IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of:
`U.S. Patent No.:
`Issue Date:
`
`Appl. Serial No.:
`Filing Date:
`
`Title:
`
`John A. Kembel, et al.
`8,510,407
`August 13, 2013
`11/932,553
`October 31, 2007
`DISPLAYING TIME-VARYING INTERNET BASED
`DATA USING APPLICATION MEDIA PACKAGES
`IPR2019-_____
`
`Case No.:
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 8,510,407 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`

`

`I.
`
`II.
`
`TABLE OF CONTENTS
`REQUIREMENTS FOR IPR ......................................................................... 1
`A.
`Standing ................................................................................................ 1
`B.
`Challenges ............................................................................................ 1
`SUMMARY OF THE ’407 PATENT ............................................................ 2
`A.
`Brief Description .................................................................................. 2
`B.
`Prosecution History .............................................................................. 3
`C.
`Claim Construction............................................................................... 4
`D.
`Level of Ordinary Skill ........................................................................ 8
`III. OVERVIEW OF THE PRIOR ART .............................................................. 8
`A. USPN 5,919,247 to Hoff ...................................................................... 8
`B.
`Berg ...................................................................................................... 9
`C. USPN 6,401,134 to Razavi ................................................................. 10
`D. USPN 5,999,941 to Anderson ............................................................ 12
`E.
`USPN 5,983,227 to Nazem ................................................................. 13
`F.
`US Pub. No. 2002/0023110 to Fortin ................................................ 13
`IV. THE CHALLENGED CLAIMS .................................................................. 13
`V.
`SUMMARY OF UNPATENTABILITY GROUNDS ................................. 18
`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE ......................... 20
`A.
`[GROUND 1] – Claims 1, 9-13, and 21-24 are rendered
`obvious by Hoff, in view of Berg and Nazem or Applicant
`Admitted Prior Art (“APA”) .............................................................. 20
`[GROUND 2] – Claims 8 and 20 are rendered obvious by Hoff
`in view of Berg, Nazem or APA in the ’407 Patent, and Fortin ........ 37
`[GROUND 3] – Claims 1, 9-13, 21-24 are rendered obvious by
`Razavi in view of Anderson ............................................................... 41
`[GROUND 4] – Claims 8 and 20 are rendered obvious by
`Razavi in view of Anderson and Fortin ............................................. 64
`VII. PAYMENT OF FEES – 37 c.f.r. § 42.103 ................................................... 67
`VIII. CONCLUSION ............................................................................................. 67
`
`D.
`
`B.
`
`C.
`
`i
`
`

`

`IX. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) ....................... 67
`A.
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ......................... 67
`B.
`Related Matters Under 37 C.F.R. § 42.8(b)(2) .................................. 67
`C.
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ............... 68
`D.
`Service Information Under 37 C.F.R. § 42.8(b)(4) ............................ 68
`
`ii
`
`

`

`EXHIBITS
`
`Exhibit No. Exhibit
`
`EX1001
`
`EX1002
`
`EX1003
`
`EX1004
`
`EX1005
`
`EX1006
`
`EX1007
`
`EX1008
`
`EX1009
`
`EX1010
`
`EX1011
`
`EX1012
`
`EX1013
`
`U.S. Patent No. 8,510,407 to Kembel, et al. (the “’407 Patent”)
`
`Prosecution History of U.S. Patent No. 8,510,407
`
`Declaration of Vijay Madisetti
`
`U.S. Patent No. 5,919,247 to Hoff, et al. (“Hoff”)
`
`Declaration of Cliff Berg
`
`U.S. Patent No. 6,401,134 to Razavi, et al. (“Razavi”)
`
`U.S. Patent No. 5,983,227 to Nazem, et al. (“Nazem”)
`
`U.S. Patent Pub. No. 2002/0023110 to Fortin, et al. (“Fortin”)
`
`Cliff Berg, How Do I Create a Signed Castanet Channel, DR.
`DOBB’S JOURNAL, January 1, 1998,
`http://www.drdobbs.com/jvm/how-do-i-create-a-signed-castanet-
`channe/184410474 (“Berg”)
`
`Curriculum Vitae of Vijay Madisetti
`
`Prosecution History of U.S. Application No. 09/558,925.
`
`U.S. Patent No. 5,999,941 to Anderson (“Anderson”)
`
`U.S. Patent No. 8,020,083 to Kembel, et al. (“’083 Patent”)
`
`iii
`
`

`

`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, Lenovo Holding
`
`Company, Inc., Lenovo (United States) Inc. and Motorola Mobility LLC (“Lenovo”)
`
`petition for inter partes review (“IPR”) of Claims 1, 8-13, and 20-24 (the
`
`“Challenged Claims”) of U.S. Patent No. 8,510,407 (“’407 Patent”), owned by
`
`DoDots Licensing Solutions LLC (“PO”).
`
`I.
`
`REQUIREMENTS FOR IPR
`A.
`Standing
`Lenovo hereby certifies that the ’407 Patent is available for IPR and that
`
`Lenovo is not barred or estopped from requesting IPR of the Challenged Claims.
`
`Challenges
`B.
`This IPR presents the following grounds:
`
`Basis for Rejection
`Ground Claims
`1
`Claims 1, 9-13, and 21-24 103: Hoff, Berg & Nazem or Admitted Prior
`Art
`103: Hoff, Berg, Nazem or Admitted Prior
`Art, & Fortin
`Claims 1, 9-13, and 21-24 103: Razavi & Anderson
`Claims 8 and 20
`103: Razavi, Anderson & Fortin
`
`Claims 8 and 20
`
`2
`
`3
`4
`
`While Hoff, Razavi, and Nazem appear on the face of the ’407 Patent, they
`
`were not substantively applied or discussed during prosecution. Berg, Anderson, and
`
`Fortin were not cited during prosecution.
`
`1
`
`

`

`II.
`
`SUMMARY OF THE ’407 PATENT
`A.
`Brief Description
`The ’407 Patent is generally directed to “a software component for accessing
`
`and displaying time varying Internet content [that] includes a definition for rendering
`
`a graphical user interface [GUI] and a URL pointing to the time varying content to
`
`be downloaded and presented with said [GUI].” ’407 Patent, Abstract. The ’407
`
`Patent noted it was known to use a browser to access the Internet and view web
`
`content. Id., 1:56-59. The problem identified by the ’407 Patent, however, was:
`
`Currently, content providers and end users have limited tools to alter
`the browser in which content appears. That is, the controls associated
`with a browser are not fully configurable. Thus, the vendor of a browser
`is in a position to brand the browser and regulate the controls associated
`with the browser. There is a growing desire for content providers to not
`only fill a browser with their content, but to also fully brand and control
`the frame in which the content appears.
`Id., 2:25-32.
`
`The ’407 Patent’s purported solution allowed content providers to develop
`
`Networked Information Monitors (“NIMs”), which are “fully configurable frame[s]
`
`with one or more controls” through which content is presented to the user. Id., 5:21-
`
`24. Further, the NIM of the ’407 Patent “stands in contrast to present web browsers,
`
`which are branded by the browser vendor and which have limited means by which
`
`to alter controls associated with the browser.” Id., 5:24-28.
`
`2
`
`

`

`Prosecution History
`B.
`The application resulting in the ’407 Patent was filed on October 13, 2007,
`
`and claimed priority to a series of applications, the earliest of which was filed on
`
`April 26, 1999. ’407 Patent, 1:19-52.
`
`During examination, original claims 1-2 were rejected as obvious by USPN
`
`5,375,199 (“Harrow”) in view of USPN 5,838,906 (“Doyle”). EX1002, 894. The
`
`Applicant then amended Claims 1-2 and added new Claims 3-22. Id., 876-81. The
`
`Applicant argued that Fig. 9 of Doyle could not render its Claims obvious because
`
`Doyle presented a GUI “within a [GUI] of a web browser”—not “outside of any
`
`graphical user interface of any web browser application, and without the utilization
`
`of any web browser application.” Id., 882-84. Claims 1-22 were again rejected as
`
`obvious over USPN 6,101,510 (“Stone”) in view of Harrow. Id., 862. Applicant
`
`again amended Claims 1, 9, 12, and 20 and argued that Stone and Harrow failed to
`
`teach a GUI that “lacks user controls for manually navigating a network….” Id., 840-
`
`49. Claims 1-5 and 7-22 were again rejected as obvious by Doyle and Harrow. Id.,
`
`827. In response, Applicant argued that although the GUI in Doyle was distinct from
`
`the browser GUI, it was not displayed outside the boundaries of the browser GUI;
`
`rather, the Doyle GUI was displayed within the browser GUI, which included
`
`controls for network navigation. Id., 426-27.
`
`3
`
`

`

`Claim Construction
`C.
`In an IPR, claims are construed using the same standard used by district
`
`courts. 37 C.F.R. § 42.100(b). Claims are given their ordinary and customary
`
`meaning as understood by a person of ordinary skill in the art (“POSA”) at the time
`
`of the invention in light of the specification and the prosecution history. Id. At this
`
`point in the IPR, Lenovo believes only the term below needs construction.1
`
`Term (Claim 1)
`“outside of and separate from any [GUI]
`of any other application”
`
`Construction
`“so that the viewer [GUI] is distinct
`from and not presented within the frame
`of any other GUI generated by another
`application”
`
`This term places two requirements on the “presentation” of the GUI: it must be (1)
`
`“outside of” and (2) “separate from,” “any [GUI] of any other application.” The
`
`specification of the ’407 Patent does not include this term. Rather, the specification
`
`focuses on distinguishing the ’407 Patent’s GUIs from conventional web browsers.
`
`’407 Patent, 5:24-28, 26:3-10, 26:32-40.
`
`The file history of the ’407 Patent, however, is helpful. During prosecution,
`
`1 For this IPR, Lenovo applies the prior art to the claims consistent with PO’s
`
`infringement allegations in the pending litigation. Lenovo does not necessarily agree
`
`with these allegations and reserves the right to pursue alternative constructions
`
`during litigation, including that certain claims are indefinite.
`
`4
`
`

`

`the applicant added this limitation, requiring “presentation, on the display, of the
`
`viewer [GUI] defined by the [NIM] outside of and separate from any other [GUI]
`
`of any other application.” EX1002, 417-18 (emphasis added). The applicant
`
`attempted to distinguish Doyle, citing Fig. 9 of Doyle (reproduced below) as
`
`disclosing “presenting a [GUI] for one application (e.g., one lacking controls in its
`
`frame for enabling a user to specify a network location at which content is available)
`
`within a web browser,” wherein “the [GUI] window of the web browser has
`
`traditional controls for enabling a user to specify a network location at which content
`
`is available for presentation in its frame.” Id., 426 (emphasis added).
`
`5
`
`

`

`The applicant then argued:
`
`“At least because the web browser interface has a frame with controls
`that enable a user to specify a [URL], the web browser does not teach
`the [NIM] recited in the claims. At least because the [GUI] of the
`application that is shown within the web browser is not presented
`outside of and separate from any other [GUI] of an application
`(e.g., the [GUI] of the web browser), the application shown within the
`web browser does not teach or suggest the [NIM] recited in the claims.”
`
`Id., 427 (emphasis added). Thus, the applicant differentiated Doyle because although
`
`the NIM GUI in Doyle was a “separate” or distinct GUI from the browser GUI, it
`6
`
`

`

`was still displayed “within,” i.e., not “outside,” the boundaries of the browser GUI.
`
`And because the browser GUI (claimed “other [GUI]”) included controls for
`
`specifying a URL for the content, Doyle did not meet the claim limitation.
`
`The file history of the parent application of the ’407 Patent also provides
`
`guidance. Sightsound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir.
`
`2015) (“Where multiple patents ‘derive from the same parent application and share
`
`many common terms, we must interpret the claims consistently across all asserted
`
`patents.’”) (citation omitted). Specifically, during prosecution of Application No.
`
`09/558,925, the applicant added a limitation requiring “the visual manifestation of
`
`the first Internet content [e.g., a GUI] is displayed independently from any window
`
`of a dedicated Web browser program including native web navigation control
`
`features.” EX1011, 3. This limitation was added to overcome a rejection based on
`
`Doyle, which disclosed a GUI “displayed in the view rendered by the web browser.”
`
`Id., 20. Thus, according to the applicant, although the GUI in Doyle was a “separate
`
`client application,” it was not “displayed independently from any window of a
`
`dedicated Web browser program.” Id., 20-21 (emphasis added).
`
`Based on these file histories, a POSA would understand that if the display
`
`contains “any [GUI] of any other application,” then the “viewer [GUI]” defined by
`
`the NIM template must meet two conditions: first, it must be presented as a “distinct”
`
`GUI from the “[GUI] of any other application,” i.e., it must be “separate from” the
`
`7
`
`

`

`other GUI; and second, it must not be presented “within the frame of” the “[GUI] of
`
`any other application,” i.e., it must be “outside of” the other GUI. Madisetti, ¶¶57-
`
`63.
`
`Level of Ordinary Skill
`D.
`For purposes of this IPR, a POSA 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 of corresponding work experience. Madisetti, ¶44.
`
`III. OVERVIEW OF THE PRIOR ART
`A.
`USPN 5,919,247 to Hoff
`Hoff was filed on July 24, 1996 and qualifies as prior art under 35 U.S.C. §
`
`102(e). Assigned to Marimba, Inc., Hoff discloses distributing the infrastructure for
`
`Marimba’s Castanet platform. Specifically, Hoff discloses distributing software
`
`“applications in a user-friendly, scaleable, secure, and seamless way, which enables
`
`the monitoring and personalization of applications, across a network such as the
`
`Internet.” Hoff, Abstract, 2:38-41.
`
`Hoff discloses three elements forming the Castanet platform: (1) a tuner; (2) a
`
`transmitter; and (3) a channel. Hoff, 1:54-67. The “tuner” on the client is used to
`
`download “channels” stored on a “transmitter” at a server. Id. These channels can be
`
`any “software application” developed by “content providers.” Id., 1:54-67; 4:8-10,
`
`19-24. When the user subscribes to a channel, a request is made from the tuner to
`
`the transmitter. Id., 3:1-10; 4:37-47. In response, the transmitter sends the channel,
`8
`
`

`

`which is then stored on the client device, over the Internet. Id., 4:47-51. Once a
`
`channel is downloaded and installed on the client, it can be executed as a “normal
`
`application” to provide internet content to a user. Id., 1:54-67, 4:51-57.
`
`B.
`Berg
`Berg published January 1, 1998 and qualifies as prior art under 35 U.S.C. §
`
`102(b). EX1005, ¶¶2-3. Berg discloses using Marimba’s Castanet—the “Java-
`
`centric (but not limited to Java) push technology”—to distribute content. Berg, 1.
`
`Berg distinguishes the Castanet “application” from a browser, noting that unlike
`
`browsers, Castanet is an “application that installs and deploys to run on demand”
`
`and allows for “full-featured client applications…regardless of whether or not they
`
`traverse the Internet.” Id.
`
`Like Hoff, Berg discloses Castanet involves a client “tuner,” a server
`
`“transmitter,” and “channels.” Berg, 2. Like Hoff, “channels” are published on a
`
`transmitter, and a tuner is used to “subscribe to any number of channels on any
`
`number of transmitters.” Like the ’407 Patent’s GUIs, “unlike a browser,…channels
`
`[developed by content providers] construct their own frames if and when they need
`
`them.” Id. Castanet allows an application to do “all the things a traditional installed
`
`application would do, including…accessing any host on the network.” Id.
`
`Berg discloses a HotJavaBean component, which is an HTML renderer, used
`
`in a Castanet channel to render full “style-sheets, applets, and frames” in a GUI, such
`
`9
`
`

`

`that “by deploying an application via Castanet, you do not have to forego the web
`
`capabilities of a browser.” Id., 3. Though the display or content is not limited by the
`
`boundaries of a browser—it is presented in the customized GUI. Id. Berg discloses
`
`the channel application contains parameters defining a GUI, such as the size of the
`
`GUI. Id., 2, 4, 6. The channel application can display a web page or other content
`
`accessed over a network in a “viewing window [within the GUI, which] can be
`
`placed anywhere within the Java application, just like any other component.” Id., 3.
`
`For example, Berg discloses an exemplary channel—BigCorporateApp—as a Java
`
`application that can be downloaded to a client. Id., 3-5. When the user initiates that
`
`channel, the application opens a customized GUI and presents the user with a menu
`
`selection of three URLs. Id. Once the user selects a URL, the application fetches that
`
`webpage over the Internet via the corresponding address and displays the webpage
`
`within a portion of the GUI. Id.
`
`USPN 6,401,134 to Razavi
`C.
`Razavi was filed on July 25, 1997 and qualifies as prior art under 35 U.S.C. §
`
`102(e). Razavi discloses “detaching Java applets from the constraints of the
`
`application such as a browser.” Razavi, Abstract. The disclosed applets run “without
`
`regard to the graphical interface limits of the [browser] application.” Id.
`
`Razavi discloses conventional applets presented in a browser were constrained
`
`by “a window size that the applet must execute within.” Razavi, 1:35-44. As an
`
`10
`
`

`

`example, Razavi noted a user may desire to stream an audio applet that plays content
`
`from a remote source. Id., 1:45-67. Thus, Razavi provided a method to “detach Java
`
`applets from the constraints of the application so that they can be GUI-controlled
`
`directly” and “not be limited by the state of the [browser] application in which the
`
`applets are spawned”—a browser. Id., 3:5-10.
`
`Razavi discloses code for a Jukebox applet in Appendix A (11:1-22:672) as a
`
`“detachable” applet. Razavi, 4:18-25. Razavi defines “detachable” as:
`
`[T]he ability of an applet to become free of GUI constraints imposed
`upon it by the application that spawned the applet. ‘Detachability’
`implies that the applet is capable of being manipulated in a [GUI] sense
`separate of the application that spawned it and can instead be
`manipulated on the desktop by interaction directly with the operating
`environment.
`Id., 4:3-10. Figure 4, below, shows a detached applet 420 on a display. The applet’s
`
`GUI is distinct from and not within the browser’s GUI.
`
`2 For ease of reference, references to the Razavi code refer to the page numbers
`
`disclosed at the top center of each page. For example, the two pages of code on
`
`Columns 11 and 12 of Razavi are referred to as Appx. A, 1 and Appx. A, 2,
`
`respectively.
`
`11
`
`

`

`Fig. 4. The applet can “run as either a standalone application or as an applet.” Id.,
`
`Appx. A, 1.
`
`USPN 5,999,941 to Anderson
`D.
`Anderson was filed on November 25, 1997 and qualifies as prior art under 35
`
`U.S.C. § 102(e). Anderson discloses a personal computer accessing a database
`
`management system, through use of an applet, to retrieve information over the
`
`Internet that is displayed through the monitor of the personal computer. Anderson,
`
`1:10-2:30, 4:25-53. For example, a Java applet running on a client computer can
`
`request stock prices from a server system over the Internet and display those prices
`
`to a user in a GUI generated by the applet. Anderson, 4:42-53.
`
`12
`
`

`

`USPN 5,983,227 to Nazem
`E.
`Nazem was filed on June 12, 1997 and qualifies as prior art under 35 U.S.C.
`
`§ 102(e). Nazem teaches HTML webpages having time-varying content, including
`
`“stock quotes, news headlines, sports scores, weather, and the like.” Nazem, 1:60-
`
`2:14, Abstract.
`
`US Pub. No. 2002/0023110 to Fortin
`F.
`Fortin is the publication of Application No. 09/012,293, which was filed on
`
`January 23, 1998 and qualifies as prior art under 35 U.S.C. § 102(e). Fortin discloses
`
`a Java application and an associated markup language file. Fortin, ¶62-64. The Java
`
`application can parse the markup language file to generate a GUI. Id., ¶63. Fortin
`
`discloses the use of the markup language file allows the generation of more advanced
`
`GUIs. Id., ¶6.
`
`IV. THE CHALLENGED CLAIMS
`[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 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
`13
`
`

`

`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
`
`interface defined by the networked information monitor, of the time-varying content
`
`received from the web server.
`
`[8]: The client computing device of claim 1, wherein the networked information
`
`14
`
`

`

`monitor template includes a markup language file.
`
`[9]: The client computing device of claim 1, wherein one or more computer program
`
`modules are configured such that the time-varying content is received from the web
`
`server over the network according to the TCP/IP protocol.
`
`[10]: The client computing device of claim 1, wherein the network location
`
`corresponds to a uniform resource locator included in the networked information
`
`monitor template.
`
`[11]: The client computing device of claim 10, wherein the one or more computer
`
`program modules are further configured such that accessing the networked
`
`information monitor defined by the networked information monitor template results
`
`in transmission of the content request to the uniform resource locator included in the
`
`networked information monitor template, and the content request being transmitted
`
`according to the TCP/IP protocol over the network.
`
`[12.Preamble]: The client computing device of claim 1, wherein the one or more
`
`computer program modules are further configured:
`
`[12.A]: to transmit, over the network to a networked information monitor
`
`server, a request for the networked information monitor temple;
`
`[12.B]: to receive from the networked information monitor server over the
`
`network, the networked information monitor template; and
`
`[12.C]: to store the networked information monitor template to the electronic
`
`15
`
`

`

`storage.
`
`[13.Preamble]: A computer-implemented method of accessing content over a
`
`network on a client computing device, the client computing device having electronic
`
`storage and one or more processors configured to execute one or more computer
`
`program modules, the client method comprising:
`
`[13.A] storing, to the electronic storage, a networked information monitor
`
`template associated with a networked information monitor, [13.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;
`
`[13.C]: accessing 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:
`
`[13.D]: transmission, over a network to a web server at a network location, of
`
`a content request for content to be displayed in the viewer graphical user interface
`
`defined by the networked information monitor template;
`
`16
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`

`[13.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;
`
`[13.F]: presentation, on the display, of the viewer graphical user interface
`
`defined by the application media package template outside of and separate from any
`
`graphical user interface of any other application; and
`
`[13.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.
`
`[20]: The method of claim 13, wherein the networked information monitor template
`
`includes a markup language file, and wherein storing the networked information
`
`monitor template comprises storing the markup language file.
`
`[21]: The method of claim 13, wherein the time-varying content is received from the
`
`web server over the network according to the TCP/IP protocol.
`
`[22]: The method of claim 13, wherein the network location corresponds to a
`
`uniform resource locator included in the networked information monitor template.
`
`[23]: The method of claim 22, wherein accessing the networked information monitor
`
`defined by the networked information monitor template results in transmission of
`
`the content request to the uniform resource locator included in the networked
`
`information monitor template, and the content request being transmitted according
`
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`to the TCP/IP protocol over the network.
`
`[24.Preamble]: The method of claim 13, further comprising:
`
`[24.A]: prior storing the networked information monitor template to the
`
`electronic storage, transmitting, over the network to a networked information
`
`monitor server, a request for the networked information monitor template; and
`
`[24.B]: receiving from the networked information monitor server over the
`
`network, the networked information monitor template.
`
`V.
`
`SUMMARY OF UNPATENTABILITY GROUNDS
`Applications capable of retrieving network content and presenting it in a
`
`configurable GUI, as generally recited in the Challenged Claims, were well known
`
`before the ’407 Patent’s priority date. Lenovo presents two grounds of
`
`unpatentability for Claims 1, 9-13, and 21-24 (of which Claims 1 and 13 are
`
`independent), and two grounds of unpatentability for dependent Claims 8 and 20
`
`(which simply add one reference to each of the grounds for the independent claims
`
`to address the additional limitation added by Claims 8 and 20).
`
`Ground 1 is based on the combination of Hoff, Berg, and Nazem and/or
`
`admitted prior art in the specification of the ’407 Patent (“APA”). Hoff and Berg
`
`describe Marimba Inc.’s Castanet system. Castanet permitted content providers to
`
`create standalone software applications—referred to as “channels”—which clients
`
`could download from a server. Each application could generate a fully configurable
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`GUI defined by that application. The application could also retrieve content over the
`
`internet and display that content within the GUI. Hoff discloses the underlying
`
`Castanet network architecture, while Berg discloses an exemplary channel (in the
`
`form of a java application) which can display a webpage within a customized GUI.
`
`Further, both Nazem and the ’407 Patent disclose it was well known for webpages
`
`to include time-varying content, such as weather, sports scores, and news
`
`information. It would have been obvious to a POSA to utilize a webpage with time-
`
`varying content in the application disclosed in Berg.
`
`Ground 3 is based on the combination of Razavi and Anderson, which teach
`
`it was well known to access Java applets through a web browser. These applets were
`
`software applications that generated GUIs populated with time-varying content
`
`retrieved over a network. Razavi discloses a Jukebox applet for streaming audio over
`
`the internet, and Anderson discloses an applet displaying an HTML document with
`
`stock prices. Although applets were conventionally displayed within browsers,
`
`Razavi discloses applets (and standalone applications) could generate fully
`
`configurable GUIs, which could be “detached” from the browser window and
`
`independently manipulated by the user on the display.
`
`Grounds 2 and 4 rely on the addition of Fortin to Ground 1 and 3, respectively,
`
`to render Claims 8 and 20 obvious. Claims 8 and 20 require the NIM template to
`
`include a markup language file. Fortin teaches that it was well known to include
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`markup language files with Java applications to create GUIs with advanced features.
`
`Therefore, it would have been obvious to a POSA to include a markup language file
`
`with the Java applets disclosed in Berg, Razavi, and Anderson to arrive at Claims 8
`
`and 20.
`
`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A.
`[GROUND 1] – Claims 1, 9-13, and 21-24 are rendered obvious by
`Hoff, in view of Berg and Nazem or Applicant Admitted Prior Art
`(“APA”)
`Claim 1 Preamble: 3
`To the extent the preamble of Claim 1 is limiting, it is disclosed by the
`
`combination of Hoff and Berg. Hoff and Berg disclose 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. See, e.g., Hoff, Abstract; Berg, 1 (disclosing that the Castanet channels can
`
`be distributed to “clients”), 2 (“workstation,” i.e., client device, “has a tuner”);
`
`Madisetti, ¶104.
`
`FIG. 1A of Hoff (annotated and reproduced below), illustrates a client system
`
`140 used to obtain content, such as the channel disclosed in Berg. Hoff, 3:31-49,
`
`3:66-4:2; Madisetti, ¶105. The client communicates with server system 110 over a
`
`3 Though the claim language is paraphrased in headings herein, the entirety of the
`
`claim language is reproduced in Section IV, above.
`
`20
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`

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`network 101. Hoff, 3:34-35.
`
`Limitation 1.A: Electronic storage of a NIM template
`Hoff and Berg disclose this limitation. Madisetti, ¶¶108-11. FIG. 1B of Hoff
`
`(annotated and reproduced below) illustrates the client device includes storage
`
`system 154 configured to store the channels 159.
`
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`The “tuner” transmits a request over a network to the “transmitter” on a server
`
`to download a channel (“NIM”). Hoff, Abstract (“When the end-user subscribes to a
`
`channel the associated code and data is downloaded to the local hard-disk[.]”), 2:45-
`
`48, 2:56-67, 3:1-5, 4:47-49. Similarly, Berg discloses the tuner is used to “subscribe
`
`to any number of channels on any number of transmitters.” Berg, 2. Each of the
`
`channels downloaded from the transmitter and stored on the client computer in Hoff
`
`and Berg include a claimed NIM template, i.e., instructions and data used to create
`
`a GUI and display content therein. Madisetti, ¶109-110.
`
`22
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`

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`Limitation 1.B: NIM template includes definition of a GUI for displaying
`time-varying content in a web browser-readable language and that lacks
`controls for manually navigating a network
`The combination of Berg and Nazem or APA discloses this limitation.
`
`Madisetti, ¶112-18. Berg discloses that the exemplary application includes a