UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`
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`EXPEDIA, INC., HOMEAWAY.COM, INC., HOTELS.COM L.P.,
`HOTWIRE, INC., and ORBITZ, LLC,
`Petitioner,
`
`v.
`
`INTERNATIONAL BUSINESS MACHINES CORP.,
`Patent Owner.
`___________
`
`Case IPR2018-01136
`Patent 5,796,967
`___________
`
`Record of Oral Hearing
`Held: September 25, 2019
`____________
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`Before HUBERT C. LORIN, MICHAEL W. KIM, and
`KEVIN W. CHERRY, Administrative Patent Judges.
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`
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`___________
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`
`
`EXPEDIA, INC., HOMEAWAY.COM, INC., HOTELS.COM L.P.,
`HOTWIRE, INC., and ORBITZ, LLC,
`Petitioner,
`
`v.
`
`INTERNATIONAL BUSINESS MACHINES CORP.,
`Patent Owner.
`___________
`
`Case IPR2018-01136
`Patent 5,796,967
`___________
`
`Record of Oral Hearing
`Held: September 25, 2019
`____________
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`
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`Before HUBERT C. LORIN, MICHAEL W. KIM, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`
`
`
`
`
`Case IPR2018-01136
`Patent 5,796,967
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`BRIAN W. OAKS, ESQUIRE
`Baker Botts LLP
`98 San Jacinto Blvd.
`Suite 1500
`Austin, Texas 75201
`
`ON BEHALF OF THE PATENT OWNER:
`
`KARIM Z. OUSSAYEF, ESQUIRE
`Desmarais LLP
`230 Park Avenue
`New York, New York 10169
`
`The above-entitled matter came on for hearing on Tuesday, September
`25, 2019, commencing at 8:59 a.m., at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
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`P R O C E E D I N G S
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`JUDGE LORIN: All right. Good morning, counsel.
`
`
`This morning we will hear argument in IPR 2018- 01136, Expedia
`v. IBM. This is concerning U.S. Patent 5,796,967. Counsel for
`the parties, please introduce yourselves and start with the
`Petitioner Expedia, please.
`
`
`MR. OAKS: Good morning, Your Honor. My name is
`Brian Oaks with Baker Botts for Petitioners Expedia et al., and
`with me is David Tobin, also of Baker Botts for Petitioners.
`
`
`JUDGE LORIN: Right. Thank you, Mr. Oaks.
`
`
`MR. OUSSAYEF: Good morning, Your Honor.
`Karim Oussayef for Patent Owner IBM, and with me is my
`colleague Kevin McNish.
`
`
`JUDGE LORIN: Great. Thank you Mr. Oussayef .
`Thank you so much. Okay. Welcome to the Board. Per our
`Order dated August 13, 2019 paper No. 31, we granted the
`parties 60 minutes each for argument time. As you know
`Petitioners will argue first. Patent Owner will then have the
`opportunity to respond to Petitioner's arguments. Next,
`Petitioner may use any time it has reserved for rebuttal to
`respond to Patent Owner's arguments. Lastly, Patent Owner may
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`use any time you reserved for surrebuttal to Petitioner's rebuttal
`arguments.
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`I'd like to remind the parties that this hearing is open
`to the public. A full transcript of the hearing will become part of
`the record. We also understand that there are demonstratives
`that will be used by the parties during argument. Please, to
`ensure clarity of the transcript identify each exhibit referenced
`during the arguments by slide or screen number please. Okay,
`let's begin. Counsel for Petitioner Mr. Oaks, you may begin.
`
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`MR. OAKS: Thank you, Your Honor. I'd like to
`reserve 15 minutes for rebuttal.
`
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`JUDGE LORIN: All right. Thank you.
`
`
`MR. OAKS: Okay. Good morning, Your Honors. So
`I'm on slide 2. This is just an outline of what I'd like to talk
`about this morning so I'll get straight into it. The first is the
`overview of what's actually in dispute here in this IPR today.
`
`
`I'm going to go straight to slide 6 which identifies
`those things that are in dispute and that aren't. What's not in
`dispute first is that the two prior art references used in this IPR,
`Teitelman and Schroeder, qualify as prior art under 102(b) has
`not been argued by Patent Owner. It's also not in dispute that
`there is a motivation to combine these references as set forth in
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`the petition and there's also not a dispute about the majority of
`the dependent claims.
`
`
`What is in dispute is claim 1 which is the independent
`claim as well as dependent claims 4 and 17 and in addition, with
`respect to claim 1, a lot of the disputes are relating to claim
`construction. So I'm going to get into those claim construction
`issues next.
`
`
`I'm moving on to slide 8. So slide 8 here on the left
`of the slide you can see the four different phrases that are in
`dispute and basically what Patent Owner has done in this IPR is
`attempted to distinguish from the combination of Teitelman and
`Schroeder based on these four narrow constructions that are
`presented in its briefing. Admittedly Patent Owner doesn't
`challenge that the combination of references would disclose this
`claim if Petitioner's constructions are right, but in any case that's
`really of no importance because even under Patent Owner's
`constructions the petition and the briefing has shown, Petitioner
`has shown that the combination still discloses every limitation of
`claim 1 even under Patent Owner's constructions.
`
`
`So moving on to slide 10. So the first disputed issue
`is the, I call it the “if unavailable” limitation. So we've
`identified this as element 1a6 and we'll talk about in a minute as
`to whether it should apply to the second partitions. But first let's
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`talk about the limitation itself. So what the limitation says, as
`you can see here on slide 10, is that the objects that are
`previously described as used to construct the partitions being
`retrieved from the objects stored at the respective reception
`system or if unavailable from objects stored at the respective
`reception system , then from the network.
`
`
`So basically it's just a fairly straightforward
`limitation that the objects used to construct the recited plurality
`of partitions are either objects that are local or they're objects on
`the network and that's it. But the Patent Owner has injected a lot
`of different constructions or potential limitations of this phrase.
`For example, Patent Owner has mentioned the times that there's
`some requirement about when the system has to check the
`availability of objects, either locally or on the network. There's
`also been some discussion about whether the claim precludes the
`use of permanent objects at all and of course permanent objects
`are objects that are stored only locally on the reception system.
`
`
`So digging into those a bit on slide 11. First with
`respect to this need to check for availability or unavailability.
`The Patent Owner has taken a different position in this IPR than
`they did in prior litigation involving other parties, the Priceline
`litigation. In this IPR at the top of slide 11 the Patent Owner has
`said that the claim language requires that the system be able to
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`check whether an object is unavailable from the reception system
`such that it can then retrieve it or not from the local system or
`the network based on that availability. But in previous litigation
`the Patent Owner said that the defendants in that litigation were,
`
`
`"Adding extraneous steps of determining whether an
`object is stored at the respective reception system."
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`
`In addition, the Patent Owner said that simply because
`one way of checking the currency is to go look at that object first
`does not mean that the claim language necessarily requires it.
`There's no reason to put an additional requirement in there so the
`Patent Owner has, in litigation, taken a much broader view of
`what the scope of this limitation is and we believe that the Patent
`Owner's view in litigation is the correct one.
`
`
`Moving on to slide 12. There's also been arguments
`about like I said whether permanent objects can meet the
`requirement of the claim and clearly they can. The claim says
`that objects can either come from the local system, the reception
`system, or from the network in they're not available on the local
`system but there's no exclusion from the use of using local
`objects. In addition, the Patent Owner has made some arguments
`that basically are based on a temporal restriction about when the
`object is checked or when it's retrieved. I mean there's no such
`temporal limitation in the claim at all. It simply says that
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`partitions are built from these objects and they can be either one
`of these two types of objects.
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`That in fact, I'm moving on to slide 13, that view was
`confirmed by the Patent Owner in prosecution where they stated
`specifically in the interview which was encapsulated in this
`interview summary that partitions can be constructed from
`objects that are stored only locally, that are objects that are
`stored only remotely or a combination of those two types of
`objects. So if there aren't any questions about that issue I'm
`going to move on to the next claim --
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`JUDGE LORIN: Yes, I have a question.
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`MR. OAKS: Yes, Your Honor.
`
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`JUDGE LORIN: I think when we wrote our decision
`on institution we said that it could appear to us that the partition
`had to be capable of doing both and I think what you're saying
`here is that the objects can be one or the other, but my question
`to you is does not the claim require the partitions to be capable
`to be both, which is why --
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`MR. OAKS: The partitions are what they are as
`generated by the system. So this is a method claim and it
`requires generating screening with a plurality of partitions and
`then generating this first partition and the second partition. The
`only thing the claim says about the objects that are used to build
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`those are that they are either on the reception system or if they're
`not available in the reception system that they're on the network.
`So there can be the claim covers situations where the partitions
`are entirely built from local objects. It covers situations where
`the partitions are built from both or it covers situations where
`the partitions are built only from remote objects. It's really just
`the system that has a capability of doing that is what the claim
`requires, but it's a method step for building partitions and none
`of the method steps actually require that partitions have any
`particular combination of those objects.
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`JUDGE LORIN: Right. I understand your position
`the claim doesn't require the partitions to be constructed in both
`ways, but my question is whether the claim covers the partition
`having the capability of doing both.
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`MR. OAKS: I would say it covers a system that has
`the capability of generating partitions in either one of those three
`combinations of ways. A partition is simply just a display on the
`screen. A partition doesn't have the capability of something, it's
`just a display.
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`JUDGE LORIN: Right. But --
`
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`MR. OAKS: But the system that builds that partition
`has the capability under this claim of building it in one of those
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`three ways, all local, all remote or a combination of
`(indiscernible.)
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`JUDGE LORIN: Okay. So you are agreeing, because
`the claim says partitions being constructed from objects, the
`objects being retrieved or if unavailable from the network. So
`you agree that the partitions have to have the capability of being
`constructed from both types?
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`MR. OAKS: The system needs to have the capability
`but a particular example of this method could, you know, we
`were careful in our petition to always show the combination of
`objects in case the Board felt that the claim was narrow but the
`claim doesn't say that. The claim basically says a system has
`this capability and then it generates these partitions so it could
`be that all the partitions generated under the claim are all local,
`for example. But we've, like I said out of an abundance of
`caution we've showed screen partitions that are a combination of
`all different kinds of objects.
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`JUDGE CHERRY: So your argument is that even
`though the underlying system may perform all the aspects of the
`claim (indiscernible.) What you're saying is that even though the
`patent describes the underlying system having all these features
`to perform this method you only have to do -- you don't have to
`do all those features to perform the method?
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`MR. OAKS: That's right, and the claim is broad
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`enough that, and maybe I should move on to the next issue
`because I think we're getting into it a bit as with respect, and I'm
`on slide 15, as to whether these limitations apply to the second
`partition because the way the claim is written it requires a
`plurality of partitions being generated but it doesn't say what
`those plurality of partitions are and it could, for example, be a
`plurality of first partitions that meet this requirement that's
`shown in there 1a5 through 7, the top red highlighted box or it
`could be other partitions.
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`So the claim doesn't link the second partition to the
`plurality of partitions. Yes, they both use the word partition but
`in sort of typical claim language you would say wherein
`generating the plurality of partitions comprises generating a
`second partition or a second partition of the plurality of
`partitions, but it doesn't link the second partition to those 1a5
`through 1a7 elements in that way and so we don't believe it's
`even a requirement of the second partition at all that you could
`have, for example, just two different first partitions that meet
`this requirement and we certainly have shown that as well. In
`addition, one reason we know that to be the case, certainly at
`least with respect to 1a7 which is such that at least some of the
`objects may be used in more than one application.
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`We know that that shouldn't apply to the second
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`partition for two reasons. One, it says some of the objects may
`be reused so it doesn't require that all of the objects be reused so
`it certainly doesn't require that the objects used to create the
`second partition be reused. Furthermore, moving on to slide 18,
`the language specifically says that the reuse is in more than one
`application and it's the first partitions that are presenting
`applications, not the second partition. So it doesn't make any
`sense to me to import the requirement of the reuse of objects to
`the second partition. I'm going to move on to slide 21.
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`JUDGE LORIN: Before you move on I want to make
`sure I understand. So you're saying, when you read this claim
`here, it calls for a plurality of partitions. The first partition and
`second partition later in the claim, I know your argument that
`those are not the plurality of partitions you mentioned earlier.
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`MR. OAKS: They could be but --
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`JUDGE LORIN: They could be.
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`MR. OAKS: -- it's not a requirement that they be.
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`JUDGE LORIN: I was wondering had you looked at
`the specification to see what they were talking about when they
`speak of plurality of partitions?
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`MR. OAKS: Well they talk about different examples.
`There's the application partitions, there's the navigation bar
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`which is second partition. There's these windowed partitions
`that kind of pop up and kind of look like a Windows type
`partition. So there's lots of examples, but even just using the
`examples in the claim, like I said, the claim could be met by
`having a plurality of first partitions that meet elements 1a5
`through 1a7. That would then give you examples from the claim
`of the plurality of partitions that have objects that are either used
`locally or if unavailable locally from the network and the objects
`that are reused in more than one application and that that would
`meet the claim requirement and that actually is what makes sense
`because of that last 1a7 that when used in more than one
`application just doesn't even make any sense with respect to the
`second partition.
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`So, and we've shown in our petition multiple examples
`of screen captures that have more than one first partition in the
`middle portion of the screen and each of those partitions meets
`all the elements of claim 1a5 through 1a7 and then also a
`different second partition such as the bottom partition. Now,
`like I said, we've also shown the second partitions meet those
`requirements but we don't think that's necessary.
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`JUDGE LORIN: Which is why you're saying that
`these partitions first and second do not have to be constructed
`from objects?
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`MR. OAKS: That's correct.
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`JUDGE LORIN: So they could just be a partition on
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`the screen?
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`MR. OAKS: They just need to have what's in the
`requirements of the second partition which is plurality of
`command functions that are selectable to (indiscernible.)
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`JUDGE LORIN: Right, right, right. Okay.
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`MR. OAKS: So moving on to slide 22. This is the
`disputed issue related to what is a command function, and as I
`just said the only requirement of the claim is that command
`functions permit movement between applications. Patent Owner
`has attempted to import an embodiment or language from the
`specification into the requirement of a command function and we
`believe that's in appropriate.
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`What Patent Owner has said is that looking at the
`example in the specification that a command function must
`enable the user to interact with both the local system, the
`reception system, and other elements of the network. We don't
`believe importing that language is appropriate at all. We think
`the claim language is plain on its face and we said that we don't
`believe this needs a construction but to the extent that the Board
`wants to go and look at that language from the specification, we
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`believe it's clear that the command function examples don't have
`to have both those requirements, just one or the other.
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`So moving on to slide 23. What the Board
`preliminarily found based on Patent Owner's arguments was that
`there was a requirement that each command function do both and
`it was based, as shown here on slide 23 on figure 3B and also the
`language in the specification regarding figure 3B.
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`Moving to slide 24 I've shown the annotation of that
`figure and that description and if you look at this, what the
`figure shows is a command region 285 -- it's annotated there in
`red -- and that command region has a plurality of command
`functions in it. For example, one of those is highlighted there in
`green, and what is says in the specification in the language that
`the Patent Owner's trying to import into the claim is that the
`command region enables the user to interact with the network
`reception system and other elements of the network. So even if
`you were to import this language into the claim, which we don't
`believe is proper, it's the command region as a whole -- so the
`second partition for example -- as a whole that has to enable
`interaction with the network and the reception system. There's
`no requirement even in the specification that individual
`command functions do both of those things.
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`Part of the Board's reasoning for adopting Patent
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`Owner's construction was that it was a construction from a
`previous District Court litigation but I first want to note that the
`Expedia Petitioners here were not part of that previous litigation
`and it was a stipulated construction between the parties. So the
`District Court didn't show any kind of analysis in the document
`claim construction, it simply adopted and agreed upon
`construction between those parties which did not include Expedia
`and so we don't believe that it should be given weight here and it
`certainly shouldn't be given weight against Expedia when
`Expedia wasn't a party to that litigation and didn't have any say
`into whether that construction was adopted or not and that is
`supported by the case law here shown on slide 25, see Vasudevan
`Software case from the Federal Circuit.
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`So the last claim construction issue is the generated
`concurrently issue. So what element 1c of the claim says it's
`talking about generating the second partition, so it says
`generating concurrently with the first partition at least a second
`partition and Patent Owner says that this puts a limitation on
`when both the first and the second partitions are generated and
`says that they both have to be instantiated at the same time.
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`That isn't the plain language of the claim. The claim
`is talking about when the second partition is generated and it
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`simply says that when the second partition is generated it's
`concurrent with the first partition. So it just needs to be
`generated during the existence of the first partition. In essence,
`what we've argued in the briefing they just need to be displayed
`at the same time so when the second partition is displayed, the
`first partition also exists. So why do we think that? We think
`it's true because of, like I said, it's what the claim says. But in
`addition, if you move to slide 28, this is what the Patent Owner
`actually argued in prosecution when it added this limitation to
`the claim and you see here they're adding at the top generated
`concurrently and at the bottom they say that the Applicants have
`amended their claim, went out and then skipping down that the
`first and screening -- and I believe that's a typo, it should be
`second -- the first and second partitions are concurrently
`presented at the display. So they've admitted in prosecution that
`the scope of generating concurrently includes concurrently
`presenting and they've argued that this doesn't rise to the level of
`disclaimer. I think that's wrong. It indicates it's irrelevant
`because this is a disclaimer. The disclaimer is narrowing the
`scope of the claims based on statements in the prosecution. This
`is simply showing the breadth of the claim based on the Patent
`Owner's own words.
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`In addition, the Patent Owner has argued that we're
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`reading out the “ concurrently with” language if you interpret the
`way that Petitioner says that you should, but that's not the case
`because absent that language there wouldn't be a requirement
`that the two partitions, the first partition and the second
`partition, be displayed at the same time. You could meet the
`claim still generating a plurality of partitions by first displaying
`the first partition, then minimizing that or destroying it or
`removing it and then displaying the second partition.
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`So if there aren't any questions on claim construction
`then these issues will come back up in my argument but I'm
`going to move on to disclosure of the claim. I'm going to skip
`over this section. Like I said, there's no dispute over the status
`of prior art of the combinations so I'm going to move straight to
`slide 36 and these are the limitations in dispute. So like I
`mentioned, there's dependent claims 4 and 17 are in dispute.
`Most of the discussion has been about claim 1 and you'll see that
`really all that's in dispute on claim 1 is the last partition, the
`second partition, and whether those are shown by the
`combination. The Patent Owner doesn't make any arguments that
`the petition failed to show the partition. We've also highlighted
`the elements 1a5 through 7 because of course there's this issue as
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`to whether those are actually limitations that are applied to the
`second partition.
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`So before I dig into the arguments, I first want to
`address this argument that the Patent Owner has made that we've
`presented thirty four thousand something theories. We believe
`that clearly is not the case. There really were only two
`alternative theories presented and they're both related to the
`second partition and one was that the second partitions are the
`bottom partition that's shown at the bottom of the screen. The
`other theory was that the second partitions are document
`partitions which are included within the first partition. That w as
`the only sort of alternative that we provided. Now for each of
`those theories we provided different screen shots that also show
`examples of those two theories but that doesn't mean they're
`different theories.
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`So moving on, I'm going to skip to slide 43 and this
`series of slides is just simply emphasizing the point that Patent
`Owner's disputes are based on their narrow constructions, the
`four constructions I just went through. If the Board finds that
`Petitioner is right on those constructions, then it kind of ends the
`issue because Patent Owner hasn't argued otherwise. But even if
`you adopt every single one of Patent Owner's constructions the
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`petition still shows how the combination of elements meet the
`claims under those narrow constructions.
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`So moving on to slide 45, and the way we presented
`arguments in the reply was kind of dividing up or addressing
`Patent Owner's arguments that are specific to the bottom
`partitions. Those are specific to the document partitions and
`then those that are addressed in both, so that's how I've set up
`my presentation.
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`So first let's talk about the ones that are unique to the
`bottom partition. So first of all, with respect to bottom partition,
`the Patent Owner argues this generated concurrently issue and
`again, under Petitioner's construction of generating concurrently
`is simply meaning that you have to display the two partitions at
`the same time. There isn't any dispute that that's shown in the
`art. Teitelman shows that, I have here on slide 45 a couple of
`examples from figures 5 and 18. There's other examples that we
`showed in the petition of the first partitions being presented at
`the same time as the bottom partition.
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`So with respect to after you apply Patent Owner's
`construction that require the first and second partitions to be
`instantiated exactly at the same time, then Patent Owner's
`arguments really just revolve around the argument that we in the
`petition presented a single second partition, a single bottom
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`partition and therefore they say that we can't show that there's
`simultaneously instantiation.
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`But that premise is wrong. As the petition talks about
`has several different examples from a lot of different figures,
`each one is showing a unique second partition and immediately
`after we filed the petition the Patent Owner took Mr. Eastburn,
`our expert's deposition and they asked him about this. You can
`see here on slide 46, they were talking about those different
`screen shots showing the bottom partition and the question was,
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`"Those are all the same second partition, correct?"
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`And Mr. Eastburn went on unequivocally to say,
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`"No, they're each a different second partition. I
`would consider them to be different second partitions."
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`He made that very plain, and this questioning --
`moving on to slide 47 -- was all based, and it wasn't something
`he was trying to get in there. They were specifically asking him
`to go through and number each of the figures we excerpted in the
`petition and identify which one were unique second partitions
`and he simply was following their instructions and did that.
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`You can see on slide 48 an example of when he did
`that. He went through and uniquely numbered each of these
`partitions, they're unique different second partitions because they
`each have different combinations of command functions so
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`they're each different areas of the screen with different command
`functions and therefore they're each different second partitions.
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`So given that, understanding now that they're each
`second partitions, we've explained how even under Patent
`Owner's construction that requires simultaneous instantiation of
`the first and second partition, we still meet that that claim
`element construe that narrowly and that's because, as you can see
`here on slide 49, what Teitelman describes is kind of similar to
`you have sometimes in windowing systems when you click on an
`icon that's at the bottom it blows up the window into the middle
`partition and when you do that the icon goes away, and similarly
`when you minimize the application partition in the middle of the
`screen the icon reappears. So when you have that disappearing
`and appearing of the windows, you do have redrawing of those
`partitions and their being instantiated together at the same tim e,
`even under Patent Owner's narrow construction.
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`Patent Owner has said that our expert's just basically
`making that up but clearly that's not the case. I mean it's shown
`in several -- I gave you one example there on slide 49 -- but
`there's other examples you can see there's icons being opened
`and closed, appearing and disappearing and Teitelman actually
`says that this happens. You can see here on slide 50, the excerpt
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`there at the top of the slide from page 46 of Teitelman, describes
`exactly this process that I just described.
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`So I'm going to move on to the arguments directed
`solely to the document partition. So I'm on slide 52. So first of
`all Patent Owner makes this argument that Mr. Eastburn's using
`hindsight to identify this partition within a partition but that's
`not the case. Teitelman clearly calls out here on slide 52 you
`can see it, that it says about half way down this Whiteboard is a
`row of icons for seven other Whiteboards and then enumerates
`what those icons are and what they do and so that itself is
`Teitelman calling out those as a separate thing and so all Mr.
`Eastburn has done is looking at that and saying yes, that meets
`the second partition of the claim. It seems like Patent Owner is
`setting up this standard where an expert can't look at the claim
`before trying to determine if a piece of prior art actually meets it
`and that clearly isn't the law.
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`In addition, moving to slide 53, I don't believe this is
`disputed at all but in case there's a question it is okay for a
`second partition to be located on top of within a first partition.
`You can see this, like in the example in the 967 patent on slide
`53 you have the window partitions that completely overlay or be
`contained within a first partition, an application partition, and
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`the Patent Owner in fact has argued in litigation that nothing
`prohibits t
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