover, Petitioner’s rationales are specific to limitations. Petitioner
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`presents the Board with scattered conclusions without explaining how, or even
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`whether, the combinations are useable together. Petitioner never once argues that
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`any one or more of the combinations results in the challenged claims as a whole.
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`See, e.g., Nautilus Hyosung Inc. v. Diebold, Inc., IPR2016-00560, Decision
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`Denying Institution of Inter Partes Review, Paper 10 at 25–26 (PTAB June 26,
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`2015) (“The determination of obviousness is made with respect to the subject
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`matter as a whole, not separate pieces of the claim. . . . Therefore, we are not
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`persuaded by Petitioner’s position, which takes disparate parts of five different
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`references and pieces them together in an attempt to show where individual claim
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`IPR2016-01159
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`PATENT NO. 8,694,657
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`limitations are found in the prior art. Petitioner’s consistent strategy of picking and
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`choosing among isolated disclosures in the prior art to deprecate the claimed
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`invention suggests Petitioner may have used the claimed subject matter as a
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`roadmap to identify individual pieces of the claimed subject matter in the prior
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`art.”) Here, as was the case in Nautilus., Petitioner picks and chooses limitations
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`from vastly different prior art systems where there is no expectation that
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`combining these different elements would result in a working system but for
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`impermissible hindsight. The resulting hindsight-based argument fails the test set
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`forth by KSR.
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`For all of these reasons, and as set forth in more detail below, Petitioner has
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`not demonstrated that there is a reasonable likelihood that it will prevail on its
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`amorphous Petition, and the Petition should be denied.
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`1.
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`Database Which Serves as a Repository of Tokens for Other
`Programs to Access, Thereby Affording Information to
`Each of a Plurality of Participator Computers
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`The claimed “database which serves as a repository of tokens for other
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`programs to access, thereby affording information to each of a plurality of
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`participator computers” explicitly requires that tokens are stored in a database, and
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`that the database is accessible to other programs. Petitioner addresses this
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`limitation in pieces spanning several different obviousness combinations, and
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`ultimately Petitioner does not address the issue that the database affords
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`information to each of a plurality of computers.
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`IPR2016-01159
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`PATENT NO. 8,694,657
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`Petitioner all but admits that the Roseman does not explicitly disclose a
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`database. Pet. at 18. Instead, Petitioner relies on a single disclosure of Roseman
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`that “the meeting room ‘knows’ about each key and its invitation level.” Pet. at 18.
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`Petitioner states that a copy of each key is therefore “stored” on the host computer.
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`Id. However, there is no disclosure in Roseman of storing the “key” in a database
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`and there is no disclosure of storing the “key” in a repository that is accessible by
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`other programs.
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`In order to make an end-run around the database limitation, Petitioner
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`explicitly construes the term “database” as “a stored collection of tokens.” Pet. at
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`18. As described above, this construction is incorrect, and Petitioner’s arguments
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`fail under the proper construction. First, storage in memory does not mean stored
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`in a database, as memory storage may not be persistent, whereas a database is
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`understood as a persistent storage scheme. See, Bajaj Decl., Ex. 2001 at ¶¶ 20–21.
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`Second, even if Petitioner meant “stored in persistent memory” this does not imply
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`a database because a database allows for additional functionality (such as sorting
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`and searching) and associated efficiencies besides a simple lookup in persistent
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`memory. Id. at ¶ 22. Third, Petitioner states that the database does not have to be
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`“relational.” Pet. at 18. Even if a database is not “relational” or of “any particular
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`type,” it must still satisfy the basic principles set forth above regarding persistence
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`and accessibility. There is simply no teaching or suggestion that the keys of
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`Roseman are persistent.
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`Petitioner then looks outside Roseman to the Rissenan reference for a
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`database. Rissenan does disclose a database, but in the context of a different type
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`of system. Rissenan is simply concerned with recording, storing, and comparing
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`“passwords assigned to users,” i.e., authentication. Ex. 1004 at 1:21-28. However,
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`the claims require more than merely authenticating users via passwords.
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`To the extent that Petitioner is arguing that it would have simply been
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`“obvious” to store the tokens in a database because databases were well known in
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`the art, Petitioner does not state why it would have been obvious to store the
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`“keys” of Roseman in a database and not simply in a program memory. The
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`distinction between mere storage and a database is evident from the specification
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`of the ’657 Patent. While the database stores both “personal information about the
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`user, such as the user's age” (Ex. 1001 at 7:52-54), it also stores information with
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`respect to tokens which can be associated with a user, or, group, and content. (Id.
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`at 7:54-59). Thus, a database, as disclosed in the patent, allows other programs to
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`“lookup” by a user or group or content. However, simply storing a key in memory,
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`without storing the additional relationship between a group and the token would
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`not allow for such lookups.
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`The distinction between storage in program memory and storage in a
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`database is also critical because the claim requires that a database “serves as a
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`repository of tokens for other programs to access, thereby affording information to
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`each of a plurality of participator computers.” Petitioner does not point to any
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`reasonable support for the proposition that user login credentials could be used by
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`the system of Roseman “for other programs to access.” Petitioner points only to
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`the statement that Roseman discloses that each conference room is actually “a
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`combination of stored data and computer programs.” Pet. at 20-21 (emphasis in
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`original). Other than the use of the plural form “programs,” Petitioner does not
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`identify any programs that could access a database of tokens and receive
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`information other than the singular conference calling software running on the host
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`computer of Roseman. Petitioner does not attempt to point to any other references
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`for obviousness with regard to this limitation and thus has failed to establish the
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`link between the “other programs” and the “database” as required by the claims.
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`Additionally, when information is stored in program memory, it is almost
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`universally obscured from other programs. See, Bajaj Decl., Ex. 2001 at 23. The
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`’657 Patent discloses that distribution controls can be placed on the database itself.
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`(Id. at 7:54-59) If the database were merely program memory, these distribution
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`controls would be rendered superfluous because the standard controls on program
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`memory would not permit other programs to use the database.
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`Accordingly, Petitioner has not identified where in the prior art the claimed
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`“database which serves as a repository of tokens for other programs to access” is
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`taught or disclosed. Petitioner has not demonstrated that there is a reasonable
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`likelihood that it will prevail on Ground 1, and Ground 1 should be denied.
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`Communicating Via an Internet Network
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`2.
`Claim 1 requires that the plurality of computers communicate “via an
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`Internet network.” Petitioner admits that Roseman does not expressly mention an
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`Internet network. Pet. at 24. Petitioner points to yet another reference, Vetter, to
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`allegedly teach the “Internet.” However, Petitioner’s arguments provide no
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`evidence as to how Vetter could be used to transform Roseman into a method of
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`“communicating via an Internet network …affording some of the information to a
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`first of the participator computers via the Internet network, responsive to an
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`authenticated first user identity…affording some of the information to a second of
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`the participator computers via the Internet network, responsive to an authenticated
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`second user identity,” as recited in Claim 189.
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`Vetter is purportedly a videoconferencing and document sharing application
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`that works over the Internet. Even though Vetter discloses the “Internet”
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`generally, Petitioner takes for granted that the teachings of Vetter necessitate
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`converting the Roseman reference into a system to communicate over the Internet.
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`In the mid-1990’s, the Internet was not nearly as developed as it is now, twenty
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`years later. Moreover and contrary to Petitioner’s implication, Vetter does not
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`state that videoconferencing would have been ubiquitous over the Internet in the
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`mid 1990’s. To the contrary, Vetter states that the Internet infrastructure “is
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`generating much research interest.” (Ex. 1005 at p. 77.) Vetter also states that that
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`the Internet infrastructure is beginning to support video conferencing. Id.
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`Petitioner does not identify any of the differences between Vetter and the
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`claims, of which there are many. Vetter does not discuss a syst