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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`______________
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`ORACLE AMERICA INC., ORACLE CORPORATION, AND HCC INSURANCE
`HOLDINGS, INC.,
`PETITIONER,
`
`V.
`
`INTELLECTUAL VENTURES I LLC,
`PATENT OWNER.
`______________
`
`Case IPR2016-01434
`Patent 7,516,177 B2
`______________
`
`Record of Oral Hearing
`Held: September 11th, 2017
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`______________
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`Before MICHAEL W. KIM, STACEY G. WHITE, and ROBERT A. POLLOCK,
`Administrative Patent Judges.
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
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`ORACLE AMERICA INC., ORACLE CORPORATION, AND HCC INSURANCE
`HOLDINGS, INC.,
`PETITIONER,
`
`V.
`
`INTELLECTUAL VENTURES I LLC,
`PATENT OWNER.
`______________
`
`Case IPR2016-01434
`Patent 7,516,177 B2
`______________
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`Record of Oral Hearing
`Held: September 11th, 2017
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`______________
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`Before MICHAEL W. KIM, STACEY G. WHITE, and ROBERT A. POLLOCK,
`Administrative Patent Judges.
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`Case IPR2016-01434
`Patent 7,516,177 B2
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER, ORACLE AMERICA
`INC., ORACLE CORPORATION, AND HCC INSURANCE
`HOLDINGS, INC.:
`MICHAEL W. DE VRIES, ESQUIRE
`KAREN L. YOUNKINS, ESQUIRE
`KIRKLAND & ELLIS, LLP
`33 South Hope Street
`Los Angeles, California 90071
`213.680.8140
`
`ON BEHALF OF THE PATENT OWNER, INTELLECTUAL
`VENTURES I, LLC:
`BRENTON R. BABCOCK, ESQUIRE
`SCOTT RAEVSKY, ESQUIRE
`KNOBBE MARTENS
`2040 Main Street
`14th Floor
`Irvine, California 92614
`949.760.0404
`
`ALSO PRESENT:
`TIM SEELEY - INTELLECTUAL VENTURES
`
`
`The above-entitled matter came on for hearing on Monday, September
`11th, 2017, commencing at 1:02 p.m. at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia in Courtroom B.
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` P R O C E E D I N G S
` JUDGE KIM: This is an oral hearing for
`IPR2016-01434. My name is Michael Kim. To my right, I have
`Judge Robert Pollock. And on the screen I have Judge Stacey
`White.
` So we can start by getting appearances starting
`with Petitioner, please.
` MR. DE VRIES: Good afternoon, Your Honors. This
`is Mike De Vries from the law firm of Kirkland & Ellis on
`behalf of Petitioners, and I will be presenting today's
`argument.
` JUDGE KIM: And do you have anyone else with you?
` MR. DE VRIES: I do. With me here today are also
`Karen Younkins, also from my firm, Kirkland & Ellis.
` Nathan Rees from Norton Rose Fulbright.
` From the Petitioners, Peter O'Rourke is here on
`behalf of the Oracle Petitioners.
` And Elaine Lawson is here on behalf of HCC.
` JUDGE KIM: Very good. Thank you. Welcome.
` Patent Owner.
` MR. BABCOCK: Good afternoon, Your Honors. I'm
`Brenton Babcock with Knobbe Martens representing the Patent
`Owner, Intellectual Ventures.
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` With me is counsel of record, Scott Raevsky.
` Also representing the Patent Owner, Intellectual
`Ventures, is Tim Seeley, in-house counsel at Intellectual
`Ventures.
` JUDGE KIM: Great. Thank you, sir.
` All right. So a few housekeeping things. I
`believe we gave each side 45 minutes; is that correct?
` Okay. So since I don't think there are any
`extraneous motions or other things, Petitioner will go first.
`You can reserve as much time as you want for rebuttal, sir.
`And Patent Owner will complete the one straight shot and it
`will end with Petitioner.
` Remember that Judge White cannot see the slides.
`So when you're speaking, please make sure to refer to
`whatever slide your referring to. She has a copy. She can
`follow along.
` Last, but not least, for yourselves as well as
`people in the audience, for in and out, if you could please
`restrict it to time when counsel changes who's speaking just
`to be as least disruptive as possible.
` All set. All right. With that then, sir, you may
`begin.
` MR. DE VRIES: Thank you, again, Your Honors, for
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`the opportunity to present to you here today. I have hard
`copies of my presentation slides. I don't know if that would
`be helpful to Your Honors, but I'd happy to hand them up if
`it would.
` JUDGE KIM: Sure.
` MR. DE VRIES: May I approach?
` JUDGE KIM: Yes.
` And how much time would you like to reserve for
`rebuttal?
` MR. DE VRIES: I would like to reserve 15 minutes
`for rebuttal.
` JUDGE KIM: Whenever you're ready.
` MR. DE VRIES: Thank you.
` Your Honors, I first wanted to note, because the
`last time I spoke with you all it was on a telephone
`conference where we asked for permission to move this hearing
`because of a trial conflict that I had, just so you're not
`wondering why I'm here despite that, the trial after that
`unexpectedly settled and that freed up my conflict and so,
`therefore, I'm here. Thank you for the opportunity, though,
`to present that request to Your Honors previously.
` And, Judge White, I obviously wasn't able to hand
`out some hard copies to you of the materials, but I will do
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`my best to always say the name of the slide so that you can
`follow along easily.
` JUDGE WHITE: Good. I have the electronic copies
`here.
` MR. DE VRIES: Great. Thank you.
` And in order to streamline my presentation, I'm
`going to also do my best to -- I may jump around between the
`slides just a little bit, but I'm going to try to do it in a
`way that is not disruptive.
` Your Honors, the ideas that are broadly claimed in
`the '177 patent were well known before the patent, and
`unquestionably the claims of that patent are obvious in view
`of the prior art that is in this proceeding.
` If we go to Slide 5, please, the '177 patent claims
`priority to an application that was filed in May of 2000
`which was several years after the advent of the commercial
`Internet in 1995.
` And the patent describes as a problem what I'm
`calling information overload. What the patent specifically
`says in Column 1 is that the problem facing Internet users is
`that they were sipping information from a fire hose. And the
`'177 patent purports to solve that problem through what it
`calls a personal web page. It uses different terms to refer
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`to that in the claims. It refers to that as a centralized
`access point; but that is, along with some other aspects that
`are described in the claims, what the patent says solves this
`problem of information overload.
` But, in fact, as we can see from the prior art at
`issue in this proceeding, in particular the Robinson
`reference, which describes the Excite.com website that was
`available at that time, these ideas were well known out
`there.
` And if we look at Slide 7, for example, there is
`tremendous amount of description in Robinson of an aspect of
`the Excite.com web page that allows you to personalize your
`home page. And I've highlighted some of the relevant
`portions on Slide 7 that show how this is done; but
`essentially a user of Robinson explains of the website is
`able to have a personalized web page, a home page, where that
`user can select certain information that she or he would like
`to appear on the web page and then be able to view that by
`logging in to the personalized web page. So this central
`idea that's described in the patent was well known.
` In addition, if we look at Slide 8, the Robinson
`reference describes in some great detail various aspects of
`the system that it describes. On the left, I'm showing the
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`favorite links feature which allows a user on his or her
`personalized web page to identify links and add them along
`with descriptive titles about those links to the web page of
`that user.
` And on the right, I'm showing the notepad feature
`that allows a user to add text to a personalized web page, to
`modify that text and, in another part that's not shown here,
`to remove that altogether if that's what the user chooses.
` Now, none of the prior art references at issue in
`this proceeding were before the Patent Office during
`examination of the '177 patent. And although these
`references were out there and the Excite.com website was out
`there, the applicant mentions some forms in the specification
`of information retrieval on the Internet referring
`specifically to certain websites, but Excite.com is not
`mentioned. Others are. But the fact that this personalized
`web page technology was out there and described in the prior
`art that existed at that time was not before the examiner as
`part of the specification.
` And, in fact, the application that led to the '177
`patent sailed through prosecution. There was a
`nonstatutory-type double patenting rejection that occurred;
`but after that was resolved through a terminal disclaimer,
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`there was no further prior art rejection or any prior art
`rejection and the claims were allowed without explanation on
`the substantive merits in the Notice of Allowance.
` As I know Your Honors are very well aware so I
`won't belabor it here, many of the claims, in fact, all but
`one that are at issue in this proceeding, have already been
`invalidated, found to be unpatentable in other IPR
`proceedings. I'm of course not going to focus my remarks on
`those other proceedings, but most of the claims have been
`found to be unpatentable twice in those proceedings. Those
`are Claims 11 and 12 and 16 through 20. And Claims 13 and 15
`have been found to be unpatentable once in the 7 -- 2015-1707
`decision.
` JUDGE KIM: Counsel, aren't those on appeal right
`now?
` MR. DE VRIES: Yes, they are, Your Honor.
` Now, I'd like to do two things before I focus on
`what are really a discrete set of issues before Your Honors.
`The first is to highlight what it is that the Patent Owner is
`not contesting here. The Patent Owner is not contesting that
`the vast majority of the claim limitations are disclosed in
`the prior art references that are at issue in this
`proceeding.
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` And in many circumstances where we've provided
`expert testimony about the prior art and what it discloses to
`one of skill in the art, that goes unrebutted. So, for
`example, there is no expert testimony on the side of the
`Patent Owner about Claim 16 or its dependents, although we
`provided expert testimony about that.
` The Patent Owner has not provided evidence of
`secondary indicia of nonobviousness. And the Patent Owner
`has not contested the status of the prior art as prior art.
`And so there are many, many issues where we have presented
`evidence and argument that are unrebutted in this proceeding.
` So that brings us to --
` JUDGE KIM: Counsel, I mean, do we just take those
`as fact?
` MR. DE VRIES: No, Your Honor, that's not what I'm
`suggesting at all. We have provided detailed evidence that
`we believe clearly satisfies each of the limitations that the
`Patent Owner has not described. And I'm certainly not
`suggesting that Your Honors don't need to or should not look
`at that evidence.
` We think it's compelling. We think there's a
`reason why the Patent Owner has not challenged that, and that
`is because those disclosures are clear.
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` But, no, we're not certainly not suggesting Your
`Honors should not review that.
` JUDGE KIM: Okay.
` MR. DE VRIES: So that brings us to Slide 10, which
`is a summary of what the Patent Owner is contesting. And I'd
`like to explain what I'm showing on Slide 10.
` The Patent Owner attempts to raise three, what we
`would call, thin distinctions between the prior art and the
`challenged claims.
` There is a fourth, and so I want to put an asterisk
`on that.
` There is also an argument that the Patent Owner
`makes about what content means. And I know that that is an
`issue that Your Honors are well familiar with and we have
`stated our positions about that in the papers. I'm not going
`to address that here given some of the background, but there
`is a fourth item that they contested.
` But the three primary things that the distinctions
`that the Patent Owner tried to draw between Robinson
`primarily and the challenged claims are these three.
` The first is, the Patent Owner argues that the
`administrative interface that's in the claim, Claim 11, is
`not found in Robinson. In order to make that argument,
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`Patent Owner is arguing to Your Honors that you should adopt
`a different claim construction than Your Honors adopted in
`the institution decision and, critically, that the Patent
`Owner agreed to in District Court litigation. I'm going to
`show you that document.
` And then if Your Honors will make -- will change
`your construction, the Patent Owner argues that the
`administrative interface is not found; however, as we pointed
`out, even if the unduly narrow claim construction is adopted
`for administrative interface, the patent -- I'm sorry, the
`prior art clearly renders the claim obvious.
` And I think one thing you'll see throughout today's
`discussion and the briefing is that although this is an
`obviousness challenge and the -- what we're looking at here
`is obviousness, the Patent Owner has predominantly looked at
`this as if it were an anticipation argument. And the reason
`I say that is that frequently you will not hear from the
`Patent Owner an argument about why something wouldn't be
`obvious.
` So as an example, when we say it would have been
`obvious to take a link in Robinson and link it to the
`personalized home page, you're not going to see a response
`really from the Patent Owner that explains why that wouldn't
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`be the case.
` Rather, a lot of the Patent Owner's focus is on
`trying to draw distinctions between the prior art and the
`claims in a way that we don't think is correct but also isn't
`the right inquiry.
` The second issue is content contributed. For
`Claim 14, it's the one claim that has not yet been found
`unpatentable in another proceeding, there is a term "content
`contributed." The Patent Owner is advocating a construction
`of content contributed that we think is wrong. It's
`different than the one that Your Honors adopted in the
`institution decision. And it rehashes an argument that,
`frankly, was raised in the preliminary response. And it's
`wrong for all the same reasons that Your Honors found in the
`institution decision.
` And then the third is the accessing limitation of
`Claim 16. And I'm going to spend some time on that. It's a
`rather discrete issue. And the argument there is that
`Robinson doesn't disclose the accessing that's found in
`Claim 16.
` In fact, I think whether or not -- or however the
`debate about what exactly these particular links in Robinson
`are referring to, whether the Excite Home means the
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`personalized web page of the user or something more
`generally, it would have been obvious certainly based on the
`Robinson disclosure for that link to go to a user's web page.
` So those are the three issues that I'm going to
`talk about. I'm going to focus most of my time on issues one
`and two and then briefly touch on the third.
` And then the last thing I'll say before jumping in
`is that the sur-reply really does not correctly portray our
`arguments. The sur-reply says that we abandoned certain
`arguments. We haven't abandoned anything. And it
`characterizes our arguments in a way that is not correct, and
`I would like to explain why we believe that that's the case.
` So with that, I would like to talk about
`administrative interface. And if we can go to Slide 11.
` Claim 11 recites an administrative interface -- and
`I'm skipping -- that's operative to create groupings of
`content into one or more distributed information access
`points.
` As I mentioned, Patent Owner advocates and asks Your
`Honors to adopt a construction that we believe is unduly
`narrow and flatly at odds with black letter claim
`construction law by adding in multiple additional limitations
`that are not found in the claim language.
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` If we go to Slide 12, Slide 12 shows the
`construction that Your Honors adopted in the institution
`decision. And quite simply, it states that, "An
`administrative interface is a software management tool that
`facilitates administrative functions."
` This was a construction that the Patent Owner did
`not dispute in the preliminary response. Of course, it was
`adopted by Your Honors in the institution decision.
` Critically, however, the Patent Owner agreed to
`this in District Court litigation, and we're going to look at
`that. And then this is also the construction that was
`adopted by the District Court in a related set of proceedings
`involving BITCO and other parties.
` JUDGE KIM: Counsel, can you give -- what's the
`approximate dates for the paper where Patent Owner agreed to
`it and then where the court adopted it, approximately?
` MR. DE VRIES: If we go to Slide 13, I believe --
`let me answer that question, Your Honor. It's in
`Exhibit 1019.
` JUDGE KIM: And you can get back to it.
` MR. DE VRIES: It is sometime in 2016 I'm
`essentially certain. And my belief is it was in the first
`half, but we'll find it right now and answer that question
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`for Your Honor.
` JUDGE KIM: That's fine.
` MR. DE VRIES: So in Slide 13, what we're showing
`is the Patent Owner's agreed construction. So in District
`Court, where the standard’s of course, as you all know very
`well, of course, different, more restrictive than it is here
`at least potentially.
` The Patent Owner agreed that the administrative
`interface claim terms should be construed as a software
`management tool that facilitates administrative functions.
` This is in connection with a litigation that's
`pending against one of the Petitioners here, the HCC
`Petitioner. And to the -- and maybe I can answer Your
`Honor's question at a more general -- in a more general
`sense.
` I believe that this agreed construction came after
`the District Court adopted this construction in an earlier
`proceeding for the same term; but, of course, the Patent
`Owner was within its rights to contest this construction
`again if they believed it was incorrect, and did not do so.
` And we think that on some level, this issue should
`be determinative, although we don't need to rely on this
`because the intrinsic evidence simply does not support adding
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`this negative -- I'm sorry, this limitation into the claim.
` If we take a look at Slide 17, here's what Patent
`Owner is proposing: Patent Owner wants to require that the
`administrative interface be a graphical user interface.
`That's point one.
` And then point two, the Patent Owner wants to add a
`negative limitation to the claim that it cannot merely be an
`HTML programming tool. And neither of those limitations is
`something that ought to be added in the claim. There's not
`intrinsic support for that.
` If we look at Slide 55, this visually depicts what
`it is that the Patent Owner is trying to do. And the reason
`I show it this way is that there is nothing in the claim
`language itself that the Patent Owner is relying on to add in
`the terms "graphical user."
` It simply says, "an administrative interface," full
`stop. Full stop with respect to that term I mean.
` And if we look now back at Slide 18, what does the
`word "interface" mean? Because there's not a lot of
`disagreement about this. This is Patent Owner's expert.
` At the top, in his declaration, he acknowledges
`that the term "interface" has many meanings in computer
`science. And when asked about it at deposition, he was also
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`quick to acknowledge that the term "interface" has many
`meanings in the context of computer science.
` If we go look at Slide 19 now, there's a particular
`kind of interface that -- this is an example, but to show the
`fallacy in the logic of the Patent Owner, there's a command
`line interface. A command line interface is one that our
`expert, Dr. Almeroth, testified could be used to perform the
`function in the claim, mainly to group content.
` And if we look at Slide 57, the Patent Owner's
`expert admitted that the CLI is not a graphical user
`interface. There's obviously more testimony than this. I'm
`summarizing what I think is a fair reading of this.
` When I deposed the Patent Owner's expert, there was
`a lot of discussion about what is a graphical user interface,
`what does it mean. He pointed to a definition in a Microsoft
`dictionary. But at the end of the day, he acknowledges that
`a CLI is not a graphical user interface, at least he doesn't
`think about it that way. And as we established in a way that
`we believe is unrebutted, a CLI could be used to group
`content.
` Patent Owner has said that it's not -- that they
`believe it's not an ideal way to group content, but the claim
`itself is broad enough certainly to encompass that. And
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`adding a limitation that says it must be a GUI is simply not
`legally correct.
` JUDGE KIM: Well, obviously, Counsel, they're
`relying heavily on the spec saying there is no command line
`interface in the specification itself so, therefore, it's
`limiting.
` MR. DE VRIES: Yes, Your Honor, and I was actually
`going to come to that point right now.
` So where does that leave them? They essentially
`argue that the examples in the specifications are graphical
`user interfaces, they say, and so, therefore, you should
`restrict this broad term that everybody agrees in this area
`has a broad meaning, restrict it in a way that they advocate,
`and the law absolutely does not support that kind of
`limitation here.
` So if we look at Slide 20, first of all -- and this
`is a critical point -- they point to exemplary language in
`the specification. This is not a case like some where the
`specification says over and over again the invention must use
`a graphical interface, the only way you can do this is a
`graphical user interface. Nor is this a case where, for
`example, the specification has criticized a CLI interface.
`It provides examples.
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` And if you look at Slide 59, this is what we
`believe is an important part of the specification. Patent
`Owner calls this boilerplate, but this isn't boilerplate.
`This is an important part of the specification where right
`before the claims, the patent says, "It's to be understood,
`however, that the invention is not limited to the specific
`features shown and described."
` And so I know that if we were trying to advocate
`for a limitation like this to avoid infringement, we would
`never have the ability to do that. The law simply doesn't
`support that. And this type of language is not boilerplate.
`It's intended to both keep the claims broad. And also, those
`who are reading the patent will understand that it is that
`breath that should be read into the claims.
` JUDGE KIM: Counsel, yeah, on this, I guess this is
`just generally, are you aware of any boilerplate case law, if
`you will, on how much weight to give the last paragraph that
`pretty much seems to appear in every patent?
` MR. DE VRIES: The answer is this: I am not aware
`of any law that they cited in their briefing that holds that
`if you take a specification, you can divide it into
`boilerplate and non and ignore what you call boilerplate. I
`don't think that that law exists.
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` I do know that there's law that we cite, Phillips,
`if we look at Slide 23, is key. That says that the Federal
`Circuit has repeatedly warned against confining the claims to
`the embodiments and the specification, and the standard is
`very high.
` They cite to this In Re: Abbott case. At Slide 24,
`we discuss it. And in Abbott, there were disparaging remarks
`in the specification. The claims themselves supported adding
`in the limitation. And you have neither of those things
`there. There's not that kind of disparagement against, for
`example, CLIs, nor is there an indication in the claims that
`they should be restricted to graphical user interfaces.
` And so for that reason, the proposal by the Patent
`Owner to restrict the claims to graphical user interfaces is
`plainly, we believe, inconsistent with the broadest
`reasonable interpretation standard and is incorrect.
` I'll briefly say this: If we look at Slide 56, the
`Patent Owner attempts to read in an additional restriction
`into the claim, this time a negative one, an administrative
`interface that is not merely an HTML programming tool.
`Again, there's nothing in the claims that says that.
` And so what do they rely on? If we look at Slide
`21, Slide 21 cites to Column 8, lines 48 to 53, and says, "A
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`user does not need to be trained with HTML programming in
`order to carry out such tasks," referring to some tasks about
`adding categories, moving, hiding and deleting categories.
` There is nothing in that statement that comes even
`close to the kind of clear disavowal of claim scope that
`would ever support adding in a negative limitation like this
`into the claims. Not to mention that it refers to a user and
`Patent Owner goes out of its way to say that users and
`administrators are different. And it's not entirely clear to
`me where they come out on this phrase.
` But regardless of that issue, this statement is not
`anywhere near the kind of clear disavowal of claim scope that
`would support adding in this limitation.
` So where does that bring us on this limitation?
`First, under the Board's construction, Robinson plainly
`discloses an administrative interface for grouping -- for
`creating content groupings. If we look at Slide 68, these
`are some examples that are cited in the petition. There are
`channels. The editors are described as curating these
`channels in certain respects. And they're disclosed as
`providing, in some respects, reviews. But they're also
`clearly disclosed as being -- participating in putting
`certain websites within certain subject matter channels.
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` And I think this is a critical part, so I want to
`address it. Slide 16 shows an admission from the Patent
`Owner's expert. And I asked him -- we were talking about the
`Excite editors, and I said -- I'm reading from the middle of
`the page here.
` I said, "I'm asking you, as a person of ordinary
`skill in the art, reading these sentences that we're looking
`at, at page 28 would understand that the Excite editors could
`have used some interface to the software system in order to
`implement their decisions about which websites are associated
`with which channel; fair?"
` And he said, "Okay. Could have used some interface
`to some software system to eventually classify the sites
`under these channels, yes."
` So I think there's really no dispute, and the
`Patent Owner really has not disputed, whether or not the
`administrative interface limitation is certainly obvious and,
`frankly, disclosed in Robinson under the Board's
`construction.
` So then we go to finally on this limitation what if
`you were to adopt their construction and require a graphical
`user interface that is not merely an HTML programming tool?
`Robinson also would render the claim obvious under that
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`construction. We believe that there's no question.
` If you look at Slide 27, this describes the My
`Links -- I'm sorry, favorite links portion of the Robinson
`disclosure. And to be crystal clear, we're not saying that
`administrators use the favorite links. We acknowledge that
`what we might call regular users use this.
` But what their expert admitted was that this
`disclosure shows a graphical user interface for grouping
`content. So take the administrator part out of it, that
`technology is described in Robinson.
` And so if we look at Slide 70, we'll see that the
`idea that the editors would use that disclosed technology for
`grouping, for example, the websites in the channels is
`obvious. And that's our argument, that even if you were to
`adopt their construction, the claims are obvious in light of
`Robinson.
` JUDGE KIM: Counsel, do you have expert testimony
`backing this up?
` MR. DE VRIES: Yes, we do, Your Honor.
`Dr. Almeroth submitted two declarations, and it's addressed
`in at least the reply declaration which was submitted after
`we received this construction from Patent Owner.
` JUDGE KIM: Okay.
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` MR. DE VRIES: So then let's move onto content
`contributed where I'm going to spend the majority of the rest
`of my time.
` So if we go to Slide 29, Patent Owner argues that
`content contributed has a specialized meaning and that the
`notepad feature in Robinson doesn't meet it. So the Board's
`construction of content contributed, which was content added
`in the institution decision, is correct.
` The Patent Owner relies predominantly on dictionary
`definitions, but also to an extent on the specification to
`argue that contribute requires that the thing contributed be
`accessible to someone else.
` If we go to Slide 65, you'll see that that's just
`not correct. We've tried to pick a number of examples. Your
`Honors in the institution decision pointed out that one of
`the definitions that was submitted to furnish or supply as a
`share or part to the advance of a project through development
`doesn't require accessibility by someone else, and it
`doesn't.
` Patent Owner say
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