UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Ingenico Inc.,
`
`Petitioner
`
`v.
`
`IOENGINE, LLC,
`
`Patent Owner
`
`____________
`
`Case IPR2019-00416
`U.S. Patent No. 8,539,047
`____________
`
`PETITIONER’S REPLY
`
`

`

`Table of Contents
`
`Table of Authorities .............................................................................................. iii
`
`Exhibit List for Inter Partes Review of U.S. Patent No. 8,539,047 ....................... iv
`
`I.
`
`CLAIM CONSTRUCTION ......................................................................... 1
`
`A. “interactive user interface” ...................................................................... 1
`
`1. “Presentation” and “computer” are more particularly
`specified in the claims of the ’047 patent ........................................... 1
`
`2. Interactive does not require “interface elements” ............................... 3
`
`3. Interactivity is accomplished through an input device ........................ 3
`
`B. “communicate through” .......................................................................... 4
`
`II.
`
`IIDA ANTICIPATES ................................................................................... 6
`
`A. In Iida, the user interacts with the display ................................................ 6
`
`B. Although Not Required, Iida Does Disclose Interaction
`Interface Elements ................................................................................... 8
`
`C. Although Not Required, the Terminal in Iida Responds to
`User Inputs .............................................................................................. 9
`
`D. “Communicate Through” ...................................................................... 10
`
`E. “Second Program Code” ....................................................................... 10
`
`III. CLAIMS 7-20 ............................................................................................ 12
`
`A. Claims 7, 12-14 and 20 do not recite limitations ................................... 12
`
`B. Claims 7 and 12 are anticipated even if treated as limitations ................ 13
`
`C. Claims 8-11 and 15-19 are indisputedly anticipated .............................. 15
`
`D. Claim 25................................................................................................ 16
`
`IV. GROUND 2 – Claim 2 is unpatentable over Iida and Genske .................... 17
`
`i
`
`

`

`V. GROUND 3 (and 6) – Claim 5 is Unpatentable .......................................... 17
`
`VI. GROUND 4 (and 7) – Claims 10 and 17 are Unpatentable ......................... 19
`
`VII. GROUND 5 (and 6 and 7) - a POSITA would have been
`motivated to make Iida menu screens on the graphical user
`interface of a PDA ...................................................................................... 19
`
`VIII. NO SECONDARY CONSIDERATIONS .................................................. 24
`
`IX. CONCLUSION .......................................................................................... 25
`
`
`
`
`
`
`
`
`
`ii
`
`

`

`
`
`Table of Authorities
`
`Cases
`
`Catalina Marketing Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801
`(Fed. Cir. 2002) ................................................................................................ 13
`
`Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367 (Fed. Cir. 2014) .................. 5
`
`In re Stencel, 828 F.2d 751 (Fed. Cir. 1987) ......................................................... 13
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) .............................................. 20
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ......................................... 5
`
`Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353 (Fed. Cir. 2016) ...................... 5
`
`VirnetX, Inc. v. Cisco Systems Inc., 767 F.3d 1308 (Fed. Cir. 2014) ....................... 5
`
`
`
`
`
`iii
`
`

`

`
`
`Exhibit List for Inter Partes Review of U.S. Patent No. 8,539,047
`
`Exhibit #
`
`1001
`
`Brief Description
`
`U.S. Patent No. 8,539,047 (McNulty) (filed November 19, 2010;
`issued September 17, 2013)
`
`1002
`
`Declaration of James T. Geier
`
`1003
`
`US2003/0020813 (Iida), published January 30, 2003
`
`1004
`
`US2002/0065872 (Genske), published May 30, 2002
`
`1005
`
`US2002/0169002 (Imbrie et al.), published November 14, 2002
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`U.S. Patent No. 6,105,042 (Aganovic et al.) (filed February 13, 1998;
`issued August 15, 2000)
`
`Peter M. Chen et al, “RAID: High-Performance, Reliable Secondary
`Storage” ACM Computing Surveys, Vol. 26, No. 2, June 1994
`
`“Interference Immunity of 2.4 GHz Wireless LANs,” copyright 2001
`by HomeRF Working Group (www.homerf.org)
`
`J. Crowcraft, “The Internet: a tutorial”, Electronics &
`Communication Engineering Journal, June 1996
`
`Universal Serial Bus Specification, Revision 2.0 (April 27, 2000)
`Chapters 1-7
`
`Definition of “802.11b” and “tunneling”, Newton’s Telecom
`Dictionary, 18th edition, by Harry Newton, CMP Books, 2002. p. 18.
`
`iv
`
`

`

`Exhibit #
`
`Brief Description
`
`1012
`
`Prosecution History for parent U.S. Patent No. 7,861,006
`
`1013
`
`U.S. Patent No. 7,861,006 (McNulty) (filed March 23, 2004; issued
`December 28, 2010)
`
`1014
`
`Prosecution History for U.S. Patent No. 8,539,047
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`Complaint for Declaratory Judgment of Noninfringement, Ingenico
`Inc. v. IOENGINE, LLC, C.A. No.1:18-cv-00826-UNA, D.Del. filed
`June 1, 2018
`
`“HomeRF Working Group Calls it Quits” published on Internet.com
`on January 8, 2003
`(http://www.internetnews.com/wireless/article.php/1566311/HomeR
`F+Working+Group+Calls+it+Quits.htm).
`
`Helal, S., “Pervasive Java, Part II”, Pervasive Computing, April-June
`2002, p. 85-89.
`
`Gosling, James, et al., The Java™ Language Environment: A White
`Paper, Sun Microsystems Computer Company, October 1995.
`
` Definition of “user interface”, The Computer Glossary: The
`Complete Illustrated Dictionary, Ninth Edition, 2001, p. 420.
`
`Definition of “interactive”, Merriam-Webster’s Collegiate
`Dictionary, Eleventh Edition, 2003, p. 651.
`
`Declaration of Kerry L. Timbers in Support of Unopposed Motion to
`Appear Pro Hac Vice on Behalf of Petitioner Ingenico Inc.
`
`v
`
`

`

`Exhibit #
`
`Brief Description
`
`Rebuttal Expert Report of Dr. Kevin Butler regarding the Validity of
`U.S. Patent No. 8,539,046 (July 22, 2016) (on behalf of Patent
`Owner, IOENGINE, LLC in prior litigations Civil Action Nos. 14-
`1571-GMS and 14-1572-GMS) (submitted in an IDS filed by
`IOENGINE in the prosecution of U.S. Patent No. 9,774,703)
`
`Expert Report of Vijay Madisetti, Ph.D. (July 1, 2016) (on behalf of
`defendants in prior litigations Civil Action Nos. 14-1571-GMS and
`14-1572-GMS) (submitted in an IDS filed by IOENGINE in the
`prosecution of U.S. Patent No. 9,774,703)
`
`Order Construing the Terms of U.S. Patent No. 8,539,047 (March 21,
`2016) (Civil Action Nos. 14-1571-GMS and 14-1572-GMS)
`
`IOENGINE’s Opening Claim Construction Brief (redacted public
`version) (Civil Action Nos. 14-1571-GMS and 14-1572-GMS)
`
`IOENGINE’s Answering Claim Construction Brief (Civil Action
`Nos. 14-1571-GMS and14-1572-GMS)
`
`Imation’s Opening Claim Construction Brief (Civil Action Nos. 14-
`1571-GMS and 14-1572-GMS)
`
`Imation’s Responsive Claim Construction Brief (Civil Action Nos.
`14-1571-GMS and 14-1572- GMS)
`
`Declaration of Sharona H. Sternberg in Support of Unopposed
`Motion to Appear Pro Hac Vice on Behalf of Petitioner Ingenico Inc.
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`vi
`
`

`

`Exhibit #
`
`Brief Description
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`Transcript of August 16, 2019 Conference Call between
`Administrative Patent Judges and Counsel for the Petitioner and
`Patent Owner in IPR2019-00416
`
` “Cellular Phones: Today and Tomorrow,” Science Year 2002, The
`World Book Annual Science Supplement, World Book, Inc. 2001,
`pp. 286-290
`
`Excerpts from Computer Shopper, July 2000, Vol. 20, No. 7, Issue
`244
`
`“From cell-phones to self-phones,” The Economist, January 26th
`2002, Vol. 362, No. 8257, pp. 56-57
`
`Excerpts from Computer Shopper, January 2002, Vol. 22, No. 1,
`Issue No. 262
`
`1035
`
`Excerpts from online cellphone catalog: www.gsmarena.com
`
`Deposition Transcript of Kevin Raymond Boyce Butler, December
`20, 2019
`
`IOENGINE, LLC’S Opening Claim Construction Brief (July 15,
`2019) (Civil Action Nos. 18-452-WCB and 18-826-WCB)
`
`1036
`
`1037
`
`
`
`
`vii
`
`

`

`I. CLAIM CONSTRUCTION
`
`
`
`A. “interactive user interface”
`
`
` “Interactive user interface” (“IUI”) does not appear anywhere in the ’047
`
`patent and should be interpreted based on plain and ordinary meaning. By choosing
`
`terminology not found in the specification, patentee distinguished “interactive user
`
`interface” from the terms used in the specification, including “graphical user
`
`interface”, “graphic user interface” and “GUI”. Ordinary meaning points to the
`
`correct construction for “interactive user interface” as “a presentation (display)
`
`with which a user may interact to result in the computer (portable device) taking
`
`action responsively.”
`
`1. “Presentation” and “computer” are more particularly specified in
`the claims of the ’047 patent
`
`
` The claims require the interactive user interface to be presented on the first
`
`output component. Because all but claims 27-29 of the ’047 patent require a
`
`display to be effected on the terminal output component, the presentation for most
`
`of the claims must be a display.
`
` The specification clearly describes the portable device as responding to user
`
`interaction with the IUI. The IUI identified in the ’047 patent by Patent Owner’s
`
`expert, Dr. Butler, is log in screen 205a. Ex. 1036, 52:11-55:13. If a user interacts
`
`with login screen text box by supplying improper user credentials,
`
`1
`
`

`

`
`
`“the TCAP can provide[d] an error message to such effect.” Ex. 1001, 7:54-57.
`
`Here, the TCAP is the portable device responding to the user interaction. 1
`
`The claims themselves also require the portable device to respond to user
`
`interaction. For example, the portable device memory contains “third program
`
`code” executed in response to user interaction with the IUI, and “the portable
`
`device is configured to effect the display on the first output component.” Patent
`
`Owner’s expert, Dr. Butler, testified in previous litigation that “the interactive user
`
`interface was presented by program code stored on the portable device. See ’047
`
`Patent at Claim 1…” Ex. 1022, ¶84. With the portable device processor
`
`
`1 The Patent Owner’s assertion that the specification invariably describes only the
`
`terminal as acting responsively to the user’s input is thus demonstrably false. POR,
`
`p. 23.
`
`2
`
`

`

`responsible for effecting and presenting the interactive user interface, it would be
`
`error to restrict the claim to the responsiveness of the terminal. Instead, if any
`
`computer were to be specified as the one responding to user interaction, it would
`
`need to be the “portable device.” This is consistent with the Board’s
`
`determination, the claims and the specification of the ’047 patent.
`
`2. Interactive does not require “interface elements”
`
` The claims do not require a “GUI” with “interface elements,” as a GUI is
`
`only one type of user interface the specification says “may” be used. “The user
`
`interface may be a conventional graphic user interface…” Ex. 1001, 26:9-14
`
`(emphasis added). Moreover, the paragraph in the ’047 patent describing the user
`
`interface module of the portable device makes absolutely no mention of interface
`
`elements. Instead it broadly references “display, execution, interaction,
`
`manipulation, and/or operation of program modules and/or system facilities
`
`through textual and/or graphical facilities.” Ex. 1001, 26:15-19. This permissive
`
`language does not require an “interactive user interface” to have “interface
`
`elements.”
`
`3. Interactivity is accomplished through an input device
`
` The Board in its Institution Decision was misled by Patent Owner’s
`
`argument repeated in its Response, “The claims explicitly define the terminal input
`
`component separately from the IUI; interaction with the former is not interaction
`
`3
`
`

`

`with the latter.” POR, p. 31. This is contradicted by the ’047 patent and Patent
`
`Owner’s statements to the District Court. “[T]he claims refer to only one input
`
`component-the input component on the terminal-with which to interact with the
`
`IUI.” Ex.1037, p.11 (emphasis added). See also id., p. 2. As described in the ’047
`
`patent “[t]he user may employ the AT’s input peripherals as user input devices that
`
`control actions on the TCAP.” Ex. 1001, 4:46-47. The user input devices in the
`
`’047 patent are keyboard 1012a and mouse 1012b. Id., 21:64-66. Thus, a user
`
`interacts with screen 205 by entering characters through a keyboard 1012a or
`
`clicking a checkbox with mouse 1012b. Ex. 1036, 54:23-56:10. In all cases, the
`
`user interacts with the IUI through manipulation of an input device.
`
`
`
`
`
`B. “communicate through”
`
`The ’047 patent is a continuation of US Patent No. 7,861,006, which claims
`
`a “portable tunneling storage and processing apparatus.” Ex. 1013, 30:60. Having
`
`obtained patent protection for a tunneling device, the patentee sought broader
`
`protection in the ’047 continuation for a “portable device.” Although the
`
`specification describes embodiments that “may tunnel data through an AT” (Ex.
`
`1001, 4:28-29 and Abstract and 1:13), the term “tunnel” is conspicuously absent
`
`from the claims. Instead, the lay term “through” is used. The intended broad,
`
`ordinary meaning is clear.
`
`4
`
`

`

`Patent Owner’s proposed narrowing construction for “through” commits
`
`“one of the cardinal sins of patent law” - importing a limitation from the
`
`specification into the claims. Phillips v. AWH Corp., 415 F.3d 1303, 1320 (Fed.
`
`Cir. 2005); see also Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371
`
`(Fed. Cir. 2014). Where the patentee has not acted as its own lexicographer and
`
`there is no clear and unmistakable disclaimer, such attempts to limit the claims to
`
`an embodiment in the specification are improper. See, e.g., Unwired Planet, LLC v.
`
`Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016). The Virnetx2 line of cases is
`
`inapplicable because “through” is a lay term having an ordinary meaning in the
`
`context of communicating – “by way of.” Ex. 3002. Whereas Patent Owner
`
`associates “tunneling,” “tunneling client,” “TCAP” and “encryption” (all terms
`
`missing from the claims) with preventing access to information, the same cannot
`
`be said for “through.” Thus, “through” retains its ordinary meaning.
`
`Patent Owner cites testimony of Mr. Geier regarding the prior art Iida, rather
`
`than the ’047 patent. Mr. Geier testified that when the camera of Iida
`
`communicates through the terminal, the terminal would have “no reason to” access
`
`the content of the communication and therefore it “wouldn’t be accessing the
`
`2 VirnetX, Inc. v. Cisco Systems Inc., 767 F.3d 1308, 1317 (Fed. Cir. 2014)
`
`(construed “secure communication link” where “there is no dispute that the word
`
`“secure” does not have a plain and ordinary meaning in this context…”)
`
`5
`
`

`

`content.” Ex. 2110, 116:14-119:10. Patent Owner seeks a construction
`
`incorporating “tunneling” into the word “through” such that the terminal is
`
`prevented from obtaining access to the communication content. But Mr. Geier
`
`never said that the specification requires that access is prevented; he only said that
`
`in Iida access would be unnecessary to pass the communication through to a
`
`server.
`
`II. IIDA ANTICIPATES
`
`
`A. In Iida, the user interacts with the display
`
`Responses to Iida user’s inputs are dependent on the displayed user
`
`interface. If a user enters a “2” when Fig. 6A menu is presented on the display, the
`
`display is changed, pursuant to CHECK A PHOTOGRAPHED IMAGE (Fig. 4C),
`
`to a selection screen (block 232) as in Fig. 6E. Ex. 1003, [0094-0095]. If a user
`
`enters a “2” when Fig. 6E is presented on the display, “the image corresponding to
`
`the number inputted by the user has its resolution transformed into that for
`
`thumbnail image display” in a screen like Fig. 6F. Id.,[0099]. If a user enters a “2”
`
`when Fig. 6F is presented on the display, the routine may be returned to step 200
`
`where Fig. 6A is now displayed. Id.,[0102]. The camera responds to the number
`
`“2” in each case depending on what is displayed in the interface. The interaction
`
`between the user input and what is seen in the interface determines what happens
`
`6
`
`

`

`next. Contrary to the Board’s initial reaction, the user in fact interacts with the
`
`menu on the display.
`
`The Board expressed concern that the user was interacting with a numeric
`
`keyboard, which is not part of the display. This concern overlooked the reality of
`
`how users input any action to the system. The ’047 patent itself uniformly requires
`
`the user to use an input device, illustrating only a keyboard 1012a and a mouse
`
`1012b for doing so. Patent Owner’s argument that interaction with the input
`
`component is not interaction with the interactive user interface ignores the meaning
`
`of “interaction” as used in the ’047 patent.
`
`The Board’s analysis also did not take into account Iida’s explicit disclosure
`
`of portable terminals with a “touch pad” or the like, a device in which the user uses
`
`a finger to manipulate a cursor or pointer that moves on the screen. Butler
`
`Transcript, Ex. 1036, 27:8-28:16.
`
`Patent Owner also accuses Iida of merely disclosing static images. This
`
`ignores the various terminals that can be used with the Iida camera including “a
`
`PDA [Personal Digital Assistant], a wearable computer, or a mobile computer” that
`
`may be operated by a touch pad or the like. Ex. 1003, [0144]; Ex. 1002, ¶34. Iida is
`
`directed to “an image photographing and ordering method for allowing a user to
`
`photograph images and to order prints, and an image photographing device which
`
`can be used with the image photographing and ordering method.” Ex. 1003,
`
`7
`
`

`

`[0002]. Iida disclosed the menus and method without any need to detail how the
`
`menus would look or function on various different terminals. One of ordinary skill
`
`in the art would have understood terminals with touch pads would interact with a
`
`cursor on the screen. Indeed, Iida illustrated a cursor, which in a given terminal
`
`could be manipulated by a touch pad to enter a number selection from the menu.
`
`Ex. 2110, 163:3-165:12. Not only does Iida allow for a cursor that can be moved
`
`around a menu screen with a touch pad, Iida fully discloses screens that can be
`
`changed from one to another interactively in response to user inputs.
`
`B. Although Not Required, Iida Does Disclose Interaction Interface
`Elements
`
`
`
`Patent Owner argues that Iida does not teach interaction interface elements.
`
`Even if these were called for by the claims, Iida does surely disclose such
`
`elements. As recited in the ’047 patent, “interaction interface elements such as
`
`check boxes, cursors, menus…” Iida discloses menus and cursors and how those
`
`are displayed on a terminal such as a phone, PDA or mobile computer depends on
`
`the given terminal. Menus and cursors in Iida provide interactivity as user’s
`
`interactions determine how the display dynamically changes from menu to menu to
`
`photos to questions. Ex. 1003,Figs. 6A-6I; Ex. 1002,¶48 (“Similar actions of a user
`
`acting upon items presented in an interactive user interface to effect a responsive
`
`action by the running computer process are shown by Iida with respect to at least
`
`8
`
`

`

`menu screens Fig. 6E, 6F, 6H and 6I.”); Ex. 2110, 162:15-164:14 (“These are
`
`drawn diagrams that have been drawn more or less by hand, but they are indicating
`
`that with a line which indicates a cursor. That’s how someone of ordinary skill in
`
`the art would view this.”)
`
`C. Although Not Required, the Terminal in Iida Responds to User
`Inputs
`
`
`
`Patent Owner asserts the Iida terminal does not respond to a key press input.
`
`A proper claim construction does not require the terminal to take action, but rather
`
`an interaction from any computer, including the portable device. Nevertheless, a
`
`terminal (phone) in Iida does act in response to a key press. For example, if the
`
`phone is displaying a phone screen, it may use a user’s number input to generate a
`
`phone number for dialing. If the phone is displaying a user interface determined by
`
`an Iida camera, a number may be interpreted as a selection of a menu item, in
`
`which case the phone sends the user’s number input to the camera. Thus, the phone
`
`takes action based on whether it determines a number is being dialed or a selection
`
`is being made from a menu. When a user’s number input is forwarded to the
`
`camera, the Iida camera responds to the user’s number input received from the
`
`terminal according to its program code. Iida discloses code that provides new
`
`screen information for presentation on the terminal output to the user. Thus, both
`
`the phone and the camera respond to user interaction.
`
`9
`
`

`

`D. “Communicate Through”
`
`“Communicate through” was correctly decided in the Institution Decision
`
`and is resolved by the proper claim construction.
`
`E. “Second Program Code”
`
` As required by the “second program code”, Patent Owner concedes that the
`
`camera of Iida is able to receive a communication resulting from user interaction
`
`and can cause a communication to be sent to a communications network node by
`
`way of the terminal network interface. The issue raised is whether code on the
`
`camera enables the camera to cause a communication to be sent as claimed. As
`
`indicated in the Petition flow chart, second program code is found at steps 234-248
`
`and also at steps 262-282. Pet., Paper 1, p. 21. If user wants to save image data to
`
`the image server at 241, order a print from the image server at 268, 272, or erase
`
`data at the image server at 280, then a communication is caused to be sent to the
`
`image server at 244, 246, 274 and 282. That these functions are performed
`
`necessarily indicates that the code for implementing these functions enables their
`
`performance.
`
` Patent Owner objects to step 242, which is expanded in detail in Fig. 5, all of
`
`which is stored in and performed by the camera. Ex. 1003, [0112] The control unit
`
`52 in the camera requests positional information, searches for a nearest access
`
`point and stores a telephone number for that access point. Id. The objection focuses
`
`10
`
`

`

`on the information gathering step 302, which seeks positional information from the
`
`portable terminal. While the portable terminal provides the information, it is doing
`
`so at the direction of the camera’s control unit 52. The code for enabling the
`
`functions of the second code are stored and performed in the Iida camera.
`
`Given that the claims call for communications through the terminal network
`
`interface, the claim itself recognizes that the terminal necessarily participates in
`
`making network communication possible. The terminal must include code
`
`establishing itself as a node on a network. The fact that the terminal must takes
`
`such action is not relevant to whether the camera (portable device) includes code
`
`that enables it to cause a communication to a communications network node as
`
`claimed. The ’047 patent encounters the same need for the terminal to connect with
`
`the communication network before a communication can be sent to a
`
`communication network node through the terminal network interface. The ’047
`
`patent makes this explicit: “If the AT is connected to a communication network
`
`113, the TCAP may then communicate beyond the AT.” Ex. 1001, 3:65-66. The
`
`claim only looks toward the code in the portable device for enabling the portable
`
`device to take advantage of the network connection when it is established.
`
`Code satisfying the claimed second code is plentiful in Iida. Various code
`
`steps following the presentation of menus on the terminal display enable the
`
`portable device to “receive a communication resulting from user interaction with
`
`11
`
`

`

`the interactive user interface”. Such steps include 238, 241, 264, 268 and 280 all of
`
`which permit reception and response to a user interaction. Code enabling the
`
`portable device to “cause a communication to be sent through the terminal network
`
`interface” includes steps 242 and 244 all performed by control unit 52 of the
`
`camera. Control unit 52 determines the nearest access point and “causes the
`
`portable terminal 14 to dial the telephone number of the nearest access point 86.”
`
`Ex. 1003, [0112], [0113]. Just as in the ’047 patent, if the terminal is connected to
`
`the network, the portable device of Iida may communicate to a node on the
`
`network, and as in the claims it is second code in the portable device that enables
`
`the terminal to become connected making this communication possible. The
`
`initially enabled communication to a node begins with transmitting user ID and
`
`password from the built-in memory to the image server. Ex. 1003, [0113]. Upon
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`log-in, further communications back and forth with the image server are able to
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`take place. Id. Without the code in the portable device indicated by steps 241 and
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`242, communication through the terminal network interface would not otherwise
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`be available. Accordingly, Iida satisfies the “second code” limitation.
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`III. CLAIMS 7-20
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`A. Claims 7, 12-14 and 20 do not recite limitations
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`12
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`

`

` The Board explained that “[a]lthough ‘[s]uch statements often…appear in
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`the claim’s preamble…,’a statement of intended use or purpose does not
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`‘necessarily’ have to be recited in the preamble and can appear elsewhere in a
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`claim.” I.D. Paper 20, p. 60 (citing In re Stencel, 828 F.2d 751, 754 (Fed. Cir.
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`1987) The claimed structure of claims 7-20 is a “portable device.” Claims 7, 12-14
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`and 20 merely modify “the communications network,” an element not found in
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`claim 1 and not an element of the portable device. Thus, unlike the limitation on
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`claimed structure in Catalina Marketing3, the recitations added by these dependent
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`claims state merely an intended use or purpose for the portable device. Claims 7,
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`12-14 and 20 do not add any limitation to the portable device and are therefore
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`anticipated by Iida as established for claim 1.
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`
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`B. Claims 7 and 12 are anticipated even if treated as limitations
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` The Patent Owner’s expert admits that the term “communications network”
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`is even broader than set forth in the ’047 patent at Ex. 1001, 14:45-53, which
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`includes “any one and/or the combination” of a variety of networks. Ex. 2099, ¶67.
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`3 Catalina Marketing Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 806 (Fed.
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`Cir. 2002) The claimed system included display terminals. The recitation in the
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`body of the claim citing where those display terminals were located (“located at
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`predesignated sites such as consumer stores”) was a limitation on claimed
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`structure.
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`13
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`

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`In accordance with claim 1, communications pass between the portable device and
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`the communications network node thereby encompassing a communications
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`network including the combination of networks from the portable device through
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`the terminal to the communications network node. Patent Owner has no basis for
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`excluding one network along the way but not other networks along the way. The
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`’047 patent contemplates a communications network comprising multiple networks
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`such as a wide area network 113b followed by a high speed LAN (local area
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`network) 113c for communicating with remote storage 105. Ex. 1001, 4:15-21,
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`Fig. 1. The specification does not exclude the LAN from communications network
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`113, just because it forms a different connection along the way. A network as used
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`and defined in the ’047 patent is a combination of various connections.
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` Similarly, the network in Iida for completing a communication from the
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`camera to the image server includes HomeRF, wireless cellphone network, a
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`telephone network and the Internet. Ex. 1002, ¶56. Therefore, Iida’s disclosure of a
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`wireless LAN, in particular HomeRF, satisfies claims 7 and 12, even if the claims
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`were treated as reciting a claim limitation. For this additional reason, claims 7 and
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`12 are anticipated by Iida.
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` Furthermore, nothing in claims 7 and 12 impacts how the portable device is
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`configured. The recited LAN in these claims may be satisfied by any LAN along
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`the network between the portable device and the communications network node.
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`14
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`

`

`For instance, the claim limitation is met by LAN 113c in Fig. 1 of the ’047 patent.
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`There is absolutely no evidence to support the assertion that claims 7 and 12 would
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`require a “specific type of functionality” in the portable device. I.D. Paper 20, p.
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`61. To the contrary, the ’047 patent gives no indication of any additional
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`programming or structure needed by the portable device to communicate with a
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`node that happens to be on a LAN. Furthermore, Mr. Geier has explained that
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`“[n]o modification to the camera is required because a communication may pass
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`through a LAN (local area network) or a wireless LAN.” Ex. 1002, ¶55. Patent
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`Owner made no rebuttal despite having been invited to do so by the Board. I.D.
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`Paper 20, p. 62. The evidence thus establishes that requiring a LAN be included in
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`a communication network merely recites an environment in which the portable
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`device may operate and is not a limitation on the structure of the portable device.
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`For this still further reason, claims 7 and 12 are anticipated by Iida in view of the
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`evidence with respect to claim 1.
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`C. Claims 8-11 and 15-19 are indisputedly anticipated
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`
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` Claims 8-11 and 15-19 concern configuring the portable device to
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`communicate with a communications network node specified in the individual
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`independent claim. Such a portable device is disclosed for each claim by Iida as set
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`forth in the Petition. In the absence of a genuine response by Patent Owner to the
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`evidence presented and accepted by the Board, no reply is warranted.
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`15
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`

`

`
`
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`D. Claim 25
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`Despite failing to seek a special claim construction for “present,” Patent
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`Owner’s argument with respect to Claim 25 is based on interpreting “present” as
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`requiring “determine either the content or arrangement of what is displayed” and
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`“respond to user interactions.” POR, p. 45-46. This back door attempt at claim
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`construction is inconsistent with the claim language and the plain and ordinary
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`meaning of “present.” Independent claim 24 recites “an interactive user interface to
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`be presented on the first output component.” Here “presented” means “shown” or
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`“displayed.” Determination of the content or arrangement and responding to
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`interactions are not implicated by the action of merely presenting on the first
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`output component.
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`Claim 25 specifies that it is the “terminal processor” that presents an
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`interactive user interface on the first output component. “Present” is again used to
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`indicate what happens “on the first output component.” The IUI is displayed or
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`shown. Nothing in the claim language adds requirements to what happens in the
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`“terminal processor” other than that it makes the IUI appear on the first output
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`component. There is no dispute that when properly interpreted, Iida explicitly
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`discloses “the control unit 60[of the portable terminal]… displays the menu screen
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`on the display unit 62.” Ex. 1003 ¶83; I.D. Paper 20, p. 66. Therefore, claim 25 is
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`anticipated by Iida.
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`16
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`
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`IV. GROUND 2 – Claim 2 is unpatentable over Iida and Genske
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` Patent Owner only refers to its defenses to Ground 1 and Ground 5. Ground
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`1 establishes anticipation by Iida of all the limitations of claim 1 as set forth above.
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`Ground 5 and its discussion of prior art GUIs on portable terminals is not relevant.
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`With respect to Ground 2, Petitioner relies upon Genske because it confirms the
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`“common understanding that an electrical connection between a digital camera and
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`a portable terminal would have been made with an available interface such as
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`USB.” Petition, p. 52. When Genske lists “wireless, serial (RS-232) wired, USB, or
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`the like” Ex. 1004, [0109], it is quite apparent that a POSITA would have
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`understood that USB was a commonplace interface accepted for use in place