`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-010671; Patent 8,407,356 B1
`Case IPR2016-011412; Patent 8,458,245 B1
`Case IPR2016-011553; Patent 8,694,657 B1
`Case IPR2016-011564; Patent 8,458,245 B1
`Case IPR2016-01157; Patent 8,407,356 B1
`Case IPR2016-01158; Patent 8,473,552 B1
`Case IPR2016-011595; Patent 8,694,657 B1
`____________
`
`Record of Oral Hearing
`Held: October 19, 2017
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. McKONE, and MELISSA A.
`HAAPALA, Administrative Patent Judges.
`
`
`1 Case IPR2017-00624 has been joined with this proceeding
`2 Case IPR2017-00655 has been joined with this proceeding
`3 Case IPR2017-00622 has been joined with this proceeding
`4 Case IPR2017-00709 has been joined with this proceeding.
`5 Case IPR2017-00659 has been joined with this proceeding.
`
`
`
`IPR2016-01067; Patent 8,407,356 B1, et al.
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`HEIDI L. KEEFE, ESQUIRE
`DANIEL J. KNAUSS, JD, Ph.D.
`Cooley, LLP
`3175 Hanover Street
`Palo Alto, California 94304-1130
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`VINCENT J. RUBINO, III, ESQUIRE
`ENRIQUE W. ITURRALDE, ESQUIRE
`Brown Rudnick
`Seven Times Square
`New York, New York 10036
`
`
`
`
`The above-entitled matter came on for hearing on Thursday, October
`
`19, 2017, commencing at 9:00 a.m., at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`
` 2
`
`
`
`IPR2016-01067; Patent 8,407,356 B1, et al.
`
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE EASTHOM: Good morning. I see my colleagues are
`online. I'm Judge Easthom. We have Judge Haapala in Denver and Judge
`McKone to my right in Detroit. This is the group of cases Facebook, Inc.,
`petitioner, versus Windy City Innovations, LLC. There are four patents
`challenged here and there are seven different cases but with five joinders for
`five of these cases. Cases IPR2016-1067, 1141 and then 1155 through 1159.
`The patents involved are 8,407,356, 8,458,245, 8,694,657, and then
`8,473,552.
`Petitioner, can we begin with you introducing yourself for the
`record, please.
`MS. KEEFE: My pleasure, Your Honor. Heidi Keefe for
`petitioner, Facebook. And with me is my colleague, Dan Knauss. Also just
`so the record is clear, in the audience, Andrew Cates is an associate who
`works with us. And Kate Duval is from Facebook, the client.
`JUDGE EASTHOM: Welcome everyone. How about patent
`
`owner?
`
`MR. RUBINO: Good morning, Your Honor. Vincent Rubino
`from the law firm of Brown Rudnick on behalf of patent owner, Windy City.
`And with me also from the law firm of Brown Rudnick is Enrique Iturralde.
`JUDGE EASTHOM: I'm sorry, can you pronounce his name
`
`again.
`
`MR. RUBINO: Sure. Enrique Iturralde.
`JUDGE EASTHOM: Thank you. A couple preliminaries, we sent
`out a hearing order and these cases are all related. In fact, I think you can
`
`
`
`
` 3
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`IPR2016-01067; Patent 8,407,356 B1, et al.
`
`
`correct me later, but I think all the specs are continuations from the same
`common ancestor patent. So with that, we decided that we have all these
`overlapping issues, each side is granted an hour and a half. Petitioner will
`go first and then save any rebuttal time you want. Patent owner, prior to the
`rebuttal time, of course, will respond, and then we'll go from there.
`With that, why don't we proceed. And Ms. Keefe, I suppose you
`are going to start.
`MS. KEEFE: It's my pleasure, Your Honor. And I'll be beginning
`and if it please the Court, we would like to reserve 40 minutes. So our
`opening conversation will last hopefully less than but aimed at 50 minutes. I
`will be speaking on the petitions that revolve around the primary Roseman
`reference that were originally filed by Facebook, and I'll do that for about
`30 minutes. Mr. Knauss will then stand up and address the petitions that
`Microsoft originally filed that Facebook joined, and he'll do that for about
`20 minutes. Since so many of the issues are in common, most will be dealt
`with in my presentation, and then only those unique to the Microsoft
`petitions will be dealt with by Mr. Knauss.
`JUDGE EASTHOM: Thank you.
`MS. KEEFE: As Your Honor already mentioned, while there are a
`number of petitions here, they really revolve around very similar issues.
`With respect to the issues that I'm going to speak to, these are all addressing
`the Roseman reference as the primary reference with additional the
`Rissanen, Vetter, Pike, Westaway or Lichty references offered for basically
`support and/or limited elements in dependent claims. I just have copies of
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 4
`
`
`
`IPR2016-01067; Patent 8,407,356 B1, et al.
`
`
`the claims here in your presentation, and we'll refer back to them as
`necessary.
`In terms of claim construction across all of the cases, really though
`these are relatively long patents and relatively lots of claims, the debates turn
`on a small subset of issues. And that small subset of issues seems to revolve
`around the words "token", "censor", "channel", "database" and "pointer".
`With respect to token, the parties do not dispute that the definition
`being given in this proceeding is piece of information associated with user
`identity. Channel, the parties don't dispute the Board's interpretation, the
`channel is a group of participator computers in active communication.
`Similarly, the parties do not dispute the Board's interpretation of pointer or
`pointer triggered message on demand as a link or reference to a file, data or
`service and then a message where the content of the message is specified by
`a pointer and found on demand of the operator of the participator software.
`Instead, the dispute seems to revolve --
`JUDGE EASTHOM: Excuse me, Ms. Keefe, I'm sorry to
`interrupt. I should have mentioned this earlier. It might be best if you
`would just point out what slide number you are on.
`MS. KEEFE: Absolutely. I apologize to the remote users. I was
`on slide 7 discussing the Board's constructions that were being applied.
`JUDGE McKONE: I assume this is the slide deck for the 1156
`through 59 matters?
`MS. KEEFE: That's correct, Your Honor. Thank you very much.
`That's the one that lists all four of the petitions on the front. That's the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 5
`
`
`
`IPR2016-01067; Patent 8,407,356 B1, et al.
`
`
`easiest way for me to distinguish between the two. One has four listed. The
`other has three listed.
`On slide 8, we show a side-by-side of what appears to be the
`dispute in terms of the word "database". We had originally -- petitioner had
`originally proposed a collection of logically related data, and the panel had
`used that construction in its institution decision. Patent owner subsequently
`has attempted to argue that the database also require persistence and
`associated tools, associated with tools for interacting with the data such as a
`DBMS or database messaging management service.
`However, there's no intrinsic -- this is slide 9. There's no intrinsic
`support for patent owner's proposed construction regarding persistent storage
`and a database management system. Instead, the patent specification is
`actually very thin on what a database is. In fact, typically throughout the
`specification, the only use of the word "database" is through a reference to
`the fact that there is a database. No more instructions on what that database
`is or has to include. There's actually no mention in the specification
`whatsoever of a database management system nor is it reflected in any of the
`claims.
`
`Instead, what patent owners point to for their proposed support of
`including tools or a database management system are self-serving statements
`made in prosecution of a related application. So in a related application that
`actually is not involved in the IPRs in this case, patent owners submitted an
`IDS after the institution decision was entered in this case. In that IDS they
`included a statement that perhaps the Patent Office should look carefully to,
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 6
`
`
`
`IPR2016-01067; Patent 8,407,356 B1, et al.
`
`
`the databases, and then included a list of things that they thought a database
`should require.
`Self-serving statements of that form have been rejected by the
`Federal Circuit in the Moleculon Research versus CBS case which basically
`states that when a patent owner simply puts material into an unrelated
`application with no reason, that is not used as intrinsic evidence to define a
`term. So here there's simply no support for the notion that a DBMS must be
`included or the tools therein.
`In fact, textbook examples that we have provided at, for example,
`Exhibit 1017, pages 1 through 2, indicates that the database is merely the
`collection of data, collection of data usually referred to as a database.
`DBMS' are then used in order to access a database. They are not a part
`necessarily of the database itself.
`JUDGE HAAPALA: Ms. Keefe, are you contesting patent owner's
`persistence aspect of the claim construction or just the DBMS aspect?
`MS. KEEFE: So it's an interesting question, Your Honor, because
`the reality is I think that the persistence exists, for example, in all of our
`cited references. But I don't believe that it is appropriate in the definition
`because again, nothing in the specification or the intrinsic record mandates
`that it be persistent or how long that persistence would exist for. So I am
`contesting that it belongs in the construction. However, when we get to
`showing how they relate to the cited references, the cited references do cover
`a persistent database, in other words, one that just exists for a period of time
`so that it can be referred back to.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 7
`
`
`
`IPR2016-01067; Patent 8,407,356 B1, et al.
`
`
`
`JUDGE HAAPALA: So beyond the specification, we also look to
`understand what one of ordinary skill in the art would understood the term to
`mean. So again, with the aspect of persistence, I understand is not in the
`specification, but are you contesting that one of skill in the art would
`understand a database to have some persistence associated with it?
`MS. KEEFE: No, not necessarily. In terms of the word "censor",
`the debate here revolves around whether or not the definition is a simple
`control of what is said in a group, which is supported absolutely by the
`intrinsic record within the specification itself or patent owner's proposed
`construction which says that to censor means to examine in order to suppress
`or delete anything considered objectionable.
`This is turning to slide 12, the intrinsic record is very clear that
`censorship in the patent is broadly encompassing control of what is said in a
`group. This is essentially definitional language. We see at column 8, lines
`36 through 44 in the beginning sentence, censorship, which broadly
`encompasses control of what is said in a group, is also arbitrated by tokens.
`Censorship can control access to system one by identity of the user.
`One of the arguments that appears throughout patent owner's
`documents is that the censorship has to be based on the data itself. Not on
`the user. But that's directly refuted by the specification which indicates that
`censorship can control access by identity of the user. It's also directly
`contradicted by the language of the claims themselves.
`May I have the ELMO. For example, claims 189 and 465 of --
`that's okay. I can just read it. In the end of claims 189 and 465 of the '657
`patent, the very last limitation says, “If the first user identity is censored
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 8
`
`
`
`IPR2016-01067; Patent 8,407,356 B1, et al.
`
`
`from the sending of data,” that's claim 189, claim 465 recites, “if the first
`user identity is censored from sending the data.” Therefore, it's the user's
`identity that's being blocked. Not necessarily parsing through to see what
`the data is.
`The definition adopted by the Board in the institution decision as
`well as offered by petitioner, therefore, is the correct one.
`JUDGE McKONE: That's not the case in all the claims, though,
`right? I think in some of the dependent claims, for example, claim 6 in the
`1156 matter has wherein the computer system further determines that the
`message is not censored. So here in that case it wouldn't be the user that was
`censored. It would be the message that would be censored, correct?
`MS. KEEFE: I agree with that, Your Honor. In fact, the language
`is broad enough, the message itself is what is censored. But in determining
`how or whether that message is censored, one way of doing so is
`determining whether the user can send that message. And the term censor
`has to be interpreted broadly enough to encompass what the specification
`describes, which is where the censoring is done by user which could include
`if I, for example, were censored from sending a message, the message would
`be censored by virtue of the fact that I was the one attempting to send it. So
`patent owner's presentation of the construction is simply too narrow and
`should be ignored.
`JUDGE McKONE: What about the case in the 1159 matter, we
`have claim language such as wherein determining whether the first user
`identity is censored includes determining that the first user identity is
`censored from sending of the data presenting, for example, video? So that
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 9
`
`
`
`IPR2016-01067; Patent 8,407,356 B1, et al.
`
`
`seems to be a little bit more granular than just determining that a first user
`identity is censored.
`MS. KEEFE: Again, Your Honor, I'm not sure that it is. If you
`look at the language of that limitation, what it's saying is in order to
`determine whether or not you are going to censor that video from being sent,
`you look to who the user is who is trying to send it. So the reality is user
`number 1 could be trying to send that video and user 1 is censored or
`blocked. Then that video would not be sent, versus, for example, user 2 who
`is permitted to send videos would be allowed to send that video.
`Similarly, user 2 could be blocked from sending text. They can
`send video only. And so in that case you are still potentially at least using
`the user's identity in order to determine, even particularized content, what
`has to be sent.
`JUDGE McKONE: But it looks from the claim language in that
`case that there's two things determining whether a user identity is censored
`and then getting into the claim language that specifically addresses the
`content that is censored, for example, video or audio or multimedia. If we
`simply read that any censoring of a user is also just a censoring of whatever
`content the user is sending, that would seem to read the additional language
`out of the claims.
`MS. KEEFE: I apologize, Your Honor, I think I'm talking past
`you. I think the definition has to be broad enough to encompass censoring
`by a user or censoring by data within a group. That's why the definition that
`the Board used in its institution decision of control of what is said in a group
`is appropriate. If you use that definition with the claim that you are actually
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 10
`
`
`
`IPR2016-01067; Patent 8,407,356 B1, et al.
`
`
`looking at, you then first look to see whether or not the user is controlled in
`order to say what is being said in a group. But then you can also look to the
`content to control what is said in the group. Only the definition proposed by
`petitioner and adopted by the Board in the institution decision covers all of
`the scenarios that are contemplated by all of the claims that are at issue here,
`as opposed to patent owner's proposed construction, which I think would
`read out the possibility of user censorship, censorship based on a user
`instead of examining in order to suppress or delete anything considered
`objectionable as opposed to, for example, a user and the person who might
`be considered objectionable.
`JUDGE McKONE: Now, I'm going to ask you a question that's
`unrelated to this, but I don't know when else I'm going to ask it. I'm looking
`at, we have several different patents that come from the same original
`specification here as filed at the same time, but it looks to me like there's
`different amounts of patent term adjustment and I don't see terminal
`disclaimers in the file history. Are we supposed to evaluate different
`patents, the same claim terms of different patents with the same filing date
`under different standards?
`MS. KEEFE: So for here, Your Honor, there's only one patent that
`has expired. The remaining patents have very long-term extensions which
`appear to mean that they are still alive. It's the final patent, the '657 patent
`which is expired. So for the '657 patent the Board would use the Phillips
`standard in order to render its constructions. For the remaining patents, the
`broadest reasonable construction would apply. Here we are very fortunate in
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 11
`
`
`
`IPR2016-01067; Patent 8,407,356 B1, et al.
`
`
`that the Phillips standard overlaps with the broadest reasonable construction
`for the terms that we are discussing in the IPR proceedings here today.
`JUDGE McKONE: So it's your position that it doesn't matter
`which standard we use. The results will be the same under either standard?
`MS. KEEFE: That's correct, Your Honor. For these IPRs, that is
`absolutely correct because the intrinsic record is dictating our definitions of
`censor. And for database, I think the only argument between the parties is
`whether you incorporate further limitations from extrinsic records, which we
`think simply isn't supported by either the claims or the definitions, and so
`broadest reasonable matches up with what the intrinsic record supports there
`as well.
`
`JUDGE McKONE: So if we get through these terms under the
`more restrictive Phillips standard, we shouldn't expect, I guess, an argument
`later on that for the one patent that is not yet expired, we should have used a
`broader standard?
`MS. KEEFE: That's correct, Your Honor.
`JUDGE McKONE: Thank you. Please go back to what you were
`going to talk about.
`MS. KEEFE: I appreciate it. All I was going to do now is turn
`directly to the 1156 case. What we did in hopes of trying to make sure that
`we were addressing the issues that were most relevant to these IPRs across
`all of the patents, we grouped the issues. The 1156 touched on six separate
`arguments. And the arguments were raised essentially in patent owner's
`response, and we took our cue from there. I'll address them first in the 1156.
`Many of them repeat through all of the patents. So as we go through the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 12
`
`
`
`IPR2016-01067; Patent 8,407,356 B1, et al.
`
`
`patents, I'll simply say, as we already said in the 1156, we've dealt with that
`issue. Hopefully that will streamline the way we approach this.
`So the first issue that crosses all of the patents has to do with patent
`owner's argument that the cited art does not reflect use of the Internet. I'm
`now at slide 16 in the presentation. The claims -- not all claims, by the way,
`require the Internet, but many of them do. Many of them in the preamble
`say wherein communication is across an Internet or something along those
`lines.
`
`Patent owner's argument seems to be that the Internet was
`absolutely critical to their invention. And Roseman, the primary reference,
`did not recite the Internet. That's absolutely not true. Roseman recites in
`Exhibit 1003, column 1, lines 19 through 23 that the Roseman reference,
`which is basically a way of doing video conferencing, teleconferencing and
`a shared use of documents, the invention allows multiple persons at different
`locations to hold a conference by providing many of the conveniences which
`the participants would have if present together in the same room.
`The specification goes on a few lines later to state when a
`conference is established, the local computers become connected to a host
`computer via commercially available local area networks and wide area
`networks. At the time in 1996 it would have been apparent to one of
`ordinary skill in the art that a wide area network included the Internet. In
`fact, there are arguments that is the Internet is just the widest of area
`networks.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`
`
`
`
` 13
`
`
`
`IPR2016-01067; Patent 8,407,356 B1, et al.
`
`
`
`JUDGE McKONE: Is it your position that Roseman expressly
`discloses the Internet or that we should find that the Internet would have
`been an obvious example of a wide area network?
`MS. KEEFE: So I believe either is appropriate. Honestly, I
`believe that it does expressly disclose the Internet through its recitation of a
`wide area network.
`JUDGE McKONE: I guess what position did you take in the
`petitions?
`MS. KEEFE: The position that we took in the petitions was that
`including Mr. Lavian's declaration is that, in fact, by referencing wide area
`network, one of ordinary skill in the art would understand that to include the
`Internet. So that is an express recitation. At worst it is an -- it's not inherent,
`but it's obvious to one of ordinary skill in the art who understands what a
`wide area network is.
`What we did, though, in order to make sure that no one argued that
`the wide area network was not enough, we went a step further and we found
`the Vetter reference. The Vetter reference is an article from Ronald J. Vetter
`entitled Video Conferencing on the Internet. Roseman was from 1992.
`The Vetter article, I believe, was 1995, January of 1995. Vetter
`specifically indicates that video conferences are becoming increasingly
`frequent on the Internet and are generating much research interest. It goes
`on to talk about how the real reason is because hardware had been too
`expensive before but now really has appeared to become mainstream and
`therefore, really provides that the Internet is a great place to use as a
`backbone for video conferencing. The last sentence highlighted on slide 17,
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 14
`
`
`
`IPR2016-01067; Patent 8,407,356 B1, et al.
`
`
`the price/performance of these hardware devices has finally reached a level
`that makes wide-scale deployment possible, which is perhaps the most
`important factor in the recent growth of video conferencing applications.
`Patent owner seems to take exception with the fact that the use of
`the words "becoming increasingly frequent" or "beginning to support", but
`the reality is this document proves that video conferencing was being used
`on the Internet. One looking at Roseman who saw that Roseman was
`intended to be deployed on a wide area network, one of ordinary skill would
`know that wide area networks include the Internet, would be motivated to
`look to Vetter to understand that video conferencing was, in fact, happening
`on the Internet.
`JUDGE McKONE: But didn't Vetter also show that perhaps it was
`known but there were challenges involved, design trade-offs that would have
`to be considered? Is that at least fair to characterize Vetter in that manner?
`MS. KEEFE: I think it is fair to characterize it in that manner. But
`I think that what Vetter says, if you read it carefully, is that the trade-offs
`had to do with the classroom application of this video conferencing. What
`Vetter did was Vetter also acknowledged that CU-SeeMe from Cornell
`University was a platform that was already supporting video and audio
`conferencing over the Internet. That's at page 004 of Exhibit 1005.
`The article describes that Vetter himself, when using the system in
`a classroom, had experienced some problems with respect to whether or not
`the microphone was placed in an appropriate place or if people started to talk
`too quickly. I don't think that anything in Vetter would discourage anyone
`from using the Internet. Instead, quite the opposite. The article concludes
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 15
`
`
`
`IPR2016-01067; Patent 8,407,356 B1, et al.
`
`
`with the notion that using the Internet for video conferencing is an exciting
`thing that people should continue to look to and continue to use and that the
`hardware will continue to improve to make it even more useful.
`The next slide at 19 just quotes the CU-SeeMe which talks about
`video and audio conferencing support over the Internet. That's an existing
`program that happened to be run principally on Macintosh computers.
`Patent owner's argument against Vetter first was, but it said that it
`had some complications. The problem was the complications had nothing to
`do per se with using the Internet. Instead, Vetter said the Internet already is
`being used for teleconferencing. Roseman said use a wide area network like
`the Internet. Vetter says it's already happening. So patent owner's switch
`instead to an argument that there was a single individual, Metcalfe, who
`published a very short -- it's less than half a page -- article, in which he
`doomsday prophesized that in 1996 the Internet would collapse through a
`number of factors, including the fact that there were a number of ghost links,
`people were not finding what they needed, things of that nature.
`However, that was one individual. One simple -- yes, he was an
`educated individual. He was someone who helped found 3Com. So he
`knew a lot about Ethernet. But by the time that he wrote that article, he was
`acting as a journalist. Not as an engineer or a technologist. And in fact,
`articles that postdate articles from the 1997 time period show that
`Mr. Metcalfe actually was speaking in a sarcastic, tongue-in-cheek way. If
`we look at Exhibit 1021, this is on slide 20, at paragraph 22, in an interview
`with the IEEE, Mr. Metcalfe described that what happened in the article in
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 16
`
`
`
`IPR2016-01067; Patent 8,407,356 B1, et al.
`
`
`December of 1995, he claims, quote, I wrote a largely tongue-in-cheek,
`sarcastic column.
`And the reason that this article is interesting for our purposes is
`that it puts you in mind of what even the author intended those of ordinary
`skill in the art at the time to understand the article to be. He did not intend it
`to be a scholarly article indicating that no one should ever use the Internet
`again. Instead, he thought of it as a tongue-in-cheek, sarcastic column.
`Then if we go back to slide 19, we actually see that that same man actually
`literally ate his words. He took the article that described the destruction of
`the Internet and put them in a blender and actually ate them in order to show
`that that, in fact, had not happened.
`The article with IEEE goes on at slide 21 where Mr. Metcalfe
`admits he's a journalist. Not an engineer. He goes on to say that he was
`acting as a provocateur to stimulate discussion. Not acting as an academic
`describing what would happen.
`I think perhaps the most important thing to take away, though,
`from the argument patent owner is attempting to make is that patent owner
`has not identified even one actual instance or any evidence that anyone
`followed the Metcalfe declaration in order to stop using the Internet or to
`stop developing on the Internet. Therefore, the combination of Roseman
`mentioning WAN, wide area networks, and Vetter specifically detailing that
`teleconferencing and video conferencing was done over the Internet is
`absolutely appropriate. And the Metcalfe article simply has no place here.
`The next argument made seems to be that the token, the
`requirement of tokens which shows up in the claims is not covered by the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 17
`
`
`
`IPR2016-01067; Patent 8,407,356 B1, et al.
`
`
`keys of Roseman. Most of the claims, if not all, describe the idea of using a
`token that's stored in a database in order to figure out which programs have
`access to or don't have access to other materials. For example, claim 1 of
`the '356 lists a database which serves as a repository of tokens for other
`programs to access.
`Petitioner has mapped the token of the claim on to the keys in the
`Roseman reference. Again, Roseman was meaning to try to put into the
`computer world something that would happen in the real world as you were
`walking down a hall and peeking into conference rooms or being invited into
`conference rooms in order to have a conference between multiple
`participants. One of the ways that Roseman did that was Roseman sent
`invitations which included keys, keys which are blocks of data. And this is
`at slide 22. The key is a block of data at column 6, lines 60 through 61,
`which can be sent in an invitation. The keys can then be used in order to
`enter the rooms.
`Type 1 of the levels of invitation that are specifically described
`indicates an invitation for the invitee only. So the invitation and the token
`included therein, the key included therein are for the use of only one person.
`They cannot be passed to any other person and cannot be copied. That key,
`once stripped from the invitation, is used by the user in order to try to enter a
`conference. The way that the patent describes it is that the user takes the key
`and passes it over the door, essentially drags the key on to the door. If the
`key matches an identity of someone who is allowed access, the door is
`opened and the person can go in. Therefore, the token described in the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 18
`
`
`
`IPR2016-01067; Patent 8,407,356 B1, et al.
`
`
`claim, which is simply a block of data or information, is used in order to
`access the conference.
`The first argument that patent owner seems to make for token is
`that there's something wrong with the token of Roseman because there are
`occasions when the token may be passed to another person and that that
`somehow means that it is not associated with a person. That's simply not
`true. For example, the level 1 invitation is absolutely limited to the invitee,
`and so it is associated with a user's identity. Even in level 3 in which keys
`may be exchanged with one another, once the key reaches its final person,
`the one who actually uses it to access the door by putting their token on the
`door, that token is then identified with the computer of the person using it
`and affiliation is then made with that user, that user's computer, in order to
`grant them access to the room. And we also mention that in our
`supplemental reply at page 5.
`The next argument is that the tokens are not stored in a database.
`The claim requires the tokens to be in a repository like a database. But
`Roseman specifically calls out that the meeting room, in other words, the
`place that you are trying to enter, knows about each key and its invitation
`level. The only way that a meeting room, which is a program in and of
`itself, would know about a key is if that key had been stored somewhere so
`that it could be compared. Knowledge of a key and its invitation level can
`only happen if that had been stored somewhere in the Roseman system.
`We believe that one of ordinary skill in the art would understand
`that a simple way to store information would include a database, though
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
