throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Date: January 9, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LENOVO HOLDING COMPANY, INC., LENOVO (UNITED STATES)
`INC., AND MOTOROLA MOBILITY LLC,
`Petitioner,
`v.
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`
`IPR2019-01279
`Patent 8,510,407 B1
`
`
`
`
`
`
`
`
`
`Before JAMES A. WORTH, AMBER L. HAGY, and SHARON FENICK,
`Administrative Patent Judges.
`FENICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`INTRODUCTION
`I.
`A. Background and Summary
`Lenovo Holding Company, Inc., Lenovo (United States) Inc., and
`Motorola Mobility LLC (“Petitioner”) filed a Petition for an inter partes
`review of claims 1, 8–13, and 20–24 of U.S. Patent No. 8,510,407 B1
`
`
`
`

`

`IPR2019-01279
`Patent 8,510,407 B1
`(Ex. 1001, “the ’407 patent”). Paper 2 (“Pet.”). DoDots Licensing Solutions
`LLC (“Patent Owner”) did not file a Preliminary Response.
`Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to
`determine whether to institute an inter partes review. If an inter partes
`review is instituted, a final written decision under 35 U.S.C. § 318(a) must
`decide the patentability of all claims challenged in the petition. SAS Inst.,
`Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).
`Upon considering the Petition and the evidence of record, we
`determine that Petitioner has demonstrated a reasonable likelihood of
`prevailing in showing the unpatentability of at least one of the challenged
`claims. For the reasons described below, we institute an inter partes review
`of claims 1, 8–13, and 20–24 of the ’407 patent with respect to all grounds in
`the Petition.
`
`B. Real Parties in Interest
`Petitioner indicates that Lenovo Holding Company, Inc., Lenovo
`(United States) Inc., and Motorola Mobility LLC are the real parties-in-
`interest. Pet. 67.
`Patent Owner indicates that DoDots Licensing Solutions, LLC is the
`real party-in-interest. Paper 4 (Patent Owner’s Mandatory Notices), 2.
`C. Related Matters
`According to Petitioner and Patent Owner, the ’407 patent at issue
`here is also asserted in DoDots Licensing Solutions LLC v. Lenovo Holding
`Company, Inc. et al., Case No. 18-098-MN (D. Del.). Pet. 67–68; Paper 4
`(Patent Owner’s Mandatory Notices), 2. Petitioner notes that that case also
`involves U.S. Patent Nos. 9,369,545 and 8,020,083, and that Petitioner filed
`a petition for inter partes review of the patentability of claims in U.S. Patent
`No. 9,369,545 in IPR2019-00988 (inter partes review instituted, see
`
`2
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`

`IPR2019-01279
`Patent 8,510,407 B1
`IPR2019-00988, Paper 7 (Sept. 10, 2019)) and a petition for an inter partes
`review of the patentability of claims in U.S. Patent No. 8,020,083 (decision
`on institution pending). Pet. 68.
`
`
`D. The ’407 Patent
`The title of the ʼ407 patent is “Displaying Time-Varying Internet
`Based Data Using Application Media Packages.” Ex. 1001, code (54). The
`’407 patent discloses, in part, a software component for accessing and
`displaying network content. Id. at code (57). A Networked Information
`Monitor (NIM) is a “fully configurable frame with one or more controls”
`with content optionally presented through the frame. Id. at 2:61–63, 5:21–
`24. When a NIM is opened by a user, the frame is presented in the user’s
`display and network content is retrieved and presented in a viewer enclosed
`by the frame. Id. at 19:63–20:30. The network content may be identified
`via URLs included in the NIM definition. Id. at code (57), 20:24–27. The
`network content is time-varying, e.g. as in an image that varies over time.
`Id. at code (57). The Specification describes that the frame according to the
`invention “stands in contrast to present web browsers, which are branded by
`the browser vendor and which have limited means by which to alter the
`controls associated with the browser.” Id. at 5:24–28.
`E. Illustrative Claim
`The challenged claims are claims 1, 8–13, and 20–24. Claims 1 and
`13 are the only independent claims among the challenged claims. Claim 1 is
`reproduced below with Petitioner’s bracketed limitation designations added
`for ease of reference:
`
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`IPR2019-01279
`Patent 8,510,407 B1
`1. [1.Preamble] A client computing device configured to
`access content over a network, the client computing device
`comprising:
`[1.A] electronic storage configured to store networked
`information monitor template associated with a networked
`information monitor, [1.B] the networked information monitor
`template having therein a definition of a viewer graphical user
`interface having a frame within which time-varying content in a
`web browser-readable language may be presented on a display
`associated with the client computing device, wherein the frame
`of the viewer graphical user interface lacks controls for enabling
`a user to specify a network location at which content for the
`networked information monitor is available; and
`[1.C] one or more processors configured to execute one or
`more computer program modules, the one or more computer
`program modules being configured to access the networked
`information monitor defined by the networked information
`monitor template, wherein accessing the networked information
`monitor defined by the networked information monitor template
`results in:
`
`[1.D] transmission, over a network to a web server
`at a network location, of a content request for content to
`be displayed within the frame of the viewer graphical user
`interface defined by the networked information monitor
`template;
`[1.E] reception, over the network from the web
`server at the network location, of content transmitted from
`the web server in response to the content request, the
`content being time-varying;
`[1.F] presentation, on the display, of the viewer
`graphical user interface defined by the networked
`information monitor template outside of and separate from
`any graphical user interface of any other application; and
`[1.G] presentation, on the display within the frame
`of the viewer graphical user interface defined by the
`networked information monitor, of the time-varying
`content received from the web server.
`
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`IPR2019-01279
`Patent 8,510,407 B1
`
`F. Evidence
`Petitioner relies on the following references:
`Reference
`Description
`Van Hoff et al.
`US 5,919,247
`(“Hoff”)1
`Berg
`
`Date
`Issued July 6,
`1999
`Jan. 1, 1998
`
`Exhibit
`Ex. 1004
`
`Ex. 1009
`
`Cliff Berg, How Do I Create a
`Signed Castanet Channel?,
`DR. DOBB’S JOURNAL,
`January 1, 1998
`US 5,983,227
`
`US Patent Application
`Publication 2002/0023110 A1
`US 6,401,134 B1
`
`US 5,999,941
`
`Nazem
`
`Fortin et al.
`(“Fortin”)
`Razavi et al.
`(“Razavi”)
`Andersen
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1006
`
`Ex. 1012
`
`Issued Nov.
`9, 1999
`Published
`Feb. 21, 2002
`Issued June 4,
`2002
`Issued Dec. 7,
`1999
`Petitioner also relies on the Declaration of Dr. Vijay K. Madisetti.
`Ex. 1003 (“Madisetti Decl.”).
`G. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1, 8–13, and 20–24 would have been
`unpatentable on the following grounds:
`Claim(s) Challenged 35 U.S.C. §
`1, 9–13, 21–24
`103
`8, 20
`103
`1, 9–13, 21–24
`103
`8, 20
`103
`
`Reference(s)/Basis
`Hoff, Berg, Nazem or Admitted
`Prior Art (“APA”)2
`Hoff, Berg, Nazem or APA, Fortin
`Razavi, Andersen
`Razavi, Andersen, Fortin
`
`
`1 The last name of the first-named inventor is Van Hoff, but, for consistency
`with the Petition, we refer to this patent as “Hoff.”
`2 The Petition cites column 1, lines 56–67 of the ’407 patent as the APA.
`Pet. 23–24, 26.
`
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`
`II. ANALYSIS
`A. Legal Standards
`It is a petitioner’s burden to demonstrate unpatentability. See
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
`1316, 1326–27 (Fed. Cir. 2008)).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved based on underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) objective evidence of nonobviousness, i.e.,
`secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966). “To satisfy its burden of proving obviousness, a petitioner cannot
`employ mere conclusory statements. The petitioner must instead articulate
`specific reasoning, based on evidence of record, to support the legal
`conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380 (Fed. Cir. 2016). We analyze the asserted grounds with the
`principles stated above in mind.
`B. Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art “would have
`a bachelor’s degree in Electrical or Computer Engineering, Computer
`Science, or a related field and have three or more years of experience” in the
`field. Pet. 8 (citing Madisetti Decl. ¶ 44).
`
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`Petitioner’s proposal appears to be consistent with the prior art of
`record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
`(explaining that specific findings regarding ordinary skill level are not
`required where the prior art itself reflects an appropriate level and a need for
`testimony is not shown). For the purposes of this Decision on Institution,
`we adopt Petitioner’s yet-unchallenged asserted level of ordinary skill solely
`to determine whether there is a reasonable likelihood that the Petitioner
`would prevailing in showing the unpatentability of at least one of the
`challenged claims.
`
`C. Claim Construction
`In an inter partes review based on a petition filed after November 13,
`2018,3 the claims are construed
`using the same claim construction standard that would be used
`to construe the claim in a civil action under 35 U.S.C.
`[§] 282(b), including construing the claim in accordance with
`the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the
`prosecution history pertaining to the patent.
`37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303,
`1312–13 (Fed. Cir. 2005) (setting forth claim construction standard in civil
`actions). Any special definitions for claim terms must be set forth in the
`specification with reasonable clarity, deliberateness, and precision. See In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`Petitioner requests that we construe one term from claim 1: that
`presentation of the viewer graphical user interface (“GUI”) defined by the
`
`3 See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
`November 13, 2018).
`
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`IPR2019-01279
`Patent 8,510,407 B1
`networked information monitor template be “outside of and separate from
`any graphical user interface of any other application.” Pet. 4–8. Petitioner
`argues that the correct construction should be “so that the viewer [graphical
`user interface] is distinct from and not presented within the frame of any
`other GUI generated by another application.” Id.
` We determine that no claim term requires express construction for
`purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context
`of an inter partes review).
`D. Obviousness over Hoff, Berg, and Nazem or APA
`Petitioner contends that the subject matter of claims 1, 9–13, and 21–
`24 would have been obvious over the combined teachings of Hoff, Berg, and
`Nazem or APA. Pet. 20–37. The factual and legal contentions presented in
`the Petition are unrebutted at this stage of the proceeding. We have
`reviewed the information provided by Petitioner, including the relevant
`portions of the supporting Madisetti Declaration. Based on the current
`record, for reasons set forth below, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood of prevailing on this obviousness
`challenge.
`
`1. Hoff
`Hoff is titled “Method for the Distribution of Code and Data
`Updates,” and issued on July 6, 1999. Ex. 1004, codes (54), (45). Petitioner
`contends Hoff is prior art under 35 U.S.C. § 102(e). Pet. 8.
`
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`IPR2019-01279
`Patent 8,510,407 B1
`Hoff describes a system and method for distributing software
`applications and data to thousands of clients over a network. Ex. 1004, code
`(57). In Hoff, an application is called a “channel,” the server that distributes
`the channel is called the “transmitter,” and the client receiving the channel is
`called the “tuner.” Id. at code (57), 2:54–67. An end-user, using a
`client/tuner, “subscribes” to a channel, the associated code and data is
`downloaded to the tuner, and then the channel can be executed many times
`without requiring further network access. Id. at code (57), 3:1–9. Any
`necessary software and data updates for the channel can be automatically
`downloaded and installed in the background at regular intervals by the tuner;
`the end-user is not required to manually install software updates. Id. at code
`(57), 3:10–14, 5:4–28. Hoff asserts that this method of automatic
`downloading of updates achieves for the client the same result as the
`broadcast distribution of software over a connection based network, but
`wherein the client initiates each update request without requiring any special
`broadcast networking infrastructure. Id. at code (57).
`2. Berg
`Berg is an article by Clifford Berg titled “How Do I Create a Signed
`Castanet Channel?”. Ex. 1009, 1. Petitioner asserts that Berg was published
`on January 1, 1998, and is prior art under 35 U.S.C. § 102(b). Pet. 9; see
`Ex. 1005 (Declaration of Clifford Berg). We conclude, based on the indicia
`on the face of Berg, and in light of the additional evidence cited by
`Petitioner, that there is a reasonable likelihood that Berg qualifies as a
`printed publication. See Hulu, LLC v. Sound View Innovs., LLC, IPR2018-
`01039, Paper 29 at 13, 17–18 (PTAB Dec. 20, 2019) (precedential).
`Berg discloses using Marimba’s Castanet, the “Java-centric (but not
`limited to Java) push technology,” to distribute content to users. Berg, 1.
`
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`IPR2019-01279
`Patent 8,510,407 B1
`Castanet is “a technology for deploying highly scalable applications, with
`centralized update and administration capabilities.” Id. at 2. Berg states
`that:
`
`Castanet consists of a client called the “tuner” and a server
`called the “transmitter.” Channels are published by an
`administrator on a transmitter. A workstation that has a tuner
`installed can subscribe to any number of channels on any
`number of transmitters. The tuner updates the channel's
`content, which may consist of Java code, media, and other
`files, including binary code (signed channels can load native
`methods supported by DLLs). The tuner presents a user
`interface for managing channels. The tuner interface is set
`apart from the interface constructed by any given channel (if
`the channel even has a user interface). This is unlike a
`browser, which imposes a user interface frame around any
`application that runs within it. Channels construct their own
`frames if and when they need them.
`
`Id.
`
`Berg describes, as an example, “a Castanet channel that opens a
`window on the screen, and allows a user to select from one of a small set of
`web locations to view.” Id. at 3. The list of allowable locations is hard-
`coded into the program. Id. at 4. Once the user selects a location from the
`provided list, the application fetches data via the corresponding address and
`displays the content within a web-viewing window, implemented with an
`HTML renderer. Id. at 3, 4. The frame containing the choice selector (for
`choosing the web location) and the window in which the content is viewed
`also includes an “X” window-close control, which allows a user to close the
`frame. Id. at 4.
`
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`IPR2019-01279
`Patent 8,510,407 B1
`
`3. Nazem
`Nazem is titled “Dynamic Page Generator” and issued on November
`9, 1999. Ex. 1007, codes (54), (45). Petitioner contends Nazem is prior art
`under 35 U.S.C. § 102(e). Pet. 13.
`Nazem describes pages containing live data arranged according to
`specific user preferences or recently used templates. Ex. 1007, code (57).
`Nazem’s pages “[t]ypically” are “news pages.” Id. Nazem describes the
`contents of such pages as “live data,” which, in the case of news pages,
`might include “a custom selection of stock quotes, news headlines, sports
`scores, weather, and the like.” Id.; id. at 1:61–2:14.
`
`
`4. APA
`Appellant refers to a portion of the Specification of the ’407 patent as
`the APA. This portion, included in the Background of the Invention portion
`of the Specification, reads as follows:
`A user operating a client computer typically accesses the Internet
`by using a viewer application, such as a browser to view web
`content provided at a destination address, typically a web page.
`In this context, web content and web applications are designed to
`fill the entire web page. It is known to divide the web content
`into different regions of a single web page. For example,
`personalized web pages can be specified, such that a user views
`a variety of content sources in a single page, such as stock
`information, weather information, and sports information, which
`is aggregated at the server that delivers the web page to the user,
`who then views the aggregated content in a single web page.
`’407 patent, 1:56–67 (cited at Pet. 23–24, 26).
`
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`IPR2019-01279
`Patent 8,510,407 B1
`
`5. Analysis of Claim 1
`a) Preamble
`The preamble of claim 1 recites a “client computing device configured
`to access content over a network.” Petitioner asserts that this preamble is
`taught by Hoff’s and Berg’s disclosure of “similar computer implemented
`methods in which a ‘tuner’ located on a client device is used to download a
`‘channel’ application from ‘transmitter’ located on a server over a network.”
`Pet. 20 (citing Ex. 1004, code (57); Ex. 1009, 1; Madisetti Decl. ¶ 104).
`Reproduced below is Figure 1A of Hoff, as annotated by Petitioner:
`
`
`Id. at 21. Petitioner argues that the client system 140 is a client system used
`to obtain content “such as the channel disclosed in Berg.” Id. at 20 (citing
`Ex. 1004, 3:31–49, 3:66–4:2; Madisetti Decl. ¶ 105).
`
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`
`b) Limitation 1.A
`Claim limitation 1.A recites that the client computing device
`comprises “electronic storage configured to store networked information
`monitor template associated with a networked information monitor.”
`Petitioner asserts that this limitation is taught by Hoff, in which a client
`device includes a storage system, and code and data are downloaded to local
`storage when a channel is subscribed to. Pet. 21–22 (citing Ex. 1004, 2:45–
`48, 2:56–67, 3:1–5, 4:47–49, Fig. 1B). Petitioner asserts that Berg also
`discloses a tuner that is used to subscribe to channels, and that both Berg’s
`and Hoff’s channels include instructions and data used to create a GUI and
`display content therein, satisfying the networked information monitor
`template as discussed with reference to later limitations. Pet. 22 (citing
`Madisetti Decl. ¶¶ 109–110).
`c) Limitation 1.B
`Claim limitation 1.B recites “the networked information monitor
`template having therein a definition of a viewer graphical user interface
`having a frame within which time-varying content in a web browser-
`readable language may be presented on a display associated with the client
`computing device, wherein the frame of the viewer graphical user interface
`lacks controls for enabling a user to specify a network location at which
`content for the networked information monitor is available.” Petitioner
`asserts that this limitation is taught by the combination of Berg and Nazem
`or APA. Pet. 23–24. Petitioner argues that Berg discloses an application
`that includes a definition of an interface with a frame in which content is
`presented, and that the presented content may be rendered from HTML. Id.
`at 23 (citing Ex. 1009, 3–4). Petitioner further argues that Nazem or the
`APA discloses that HTML content might include time-varying content such
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`IPR2019-01279
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`as stock quotes, weather data, and sports scores. Id. at 23–24 (citing
`Ex. 1007, 1:60–2:14; Ex. 1001, 1:56–67).
`With respect to the frame of the GUI “lack[ing] controls for enabling
`a user to specify a network location at which content for the networked
`information monitor is available,” Petitioner argues that while Berg’s
`application indicates that several URLs are available for a user to select, one
`of ordinary skill would have been motivated to make a modification so only
`one URL would be available, and would have had a reasonable expectation
`of success in such a modification. Pet. 24, 35–36 (citing Madisetti Decl.
`¶¶ 116–117, 218–219). Petitioner notes that Berg’s channel is described as a
`solution for a company that wishes to provide users with “web access, but in
`a controlled way,” and that to additionally control access, users of a channel
`might be restricted to only one URL. Ex. 1009, 3; Pet. 35–36 (citing
`Ex. 1009, 3, 6; Madisetti Decl. ¶¶ 218–219). We note that Petitioner does
`not indicate whether a user control must be provided for a “graphical user
`interface” according to claim 1, but that in modifying Berg’s channel “by not
`including controls for manually navigating a network,” Berg’s described
`“window-close event” user control would still be included. See Ex. 1009, 4;
`Madisetti Decl. ¶¶ 93, 129.
`
`d) Limitation 1.C
`Claim limitation 1.C recites “one or more processors configured to
`execute one or more computer program modules, the one or more computer
`program modules being configured to access the networked information
`monitor defined by the networked information monitor template.” Petitioner
`asserts that this limitation is taught by each of Hoff and Berg. Pet. 24–25.
`Petitioner argues that Hoff illustrates a client device with processors that
`execute computer program modules like the tuner and channel applications.
`
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`Id. (citing Ex. 1004, Fig. 1B, elements 143, 152, 153; Madisetti Decl. ¶ 119).
`Petitioner also contends that Berg discloses that a tuner initializes a channel,
`which causes the GUI to be generated and a webpage to be retrieved and
`displayed. Id. at 25 (citing Ex. 1009, 4).
`e) Limitations 1.D and 1.E
`Claim limitation 1.D recites that accessing the networked information
`monitor defined by the networked information monitor template results in
`“transmission, over a network to a web server at a network location, of a
`content request for content to be displayed within the frame of the viewer
`graphical user interface defined by the networked information monitor
`template.” Limitation 1.E recites that accessing the networked information
`monitor further results in “reception, over the network from the web server
`at the network location, of content transmitted from the web server in
`response to the content request, the content being time-varying.” Petitioner
`contends that Berg discloses limitation 1.D when it describes that the
`initiation of the exemplary channel causes a request to fetch a web page over
`the Internet. Pet. 25–26 (citing Ex. 1009, 3–4; Madisetti Decl. ¶¶ 123–124).
`Petitioner further argues that Berg describes that, in response to this request,
`web content is received over the network, and that this, in combination with
`the teachings of Nazem or APA relating to time-varying content, teaches
`limitation 1.E. Id. at 26 (citing Ex. 1009, 3, 4, 7; Ex. 1007, 1:60–2:14;
`Ex. 1001, 1:56–67; Madisetti Decl. ¶¶ 125–128).
`f) Limitations 1.F and 1.G
`Claim limitation 1.F recites that accessing the networked information
`monitor defined by the networked information monitor template results in
`“presentation, on the display, of the viewer graphical user interface defined
`by the networked information monitor template outside of and separate from
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`any graphical user interface of any other application.” Claim limitation 1.G
`adds that accessing the networked information monitor defined by the
`networked information monitor template results in “presentation, on the
`display within the frame of the viewer graphical user interface defined by
`the networked information monitor, of the time-varying content received
`from the web server.”
`Petitioner contends that Berg discloses these limitations (with the
`exception of the time-varying nature of the content) in its description of the
`channel opening a window on a screen and displaying webpage content
`within that window. Pet. 26–27 (citing Ex. 1009, 2 (“Channels construct
`their own frames if and when they need them.”), 3, 4 (“When the user makes
`a selection [of a URL corresponding to a web location with content], the
`program fetches that content and displays it in a web viewing window”), 7;
`Madisetti Decl. ¶¶ 131, 133–136). As before, Petitioner contends that
`Nazem or APA discloses the time-varying nature of some web content. Id.
`at 27 (citing Ex. 1007, 1:60–2:14; Ex. 1001, 1:56–67; Madisetti Decl.
`¶ 135).
`
`g) Combination of Prior Art References
`Even if Petitioner’s prior art references disclose all of the limitations
`in claim 1 when combined, there must be evidence to explain why a person
`of ordinary skill in the art would have combined the references to arrive at
`the claimed invention. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688
`F.3d 1342, 1366–67 (Fed. Cir. 2012) (citing Innogenetics, N.V. v. Abbott
`Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008) (holding that post-KSR “some
`kind of motivation must be shown from some source, so that the [trier of
`fact] can understand why a person of ordinary skill would have thought of
`either combining two or more references or modifying one to achieve the
`
`16
`
`

`

`IPR2019-01279
`Patent 8,510,407 B1
`patented [invention]”)). A precise teaching directed to the specific subject
`matter of a challenged claim is not necessary to establish obviousness. KSR,
`550 U.S. at 418. Rather, “any need or problem known in the field of
`endeavor at the time of invention and addressed by the patent can provide a
`reason for combining the elements in the manner claimed.” Id. at 420.
`Accordingly, Petitioner must show that “a skilled artisan would have been
`motivated to combine the teachings of the prior art references to achieve the
`claimed invention, and that the skilled artisan would have had a reasonable
`expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829
`F.3d 1364, 1381 (Fed. Cir. 2016) (internal quotations and citations omitted).
`Here, Petitioner asserts that a person of ordinary skill in the art would
`have been motivated to combine the teachings of Hoff and Berg because
`they “disclose similar systems in which a client with a tuner downloads
`channels from a transmitter on a server over the Internet.” Pet. 35 (citing
`Madisetti Decl. ¶¶ 217–21). Petitioner explains that “Hoff discloses the
`channel application can be any ‘software application’” (id. (citing Ex. 1004,
`Abstract, 4:7–10), and “Berg discloses the channel applications can be Java
`software applications and provides an example of one such Java application”
`(id. (citing Ex. 1009, 1–4)). Petitioner reasons that it would have been
`obvious to a person of ordinary skill in the art “to employ the system
`described in Hoff to download and run the channel disclosed in Berg, as
`Berg indicates its channel can be implemented on such a system,” and
`“[b]ecause Berg expressly indicates its channel is designed for a system like
`the one in Hoff, a [person of ordinary skill in the art] would have had a
`reasonable expectation that the channel application in Berg could have been
`successfully run on the Hoff system . . . .” Id. at 36–37 (citing Madisetti
`Decl. ¶ 221). Petitioner additionally argues that one of ordinary skill would
`
`17
`
`

`

`IPR2019-01279
`Patent 8,510,407 B1
`have been motivated to modify the Berg channel to include a URL for a web
`page with time-varying content to provide a user with up-to-date information
`as opposed to static information. Id. at 36 (citing Madisetti Decl. ¶ 220).
`On the current record, Petitioner’s argument is reasonable in light of its cited
`evidence.
`
`h) Conclusion
`Based on the present record, we find that Petitioner has shown a
`reasonable likelihood of prevailing with respect to its challenge of claim 1 as
`unpatentable as being obvious over Hoff, Berg, and Nazem or APA, and
`thus, Petitioner’s evidence is sufficient for the purpose of instituting inter
`partes review. Having determined that Petitioner meets the threshold for
`review of claim 1 based on this ground of obviousness, we institute a review
`as to all of challenged claims and grounds contained in the Petition. See
`SAS, 138 S. Ct. at 1359–60; see Consolidated Trial Practice Guide, 5, 63
`(November 2019), https://www.uspto.gov/sites/default/files/documents/
`tpgnov.pdf (“The Board will not institute on fewer than all claims or all
`challenges in a petition.”). We provide further analysis below in the interest
`of completeness and to provide guidance to the parties.
`6. Claims 9–13, 21–24
`Petitioner largely refers to the arguments with respect to claim 1 when
`discussing how the combination of Hoff, Berg, and Nazem or APA teaches
`or suggests the limitations in independent claim 13. Pet. 30–32 (citing, for
`the preamble of claim 13, Ex. 1004, code (57); Ex. 1009, 2; Madisetti Decl.
`¶¶ 161–165). Petitioner additionally provides analysis explaining how the
`combination teaches or suggests the limitations in claims 9–12, which
`depend from independent claim 1, and claims 21–24, which depend from
`independent claim 13. Pet. 27–30, 32–35. We note specifically that claim
`
`18
`
`

`

`IPR2019-01279
`Patent 8,510,407 B1
`12, which depends from claim 1, requires the transmission over the network
`to a server a request for the networked information monitor template, the
`reception from the server of the template, and the storage of the template in
`the electronic storage, which Petitioner argues is disclosed in Hoff’s and
`Berg’s discussions of a tuner requesting a channel from a transmitter. Pet.
`29–30 (citing Ex. 1004, code (57), 2:45–48, 2:56–67, 3:1–5, 3:34–36, 4:24–
`25, 4:47–57, Fig. 1A; Ex. 1009, 2; Madisetti Decl. ¶¶ 150–160). Claim 24,
`which depends from claim 13, contains substantially similar limitations to
`the transmission and reception of claim 12, and is argued on substantially
`similar basis. Id. at 34–35.
`Based on our review of Petitioner’s arguments and evidence
`concerning claims 9–13 and 21–24, we determine that Petitioner has shown
`a reasonable likelihood of proving that the challenged claims are
`unpatentable as obvious over Hoff, Berg, and Nazem or APA.
`E. Obviousness over Hoff, Berg, Nazem or APA, and Fortin
`Petitioner contends that the subject matter of claims 8 and 20 would
`have been obvious over the combined teachings of Hoff, Berg, Nazem or
`APA, and Fortin. Pet. 37–41. We have reviewed the information provided
`by Petitioner, including the relevant portions of the supporting Madisetti
`Declaration. Based on the current record, for reasons set forth below, we are
`persuaded that Petitioner has demonstrated a reasonable likelihood of
`prevailing on this obviousness challenge.
`1. Fortin
`Fortin is titled “Document Markup Language and System and Method
`for Generating and Displaying Documents Therein,” and published on
`February 21, 2002, from an application filed on January 23, 1998.

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