Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`UNITED STATES PATENT AND TRADEMARK
`OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Expedia, Inc.; Homeaway.com, Inc.; Hotels.com L.P.;
`
`Hotwire, Inc.; and Orbitz, LLC
`
`Petitioners
`
`v.
`
`International Business Machines Corp.
`
`Patent Owner
`
`IPR2018-01136
`
`Patent 5,796,967
`
`PETITIONERS’ REPLY
`
`1
`
`

`

`I.
`II.
`
`III.
`
`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 5
`IBM IMPROPERLY IMPORTS LIMITATIONS .......................................... 5
`A.
`“The objects being retrieved from the objects stored at the respective
`reception system, or if unavailable from the objects stored at the
`respective reception system, then from the network” ........................... 5
`“Second partition(s)” ............................................................................. 7
`“Command function” ............................................................................ 8
`“Generating concurrently with the first partition at least a second
`partition” ..............................................................................................12
`THE CHALLENGED CLAIMS ARE OBVIOUS .......................................13
`A.
`Petitioners’ theories are clearly stated. ................................................13
`B.
`Claim 1 ................................................................................................14
`1.
`Arguments directed to “bottom partitions” .............................. 14
`2.
`Arguments directed to “document partitions” ......................... 17
`a.
`No hindsight analysis ..................................................... 17
`b.
`Document partitions permit navigation between
`different applications ..................................................... 20
`Arguments directed to both types of second partitions ........... 22
`a.
`Each of the second partitions is constructed from
`objects that are retrieved locally or, if unavailable, then
`from the network—Element 1(a)(6) .............................. 22
`Each of the second partitions is constructed from
`objects that may be reused—Element 1(a)(7) ............... 26
`Command functions “enable” interaction with the local
`system and over the network. ........................................ 28
`Claim 4 ................................................................................................30
`1.
`Files .......................................................................................... 31
`2.
`Emails ....................................................................................... 34
`Claim 17 ..............................................................................................35
`
`B.
`C.
`D.
`
`C.
`
`D.
`
`3.
`
`b.
`
`c.
`
`2
`
`

`

`Ex.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`TABLE OF EXHIBITS
`
`Description
`
`U.S. Patent No. 5,796,967 (“the ’967 patent”)
`
`Declaration of David A. Eastburn (“Eastburn”)
`
`Curriculum Vitae of David A. Eastburn
`
`File History for U.S. Patent No. 5,796,967 (“967 Patent FH”)
`
`File History for U.S. Patent No. 5,796,967—Publications Only
`
`IBM Dictionary of Computing: Information Processing, Personal
`Computing, Telecommunications, Office Systems, IBM-Specific Terms
`p. 195 (IBM: 1987) (“IBM Dictionary”)
`
`File History for U.S. Patent No. 7,072,849 (excerpted)
`
`Int’l Business Mach. Corp. v. The Priceline Group, No. 1:15-cv-00137-
`LPS, D.E. 234, Claim Construction Order (D. Del. Oct. 28, 2016)
`(“10/28/2016 Markman Order”)
`
`Int’l Business Mach. Corp. v. The Priceline Group, No. 1:15-cv-00137-
`LPS, D.E. 160-1, Joint Claim Construction Chart (D. Del. Aug. 15,
`2016) (“Joint CC Chart”)
`
`Int’l Business Mach. Corp. v. Groupon, Inc., No. 1:16-cv-00122, D.E.
`120, Claim Construction Order (D. Del. Aug. 3, 2017) (“8/3/2017
`Markman Order”)
`
`Int’l Business Mach. Corp. v. Groupon, Inc., No. 1:16-cv-00122, D.E.
`58, Opening Claim Construction Brief of IBM (D. Del. Apr. 17, 2017)
`(“4/17/2017 IBM CC Brief”)
`
`Int’l Business Mach. Corp. v. Groupon, Inc., No. 1:16-cv-00122, D.E.
`259, Response to Motion for Summary Judgment (D. Del. Mar. 26,
`2018) (“3/26/2018 Resp. to MSJ”)
`
`3
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`Description
`
`Warren Teitelman, “A Tour Through Cedar,” IEEE Software, Vol. 1
`No. 2, pp. 44-73 (April-June 1984) (“Teitelman”).
`
`Michael D. Schroeder, David K. Gifford, and Roger M. Needham, “A
`Caching File System for a Programmer’s Workstation,” Operating
`Systems Review: Proceedings of the Tenth ACM Symposium on
`Operating Systems Principles, pp. 25-34 (Dec. 1-4, 1985, Orcas Island,
`Washington, U.S.A.) (“Schroeder”)
`
`Declaration of James L. Mullins, Ph.D. regarding Teitelman and
`Schroeder
`
`Int’l Business Mach. Corp. v. The Priceline Group, No. 1:15-cv-00137-
`LPS, D.E. 158, Plaintiff’s Responsive Claim Construction Brief (D.
`Del. Aug. 15, 2016).
`
`Int’l Business Mach. Corp. v. The Priceline Group, No. 1:15-cv-00137-
`LPS, D.E. 441-5, Claim Construction Hearing Transcript (D. Del. Aug.
`29, 2016).
`
`Second Declaration of David A. Eastburn
`
`Int’l Business Mach. Corp. v. Expedia, Inc., No. 1:17-cv-01875-LPS-
`CJB, D.E. 125, Plaintiff’s Opening Claim Construction Brief (D. Del.
`May 22, 2019).
`
`Expedia, Inc. v. Int’l Business Mach. Corp., No. IPR2018-01136,
`Transcript of Deposition of Douglas C. Schmidt (June 26, 2019)
`
`Ex.
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`Citations to Exhibit 1013-1014 and 1017 follow original pagination of those
`
`references. Citations to other exhibits follow pagination added per 37 C.F.R. §
`
`42.63(d)(2)(i).
`
`4
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`I.
`
`INTRODUCTION
`
`IBM does not dispute that Teitelman and Schroeder provide an express
`
`teaching, suggestion, and motivation to combine. Instead, IBM asserts that Eastburn
`
`used “hindsight” by “having the [’967] patent in front of” him while preparing claim
`
`charts. Paper 19 (“POR”) at 46-47. But of course an expert must review a
`
`challenged patent to explain how prior art discloses each claim element. See 37
`
`C.F.R. § 42.104(b)(4)-(5).
`
`IBM’s other arguments rely on overly narrow claim interpretations. But even
`
`under IBM’s incorrect interpretations, Teitelman in view of Schroeder renders
`
`obvious the Challenged Claims.
`
`II.
`
`IBM IMPROPERLY IMPORTS LIMITATIONS
`
`Although Petitioners demonstrated that Teitelman and Schroeder invalidate
`
`the Challenged Claims under IBM’s constructions, IBM’s constructions are
`
`incorrect.
`
`A.
`
`“The objects being retrieved from the objects stored at the
`respective reception system, or if unavailable from the objects
`stored at the respective reception system, then from the network”
`
`IBM imports a preliminary step, requiring “the system be able to check
`
`whether an object is unavailable from the reception system.”1 POR at 8. However,
`
`1 All emphasis is supplied, unless otherwise noted.
`
`5
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`IBM previously argued, and the Court accepted, that “determining whether an object
`
`is stored at the respective reception system” involves “adding extraneous steps.”
`
`Ex. 1016 at 6; Ex. 1008 at 10-11; Ex. 1017 at 79:14-80:15 (“no reason to put an
`
`additional requirement” that the system “go look at that object first”).
`
`Properly interpreting the “if unavailable” term—to encompass objects that are
`
`permanently stored at the reception system, such that they need not be downloaded
`
`from the network—does not “moot the word ‘concurrently.” See POR at 9. Rather,
`
`the claims are broad enough to encompass embodiments where permanently stored
`
`objects are retrieved from the local system, because there is no need to retrieve them
`
`from the network. But if a needed object is not stored locally, then the system
`
`retrieves that object from the network. There is no disclaimer to require the reception
`
`system to retrieve a given object from both places, or to exclude “permanent objects”
`
`from those used to construct first and second partitions. Pet. at 14-15; Ex. 1002
`
`¶107.2
`
`2 IBM limits permanent objects to those that “construct the logon and logoff
`
`screens,” POR at 10, but such objects are merely exemplary. Permanent objects
`
`also include those “considered likely to be stable and not require even version
`
`checking” and that are “coded for storage between sessions.” Such objects need
`
`not be retrieved from the network. Ex. 1001 at 30:1-12.
`
`6
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`Petitioners’ interpretation is consistent with the prosecution history.
`
`Applicants distinguished prior art that required retrieving objects over the network
`
`with their invention’s goal “to minimize communication over the network required
`
`to satisfy user requests,” arguing that the prior art’s “reliance on and encouragement
`
`of host-terminal communication is the antithesis of Applicant’s teaching.” Ex. 1004
`
`at 29, 33 (emphasis in original). Constructing partitions from permanent objects
`
`achieves this goal.
`
`B.
`
`“Second partition(s)”
`
`IBM imports three extraneous limitations, requiring that the second partition
`
`(Element 1c):
`
` be “constructed from objects”—Element 1(a)(5);
`
` “the objects being retrieved from the objects stored at the respective
`
`reception system, or if unavailable from the objects stored at the
`
`respective reception system, then from the network”—Element 1(a)(6);
`
` “such that at least some of the objects may be used in more than one
`
`application”—Element 1(a)(7).
`
`POR at 12.
`
`Elements 1(a)(5)-1(a)(7) should not be imported into Element 1(c). Element
`
`1(a) requires merely that there must be a “plurality of partitions” that meet Elements
`
`1(a)(5)-1(a)(7). Claim 1 does not require the “second partition” (Element 1(c)) to
`
`7
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`be a member of that “plurality of partitions” (Element 1(a)), because for example the
`
`“third … partition” in claim 12 or the “one or more window partitions” of claim 14
`
`could instead be part of that “plurality.” Element 1(c) states “generating … a second
`
`partition”; it does not state “the second partition,” refer back to Element 1(a), or rely
`
`on Element 1(a) for antecedent basis. See Epcon Gas Sys., Inc. v. Bauer
`
`Compressors, Inc., 279 F.3d 1022, 1031 (Fed. Cir. 2002) (distinguishing
`
`Phonometrics when “the same term was used in a different manner in … two
`
`phrases”).
`
`Element 1(a)(7) should not be imported into Element 1(c) for the additional
`
`reason that Element 1(a)(7) requires merely that “some of the objects may be used
`
`in more than one application.” The reuse is in “more than one application”; the first
`
`partition is “for presenting applications.” The second partition is “for presenting …
`
`command functions,” and not applications. The prosecution history, quoted by IBM,
`
`confirms this distinction: “interactive service applications are to be presented at
`
`screen partitions constructed using information elements that can be reused between
`
`applications.” Paper 6 at 10 (quoting Ex. 1004 at 79, 81, 87). At most, objects are
`
`reused among first (application) partitions, and not second partitions.
`
`C.
`
`“Command function”
`
`The Board preliminarily held that a command function must enable the user
`
`to “interact with the reception system and other elements of the network.”
`
`8
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`Institution Decision (“ID”) at 20 (emphasis in original). However, the intrinsic
`
`record confirms that an individual command function enables access to local or
`
`remote resources (or both), but is not required to enable access to both.
`
`IBM relies on Figure 3 of the ’967 Patent and the explanatory text that
`
`“command region 285 … enables the user to interact with the network RS 400 and
`
`other elements of network 10 …” Ex. 1001 at 10:27-29. This passage does not
`
`describe the functionality of an individual “command function.” Instead, the
`
`passage describes the collective functionality of a “command region 285” (shown
`
`in red), which comprises “a number of commands 291-298.”3 Id. at 10:32-35.
`
`3 IBM does not dispute that “command function” and “command” are used
`
`interchangeably. Pet. at 17.
`
`9
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`A command “region” may collectively enable a user to interact with both local and
`
`network elements if, for example, one individual command function enables only
`
`local interaction, while another command function enables only network interaction.
`
`But IBM stretches the specification to argue that each individual command function
`
`(e.g., each of 291-298) within command region 285 must individually enable
`
`interaction with both local and network elements. There are no “words or
`
`expressions of manifest exclusion or restriction” to limit each individual command
`
`function in this restrictive manner. Continental Circuits LLC v. Intel Corp., 915 F.3d
`
`788, 797 (Fed. Cir. 2019).
`
`10
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`IBM asserts that “the specification goes on to state that ‘functions presented
`
`on the monitor of personal computer 405 … enabl[e] the partitioned application to
`
`interact with network 10.’” POR at 15. This excerption is misleading; the
`
`specification refers to generic “functions” (plural), and not to “command functions,”
`
`let alone any individual “command function.” Including the excised text, it is the
`
`“software called native code modules,” and not the “functions,” that enables network
`
`interaction. Ex. 1001 at 16:66-17:4. In any event, this passage does not rise to the
`
`level of disclaimer. Continental Circuits, 915 F.3d at 797.
`
`IBM also does not explain why a “command function” should exclude
`
`functions that interact only with “permanent objects” or local applications. Pet. at
`
`18; Ex. 1002 ¶117-120; Ex. 1001 at 1:15-32 (“command functions for managing the
`
`display” and “randomly selecting applications for display”).
`
`The Board also relies on previous litigations involving the ’967 Patent. ID at
`
`19-20. Petitioners were not parties to the stipulated constructions; an “agreed to”
`
`construction “in the context of a different litigation is of little relevance or probative
`
`value here.” Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 678
`
`(Fed. Cir. 2015).
`
`11
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`D.
`
`“Generating concurrently with the first partition at least a second
`partition”
`
`The first and second partitions need not be activated or instantiated at the same
`
`time, but only need to be presented the same time. Pet. at 21-23; Ex. 1002 ¶125-
`
`129. In seeking to limit “generated” to “creating, or instantiating,” IBM tries to
`
`supplant the clear intrinsic evidence presented by Petitioners with extrinsic
`
`evidence—a general-purpose dictionary and a tautology from Schmidt. POR at 4
`
`&n. 2.
`
`IBM relies on Schmidt’s tautology that “generating concurrently” should
`
`exclude the situation in which two elements— “visual element A” and “visual
`
`element B”—are presented on the screen at the same time, but that visual element B
`
`only appeared after the “user takes an action that causes visual element ‘B’” to be
`
`added to the screen. Schmidt’s reasoning for why such elements were not “generated
`
`concurrently” is his circular ipse dixit, namely that “[visual element] B was
`
`generated later.” Ex. 2113 ¶64.
`
`IBM contends that Petitioners render “concurrently with the first partition”
`
`superfluous. POR at 4-5. IBM is wrong. Absent the “concurrently with the first
`
`partition” language, the method of claim 1 would encompass the steps of: first
`
`minimizing or destroying the first partitions (Element 1b), and then “generating …
`
`at least a second partition for presenting a plurality of command functions” (Element
`
`12
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`1c). The “generating concurrently with” language adds the requirement that the
`
`“first partition” and the “second partition” must at least be present together on the
`
`screen at the same time. Petitioners do not render any claim language superfluous.
`
`III. THE CHALLENGED CLAIMS ARE OBVIOUS
`
`A.
`
`Petitioners’ theories are clearly stated.
`
`Unlike Avant Tech., Petitioners do not raise 15 grounds of unpatentability.
`
`Avant Tech., Inc. v. Anza Tech., Inc., IPR2018-00828, Paper 7 at 7-8, 10 (Oct. 16,
`
`2018); POR at 16, 23. Petitioners raise just one ground—Teitelman in view of
`
`Schroeder—yet IBM fabricates “34,272 potential permutations.” POR at 20. As
`
`IBM’s expert admits, however, Petitioner clearly set forth just “two theories” for
`
`why claim 1 of the ’967 Patent was obvious. Ex. 2113 ¶103; ¶91 (“two types” of
`
`second partitions); POR at 17 (“two types”). Second partitions containing command
`
`functions are found both at the bottom of the screen and embedded in documents.
`
`Petitioner has amply supported each theory, providing numerous headings,
`
`subheadings, and annotated diagrams in its Petition to fully explain each theory.
`
`Petitioner identifies several figures from Teitelman, and then describes how
`
`each figure discloses and/or teaches each claim element under the disclosed theories.
`
`See, e.g., Pet. at 30-33, 62-66. It is one thing to identify similar figures within a
`
`reference disclosing and/or teaching all claim limitations under the same theories,
`
`as Petitioner has done, and another to apply “confusing and shifting rationales” that
`
`13
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`are “not sufficiently linked.” See Mastercard Int’l Inc. v. Grecia, IPR2017-00793,
`
`Paper 7 at 14 (PTAB July 3, 2017). Moreover, the Petition is distinguishable from
`
`that in Pers. Web Techs., LLC v. Apple, Inc., because there is no ambiguity as to the
`
`motivation to combine or which reference provides the disclosures for each claim
`
`element. 848 F.3d 987, 993-94 (Fed. Cir. 2017).
`
`B.
`
`Claim 1
`
`IBM does not dispute that Elements 1(a) and 1(b) are disclosed by the
`
`combination of Teitelman and Schroeder. For Element 1(c), IBM provides
`
`arguments directed to: Petitioners’ bottom-partitions (POR at 25-33); Petitioners’
`
`document-partitions (POR at 42-52); and both types of second partitions (POR at
`
`33-42, 53-58).
`
`1.
`
`Arguments directed to “bottom partitions”
`
`IBM argues that a “bottom partition” is not the claimed “second partition,”
`
`because the “bottom partitions” were purportedly not “generated concurrently” with
`
`the first partitions. POR at 25. IBM arrives at this conclusion through an incorrect
`
`construction of “generated concurrently.” Supra §II.D. Under a correct
`
`construction, IBM does not dispute that each bottom partition in Figures 3-7 and 18-
`
`19 is presented on the screen at the same time as a first (application) partition. Ex.
`
`1002 ¶167, 204, 289.
`
`14
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`IBM also misconstrues the Petition and Eastburn’s theories. Eastburn
`
`consistently confirmed that each bottom partition shown in Figures 3-7 and 18-19
`
`was itself an individual second partition, and that he was “not taking them
`
`collectively as a whole and saying they are all the only second partition.” Ex. 2116,
`
`110:9-14; see generally 108:4-111:22, 116:15-118:18, 121:1-122:24; Ex. 1002
`
`¶158; Ex. 2112 (labeling distinct second partitions).
`
`Even under IBM’s construction, each bottom partition in Teitelman is
`
`“generated concurrently” with a first partition. Each time an application window is
`
`opened or closed, the Dorado workstation redraws the second partition. Ex. 1002
`
`¶204, 289. For example, when a user closes the “Cedar Components” application,
`
`the workstation redraws the partition at the bottom of the screen to include the
`
`“Components” icon. Compare Ex. 1013, Fig. 5 with Fig. 6:
`
`15
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`Ex. 1002 ¶175, 204. Similarly, as the user opens the “icon on the left side of Figure
`
`2, the one labeled ‘Cedar’,” the workstation opens the Cedar application window
`
`and redraws the second partition in Figure 3 without the “cedar” icon. Ex. 1013 at
`
`47, Figs. 2-3; Ex. 1002 ¶196.
`
`These second partitions are “generated concurrently” with first partitions, even
`
`under Schmidt’s mistaken constructions, because they would “occur rapidly enough
`
`that a … human user, wouldn’t typically be able to perceive the difference.” Ex.
`
`1020 at 78:24-79:5.4
`
`4 Schmidt’s opinions regarding Teitelman not disclosing “generating concurrently”
`
`should be weighed in light of his inability at deposition to explain how the claimed
`
`“generating” steps are performed in the ’967 Patent, and his multi-page, non-
`
`responsive narratives. See, e.g., Ex. 1020 at 80:7-100:19.
`
`16
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`Thus, application partitions and bottom partitions in Teitelman are not only
`
`displayed concurrently on the screen, but also are “generated concurrently.”
`
`IBM argues that the bottom partitions “show a consistent appearance” and are
`
`“the same size and appear[] in the same area of the screen display.” POR at 32. This
`
`is of no moment, as claim 1 does not preclude a fixed second partition. In fact,
`
`dependent claim 17 says that the second partition appears in a “fixed,
`
`predetermined” region.
`
`2.
`
`Arguments directed to “document partitions”
`
`IBM argues that the “document partitions” are not the claimed “second
`
`partition” because Teitelman did not draw a box around them (POR at 42-47) and
`
`because the document partitions do not contain “command functions” (POR at 47-
`
`52). IBM is incorrect.
`
`No hindsight analysis
`a.
`IBM contends that Eastburn used hindsight analysis to identify the document
`
`partitions shown in pink. POR at 42-47.
`
`17
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`18
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`Ex. 1002 ¶211; Pet. at 73-74. IBM complains that the “pink boxes do not correspond
`
`to anything that Teitelman discloses.” POR at 44. Unlike Sensonics, Inc. v.
`
`Aerosonic Corp. (POR at 46), there is a “teaching or suggestion whereby a
`
`[POSITA] would have been led to select” the document partitions. 81 F.3d 1566,
`
`1570 (Fed. Cir. 1996). Teitelman specifically identifies “a row of icons for seven
`
`other whiteboards: Basics, Language, Components, Tools, Interfaces, ToolBox, and
`
`Games.” Ex. 1013 at 49; Ex. 1002 ¶158, 175. Eastburn identified such rows of
`
`19
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`icons as second partitions, and included all icons within “the row.” Ex. 1002 ¶211.
`
`IBM cannot seriously dispute that these rows are “areas of the screen.”
`
`The rows of icons embedded in documents are each a second partition, no
`
`different than the “command bar” disclosed in the ’967 Patent. Ex. 1001 at 10:31-35.
`
`Although a partition can be in a fixed region of the screen and with a fixed size, it
`
`does not need to be. See Ex. 1001, cl. 17. Furthermore, IBM previously argued that
`
`nothing in “the ’967 Patent prohibits partitions ‘within’ other partitions,” and that
`
`embodiments include a “window partition containing command functions [that]
`
`appears within the first partition.” Ex. 1012 at 14; Ex. 1002 ¶114.
`
`b.
`
`Document partitions permit navigation between different
`applications
`IBM contends that document partitions do not include any “command
`
`functions,” because embedded icons in Figures 4 and 5 navigate to different pages
`
`within the “same application.” POR at 50-51. However, IBM admits that one way
`
`to differentiate between applications is through “the title of the window.” POR at 2.
`
`The titles of the windows (appearing as black bars) in the applications shown in
`
`Figures 4 and 5 are different. Although faint, the captions state in white letters:
`
`20
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`“Whiteboard Cedar,” “Whiteboard Components,” and “Whiteboard Viewers,”
`
`respectively. Ex. 1002 ¶197.5
`
`In addition to having different titles, the three windows appear at the same time, but
`
`in different locations of the screen. Ex. 1013, Fig. 5. Because “applications” refer
`
`to “one or more pages,” not to different computer programs, these distinctly titled
`
`documents are different applications. In addition, Teitelman discloses other
`
`command functions within the rows of icons in Figures 4 and 5—including
`
`5 Brightness and contrast were adjusted in the above figures for clarity.
`
`21
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`“Languages,” “Games” and “Tools”—each of which may be clicked to launch
`
`different applications. See POR at 3 (distinguishing applications “based on subject
`
`matter”); Ex. 1002 ¶175, 256.
`
`3.
`
`Arguments directed to both types of second partitions
`
`IBM makes multiple arguments directed to both types of “second partitions,”
`
`including that the “second partitions” do not satisfy Elements 1(a)(6)-1(a)(7), and
`
`that the second partitions do not contain “command functions.”
`
`a.
`
`Each of the second partitions is constructed from objects
`that are retrieved locally or, if unavailable, then from the
`network—Element 1(a)(6)
`IBM does not dispute that the identified first partitions for presenting
`
`applications (Element 1b) in Teitelman in view of Schroeder were constructed from
`
`objects that meet Element 1(a)(6). As Petitioner explained, such objects include files
`
`(e.g., documents, fonts, and viewers) and emails. Pet. at 48-54.
`
`IBM argues that the second partitions were not constructed from such objects.
`
`POR at 36-42 (bottom partitions), 53 (document partitions). The claims do not
`
`require that the “second partition” (Element 1c) be constructed from objects in
`
`accordance with Element 1(a)(6), supra §II.B, but even under IBM’s incorrect
`
`construction, Teitelman in view of Schroeder discloses and teaches this feature.
`
`IBM argues that the blinking icon in the second partition is constructed from
`
`the “Reminder system, not from an email message.” POR at 35; p. 36 (arguing
`
`22
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`emails are downloaded “before the alleged reminder icon is constructed” in bottom
`
`partitions). However, the Board correctly found that the bottom partitions in
`
`Teitelman (as shown in Figures 18-19) are “not only constructed from icons, such
`
`as the ‘blinking icon,’ but also from the objects (e.g. an email message) that
`
`constructs the icons.” ID at 37. IBM cannot reasonably dispute that the contents of
`
`the blinking icon used to construct the bottom partition came from the email itself,
`
`which was retrieved from the network. Pet. at 44, 53-54, 57-62, 65, 70-73; Ex. 1013
`
`at 62, 64 &n.36, 65 n.41, Figs. 18-19; Ex. 1002 ¶194, 207. IBM also cannot
`
`reasonably dispute that the document partitions in Figures 4-5 are not only created
`
`from the “cedar” and “components” icons, but also from the objects (e.g., the Cedar
`
`documentation files) that construct those icons. Ex. 1002 ¶174-175.
`
`IBM instead argues that emails “are always downloaded before the alleged
`
`reminder is constructed” and thus are never unavailable from the network. POR at
`
`36; see POR at 37 (“emails must be downloaded before the user can see them.” POR
`
`at 37 (emphasis in original)). IBM also argues that the objects used to construct
`
`other second partitions, such as those containing the “cedar” and “components”
`
`icons, were also “retrieved and stored before the individual icons are displayed.”
`
`POR at 38 (bottom partitions), p. 53 (document partitions). But such is true in any
`
`networked system, in that no local reception system can display items on a screen
`
`unless it has first obtained those items. Ex. 1002 ¶167.
`
`23
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`To the extent IBM argues that Element 1(a)(6) requires that the reception
`
`system must “check” for unavailability specifically for the purpose of generating the
`
`second partition, IBM is wrong. See POR at 38-39 (suggesting that the claims do
`
`not permit objects to “have been previously retrieved” before creation of the
`
`partitions). First, the claims do not require the reception system to “check” or
`
`“determine” unavailability, let alone for any specific purpose. Supra §II.A. Second,
`
`the claims do not impose any temporal restriction on when objects must be retrieved
`
`in relation to partition construction. In fact, IBM recently argued that Element
`
`1(a)(6) “‘merely describes the characteristics of the screen display’ and does not
`
`recite a method step.” Ex. 1019 at 8.
`
`IBM next argues that the objects are not retrieved from the network under
`
`Element 1(a)(6), because “Schroeder limits operations to entire files,” and thus
`
`prevents “caching, retrieving, or checking the availability of parts of files, such as
`
`the icons embedded in documents.” POR at 41. IBM is incorrect for several
`
`reasons.
`
`First, as described above, “checking the availability” is not a limitation of
`
`Element 1(a)(6). Supra §II.A.
`
`Second, IBM appears to argue that “icons” are the objects at issue. In
`
`contrast, as described above, files (e.g., font files and documentation files) and
`
`emails are the objects retrieved from the network and used to create partitions.
`
`24
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`Third, Petitioner explained repeatedly, and IBM has not addressed, that
`
`“fonts” are express examples of entire files that get cached and meets all claim
`
`limitations. Ex. 1013 at 45 n.4; Ex. 1014 at 29; Pet. at 29, 40, 47, 52-53, 55. For
`
`example, Petitioner explained inter alia the prescribed data structure of font files
`
`(Pet. at 40-42), how a font file is used to construct the partitions displayed on the
`
`screen (p. 47, 61), how font files are cached and retrieved from the network if
`
`unavailable locally (p. 44, 52), and how a font file is used in multiple applications
`
`for displaying documents, emails, and command functions (p. 55-56). IBM
`
`references “font” only twice in its POR (p. 19, 41)—each within the context of a
`
`larger quote—and not as part of any analysis.
`
`Fourth, Schroeder’s teaching of downloading “entire files, not parts of files”
`
`(POR at 41) does not exclude caching of objects. Objects, such as those used to
`
`construct the rows of embedded icons shown in Figures 4-5 of Teitelman and icons
`
`in the bottom partitions, are still retrieved from the network if unavailable locally.
`
`For example, Teitelman explains, regarding Figure 4, that clicking the embedded
`
`“Components” icon causes the system to “automatically obtain the necessary
`
`information from the corresponding database, which is stored on a file server,” and
`
`open the application. Ex. 1013 at 49 &n.8; Pet. at 51, 73; Ex. 1002 ¶210; ID at 41
`
`(discussing the “Components” icon). The ’967 Patent claims do not preclude
`
`retrieving an object as part of a larger file or as a component of a larger object.
`
`25
`
`

`

`Petitioners’ Reply for Inter Partes Review of
`U.S. Patent No. 5,796,967
`
`Indeed, the specification confirms that “objects may be nested within one another.”
`
`Ex. 1001 at 6:23.
`
`b.
`
`Each of the second partitions is constructed from objects
`that may be reused—Element 1(a)(7)
`IBM does not dispute that the first (application) partitions (Element 1b) in
`
`Teitelman are constructed from objects that may be used in more than one
`
`application—objects such as emails and files (including font files and document
`
`files). ID at 36; Pet. at 47-48. The second partition (Element 1c) need not be
`
`constructed from “objects that may be used in more than one application.” Supra
`
`§II.B. But even under IBM’s incorrect construction, Teitelman in view of Schroeder
`
`discloses and teaches this feature.
`
`i. Emails
`The Board correctly held that the bottom partitions in Teitelman (as shown in
`
`Figures 18