Petition for Inter Partes Review of U.S. Patent No. 8,694,657
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`Paper No. 1
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`Microsoft Corporation
`Petitioner
`
`v.
`
`Windy City Innovations, LLC
`Patent Owner
`
`U.S. Patent No. 8,694,657
`
`TITLE: REAL TIME COMMUNICATIONS SYSTEM
`____________________
`
`Inter Partes Review No. IPR2017-00656
`____________________
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,694,657
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`
`
`
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`

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`Table of Contents
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`Page
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`I.
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`V.
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`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ....................... 1
`A.
`Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1) ............................ 1
`B.
`Related Matters under 37 C.F.R. § 42.8(b)(2) ..................................... 1
`C.
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) .................. 2
`D.
`Service Information .............................................................................. 3
`E.
`Power of Attorney ................................................................................ 3
`PAYMENT OF FEES - 37 C.F.R. § 42.103 .................................................. 3
`II.
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. §§ 42.104 AND 42.108 ....................................................................... 3
`A. Grounds for Standing under 37 C.F.R. § 42.104(a) ............................. 3
`B.
`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested ................................................ 4
`Requirements for Inter Partes Review 37 C.F.R. § 42.108(c) ............ 4
`C.
`IV. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ................... 5
`A.
`“token” .................................................................................................. 5
`B.
`“pointer” ............................................................................................... 6
`THE CHALLENGED CLAIMS ARE UNPATENTABLE ........................... 6
`A.
`Brief Summary and Date Qualification of the Prior Art ...................... 8
`1.
`Brief Overview of Roseman (Ex. 1003) .................................... 8
`2.
`Brief Overview of Rissanen (Ex. 1004) ................................... 11
`3.
`Brief Overview of Vetter (Ex. 1005) ....................................... 12
`4.
`Brief Overview of Pike (Ex. 1006) .......................................... 13
`5.
`Brief Overview of Lichty (Ex. 1007) ....................................... 14
`Ground 1: Claims 189, 334, 342, 348, 465, 580, 584, and 592
`Are Obvious Over Roseman, Rissanen, Vetter, Pike, and Lichty ..... 15
`1.
`Independent Claim 189 ............................................................ 15
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`B.
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`-i-
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`a.
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`b.
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`c.
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`d.
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`e.
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`Table of Contents
`(continued)
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`Page
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`“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:”
`(Claim 189, Preamble) ................................................... 15
`“affording some of the information to a first of the
`participator computers via the Internet network,
`responsive to an authenticated first user identity”
`(Claim 189[a]) ............................................................... 27
`“affording some of the information to a second of
`the participator computers via the Internet
`network, responsive to an authenticated second
`user identity” (Claim 189[b]) ........................................ 32
`“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”
`(claim 189[c]) ................................................................ 33
`“determining whether the first user identity is
`individually censored from sending data in the
`communications, the data presenting at least on of
`a pointer, video, audio, a graphic, and multimedia
`by determining whether a respective at least one
`parameter corresponding to the user identity has
`been determined by an other of the user identities”
`(claim 189[d]) ................................................................ 35
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`Table of Contents
`(continued)
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`Page
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`f.
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`g.
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`2.
`3.
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`“if the user identities are able to form the group,
`forming the group and facilitating sending the
`communications that are not censored form the
`first participator computer to the second
`participator computer, wherein the sending is in
`real time and via the Internet network, and wherein
`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
`presenting the content at an output device of the
`second participator computer” (claim 189[e]) ............... 45
`“if the user identity is censored from sending of
`the data, not allowing sending the data that is
`censored from the first participator computer to the
`second participator computer.” (claim 189[f]) .............. 48
`Claim 334 (two client software alternatives) ........................... 48
`Claim 342 (data presenting a human communication of
`sound) ....................................................................................... 52
`Claim 348 (access to a member-associated image) ................. 53
`4.
`Claim 465 (Apparatus Corresponding to Claim 189) .............. 54
`5.
`Claims 580, 584, 592 (Corresponding Dependent Claims) ..... 57
`6.
`VI. CONCLUSION ............................................................................................. 58
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,694,657
`
`List of Exhibits
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`
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`
`
`Description of Document
`Ex. No
`1001 U.S. Patent No. 8,694,657 to Daniel L. Marks
`1002 Declaration of Tal Lavian, Ph.D.
`1003 U.S. Patent No. 6,608,636 to Robert D. Roseman
`1004
`EP 0621532 A1 to Eugene Rissanen, published on April 13, 1994
`1005
`
`Ronald J. Vetter, Videoconferencing on the Internet, Computer, IEEE
`Computer Society, Vol. 28, No. 1, at pp.77-79 (Jan. 1995)
`
`1006
`1007
`
`1008
`
`1009
`
`Excerpts from Mary Ann Pike et al., Using Mosaic (1994)
`
`Excerpts from Tom Lichty, The Official America Online for Macintosh
`Membership Kit & Tour Guide (2d ed. 1994)
`
`Tim Berners-Lee et al., Request for Comments (RFC) 1738, Uniform
`Resource Locators (URL), Dec. 1994
`
`James Coates, A Mailbox in Cyberspace Brings World to Your PC,
`Chicago Tribune, Mar. 1995
`
`1010 Date-stamped excerpts from Mary Ann Pike et al., Using Mosaic
`(1994)
`
`1011 Date-stamped excerpts from Tom Lichty, The Official America Online
`for Macintosh Membership Kit & Tour Guide (2d ed. 1994)
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`-iv-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,694,657
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`Microsoft Corporation respectfully submits the following Petition for Inter
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`Partes Review of claims 189, 334, 342, 348, 465, 580, 584, and 592 of U.S. Patent
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`No. 8,694,657 (Ex. 1001) (“’657 patent”). This petition is substantively identical
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`to pending IPR2016-01159 filed by Facebook, Inc. (“the Facebook IPR”), and
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`relies on the same evidence and expert testimony. Petitioner requests institution on
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`the same grounds as any grounds instituted in the Facebook IPR, and concurrently
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`moves to join the Facebook IPR. See Paper 2.
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)
`The Petitioner, Microsoft Corporation (“Petitioner”), is the real party-in-
`
`interest.
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`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`The ’657 patent is the subject of one pending litigation involving the
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`Petitioner: Windy City Innovations, LLC v. Microsoft Corp., Case No. 4:16-cv-
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`1729-YGR (N.D. Cal.), in which the patent owner contends that the Petitioner
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`infringes the ’657 patent. The ’657 patent has also been asserted against Facebook,
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`Inc. in the Northern District of California (No. 3:16-cv-01730-RS).
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`The ’657 patent is the subject of instituted IPRs No. 2016-01155 filed by
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`Petitioner and the Facebook IPR. (No. IPR2016-01159). Both Petitioner and
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`Facebook have filed petitions with motions for joinder to Petitioner’s IPR2016-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,694,657
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`01155 proceeding. Petitioner has filed IPR202017-00606, and Facebook has filed
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`IPR202017-00606.
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`The present petition is substantively identical to the Facebook IPR and is
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`filed concurrently with a motion for joinder to the Facebook IPR.
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`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`Petitioner provides the following designation of counsel.
`
`LEAD COUNSEL
`Joseph A. Micallef
`USPTO Reg. No. 39,772
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`Telephone: 202-736-8492
`Facsimile: 202-736-8711
`iprnotices@sidley.com
`
`BACK-UP COUNSEL
`John W. McBride
`jwmcbride@sidley.com
`pro hac to be requested
`SIDLEY AUSTIN LLP
`1 South Dearborn St.
`Chicago, IL 60603
`Telephone: 312-853-7014
`Facsimile: 312-853-7036
`
`Herman F. Webley
`pro hac to be requested
`hwebley@sidley.com
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`Telephone: 202-736-8609
`Facsimile: 202-736-8711
`
`Todd M. Siegel
`USPTO Reg. No. 73,232
`KLARQUIST SPARKMAN, LLP
`121 S.W. Salmon Street, Ste. 1600
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`todd.siegel@klarquist.com
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,694,657
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`
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`Service Information
`D.
`This Petition is being served to the current correspondence address for the
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`’657 patent, PETER K. TRZYNA, ESQ., P.O. Box 7131, Chicago, IL 60680. The
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`Petitioner may be served at the addresses provided above for lead and back-up
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`counsel, and consents to electronic service at those addresses.
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`Power of Attorney
`E.
`Filed concurrently in accordance with 37 C.F.R. § 42.10(b).
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`II.
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`PAYMENT OF FEES - 37 C.F.R. § 42.103
`
`The Director is authorized to charge the fee specified by 37 CFR § 42.15(a)
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`to Deposit Account No. 50-1597.
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. §§ 42.104
`AND 42.108
`
`A. Grounds for Standing under 37 C.F.R. § 42.104(a)
`The Petitioner certifies that the ’657 patent is available for inter partes
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`review and that the Petitioner is not barred or otherwise estopped from requesting
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`inter partes review on the ground identified in the present Petition. On June 2,
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`2015, the Patent Owner filed a complaint alleging infringement of the ’657 patent
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`by the Petitioner. Windy City Innovations, LLC v. Microsoft Corporation, 1:15-cv-
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`103 (W.D.N.C.). This case was transferred to the Northern District of California
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`(No. 3:16-cv-01729-RS). On June 3, 2016, the Petitioner filed a petition for inter
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`partes review of the ’657 patent. See IPR2016-01155. While the Petitioner was
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,694,657
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`served with a complaint alleging infringement of the ’657 patent more than one
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`year before the date this Petition is filed, the time limitation of 35 U.S.C. § 315(b)
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`“shall not apply to a request for joinder under” 35 U.S.C. § 315(c). Because this
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`Petition is accompanied by such a request (Paper 2), it complies with 35 U.S.C. §
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`315(b).
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`B.
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`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested
`The Petitioner requests that the Board initiate inter partes review of claims
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`189, 334, 342, 348, 465, 580, 584, and 592 on the following ground:
`
`Ground
`1
`
`Claims
`189, 334, 342,
`348, 465, 580,
`584, 592
`
`Basis for Challenge
`Unpatentable over Roseman in view of Rissanen and
`Vetter, in further view of Pike and Lichty, under 35
`U.S.C. § 103(a)
`
`Part V below provides a detailed explanation as to why the challenged
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`claims are unpatentable based on the grounds identified above. The Petitioner has
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`also submitted an accompanying Declaration of Tal Lavian, Ph.D. (“Lavian
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`Decl.”) (Exhibit 1002), a technical expert with more than two decades of relevant
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`experience, including extensive experience in computer programming and software
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`development. (Lavian Decl., Ex. 1002, ¶¶ 2-9, Ex. A.)
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`C. Requirements for Inter Partes Review 37 C.F.R. § 42.108(c)
`The Board should institute inter partes review of claims 189, 334, 342, 348,
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`465, 580, 584, and 592 because this Petition establishes a reasonable likelihood of
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,694,657
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`prevailing. Each limitation of each challenged claim is disclosed and/or suggested
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`by the prior art, as explained in detail in Part V below.
`IV. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)
`“token”
`A.
`Each independent claim addressed in this Petition recites a database that
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`provides a “repository of tokens” used to perform user authentication. Claim 1, for
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`example, recites “authenticating a first user identity and a second user identity
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`according to permissions retrieved from [a] repository of tokens of the database.”
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`The patent describes a “token” as follows:
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`With regard to the arbitrating of the controller computer 3 is directed
`by the controller computer program 2 to use “identity tokens”, which
`are pieces of information associated with user identity. The pieces of
`information are stored in memory 11 in a control computer database,
`along with personal information about the user, such as the user’s age.
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`(’657, 7:49-54 (underlining added).) The specification goes on to describe several
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`exemplary uses for tokens. (’657, e.g., 7:60-61, 8:2-4, 8:7-9.)
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`Based on the definitional language in the written description, the term
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`“token” should be interpreted as a “piece of information associated with user
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`identity.” (Lavian Decl. ¶¶ 17, 18.)
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,694,657
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`“pointer”
`B.
`The term “pointer” appears in independent claims 189 and 465. “Pointers”
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`are well‐known in computer science and exist at all levels of computer system
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`design. (Lavian Decl. ¶ 19.) To persons of ordinary skill in the art, a “pointer” is a
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`piece of information that “points to,” or references, other information. (Id.)
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`The written description provides only the following mention of pointers,
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`which identifies a Uniform Resource Locator (URL) as an example of a pointer:
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`The 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.
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`(’657, 5:11-16.) Based on this description, the term “pointer” should be construed
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`as a “piece of information that points to or references other information.”
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`(Lavian Decl. ¶¶ 19, 20.)
`V. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`Claims 189, 334, 342, 348, 465, 580, 584, and 592 would have been obvious
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`to a person of ordinary skill in the art based on the following grounds:
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`Ground Claims
`1
`189, 334,
`342, 348,
`465, 580,
`584, 592
`
`Basis for Challenge
`Unpatentable over Roseman in view of Rissanen and
`Vetter, in further view of Pike and Lichty,
`under 35 U.S.C. § 103(a)
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,694,657
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`The Petitioner notes that although Ground 1 cites five prior art references,
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`Roseman is the base reference that discloses the majority of the limitations. The
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`other references relate to minor claim features that, as shown below, were within
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`the general knowledge of persons of ordinary skill in the art as of April 1996.1 For
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`example, Rissanen is cited to show that the tokens in Roseman could be stored in a
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`“database,” Vetter to show that Roseman could have been adapted to communicate
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`over the “Internet,” Pike to show that Roseman could have used “URLs,” and
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`Lichty to show basic and known features of America Online chat rooms. These
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`details were so commonplace and known that additional prior art references were
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`arguably not required to show them. Nevertheless, the Petitioner is mindful of the
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`Board’s desire for IPR petitioners to avoid presentation of potentially redundant
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`grounds, and as such, the Petitioner has presented a single obviousness ground
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`rather than present multiple alternative grounds with alternative combinations of
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`these references.
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`1 As explained by Dr. Lavian, a person of ordinary skill in the art as of April 1996
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`would have had at least a bachelor’s degree in electrical engineering or computer
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`science (or equivalent degree or experience) with practical experience or
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`coursework in the design or development of systems for network-based
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`communication between computer systems. (Lavian Decl., Ex. 1002, ¶ 13.)
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,694,657
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`The Petitioner also notes that the ’657 patent contains 671 separate claims –
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`an enormous number, many of them reciting substantially the same or identical
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`claim language. In order to best conserve the resources of the Board, the Petitioner
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`has chosen to challenge only a handful of claims, which appear to be representative
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`of other claims. The Petitioner’s choice to challenge only a handful of claims is
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`not a concession that any of the other claims recite inventive subject matter.
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`A. Brief Summary and Date Qualification of the Prior Art
`Brief Overview of Roseman (Ex. 1003)
`1.
`Roseman, entitled “Server Based Virtual Conferencing,” discloses a system
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`for creating a virtual conference room that allows participants to collaborate in real
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`time over a computer network. Roseman qualifies as prior art under at least 35
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`U.S.C. § 102(e) (pre-AIA) because it is a patent issuing from an application filed
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`on May 13, 1992, before the filing of the earliest application to which the patent
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`could claim priority (April 1, 1996). This Petition cites Roseman for the majority
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`of the limitations in the challenged claims.
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`The conferencing system in Roseman “allows multiple persons, at different
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`locations, to hold a conference, by providing many of the conveniences which the
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`participants would have if present together in the same physical room.” (Roseman,
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`1:19-23.) Roseman describes “a virtual conferencing system which allows
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`multiple persons to view, and also manipulate, a common video display, which is
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,694,657
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`simultaneously displayed at their different locations.” (Roseman, 1:28-31.) Each
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`participant has its own “local computer.” (Roseman, 1:34-35; see also id., 2:64-
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`65.) “When a conference is established, the local computers become connected to
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`a host computer, via commercially available Local Area Networks (LANs) and
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`Wide Area Networks (WANs).” (Roseman, 1:36-41; see also id., 3:14-19.)
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`A user in Roseman creates a virtual conference room by clicking an
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`appropriate icon through a user interface, identifying the participants of the
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`conference and providing other information such as the rules that govern the
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`meeting. (Roseman, 3:22-56.) Once the parameters of the conference are
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`established, the host computer “creates the conference room. The host does this by
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`creating a common image, such as that shown in FIG. 9. The common image
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`includes a picture of each invitee, a ‘table,’ and the room decor.” (Roseman, 7:30-
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`34.) An example of the virtual conference room is shown in Figure 9 below:
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,694,657
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`(Roseman, Fig. 9.)
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`Once inside the conference room, “[o]bjects (documents) can be shared in
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`the conference room by placing them on the table. This might be done by dragging
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`an icon . . . onto the table.” (Roseman, 11:18-22.) The user can also click on the
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`picture of another participant to engage in a private voice conversation, or drag a
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`textual note onto the picture of another participant to send a private text message.
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`(Roseman, 9:16-31.) Other communication features are described below.
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`Roseman also discloses a security mechanism in which users must be invited
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`and have an appropriate “key” to enter the conference room. (Roseman, e.g., 9:34-
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`55, 10:61-64 (“To open a door with a key, the user drops the key onto the door
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`lock. If the key is valid and the user has the authority to use the key, the door
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,694,657
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`opens and the user is admitted to the room.”).) Roseman also discloses a database
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`that stores the keys for the conference room. (Roseman, 9:49-50.) These
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`conference room “keys,” as explained below, correspond to the “tokens” recited in
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`the independent claims. More details about Roseman are set forth below.
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`Brief Overview of Rissanen (Ex. 1004)
`2.
`Each independent claim recites “a database which serves as a repository
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`of tokens for other programs to access.” As noted above, the “keys” in Roseman
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`disclose the claimed “tokens,” and those keys are stored on the central host
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`computer. But Roseman does not use the word “database” to describe the storage
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`of keys by the host. In the event it is argued that Roseman fails to disclose a
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`“database” that stores the keys, as recited by the claims, this requirement would
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`have been trivially obvious over Rissanen.
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`Rissanen, entitled “Password Verification System,” discloses a technique for
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`user authentication using passwords stored in a database. Rissanen qualifies as
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`prior art under at least 35 U.S.C. § 102(b) (pre-AIA).
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`This Petition cites Rissanen as an alternative basis to teach “a database
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`which serves as a repository of tokens for other programs to access,” in the
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`event it is argued that Roseman alone does not disclose this limitation. Rissanen
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`discloses storing user passwords in a database, and subsequently using those stored
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`passwords to verify user identity when users subsequently attempt to log-on.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,694,657
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`(Rissanen, Ex. 1004, 1:21-28.) Rissanen also discloses that user login and
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`password information may be stored in a database. (Rissanen, 2:22-29.) Although
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`Rissanen also describes using spoken voice passwords, this Petition cites it for its
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`more pedestrian teachings relating to database storage of passwords of any form.
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`As explained in detail below, the user and password information in the
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`database in Rissanen is analogous to the conference room “keys” in Roseman. It
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`would have been obvious to combine Roseman and Rissanen to produce the virtual
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`conferencing system of Roseman in which the conference room keys are stored in
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`a database serving as a repository of tokens (keys) for other programs to access, as
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`taught in Rissanen. (Lavian Decl. ¶¶ 33, 51-53.)
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`Brief Overview of Vetter (Ex. 1005)
`3.
`Each independent claim also recites the step of sending and/or receiving
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`communications “via the Internet.” Roseman discloses using “commercially
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`available” Wide Area Networks (WANs) to communicate with participator
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`computers, but does not specifically the Internet. (Roseman, 1:37-41; see also id.,
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`3:14-19.) Vetter, entitled “Videoconferencing on the Internet,” discloses software
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`tools for enabling videoconferencing over the Internet. Vetter qualifies as prior art
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`under at least 35 U.S.C. § 102(b). This Petition cites Vetter for the straightforward
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`proposition that simply adding “the Internet” to an existing computer-based
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`conferencing products does not render it non-obvious over the prior art. Vetter
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`confirms that the Internet was already being used with conferencing systems such
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`as Roseman to enable real-time communication. (Vetter, Ex. 1005, at p. 77.)
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`Brief Overview of Pike (Ex. 1006)
`4.
`Pike, entitled Using Mosaic, is a book describing NCSA Mosaic, one of the
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`early browsers for accessing the World Wide Web. (Pike, Ex. 1006, at 1-2.) This
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`Petition cites Pike in connection with claims that recite a “pointer” or “URL.”
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`As explained below, Roseman discloses a pointer in the form of a clickable
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`icon that, when clicked by a meeting participant, presents a document, message or
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`other content to the user. (Roseman, Ex. 1003, e.g., 14:53-57 & 14:59-62 (icon
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`representing document placed on table), 9:28-31 (icon representing private
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`message).) Roseman does not expressly disclose a URL.
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`URLs are used today to identify hundreds of millions of resources located on
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`the Internet, and were clearly not an invention of the ’657 patent. Pike, which was
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`published in 1994, provides an introductory section describing basic Internet
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`concepts such as URLs. (Pike, Ex. 1006, at 38-39.) Pike explains that “[a] URL is
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`a complete description of an item, including the location of the item that you want
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`to retrieve.” (Id. at 38 (italics in original).) “The location of the item can range
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`from a file on your local disk to a file on an Internet site halfway around the
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`world.” (Id.) Pike further explains that a URL can identify any resource on the
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`Internet, and “is not limited to describing the location of WWW [World Wide
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`Web] files.” (Id.) Pike goes onto describe the familiar URL syntax and how URLs
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`identify documents that can be retrieved from other computers. (Id. at 38-39.) As
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`demonstrated below, it would have been obvious to a person of ordinary skill in the
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`art to adapt known URL techniques to Roseman. (Lavian Decl. ¶¶ 91-94.)
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`Brief Overview of Lichty (Ex. 1007)
`5.
`Lichty, entitled The Official America Online for Macintosh Membership Kit
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`& Tour Guide (2d ed. 1994), is a book describing aspects of the service known as
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`“America Online.” Lichty describes “chat room” features, analogous to the virtual
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`conference rooms of Roseman, that allowed users to send real-time messages to
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`each other over a computer network. (Lichty, e.g., pp. 252-278.) Lichty qualifies
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`as prior art under at least 35 U.S.C. § 102(b) (pre-AIA).
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`This Petition cites Lichty in connection with features recited in each
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`independent claim relating to censoring data. Lichty describes a “chat room”
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`functionality that allows individual users to “censor” other users in the chat room.
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`For example, a user in a chat room can decide to “ignore” other users and thus no
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`longer receive communications from them. (Lichty, pp. 269, 510 (definition of
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`“Ignore”).) It would have been obvious to a person of ordinary skill in the art to
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`add these features to the system of Roseman. (Lavian Decl. ¶¶ 104-106.)
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,694,657
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`B. Ground 1: Claims 189, 334, 342, 348, 465, 580, 584, and 592 Are
`Obvious Over Roseman, Rissanen, Vetter, Pike, and Lichty
`Independent Claim 189
`1.
`“A method of communicating via an Internet network
`a.
`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:”
`(Claim 189, Preamble)
`Roseman in view of Vetter discloses each aspect of the preamble of claim
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`189. Because of the length of the preamble, this Petition will break up the claim
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`language piece-by-piece to ensure all limitations are covered.
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`First, Roseman discloses “[a] method of communicating . . . by using a
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`computer system including a controller computer and a database which serves
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`as a repository of tokens for other programs to access,” as recited in the first
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`part of the preamble. Roseman discloses a virtual conferencing system in which
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`users (e.g., conference participants) communicate over a network. For example:
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`The parties send the information which they want displayed, such as
`drawings, to the host computer. The host computer generates a
`common video screen, which it distributes to the parties: they see the
`drawings at their own local computers. Each party can move a pointer
`on the display, and point to features on the drawings. The telephones
`and video cameras allow the parties to see and speak with each other.
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`(Roseman, 1:42-49.) In addition, “[t]he participants can privately whisper or pass
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`notes to each other, without the knowledge of the others.” (Roseman, 2:49-50.)
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`Further details on how Roseman discloses communication among users is set forth
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`in the discussion of later claim limitations.
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`The preamble of claim 189 continues by reciting that the computer system
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`“include[es] a controller computer and a database which serves as a
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`repository of tokens for other programs to access, . . .” The “controller
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`computer” in Roseman takes the form of a networked server computer, which
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`Roseman calls the “host computer” or “host”:
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`These individual [participant] systems are located at different
`geographic locations, and, when a virtual conference is to be held,
`become connected to a central, host, computer (or multiplicity of host
`computers) via the proper combination of Local Area Networks
`(LANs) and Wide Area Networks (WANs).
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`(Roseman, 3:14-19 (underlining added), 1:50-52 (“The host controls many of the
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`events occurring during the conference, as well as those occurring both during
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`initiation of the conference and after termination of the proceedings.”).)
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`Roseman also discloses “a database which serves as a repository of
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`tokens for other programs to access.” The tokens in Roseman take the form of
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`“keys,” which are stored and distributed by the host computer to potential
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`conference participants. More specifically, Roseman explains that in creating a
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`new virtual conference room, the creator can cause the host to send invitations to
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`participants. Each invitation contains a “key” that relates to the identity of the
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`invitee and provides the permissions allowing access to the conference room:
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`Before an invitation list is compiled, the level of invitations must be
`specified by the invitor. Three levels of invitations are considered.
`1. an invitation is for the Invitee only.
`2. an invitation is for the Invitee, but can be passed to a
`delegate, who will attend in place of the Invitee.
`3. an invitation is an open invitation to anyone wishing to
`attend.
`Invitations contain “keys” which conform to the above invitation
`level. Level 1 keys may not be passed to any other person and may
`not be copied. Level 2 keys may be passed to exactly one other person
`and may not be copied. If the key is returned to the original invitee
`than it may be passed again. Level 3 keys may be freely distributed
`and copied. The meeting is considered to be public.
`The meeting room “knows” about each key and its invitation level.
`Persons with improper keys are not admitted to the room. A person
`without a key may be admitted to the room only by someone already
`in the room or by the person responsible for the room.
`Invitations and keys are distributed electronically. The key is an
`electronic object attached to the invitation.
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`(Roseman, 9:34-55 (underlining added).)
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`The passages above show that the “keys” in Roseman qualify as “tokens”
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`because they are pieces of information associated with a user identity, that control
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`whether a user has permission to enter a conference room. Roseman confirms that
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`a key is a “piece of information” by stating that “the key is, essentially, a block of
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`data, or a code.” (Roseman, 6:60-61; see also id., 9:54-55 (“The key is an
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`electronic object attached to the invitation.”).)
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`Roseman also confirms that a “key” is associated with a user identity. For
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`example, the “Level 1” key described in the passage above is a