Trials@uspto.gov
`571-272-7822
`
`Paper No. 7
`Entered: December 12, 2016
`
`
`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 B1
`____________
`
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper No. 7
`Entered: December 12, 2016
`
`
`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 B1
`____________
`
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2016-01159
`Patent 8,694,657 B1
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`I. INTRODUCTION
`
`A. Background
`Facebook, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to
`institute an inter partes review of claims 189, 334, 342, 348, 465, 580, 584,
`and 592 (“the challenged claims”) of U.S. Patent No. 8,694,657 B1
`(Ex. 1001, “the ’657 patent”). Windy City Innovations, LLC (“Patent
`Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”). Upon
`consideration of the Petition and Preliminary Response, we conclude, under
`35 U.S.C. § 314(a), that Petitioner has established a reasonable likelihood
`that it would prevail with respect to claims 189, 334, 342, 348, 465, 580,
`584, and 592. Accordingly, we institute an inter partes review of claims
`189, 334, 342, 348, 465, 580, 584, and 592 of the ’657 patent.
`
`B. Related Matters
`The parties indicate that the ’657 patent has been asserted in Windy
`City Innovations, LLC v. Microsoft Corp., Civ. A. No. 15-cv-00103-GM
`(W.D.N.C.) (transferred to 16-cv-1729 (N.D. Cal.)), and Windy City
`Innovations, LLC v. Facebook, Inc., Civ. A. No. 15-cv-00102-GM
`(W.D.N.C.) (transferred to 16-cv-1730 (N.D. Cal.)). Pet. 1; Paper 4, 1. The
`’657 patent also is the subject an inter partes review petition in IPR2016-
`01155, Paper 4, 1.
`
`C. Evidence Relied Upon
`Petitioner (Pet. 3) relies on the following prior art:
`U.S. Patent No. 6,608,636 B1, issued Aug. 19, 2003, filed May 13,
`1992 (Ex. 1003, “Roseman”);
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`Published European Pat. App. No. 0 621 532 A1, published Oct. 26,
`1994 (Ex. 1004, “Rissanen”);
`Ronald J. Vetter, Videoconferencing on the Internet, IEEE COMPUTER
`SOCIETY 77–79 (Jan. 1995) (Ex. 1005, “Vetter”);
`MARY ANN PIKE ET AL., USING MOSAIC (1994) (Ex. 1006, “Pike”);
`TOM LICHTY, THE OFFICIAL AMERICA ONLINE FOR MACINTOSH
`MEMBERSHIP KIT & TOUR GUIDE (2nd ed. 1994) (Ex. 1007,
`“Lichty”).
`Petitioner also relies on the Declaration of Tal Lavian, Ph.D.
`
`(Ex. 1002, “Lavian Decl.”). Patent Owner relies on the Declaration of
`Chandrajit Bajaj, Ph.D. (Ex. 2001, “Bajaj Decl.”).
`
`
`D. The Asserted Ground
`Petitioner asserts that the challenged claims would have been obvious
`over Roseman, Rissanen, Vetter, Pike, and Lichty. Pet. 3.
`
`E. The ’657 Patent
`The ’657 patent describes an Internet “chat room.” According to the
`’657 patent, it was known to link computers together to form chat rooms in
`which users communicated by text, graphics, and multimedia, giving the
`example of “America On Line.” Ex. 1001, 1:33–37. The ’657 patent
`contends, however, that “[t]he Internet was structured for one-way
`communications analogous to electronic mail, rather than for real time group
`chat room communications” and that “there is no particular control over the
`platform that would be encountered on the Internet.” Id. at 1:38–46.
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`Figure 1, reproduced below, illustrates an embodiment of the
`invention:
`
`
`
`Figure 1 is a block diagram showing the components and data flow of a
`computerized human communication arbitrating and distributing system.
`Id. at 4:36–40. The system includes controller computer 3 in
`communication with several participator computers 5 (e.g., IBM-compatible
`personal computers) over connection 13 (e.g., an Internet connection or a
`World Wide Web connection). Id. at 4:41–60.
`Controller computer 3 runs under the control of controller software 2,
`and the software arbitrates, in accordance with predefined rules (including
`user identities), which participator computers 5 can interact in a group
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`through the controller computer, and directs real-time data to the members
`of the group. Id. at 4:61–67. The software uses “identity tokens,” or pieces
`of information associated with user identity, in the arbitration. Id. at 7:49–
`52. The tokens are stored in a memory in a control computer database along
`with personal information about the users. Id. at 7:52–57.
`The arbitration can be used to control a user’s ability to join or leave a
`group of participator computers, to moderate communications involving the
`group, and to see other users in the group. Id. at 7:62–8:6. Arbitration using
`tokens also can be used to perform censorship:
`Censorship, which broadly encompasses control of what
`is said in a group, is also arbitrated by means of the tokens.
`Censorship can control of access [sic] to system 1 by identity of
`the user, which is associated with the user’s tokens. By checking
`the tokens, a user’s access can be controlled per group, as well
`as in giving group priority, moderation privileges, etc.
`Censorship also can use the tokens for real time control of
`data (ascii, text, video, audio) from and to users, as well as
`control over multimedia URLs [Uniform Resource Locators]—
`quantity, type, and subject.
`Id. at 8:11–19.
`According to the Specification, “[t]he present invention comprehends
`communicating all electrically communicable multimedia information as
`Message 8, by such means as pointers, for example, URLs. URLs can point
`to pre-stored audio and video communications, which the Controller
`Computer 3 can fetch and communicate to the Participator Computers 5.”
`Id. at 5:9–16.
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`Claim 189, reproduced below, is illustrative of the claimed subject
`matter:
`
`189. A method of communicating via an Internet
`network by using a computer system including a controller
`computer and a database which serves as a repository of tokens
`for other programs to access, thereby affording information to
`each of a plurality of participator computers which are otherwise
`independent of each other, the method including:
`affording some of the information to a first of the
`participator computers via the Internet network,
`responsive to an authenticated first user identity;
`affording some of the information to a second of the
`participator computers via the Internet network,
`responsive to an authenticated second user identity;
`and
`determining whether the first user identity and the second
`user identity are able to form a group to send and to
`receive real-time communications; and
`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 by determining
`whether a respective at
`least one parameter
`corresponding to the first user identity has been
`determined by an other of the user identities; and
`if the user identities are able to form the group, forming
`the
`group
`and
`facilitating
`sending
`the
`communications that are not censored from the first
`participator computer to the second participator
`computer, wherein the sending is in real time and
`via the Internet network, and wherein, for the
`communications which are received and which
`present an Internet URL, facilitating handling the
`Internet URL via the computer system so as to find
`content specified by
`the Internet URL and
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`presenting the content at an output device of the
`second participator computer, and
`if the first user identity is censored from the sending of the
`data, not allowing sending the data that is censored
`from the first participator computer to the second
`participator computer.
`
`
`
`II. ANALYSIS
`Claim Construction
`A.
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–45 (2016). Nevertheless, the ’657 patent is expired.
`“[T]he Board’s review of the claims of an expired patent is similar to that of
`a district court’s review.” In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir.
`2012) (internal citations omitted). District courts construe claims in
`accordance with their ordinary and customary meanings, as would be
`understood by a person of ordinary skill in the art, in the context of the
`Specification. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
`(en banc).
`
`
`1. “token”
`Claim 189 recites “a database which serves as a repository of tokens
`for other programs to access.” The other challenged independent claims
`include similar recitations. Petitioner proposes construing “token” to mean a
`“piece of information associated with user identity.” Pet. 4. Petitioner relies
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`on what it characterizes as “definitional language” in the Specification,
`namely:
`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 [] in a
`control computer []base, along with personal information about
`the user, such as the user’s age.
`Id. (quoting Ex. 1001, 7:49–54 (emphasis Petitioner’s, brackets supplied)).
`Patent Owner argues that Petitioner’s construction “excludes the
`requirement that the tokens are stored in a database.” Prelim. Resp. 4.
`Patent Owner cites to examples in the Specification in which tokens are
`stored in a database (id. (citing Ex. 1001, 7:49–59)), but does not explain
`persuasively why storage in a database is a requirement of a token. Indeed,
`such storage is accounted for in other claim language, where appropriate
`(e.g., claim 189 recites “a database which serves as a repository of tokens”),
`language that would be redundant if we were to accept Patent Owner’s
`construction.
`Patent Owner further argues that
`[t]okens must be capable of serving purposes beyond
`authentication, such as controlling: a) access to other tokens (e.g.
`token hierarchy arbitration process); (b) priority and moderation
`privileges; (c) group membership; (d) member visibilities; and
`(e) member identities, among other purposes found in the
`specification and recited in the above claim construction.
`Id. at 11. Patent Owner again points to an example in the Specification
`(Ex. 1001, 7:60–8:10), but does not explain persuasively why this example
`is limiting.
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`On this record, we agree that Petitioner has cited to definitional
`language in the Specification. Patent Owner’s proposed additional
`requirements amount to improper “extraneous limitation[s]” not necessary to
`interpret what the patentee meant by “token.” E.I. du Pont de Nemours &
`Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). For
`purposes of this Decision, we adopt Petitioner’s proposed construction of
`“token.”
`
`
`2. “database”
`Relying on Dr. Lavian’s testimony, Petitioner argues that “[a] person
`of ordinary skill in the art would have understood the claimed ‘database’ to
`simply refer to a stored collection of tokens. The ’657 patent does not
`require that the database be any particular type, such as relational.” Pet. 18
`(citing Ex. 1002 ¶ 50). Dr. Lavian, in turn, relies on the Specification’s
`description of tokens being “stored in memory in a control computer base
`[sic], along with personal information about the user, such as the user’s age.”
`Ex. 1002 ¶ 50 (citing Ex. 1001, 7:52–54).
`In response, Patent Owner distinguishes storage in a “database” from
`storage in memory in general, arguing that “a database is understood as a
`persistent storage scheme” and also “allows for additional functionality
`(such as sorting and searching) and associated efficiencies besides a simple
`lookup in persistent memory.” Prelim. Resp. 14. Patent Owner relies on the
`testimony of Dr. Bajaj, who testifies that “[t]wo hallmarks of a database are
`(1) persistence of the data, and (2) interactivity with the data via a database
`management system (DBMS).” Ex. 2001 ¶ 20. Dr. Bajaj cites to the
`Macmillan Encyclopedia of Computers (Ex. 2004), which defines a
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`“database system” as “a collection of related records stored in a manner that
`makes the storage and retrieval of the data very efficient,” but otherwise
`does not support the requirements he would impose on a database.
`We are persuaded that the definition in the Macmillan Encyclopedia
`of Computers evidences the ordinary meaning of “database.” This is
`consistent with a technical dictionary definition. See IEEE 100 THE
`AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS 268 (7th ed.
`2000) (“database (DB) . . . A collection of logically related data stored
`together in one or more computerized files.”) (Ex. 3001). The Specification
`also describes a database consistently, explaining that tokens are “pieces of
`information associated with user identity,” that tokens are “stored in memory
`in a control computer base [sic], along with personal information about the
`user,” and that “[i]n the database, the storage of tokens can be by user,
`group, and content.” Ex. 1001, 7:52–58. The Specification does not
`otherwise put restrictions on the meaning of “database.”
`On this record, a database is “a collection of logically related data.”
`
`
`3. “censor”
`Claim 189 recites “determining whether the first user identity is
`individually censored from sending data in the communications,” “sending
`the communications that are not censored,” and “if the first user identity is
`censored from the sending of the data, not allowing sending the data that is
`censored from the first participator computer to the second participator
`computer.” The other challenged independent claims include similar
`recitations.
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`Neither Petitioner nor Patent Owner proposes an express construction
`of “censor.” Patent Owner, however, citing to dictionary definitions,
`contends that “[c]ensorship requires suppression of unacceptable
`information such as a message.” Prelim. Resp. 6 (citing Ex. 2002, 185
`(“censor . . . to examine in order to suppress or delete anything considered
`objectionable”); Ex. 2003, 4 (“censorship . . . The action of preventing
`material that a party considers objectionable from circulating within a
`system of communication over which that party has some power.”)).
`According to Patent Owner, “the claim requires that the data itself is
`censored.” Id. at 21. Patent Owner argues that, in each of its dictionary
`definitions, “the common thread is that censored information is suppressed
`based on the data or content itself and not on the users.” Id. at 6–7.
`Patent Owner contends that its dictionary definitions are consistent
`with the Specification. In particular, Patent Owner argues that “the
`specification describes censorship of a data message as an evaluation of the
`message itself to determine if the message should be passed on to
`recipients,” and that “[i]n the specification, tokens are used in the context of
`censoring to establish relationships between users and the data that is
`censored.” Id. at 7.
`Patent Owner’s proposed restrictions on the meaning of “censor” are
`not consistent with the usage of “censor” in the claims and the Specification.
`First, the claim language itself does not support a construction of “censor”
`limited to analysis of the content of data and suppression based on that
`content. Claim 189 recites “the first user identity is individually censored
`from sending data” and “if the first user identity is censored from the
`sending of the data, not allowing sending the data that is censored.” The
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`claim language focuses on censoring a user identity and does not specify that
`such censoring is based on the content of the data.
`Second, the Specification does not support Patent Owner’s arguments.
`The Specification describes censorship as follows:
`Censorship, which broadly encompasses control of what
`is said in a group, is also arbitrated by means of the tokens.
`Censorship can control of access to system 1 by identity of the
`user, which is associated with the user’s tokens. By checking the
`tokens, a user’s access can be controlled per group, as well as in
`giving group priority, moderation privileges, etc.
`Censorship also can use the tokens for real time control of
`data (ascii, text, video, audio) from and to users, as well as
`control over multimedia URLs—quantity, type, and subject.
`Ex. 1001, 8:10–19 (emphases added). As a general matter, “censorship” is
`expressly defined as “broadly encompass[ing] control of what is said in a
`group.” Moreover, contrary to Patent Owner’s arguments, censorship is
`described, in this example, as an action taken on a user, rather than the data
`itself. To be sure, the Specification also uses “censoring” in the context of
`moderating specific data, in an example in which posts to a channel are first
`reviewed and approved by a moderator before being posted to the other
`participants. Id. at 9:56–10:16. Nevertheless, the former example from the
`Specification also is consistent with the claim language, in which access to
`the system by a user identity is controlled.
`To the extent that Patent Owner’s dictionary definitions differ from
`the usage of “censor” in the claims and the Specification, the Federal Circuit
`has stated that extrinsic evidence “may be used only to help the court come
`to the proper understanding of the claims; it may not be used to vary or
`contradict the claim language.” Vitronics Corp. v. Conceptronic, Inc., 90
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`F.3d 1576, 1584 (Fed. Cir. 1996); accord Phillips, 415 F.3d at 1317
`(“[W]hile extrinsic evidence can shed useful light on the relevant art, we
`have explained that it is less significant than the intrinsic record in
`determining the legally operative meaning of claim language.” (internal
`citations and quotation marks omitted)).
`For purposes of this Decision, in accordance with the Specification’s
`definition, “censor” means “control what is said in a group.” In the context
`of claim 189, “the first user identity is individually censored from sending
`data” refers to control of data sent by the at least one of the user identities,
`individually, and is not limited to data suppressed based on the content of
`those data or by a moderator.
`
`B. Asserted Grounds of Unpatentability
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are “such that the
`subject matter as a whole would have been obvious at the time the invention
`was made to a person having ordinary skill in the art to which said subject
`matter pertains.” We resolve the question of obviousness on the basis of
`underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) objective evidence of
`nonobviousness, i.e., secondary considerations. See Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966).
`In an obviousness analysis, some reason must be shown as to why a
`person of ordinary skill would have combined or modified the prior art to
`achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512
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`F.3d 1363, 1374 (Fed. Cir. 2008). A reason to combine or modify the prior
`art may be found explicitly or implicitly in market forces; design incentives;
`the “interrelated teachings of multiple patents”; “any need or problem
`known in the field of endeavor at the time of invention and addressed by the
`patent”; and the background knowledge, creativity, and common sense of
`the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587
`F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 418–21 (2007)).
`
`
`1. Level of Ordinary Skill
`Relying on Dr. Lavian’s testimony, Petitioner contends that a person
`of ordinary skill in the art “would have had at least a bachelor’s degree in
`electrical engineering or computer science (or equivalent degree or
`experience) with practical experience or coursework in the design or
`development of systems for network-based communication between
`computer systems.” Pet. 6 n.1 (citing Ex. 1002 ¶ 13). Patent Owner does
`not contest this statement in its Preliminary Response. In his testimony,
`Dr. Bajaj disagrees that a skilled artisan would have needed practical
`experience. Ex. 2001 ¶ 18. Dr. Bajaj also would define the relevant field of
`experience more broadly, although he does not provide specificity. Id.
`Neither expert cites the basis for his respective opinion. Nevertheless,
`Dr. Bajaj states that his opinions would not change under a determination
`that Dr. Lavian’s opinion regarding the level of ordinary skill is correct. Id.
`For purposes of this Decision, we adopt Petitioner’s statement of the level of
`ordinary skill.
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`2. Alleged Obviousness of the Challenged Claims over
`Roseman, Rissanen, Vetter, Pike, and Lichty
`Petitioner contends that the challenged claims would have been
`obvious over Roseman, alone or in combination with Rissanen, Vetter, Pike,
`and Lichty. Specifically, Petitioner contends that Roseman teaches each
`limitation of the challenged claims, but cites the remaining references for the
`following, should we determine that Roseman lacks such a teaching:
`Rissanen for a teaching that tokens could have been stored in a
`database;
`Vetter for a teaching that Roseman’s communications could have
`been over the Internet;
`Pike for a teaching of URLs; and
`Lichty for a teaching of “known features of America Online chat
`rooms,” in particular an “ignore” feature, which Petitioner
`equates to “censoring.”
`
`Pet. 6.
`
`
`a. Overview of Roseman
`Roseman describes a system for multimedia conferencing, in which
`parties are linked by both video and audio media. Ex. 1003, Abstract. In
`Roseman, a conference is represented visually as a common virtual
`conference table, in which each participant can place a document onto the
`table electronically, manipulate and write on the document, write on a virtual
`notepad, and move a pointer to draw other users’ attention. Id. at 2:38–45,
`7:55–8:37. Participants can see the events as they occur. Id. at 2:46–47.
`Figure 9, reproduced below, illustrates an example conference room:
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`Figure 9 is a picture of a video screen that is generated by a host computer
`and distributed to all participants in a conference. Id. at 2:16–18.
`The parties operate their own local computers (which include video
`cameras and speaker-type telephones) and, when a conference is established,
`connect to a host computer via commercially available local area networks
`(“LANs”) and wide area networks (“WANs”). Id. at 1:34–41. In the
`conference, the host computer generates a common video screen (e.g.,
`Figure 9, reproduced above) displayed at each of the local computers, and
`the parties send information, such as drawings, to be displayed on the
`common screen. Id. at 1:42–46. The telephones and video cameras allow
`the parties to see and speak with each other. Id. at 1:47–49.
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`Roseman describes additional features, such as a party’s ability to
`“whisper” to another party without being heard by others in the conference
`room, and the ability to “pass notes” by dragging a note to the picture of
`another party, while the other parties are unaware of the note. Id. at 9:16–
`31. Each room may also have “doors” to committee rooms or child-rooms.
`A child room is created in the same way as a parent room and is dependent
`upon the parent room for access and existence. Id. at 10:18–23.
`A meeting requester creates a conference by selecting the participants,
`the attributes of the virtual conference room (e.g., virtual equipment and
`room décor), and the rules of the conference (e.g., whether the requester has
`absolute control over voice and message interaction of the parties). Id. at
`3:22–56. Moreover, the host “can automatically prevent filibustering” by
`“monitor[ing] the speech of each person, and plac[ing] a limit on the total
`time allowed to each person.” Id. at 12:29–38.
`The meeting requester specifies a level for each invitation and
`compiles an invitation list. Id. at 9:34–36. Invitations include “keys”
`specifying the level, e.g., whether the invitation is for the invitee only or can
`be passed to a delegate or to anyone. Id. at 9:35–48. According to
`Roseman, “[t]he meeting room ‘knows’ about each key and its invitation
`level. Persons with improper keys are not admitted to the room.” Id. at
`9:49–51. A key is distributed electronically as an object attached to the
`invitation. Id. at 9:54–55. To attend a meeting, a party walks a virtual
`“hallway” to the meeting room and opens the meeting room door by
`dropping the key onto a virtual “door lock.” Id. at 10:30–32, 10:61–65.
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`b. Overview of Rissanen
`Rissanen describes a system and method for validation of spoken
`passwords. Ex. 1004, 2:17–21. Petitioner cites to Rissanen’s Background
`of the Invention discussion of systems in which “business computer systems
`are arranged to initially record and store passwords assigned to users,” a user
`is prompted for entry of a password, and “the system compares the keyboard
`entered password with the stored passwords and enables the user to access
`the system when the entered password matches the previously stored
`password.” Id. at 1:21–28. In Rissanen’s proposed solution, “[u]sers are
`initially entered into a password database stored in the computer system by
`assigning each user an account code and a password, such as consisting of a
`number of numerical digits.” Id. at 2:26–29.
`Petitioner makes clear that “[a]lthough Rissanen also describes using
`spoken voice passwords, this Petition cites it for its more pedestrian
`teachings relating to database storage of passwords of any form.” Pet. 11.
`
`
`c. Overview of Vetter
`Vetter is an IEEE Computer Society Magazine article discussing
`available tools for conducting teleconferencing over the Internet. According
`to Vetter, “[v]ideoconferences are becoming increasingly frequent on the
`Internet and are generating much research interest.” Ex. 1005, 77. Vetter
`states that “the emerging multicast backbone (or MBone) can efficiently
`send traffic from a single source over the network to multiple recipients,”
`and, “[a]t the same time, many workstations attached to the Internet are
`being equipped with video capture and sound cards to send and receive
`video and audio data streams.” Id. Vetter concludes that “[t]he price/
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`performance of these hardware devices has finally reached a level that
`makes wide-scale deployment possible, which is perhaps the most important
`factor in the recent growth of videoconferencing applications.” Id.
`Vetter discusses in particular a CU-SeeMe platform from Cornell
`University that supported video and audio conferencing over the Internet,
`and a CU-SeeMe Reflector that allowed multiparty conferencing with CU-
`SeeMe. Id. at 78.
`
`
`d. Overview of Pike
`Pike is a reference and guide book for using the Web browser Mosaic.
`Ex. 1006, 2. Petitioner cites to Pike’s discussion of URLs and hyperlinks.
`According to Pike, URLs were developed as a standard way of referencing
`items on the World Wide Web. Id. at 38. “A URL is a complete description
`of an item, containing the location of the item that you want to retrieve. The
`location of the item can range from a file on your local disk to a file on an
`Internet site halfway around the world.” Id.
`
`
`e. Overview of Lichty
`Lichty is a book intended as a “tour guide” of America Online
`(“AOL”), an online email service, Internet gateway, and community.
`Ex. 1007, 1–3. Petitioner (Pet. 34) focuses on Lichty’s description of AOL’s
`real-time interactive “People Connection” feature. Ex. 1007, 251–78.
`People Connection includes chat rooms in which a user communicates with
`others by posting text messages to the other participants in a chat room.
`Id. at 252–55. Lichty describes, in particular, that a People Connection
`interface includes an “Ignore” button. Id. at 268–69. According to Lichty,
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`“[i]f you wish to exclude a member’s comments (or those of all the members
`in a conversation in which you’re not interested), select the member’s name
`in the People in this Room window and click the Ignore button. From then
`on, that member’s text will not appear on your screen.” Id. at 269; see also
`id. at 510 (glossary definition of “Ignore—Chat blinders; a way of blocking
`a member’s chat from your view in a chat/conference room window. Ignore
`is most useful when the chat of another member becomes disruptive in the
`chat room.”).
`
`
`f. Claim 189
`For the reasons given below, Petitioner has established a reasonable
`likelihood that it would prevail with respect to claim 189 as obvious over
`Roseman, Rissanen, Vetter, Pike, and Lichty.
`
`(1)
`
`“A method of communicating via an Internet network by
`using a computer system including a controller computer
`and a database which serves as a repository of tokens for
`other programs to access”
`Petitioner contends that Roseman’s host computer is a controller
`computer and that Roseman’s keys are tokens. Pet. 15–17.
`Patent Owner responds that Roseman’s keys are not tokens because
`they are incapable of performing various tasks Patent Owner contends are
`described in the ’657 patent. Prelim. Resp. 11. As explained in Section
`II.A.1 above, such tasks are not requirements of tokens.
`Petitioner further argues that such keys are stored in “a database
`which serves as a repository of tokens,” as recited in claim 189, because a
`meeting room that is accessed by a key “‘knows’ about each key and its
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`invitation level.” Pet. 17–18 (quoting Ex. 1003, 9:49–51). According to
`Petitioner, a copy of each key must be stored on the host computer for the
`meeting room to “know” about each key. Id. at 18. Petitioner argues that a
`skilled artisan would have understood a database to be a stored collection of
`tokens. Id.
`Petitioner argues that other programs access the stored collection of
`tokens, including the various meeting or conference rooms maintained on
`the host computer. Id. at 20–21. Petitioner relies on disclosure in Roseman
`that a meeting room is accessible from a virtual hallway with doors to other
`meeting rooms. Id. at 21 (citing Ex. 1003, 9:63–65). According to
`Petitioner, “[e]ach meeting room . . . contains a number of computer
`programs, and each meeting room itself can be thought of as a program.
`These programs access the repository of keys when a user presents a key to
`obtain access to a conference room.” Id.
`To the extent that Roseman does not teach storage in a database,
`Petitioner argues that Rissanen teaches storing user authentication
`information, such as user identity information and passwords, in a database,
`and that such teaching would have been applicable to the keys of Roseman.
`Id. at 18–19. According to Petitioner, use of a database, per the teachings of
`Rissanen, would have been one of a finite number of known solutions
`applied predictably to Roseman with no change in their respective functions.
`Id. at 19–20.
`In response, Patent Owner argues that Roseman does not describe
`storing a key in a database or other repository that is accessible by other
`programs. Prelim. Resp. 14. Patent Owner argues that Roseman does not
`describe a storage scheme that includes persistence and “additional
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`functionality (such as sorting an
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