Paper 49
`
`Trials@uspto.gov
` Entered: October 20, 2020
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner.
`____________
`
`IPR2019-00940
`Patent 8,676,929 B2
`____________
`
`
`
`
`
`
`
`
`
`Record of Oral Hearing
`Held Virtually: Thursday, September 3, 2020
`____________
`
`
`Before MIRIAM L. QUINN, GREGG I. ANDERSON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
` Entered: October 20, 2020
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner.
`____________
`
`IPR2019-00940
`Patent 8,676,929 B2
`____________
`
`
`
`
`
`
`
`
`
`Record of Oral Hearing
`Held Virtually: Thursday, September 3, 2020
`____________
`
`
`Before MIRIAM L. QUINN, GREGG I. ANDERSON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00940
`Patent 8,676,929 B2
`
`
`APPEARANCES:
`
`
`ON BEHALF OF THE PETITIONER:
`
`
`MARK WEINSTEIN, ESQ.
`HEIDI KEEFE, ESQ.
`COOLEY LLP
`1299 Pennsylvania Avenue NW, Suite 700
`Washington, DC 20004
`650.843.5001
`mweinstein@cooley.com
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`NIKKI K. VO, ESQ.
`CHRISTEN M. R. DUBOIS, ESQ.
`FACEBOOK, INC.
`1 Hacker Way
`Menlo Park, CA 94025
`650.391.6527
`nvo@fb.com
`
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`IPR2019-00940
`Patent 8,676,929 B2
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`JOHN T. MCKEE, ESQ.
`JAMES M. GLASS, ESQ.
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`51 Madison Ave, 22nd Floor
`New York, NY 10010
`212.849.7142
`johnmckee@quinnemanuel.com
`jimglass@quinnemanuel.com
`
`OGNJEN ZIVOJNOVIC, ESQ.
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, California 94111
`415.875.6600
`ogizivojnovic@quinnemanuel.com
`
`
`
`
`
`
`3
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`
`ALSO PRESENT:
`ALEXANDER TSEHAY
`CASSANDRA GARCIA
`JOHN DILL
`JOHN LEQUANG
`
`
`
`The above-entitled matter came on for hearing on Thursday,
`September 3, 2020, commencing at 1:25 p.m. ET, by video/by
`telephone.
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`IPR2019-00940
`Patent 8,676,929 B2
` (On the record at 1:25p ET.)
`
` JUDGE KINDER: All right, everyone.
`Thank you for joining us. And I know some of us,
`it’s morning; some of us, it’s afternoon. So I
`guess I’ll just say good day.
` This is Judge Kinder. And with me today
`on the panel are Judges Miriam Quinn and Gregg
`Anderson.
` And this case caption today is Facebook,
`Instagram, and WhatsApp, Petitioner versus
`BlackBerry Limited, the Patent Owner.
` And today, we’re going to be talking
`about IPR2019-00940 involving US Patent
`Number 8,676,929.
` And I believe everyone is ready and on
`the call. So we’re actually starting a few
`minutes early. If there are any issues, please
`interrupt me. But first, we’re going to do a
`rollcall and make sure counsel for both Petitioner
`and Patent Owner are online and ready to go.
` We’ll start with Petitioner.
` MR. WEINSTEIN: Thank you, Your Honor.
`This is Mark Weinstein from Cooley for Petitioner.
`And with me on the line is Heidi Keefe, lead
`counsel. And also Nikki Vo, N-I-K-K-I V-O, from
`Facebook. And Christen Dubois, D-U-B-O-I-S, from
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`IPR2019-00940
`Patent 8,676,929 B2
`Facebook, she’s also on the call listening in.
` JUDGE KINDER: All right. Thank you,
`Mr. Weinstein.
` Are you going to be presenting again?
` MR. WEINSTEIN: Yes, Your Honor.
` JUDGE KINDER: Okay. Thank you.
` And then patent owner, I believe
`Mr. McKee was on the line. If you want to go
`ahead and introduce yourself.
` MR. McKEE: Good afternoon, Your Honors.
` This is John McKee for Patent Owner
`BlackBerry from Emanuel. Also with me on the
`public line should be Ogi Zivojnovic and Jim
`Glass, who is lead counsel on this case.
` JUDGE KINDER: All right.
` MR. McKEE: And I will be arguing on
`behalf of the patent owner.
` JUDGE KINDER: All right. Thank you
`very much.
` To go over a couple formalities, again,
`we are, as everyone knows, remote and doing
`another video hearing, so we thank you for your
`understanding in that.
` Each party will have 45 minutes of total
`time to present their arguments for the
`proceeding. Petitioner will go first, and
`followed by Patent Owner; and then Petitioner, you
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`IPR2019-00940
`Patent 8,676,929 B2
`can reserve rebuttal time.
` Mr. Weinstein, how much time would you
`like to reserve for your rebuttal?
` MR. WEINSTEIN: 15 minutes, if that’s
`okay, Your Honor.
` JUDGE KINDER: That is fine.
` And then, Patent Owner, you can respond
`and have a sur-rebuttal that responds just to the
`Petitioners’ rebuttal.
` How much time would you like to reserve,
`Mr. McKee?
` MR. McKEE: I’d like to reserve
`15 minutes as well.
` JUDGE KINDER: All right. Thank you.
` MR. McKEE: Thank you, Your Honor.
` JUDGE KINDER: All right. I will keep
`the time, but I ask each party, when you’re
`presenting, to also keep your own time. And I’ll
`try to give you a 5-minute warning before your
`time is up.
` So a couple -- a couple things. Please
`make sure you’re muted when you’re not speaking.
`And the judges will try to do the same so we kind
`of limit the background noise for whatever
`environment we happen to be in.
` The panel has access to all the
`documents; but before you present a document, I
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`IPR2019-00940
`Patent 8,676,929 B2
`ask that you tell the exhibit number or the
`demonstrative slide page number and then give us
`just a quick second or two to find that so we can
`get to it before you start talking about it.
` Again, identify each demonstrative very
`clearly for the court reporter.
` And also, we’re going to try to each
`identify ourselves when we start speaking to allow
`the court reporter to know who’s talking.
` All right. If there are no questions at
`this time, I think I’ve covered all the
`formalities and we can go ahead and begin with the
`Petitioners’ case in chief.
` All right, Mr. Weinstein, whenever
`you’re ready.
` MR. WEINSTEIN: Thank you, Your Honor.
`Thank you very much.
` So during this presentation, we’re going
`to be talking about -- in reference to the
`demonstrative exhibit.
` Again, this is Mark Weinstein for
`Petitioner.
` The exhibits are -- 1047, that’s the
`exhibit number of the demonstrative slides, and
`we’re going to be referring to various slides, as
`usual.
` I’ll jump straight to slide 3, which
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`IPR2019-00940
`Patent 8,676,929 B2
`just lists the instituted grounds of IPR. There
`are only three grounds, but grounds 2 and 3,
`there’s not really been any argument presented on
`those separately. Those deal with additional,
`sort of, backup grounds that -- pretty much all
`the arguments today are going to be about ground
`1.
` And if you go to the next slide, I think
`you can see that most of the arguments revolve
`around the limitation of a meta tag. So on claim
`4, we have identification of main dispute -- the
`construction of meta tag, how meta tag is used in
`the claim. That’s -- pretty much most of the
`disputes revolve around that issue, and the
`primary one, of course, being what does a meta tag
`actually mean.
` We have, on slide 7, produced
`essentially what the competing constructions are.
`The Petitioner has adopted for this proceeding
`that the construction on embedded control sequence
`inserted to indicate when advertising should be
`inserted. And I think the board observes as well
`it does not appear that that’s limited to that,
`but certainly that provides an example of
`something that meets the definition. So that’s
`the definition that we applied in our analysis in
`the petition.
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`IPR2019-00940
`Patent 8,676,929 B2
` Patent Owner has applied the same
`construction, but with two different -- with two
`changes: number one, they propose to add a
`negative limitation. And this is a legitimate
`negative limitation; that the meta tag cannot
`include, quote, “hidden, descriptive text to an
`HTML code.”
` And then they have an additional
`construction -- or maybe it got lost on the
`construction -- of what the word “when” means when
`it says “embedded control sequence inserted to
`indicate when advertising should be inserted.”
` And so I think what we’re going to argue
`here is that, A, the negative limitation is
`incorrect. There’s no basis in the intrinsic
`support for it. And, B, their definition of
`“when” doesn’t make any sense and is also
`contradicted by the intrinsic record.
` So I want to start with the -- slide 10.
`And this is an excerpt from our petitioner reply,
`and it just reminds us -- and, Judge Kinder,
`recently, you asked me if something was a negative
`limitation, and this is a clear example, Your
`Honor, of a negative limitation. And the MPEP
`says -- and we have it cited here, MPEP [§] 2173.05
`says “Any negative limitation or exclusionary
`proviso must have a basis in the specification.”
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`IPR2019-00940
`Patent 8,676,929 B2
` So that’s not limited to negative
`limitations. Anything you have in the claim has
`to have support in the specification.
` But in this case, what’s unusual is you
`can go through the patent owner’s brief, we can go
`through all their briefing, and you won’t find a
`single citation to the specification -- anywhere
`in the specification, the claim or the prosecution
`entry that supports this negative limitation. In
`fact, this is our rely brief right here on Slide
`10. We challenged that. Is there anything
`entered in the record?
` Their sur-reply brief, pages 8 to 10 of
`their sur-reply, they repeat their same arguments
`about District Court claim construction, but they
`don’t cite any intrinsic evidence to support this
`construction.
` So ultimately, the only basis for their
`negative limitation here is that the District
`Court made a statement in its claim construction
`order -- which, by the way, it did not adopt as
`its claim construction.
` Now, before we get to --
` JUDGE KINDER: Mr. Weinstein, this is
`Judge Kinder.
` Are you going to walk us through why the
`District Court said what they did?
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`IPR2019-00940
`Patent 8,676,929 B2
` MR. WEINSTEIN: Yes, Your Honor.
`Absolutely.
` JUDGE KINDER: Thank you.
` MR. WEINSTEIN: But I think before we
`get there, I think it’s important to understand
`that we almost don’t even have to get to the
`District Court construction in detail, because
`there’s no intrinsic support for the negative
`limitation, so it couldn’t be adopted regardless
`of what the District Court said. But when you
`look at what the District Court actually said in
`context, its statement about indescriptive text
`was very, very narrow.
` And you can see here -- I’ll jump to
`Slide 16. The dispute in the District Court was
`does the term “meta tag” have a plain and ordinary
`meaning outside the patent, and is that meaning
`the same meaning that the patent subscribes to it?
` And there was a discussion that in HTML,
`there is this thing called a meta tag. And a meta
`tag is -- as Your Honors may be aware, it’s this
`tag that you can put in your web page that
`provides descriptive text that search engines can
`use to find things. In fact, if you look at slide
`16, the District Court cited to an article called
`Weaver, “Signposts to Oblivion?” and it’s talking
`about the fact that today, for example, if you
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`IPR2019-00940
`Patent 8,676,929 B2
`logged on to your search engine and you type the
`word “Honda” in, you might get web pages for
`Toyotas.
` The reason you see those is because some
`sneaky person put the trademark for Honda in the
`meta tags of the Toyota web pages so that the
`Toyota web pages would come up when someone enters
`“Honda.” That’s the scenario the Weaver article
`was talking about, was people putting other
`trademarks inside the meta tags to trick search
`engines to identify your product when they search
`for something else.
` What the District Court cited when he
`used this term “hidden, descriptive text,” he
`actually cited a specific page of Weaver. That’s
`page 668. And we have the relevant portion
`reproduced on slide 17. And slide 17 is actually
`a direct excerpt from the Weaver article, and this
`is a pinpoint exactly what the District Court
`cited. And here’s what it says: meta tags, in
`essence, are signposts that notify search engine
`of the content of websites and facilitate keyword
`matches. There are, quote, “embedded descriptive
`text that is hidden from the viewer of the page
`but readable by search engines,” quote.
` That language isn’t identical to what
`the District Court adopted, but that clearly was
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`IPR2019-00940
`Patent 8,676,929 B2
`the inspiration for what the District Court used,
`was the Weaver article discussion of meta tag.
` Dr. Chatterjee explains at length the
`meta tags they’re talking about in the Weaver
`article, they’re these specific HTML meta tags,
`and they’re noted by less than or greater than
`symbols around the word “meta.”
` And I think we explained in our petition
`we’re not relying on HTML meta tags for the meta
`tag of the claim. The reason the Court cited this
`discussion was it was trying to say these HTML
`meta tags, they’re not the same thing as the meta
`tags that are in the patent. The main reason
`because the meta tags in HTML, they don’t do
`anything; they just provide this descriptive text.
`Where meta tags in the patents, they have to at
`least do two things: they have to identify an ad
`and specify a display requirement.
` JUDGE QUINN: This is Judge Quinn.
` So we could get the same result by
`saying embedded control sequences inserted to
`indicate when advertising should be inserted, but
`we’re not talking about HTML meta tags?
` MR. WEINSTEIN: Correct. In fact, Your
`Honor, I think we’ve made the argument that an
`HTML meta tag would not meet that construction
`without even a negative limitation. It just would
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`IPR2019-00940
`Patent 8,676,929 B2
`not meet the construction because it’s not
`capable -- it has no effect on the display of the
`page whatsoever, whereas the meta tag in the
`patent has to affect -- you know, identify the ad
`and specify the display requirements. So
`absolutely.
` And we actually made a statement in our
`petition an HTML meta tag is not a meta tag per
`the patent. And you don’t have to go beyond the
`portion of the construction the parties agree on
`to get there. So their negative limitation is
`completely unnecessary to what the District Court
`said.
` The danger of this is what the
`Petitioner -- the Patent Owner has done here is
`they’ve gone beyond what the District Court said.
`Their construction of the no hidden, descriptive
`text would essentially exclude all of HTML.
` How do we know this? Well, look at
`slide 13, Your Honors. Slide 13 is an excerpt
`from the Hall reference, which is Exhibit 1013 at
`page 0053. Hall is basically a textbook
`describing, you know, operation -- basic
`operations of HTML and how it works.
` So here’s how we described it: HTML
`elements are indicated by markup tags which are
`written using angle brackets.
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`IPR2019-00940
`Patent 8,676,929 B2
` Next sentence down, it says “These tags
`are not displayed on the resultant web page but
`rather provide descriptive information to the
`browser.” Patent Owner is interpreting the
`District Court’s construction to basically exclude
`any HTML tag. It would essentially read HTML out
`of the patent.
` And the reason we think that’s improper,
`Your Honor, is because the patent very clearly
`says -- if you go to slide 12, it expressly
`contemplates that you can use HTML to push out or
`to format the data that’s being sent out to the
`mobile device. It actually specifically says
`“HTML” or “WML.” “WML” means wireless market
`language. But WML or HTML-based web pages.
` So the District Court was not intending
`to exclude HTML. He was simply intending to
`exclude the HTML meta tag that we already argued
`are not the meta tags here and which we’re not
`relying on for purposes of our mapping.
` JUDGE KINDER: This is Judge Kinder.
` Real quick question about the District
`Court proceeding.
` What’s the status of the District Court
`proceeding, in particular with the claim
`construction?
` MR. WEINSTEIN: Well, what happened,
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`IPR2019-00940
`Patent 8,676,929 B2
`just like the last patent, ’351, the District
`Court granted summary judgment of patent
`ineligibility under 101 with respect to this
`patent and the ’351 patent. That is currently on
`appeal to the Federal Circuit. It is fully
`briefed.
` And to correct what I said in the
`earlier hearing, no oral argument date has been
`set by the Court. The parties have filed
`statements indicating their unavailability, but
`there’s no actual oral argument date set. And
`just frankly, I would be surprised if we get a
`decision, you know, before, you know, this year at
`all. I don’t know if we’ll get it argued this
`year.
` JUDGE KINDER: This is Judge Kinder
`again.
` With respect to the District Court’s
`claim construction for meta tag, did it have any
`application to the District Court’s ultimate
`decision related to Section 101?
` MR. WEINSTEIN: No, Your Honor, because
`what he ultimately found -- the Court ultimately
`declined to consider to construe meta tag, as Your
`Honors know. He said that the statement that
`they’re relying on is not definitional. And just
`like the ‘351, he said, “I don’t need to construe
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`IPR2019-00940
`Patent 8,676,929 B2
`it because the claims provide substantial guidance
`on what they require.”
` Now, in the context of the 101, the
`District Court decision basically said, “well, the
`meta tag is just a really generic concept.” And
`he specifically found that it did not provide
`inventive concept.
` Now, with respect to the appeal, nobody
`is arguing a claim construction issue here with
`respect to the term “meta tag.” I think that the
`patent owner is just arguing the architecture, the
`combination of elements. But they’re not saying,
`“oh, you have to construe it in a particular way,
`and under that construction, 101 is decided.”
` So if your question is getting to the
`issue of is the Federal Circuit going to pass on
`the construction of meta tag in the appeal, the
`answer is: it’s very unlikely that that’s going
`to be an issue that’s brought up in that appeal.
` JUDGE KINDER: Okay. Thank you.
` MR. WEINSTEIN: Thank, Your Honor.
` So I think we’ve dealt with the issue of
`the hidden, descriptive text and why we think
`that’s not proper. I mean, we have another
`argument explaining why. Even if you were to
`adopt that negative limitation, we don’t think
`that the IMG tags we’re relying is that --
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`IPR2019-00940
`Patent 8,676,929 B2
`qualifies as hidden, descriptive text. That’s
`properly understood, but I think you can resolve
`it by just not adopting that negative limitation.
` The second issue on the meta tag is the
`issue of when. Now, there’s a dispute amongst the
`parties as to what does the word “when” mean in a
`specification when it’s talking about this. And
`it’s really interesting when you look at slide 20.
`Slide 20 actually shows the context which this
`statement that the adopted construction came from
`was actually, you know, set forth in the
`specification.
` Slide 20 is quoting from the ’929 patent
`at column 8, lines 29 through 38. And you can see
`there’s three sentences there, and we’ve actually
`outlined them in three different colors. The one
`in the middle with the green, that’s the one where
`the construction that Patent Owner relies on. It
`comes directly from it.
` Well, let’s look at the context in which
`this statement appears in the specification. The
`first sentence says -- this is on column 8,
`line 29 -- “[a]s information is viewed, the Channel
`Viewer and Selector 45” -- and just for the
`record, that’s actually something that’s on the
`mobile device; it’s not on the server -- “presents
`the content information 51A, 51B to the user and
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`IPR2019-00940
`Patent 8,676,929 B2
`monitors the information for meta tags within the
`content.”
` Again, as it’s presenting the
`information to the user, it’s looking for these
`meta tags that may be interspersed inside this
`context.
` “Meta tags are embedded control
`sequences that the Proxy Content Server 18 has
`inserted to indicate when advertising should be
`inserted.”
` That’s the language of the adopted
`construction.
` It goes on and says “These tags would
`normally include an advertising name, a
`corresponding advertising identifier, and perhaps
`additional information like the number of
`advertising points for viewing the advertisement.”
` There’s lots of other specification
`cites cited in our paper and in these slides that
`talk about the fact that what the advertiser is
`doing, it is specifying the location and display
`characteristics of the ad. It is not
`specifying -- it is not specifying timing or
`triggered information or time of day that the ad
`has to be displayed or presented.
` And so the word “when,” what does the
`word “when” mean? The word “when” simply means
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`IPR2019-00940
`Patent 8,676,929 B2
`the point at which when it’s -- when the channel
`viewer and selector are sort of parsing this
`content, it encounters the meta tag; and at that
`point in time, it’s going to insert the ad at that
`point during the page. And that’s consistent with
`the other disclosure that said the location
`specified by the meta tag. We have multiple
`examples of that on slide 21.
` JUDGE KINDER: So this is Judge Kinder
`again.
` I think I understand your argument, but
`you agreed to the construction already that, I
`believe, meta tags are embedded control sequences
`and then indicate when advertising should be
`inserted, and now it seems like we’re trying to
`construe a word within that construction. So
`we’re not doing claim construction; we’re doing
`interpretation of a claim construction. And I
`always hate it when you get two levels down and
`try to do that.
` You know, first of all, why did you
`agree to the “when” clause if now you’re
`backtracking, so to speak? And did you
`essentially present a new argument as the patent
`owner’s arguing in their rebuttal?
` MR. WEINSTEIN: Thank you, Your Honor.
` That answer -- this absolutely is not a
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`IPR2019-00940
`Patent 8,676,929 B2
`new argument. First of all, we agreed to the
`construction for purposes of this IPR because it
`resolved the issues that were being presented.
` Now, to be honest, Your Honor, when we
`looked at the word “when,” we never thought in a
`million years that they would try to construe that
`as being time information. And if you look at the
`disclosure in the patent, Patent Owner will not --
`cannot identify a single example of a meta tag in
`a spec that includes timing information. It’s not
`part of the meta tag.
` Now, let’s talk about the new argument
`issue. I want to go specifically to slide 28.
`Patent Owner argues we never argued what the word
`“when” was in our opening papers.
` Well, on slide 28, here’s this portion
`of a -- and when we said on page 28 -- slide 28,
`so the Petition 41. “The IMG tag shown above” --
`and that’s referring to the IMG tag in Walther --
`“in other words, controls when the advertising
`image should be inserted (placed) by the rendering
`software on the screen for viewing.”
` That was our interpretation of “when” in
`our petition. That’s how we applied that claim
`language all along.
` The next slide, slide 29, here it is
`again. This is the original Petition, the
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`IPR2019-00940
`Patent 8,676,929 B2
`as-filed petition, pages 42 to 43. Up there, it
`says “The ’929 specification described embodiment
`in which the meta tags indicate the precise
`location where the advertising information will be
`placed when the information is displayed.”
` Our position in the opening petition was
`that the “when” language was satisfied by the fact
`that the system is going to indicate the point in
`time when it’s going to be processed. It was the
`patent owner that came up with this new, novel
`construction of the word “when,” which, by the
`way, is not a construction that they proposed in
`District Court. Just like before, they didn’t
`propose this construction; it came out of the
`blue.
` We’re responding to that construction by
`pointing back to our original position in our
`petition that, in fact, “when” does not indicate
`time. It indicates essentially a point in the
`process in which you insert the ad.
` JUDGE KINDER: This is Judge Kinder.
` How do we know when that point occurs?
`And if you want to talk about our DI and what we
`wrote, if that’s incorrect, please let us know.
`But I think in the DI phase, we read the
`triggering event as starting the sequence of
`events that eventually resulted in the display;
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`IPR2019-00940
`Patent 8,676,929 B2
`but Patent Owner’s argument is much more nuanced
`in that, really, the tag itself must control the
`when.
` MR. WEINSTEIN: Right. We actually
`agree with you, Your Honor. I think what Your
`Honor was pointing to -- and I -- we think Your
`Honor was correct in pointing to the triggering
`event. And I’d refer Your Honor back to claim --
`back to slide 2 to answer your question just
`looking at the claim language of claim 1.
` Slide 2, we just reproduced claim 1.
`And look at the very first element. “detecting a
`triggering event comprising a time-triggering
`event.”
` The next limitation says “determining
`via server information relevant to the triggering
`event.”
` The third limitation says “when the
`information relevant to triggering event comprises
`content,” and now you’re inserting the meta tag.
` The point in time when the system
`decides I’m going to insert the meta tag to the
`content information, at that point in time, the
`triggering event has already happened. It’s
`already occurred. So the decision of when to push
`the information out has already been made. The
`meta tag just comes in and says, “Okay. We’re
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`IPR2019-00940
`Patent 8,676,929 B2
`going to put this in a certain position in the
`content.” Just like in the code of an HTML page,
`at some point in that page, you’re going to insert
`the meta tag, which, in spite of Walther, it’s an
`IMG tag. That’s going to indicate when the
`advertising is presented. Because when the web
`browser is going to parse that page -- this is
`what was described in that passage we quoted
`earlier. Let me get the actual cite for Your
`Honor.
` JUDGE QUINN: I’m sorry. I got confused
`what you just said.
` So there are two timings here: there is
`the timing that’s recited in the claim as to when
`the server will insert the meta tag in the
`content, and then there is the “when” of when does
`the advertisement get displayed because the meta
`tag is there, is detected at that point. And the
`two occur at different points: the insertion
`occurs at the server, and the rendering of the
`meta tag occurs at the mobile device.
` So which timing are you talking about
`that Walther discloses?
` MR. WEINSTEIN: Well, actually,
`Walther -- we’re only using Walther for purposes
`of the meta tag limitation. Other references like
`Langseth, we’re using the triggering event.
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`IPR2019-00940
`Patent 8,676,929 B2
` Our point about the claim limitation is
`to say that using the meta tag for timing
`information, like time of day, isn’t disclosed in
`the specification anywhere. There’s no example of
`it. They can’t point to one. Their only support
`is for it is the word “when” that they pulled out
`of context from a single sentence.
` The reason a triggering event
`limitations are important is because they
`illustrate that the patentee knew how to claim an
`invention where something happens in response to
`some kind of an event. If they wanted to have
`another timing trigger at the client with the meta
`tag, they knew how to claim that. They could have
`described the specification. It’s not claimed;
`it’s not described in the specification; and the
`word “when” by itself doesn’t get them there in
`light of the rest of the intrinsic record.
` I think that’s the relevance of the
`triggering event, is that it --
` JUDGE QUINN: So at a minimum, the
`“when” -- your position is the “when” that gets satisfied
`when the web page is displayed on the mobile
`device, and in the mobile device -- the browser has to
`go get the link and display the tag information,
`whatever it controls it to do. That’s your --
`that’s the “when” for the meta tag?
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`IPR2019-00940
`Patent 8,676,929 B2
` MR. WEINSTEIN: Exactly. And I
`noticed I think Your Honor used the word “when”
`correctly, consistent with ordering -- in
`describing it. That’s exactly what we’re saying.
` And to support this idea that “when” is
`consistent with this meaning, I would refer Your
`Honor to slide 23. Slide 23 is actually a
`statement from Dr. Shoemake’s declaration where
`he’s actually describing our -- the prior art
`application in combination.
` Now, he’s not conceding that we meet the
`limitation, but he says in the second sentence
`that’s highlighted it merely indicates that the
`IMG tag directed placement of an image in a
`specific location on a HTML page when that page is
`rendered by an application. That’s actually what
`the specification described. And even the patent
`owner’s expert is using the term “when” consistent
`with that meaning.
` So in the end, Your Honor, they’re not
`going to be able to identify anything in the
`specification that’s going to say, “Oh, here’s the
`meta tag, here’s an example with time
`information.”
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