UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LENOVO HOLDING COMPANY, INC.,
`LENOVO (UNITED STATES) INC.,
`MOTOROLA MOBILITY LLC
`
`Petitioners
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC
`
`Patent Owner
`
`Case IPR2019-01279
`Patent No. 8,510,407
`
`PETITIONERS’ REPLY
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LENOVO HOLDING COMPANY, INC.,
`LENOVO (UNITED STATES) INC.,
`MOTOROLA MOBILITY LLC
`
`Petitioners
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC
`
`Patent Owner
`
`Case IPR2019-01279
`Patent No. 8,510,407
`
`PETITIONERS’ REPLY
`
`
`
`IV.
`
`V.
`
`VI.
`
`I.
`II.
`III.
`
`INTRODUCTION ........................................................................................... 1
`CLAIM CONSTRUCTION ............................................................................ 2
`THE COMBINATION OF HOFF, BERG & Nazem or admitted
`prior art ............................................................................................................ 9
`A.
`Hoff and Berg Disclose the NIM template ............................................ 9
`B.
`Berg is Prior Art .................................................................................. 11
`THE COMBINATION OF RAZAVI & ANDERSON RENDERS
`THE CLAIMS OBVIOUS ............................................................................. 13
`A.
`Razavi and Anderson Disclose the NIM template .............................. 13
`B.
`One of Skill in the Art Would Have Combined Razavi and
`Anderson .............................................................................................. 14
`PATENT OWNER DOES NOT SEPARATELY ARGUE THE
`DEPENDENT CLAIMS ................................................................................ 15
`PATENT OWNER’S EVIDENCE OF SECONDARY
`CONSIDERATIONS IS UNAVAILING ...................................................... 16
`A.
`Patent Owner Failed to Show Commercial Success ........................... 17
`B.
`Patent Owner Also Failed to Show the Requisite Nexus .................... 19
`VII. PATENT OWNER’S REMAINING ARGUMENTS ARE EITHER
`MOOT OR IRRELEVANT ........................................................................... 20
`A.
`Institution of this Proceeding Rendered Patent Owner’s
`Argument Regarding Discretionary Denial Moot ............................... 21
`Patent Owner’s Complaints Regarding “Secret Prior Art”
`Cannot be Adjudicated by the Board .................................................. 22
`
`TABLE OF CONTENTS
`
`B.
`
`ii
`
`
`
`VIII. CONCLUSION .............................................................................................. 22
`CERTIFICATE OF SERVICE ................................................................................ 23
`CERTIFICATE OF WORD COUNT ...................................................................... 24
`
`iii
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
` Invitrogen Corp. v. Biocrest Mfg., L.P.,
`327 F.3d 1364 (Fed. Cir. 2003) ............................................................................ 5
`Amazon.com, Inc. v. Barnesandnoble.com, Inc.,
`239 F.3d 1343 (Fed. Cir. 2001) ............................................................................ 9
`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003) ............................................................................ 9
`In re Applied Materials, Inc.,
`692 F.3d 1289 (Fed. Cir. 2012) .......................................................................... 18
`Atlanta Gas Light Company v. Bennett Regulator Guards, Inc.,
`IPR2015-00826, Paper 31 ..................................................................................... 9
`In re Baxter Travenol Labs.,
`952 F.2d 388 (Fed. Cir. 1991) ............................................................................ 18
`Brand Mgmt, Inc. v. Menard, Inc.,
`No. 97-1329, 1998 WL 15241 (Fed. Cir. Jan. 14, 1998) .................................... 17
`In re Huang,
`100 F.3d 135 (Fed. Cir. 1996) ............................................................................ 18
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
`381 F.3d 1111 (Fed. Cir. 2004) ............................................................................ 4
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 15
`Kyocera Wireless Corp. v. ITC,
`545 F.3d 1340 (Fed. Cir. 2008) .......................................................................... 12
`Lenovo, et al. v. DoDots Licensing Solutions,
`IPR2019-00988, Paper 15 ............................................................................. 11, 12
`Omega Eng’g, Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003) ............................................................................ 7
`iv
`
`
`
`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed. Cir. 2006) .......................................................................... 19
`Palo Alto Networks, Inc. v. Finjan, Inc.,
`IPR2015-01979, Paper 62 ................................................................................... 13
`Solder Removal Co. v. U.S. ITC,
`582 F.2d 628 (C.C.P.A. 1978) ............................................................................ 20
`Telefonaktiebolaget LM Ericsson v. TCL Corp.,
`941 F.3d 1341 (Fed. Cir. 2019) .......................................................................... 12
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ............................................................................ 3
`
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling
`USA, Inc.,
`699 F.3d 1340 (Fed. Cir. 2012) .......................................................................... 16
`Verizon Servs. Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007) ............................................................................ 5
`Statutes
`35 U.S.C. § 314(d) ................................................................................................... 21
`35 U.S.C. § 325(d) ................................................................................................... 21
`
`v
`
`
`
`Exhibit No.
`EX1001
`
`EX1002
`EX1003
`EX1004
`EX1005
`EX1006
`EX1007
`EX1008
`EX1009
`
`EX1010
`EX1011
`EX1012
`EX1013
`
`EX1014
`
`EX1015
`
`EX1016
`
`SUPPLEMENTAL EXHIBIT LIST
`
`Description
`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 Publication No. 2002-0023110 (“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 for U.S. Patent App. No. 09/558,925
`U.S. Patent No. 5,999,941 (“Anderson”)
`U.S. Patent No. 8,020,083 to Kembel, et al. (the “’083
`Patent”)
`U.S. Patent No. 10,492,041 to Sarris, et al. (“the ’041
`patent”)
`DoDots Licensing Solutions LLC v. Lenovo Holding
`Company, Inc. et al, DDE-1-18-cv-00098, Second Amended
`Complaint dated January 9, 2019
`Prosecution History of App. No. 13/215,874, Response to
`
`vi
`
`
`
`EX1017
`EX1018
`
`EX1019
`
`EX1020
`
`Office Action dated August 23, 2013
`Declaration of Catherine Vassilkova
`Internet Archive Page Showing Library of Congress
`Catalog as of January 20, 1998
`July 30, 2020 Deposition of Earl Sacerdoti, Rough
`Transcript
`July 31, 2020 Deposition of Rakesh Ramde, Rough
`Transcript
`
`vii
`
`
`
`I.
`
`INTRODUCTION
`The challenged claims of the ’407 Patent are unpatentable. Patent Owner’s
`
`arguments to the contrary rely on an improperly narrow construction of the term
`
`Networked Information Monitor (“NIM”) template. But Patent Owner’s proffered
`
`construction has no support in the record and violates well-settled law. In fact, Patent
`
`Owner’s arguments in prosecution of related applications and in parallel district court
`
`litigation directly contradict the claim construction it advances here, and its
`
`construction should be rejected.
`
`When the plain and ordinary meaning of NIM template is applied, the remainder
`
`of Patent Owner’s substantive arguments collapse. Both asserted prior art
`
`combinations teach all of the limitations of the claims, including the NIM template—
`
`the only limitation Patent Owner contests. And one of skill in the art would have had
`
`ample motivation to make the asserted combinations.
`
`Patent Owner attempts to overcome the strong case of obviousness presented in
`
`the petition by relying on evidence of secondary considerations. But the only evidence
`
`presented–the testimony of an admittedly interested witness–fails to tie any novel
`
`feature of the claim to the purported commercial success of the now-failed company.
`
`Accordingly, this alleged evidence (that should be afforded no weight) when
`
`considered along with the asserted prior art grounds fails to overcome the clear
`
`showing of obviousness.
`
`Each challenged claim is obvious and should be cancelled.
`
`1
`
`
`
`II.
`
`CLAIM CONSTRUCTION
`Petitioners and Patent Owner agree that the NIM and NIM template recited in
`
`the claims are distinct elements. The parties also agree that the specification defines a
`
`NIM as “a fully configurable frame with one or more controls” through which content
`
`is presented to the user. ’407 Patent (Ex. 1001), at 2:59-61; 5:18-29. In other words,
`
`the NIM is the viewer or graphical user interface (“GUI”) that is displayed to the user.
`
`The parties, however, dispute the construction of the term NIM template.
`
`Patent Owner attempts to construe NIM template narrowly as “a data structure
`
`that defines the NIM; it is not the NIM and it is not an executable program (i.e.,
`
`compiled code).” Response, at 8; see also Response, at 5 (“NIM templates are ‘data
`
`structures,’ not applications”). But Patent Owner’s proposed construction should be
`
`rejected because contrary to its assertion, the ’407 Patent does not define the term
`
`“NIM template.” In addition, Patent Owner’s proposed construction improperly
`
`imports limitations from some examples described in the specification while excluding
`
`others. Further, Patent Owner’s own statements during prosecution of a related
`
`application and in litigation directly contradict its narrow interpretation of NIM
`
`template.
`
`First, while Patent Owner asserts that patentee acted as its own lexicographer in
`
`defining NIM template (Response, at 7), nothing in the claims or specification limits a
`
`NIM template to a data structure excluding an executable program, as Patent Owner
`
`2
`
`
`
`proposes.1 Unlike the term “NIM,” the ’407 Patent never sets out an explicit definition
`
`of “NIM template.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365
`
`(Fed. Cir. 2012) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
`
`(Fed. Cir. 2002) (“To act as its own lexicographer, a patentee must ‘clearly set forth a
`
`definition of the disputed claim term’ other than its plain and ordinary meaning.”).
`
`Instead, it describes in primarily functional terms various non-limiting examples of
`
`NIM templates. For example, Patent Owner relies on the specification’s partial
`
`description of Figure 13. Response at 8; Sacerdoti Decl. (Ex. 2001), ¶¶ 20-36 (citing
`
`’407 Patent (Ex. 1001), at 21:48-50). While the ’407 Patent describes Figure 13 as “a
`
`data structure for a NIM definition” (Id., at Col 21:32-33), the figure is merely a
`
`bulleted list of attributes and connotes no particular structure rather than “clearly
`
`set[ting] forth a definition of the disputed claim term.” Thorner, 669 F.3d at 1365:
`
`1 In fact, the specification provides an example in which the NIM template is
`
`executable code. See infra, at pp. 5-6.
`
`3
`
`
`
`’407 Patent (Ex. 1001), at 17. Further, the immediately preceding sentence in the
`
`specification confirms that Figure 13 and the accompanying portion of the
`
`specification merely describe a non-limiting example:
`
`In one embodiment, the NIM definitions are defined using Extensible
`Markup Language (XML), so that the NIM as a whole—the frame and the
`content within the viewer is advantageously as flexible as standard web
`content. NIMs are extremely flexible, because the definition of the NIM is
`content, rather than compiled code.
`
`’407 Patent (Ex. 1001), at 21:45-50. As the Federal Circuit has made clear, this
`
`particular embodiment that describes implementing a NIM template as XML rather
`
`than complied code is insufficient to limit NIM template to exclude compiled code.
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117
`
`(Fed. Cir. 2004) (“particular embodiments appearing in the written description will not
`
`be used to limit claim language that has broader effect.”).
`
`To further support its attempt to narrow the NIM template according to this
`
`single example, Patent Owner relies on another example in the specification described
`
`in relation to Figure 22: “The NIM definition is therefore fairly small in size (-2K), and
`
`is therefore easily distributable as an XML file or Blob (binary large object)....” ’407
`
`Patent (Ex. 1001), at 33:59-61. But this example also fails to support Patent Owner’s
`
`narrow construction as the example includes not only an XML file but also a binary
`
`large object, which might contain any binary content, including executable code.
`
`4
`
`
`
`Consequently, nothing in the ‘407 Patent limits the structure of the NIM template as
`
`Patent Owner proposes.
`
`Second, Patent Owner’s construction should also be rejected because it attempts
`
`to exclude disclosed embodiments that describe NIM templates that are executables,
`
`and by excluding these embodiments is in direct violation of well-settled claim
`
`construction principles. See, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503
`
`F.3d 1295, 1305 (Fed. Cir. 2007) (rejecting proposed claim interpretation that would
`
`exclude disclosed examples in the specification); Invitrogen Corp. v. Biocrest Mfg.,
`
`L.P., 327 F.3d 1364, 1369 (Fed. Cir. 2003) (finding district court's claim construction
`
`erroneously excluded an embodiment described in an example in the specification,
`
`where the prosecution history showed no such disavowal of claim scope). The
`
`specification includes at least two examples of NIM templates that are executable
`
`code, both of which the specification refers to as “modules.”
`
`In a first example, the specification describes a “second executable module” as a
`
`NIM template. As noted above, a NIM is “a fully configurable frame”, and the
`
`Summary of the Invention describes “[a] second executable module defines a NIM
`
`frame for the NIM using the definition.” See ’407 Patent (Ex. 1001) at 3:8-
`
`10(emphasis added). Since the “second executable module” defines a NIM frame, the
`
`“second executable module” is a NIM template under its plain and ordinary meaning.
`
`In a second example, the specification describes additional modules that define a
`
`NIM, i.e., modules that are NIM templates. The specification describes these NIM
`
`5
`
`
`
`templates as “NIM definition modules”: “Each Share Module 488 may also include a
`
`creation date 490, multiple 30 individual [NIM] definition modules 492, or multiple
`
`packs of NIMs that have been shared (Sharepack module 494) containing multiple
`
`NIM definition modules 496 and 498.” Id., at 34:11-15 (emphasis added). The
`
`specification makes clear that these modules are executable code as distinct from data.
`
`For example, the specification notes, “[i]n various embodiments, in accordance with
`
`the present invention, client parser application 38 runs in conjunction with one or more
`
`software modules.” Id., at 6:1-3 (emphasis added). Further, “[w]eb server 58 has many
`
`components, including a variety of modules and data structures to assist users that
`
`want to log into system 10.” Id., at 6:25-27 (emphasis added). Thus, contrary to Patent
`
`Owner’s assertions, the specification contemplates a NIM template in the form of
`
`executable code.
`
`At his deposition, Patent Owner’s expert confirmed that a person of ordinary
`
`skill in the art would understand that “[a] module would be a chunk of code” and that
`
`an “executable module” is “executable computer code.” (Ex. 1019 (July 30, 2020
`
`Deposition of Earl Sacerdoti, Rough Transcript) at 69:22-70:13). Patent Owner’s
`
`expert further explained during his deposition that source code may be executed on a
`
`computer without being compiled into machine language or, in some cases, without
`
`being compiled at all. Ex. 1019 (Sacerdoti Depo.) at 17:24-18:10, 18:18-20:25.
`
`(Explaining that Java is not compiled into machine code and browsers are able to
`
`execute interpreted languages, such as JavaScript, directly from the source code
`
`6
`
`
`
`without compiling.). Thus, even if Patent Owner attempt to exclude “compiled code”
`
`from the construction of NIM template were successful, its construction would not
`
`exclude NIM templates created using source code for languages such as Java, as in
`
`Berg, or JavaScript.
`
`Third, Patent Owner makes clear in related patents that a “NIM Template” may
`
`be executed. The Federal Circuit has explained that “we presume, unless otherwise
`
`compelled, that the same claim term in the same patent or related patents carries the
`
`same construed meaning.” See Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314,
`
`1334 (Fed. Cir. 2003). Patent Owner has not provided any justification for overcoming
`
`that presumption here.
`
`For example, the claims of U.S. Patent No. 8,020,0832 recite, “one or more
`
`processors ... execute the first networked information monitor template such that the
`
`graphical user interface of the first networked information monitor is presented to a
`
`user.” ‘083 Patent, at 48:3-6 (emphasis added).
`
`Moreover, during prosecution of other related applications, Patent Owner
`
`admitted that the NIM template can be executed, further undermining the narrow
`
`construction proposed here. The ’407 Patent is a continuation of U.S. Patent No.
`
`7,660,868 (the “’868 Patent”). As such, the ’407 and ’868 patents share essentially the
`
`same specifications. U.S. Patent Application No. 13/215,874 (the “’874 Application”)
`
`also claims priority to and shares a specification with the ’868 Patent. The ’874
`
`2 The ‘083 Patent is currently the subject of a co-pending proceeding, IPR2019-01278.
`7
`
`
`
`Application includes claims reciting “executing the first networked information
`
`monitor template,” and during prosecution, Patent Owner differentiated the claims
`
`from a prior art reference on the basis that the prior art did not “teach or suggest
`
`executing” the claimed NIM template. Ex. 1016, at 6-7 and 14. But Patent Owner takes
`
`a contrary position here. Patent Owner’s attempt to define NIM template differently
`
`among these related patents is improper and should be rejected.
`
`Fourth, Patent Owner’s assertion that an application could never be a NIM
`
`template (i.e., that a NIM template cannot be executable) is further contradicted by its
`
`infringement allegations against the Petitioners in the underlying district court action,
`
`where Patent Owner has contended that each step of Claim 1 is performed by the use
`
`of the “MSN weather app.” Ex. 1015 (Second Amended Complaint) at 6, 10-12
`
`(“Yogabook, in connection with the weather app, satisfies each limitation of Claim 1
`
`of the ‘407 patent”) (emphasis added); see also id. at 7 (“…networked information
`
`monitor template (such as, for example, the MSN Weather app/widget)…”). 3 Patent
`
`Owner’s proposed construction here thus violates a fundamental canon of claim
`
`construction: the terms of a patent may not, “like a nose of wax,” be “twisted” one way
`
`3 While Patent Owner and its expert have asserted that the terms “applications” and
`
`“apps” are somehow different, the patent that Patent Owner’s expert helped draft and
`
`prosecute makes clear the terms are synonymous. Ex. 2004, at ¶ 6; Ex. 1014, at 1:28-
`
`31 (“...applications operating on mobile devices (such as the iPhone™ Android™, and
`
`other smartphones and similar devices), sometimes called ‘mobile apps’ herein.”).
`
`8
`
`
`
`to argue patentability (in the IPR proceeding) and another to allege infringement.
`
`Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001)
`
`(citation omitted); accord Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
`
`1330 (Fed. Cir. 2003) (“It is axiomatic that claims are construed the same way for both
`
`invalidity and infringement.”); Atlanta Gas Light Company v. Bennett Regulator
`
`Guards, Inc., IPR2015-00826, Paper 31, p. 28 (PTAB August 19, 2016) (same).
`
`III. THE COMBINATION OF HOFF, BERG & NAZEM OR ADMITTED
`PRIOR ART
`A. Hoff and Berg Disclose the NIM template
`The combination of Hoff, Berg and Nazem or Admitted Prior Art discloses the
`
`claimed NIM template according to its plain and ordinary meaning. Patent Owner’s
`
`argument to the contrary relies on its improperly narrow construction of the term.
`
`Patent Owner asserts Hoff and Berg both disclose “downloading executable programs
`
`(e.g., application and applets)” and “[t]he Petition does not identify any entity distinct
`
`from the executable program as the NIM template.” Response at 10-11. And since
`
`under Patent Owner’s proposed construction, “an application cannot be a NIM
`
`template,” Hoff and Berg do not disclose a NIM template. Since this conclusion relies
`
`on a flawed construction of NIM template, it fails.
`
`Hoff discloses that the client receives the code and data (NIM template)
`
`necessary to implement a channel (NIM) from the transmitter (located on the server) in
`
`response to a request from the tuner (located on the client). Petition, at 20-25, 29-30,
`
`34-35 (citing Hoff, Abstract, 2:45-48, 2:64-66, 3:2-5, 4:49-57 (“To obtain the initial
`9
`
`
`
`channel data, tuner process 152 uses network interface 141 to send a subscribe request
`
`to transmitter process 121. Transmitter process 121 will respond with an update reply
`
`containing channel data 133 . . . . In response, tuner process 152 stores channel data
`
`1614 in storage system 154. Once the channel data is loaded, tuner process 152 can
`
`start channel application 153. Channel application 153 is the active application
`
`corresponding to a channel 159 which is executed by operating system 150 from the
`
`code stored in channel data 161.”) (emphasis added)); see also Madisetti Decl. (Ex.
`
`1003), ¶¶104-111, 118-122, 150–157, 214–216. Similarly, Berg discloses that the tuner
`
`can be used to “subscribe to any number of channels on any number of transmitters.”
`
`Petition, at 22 (citing Berg, at 2). Berg further discloses an exemplary channel
`
`application that contains parameters, such as location, size, and controls, that define a
`
`GUI. Petition at 23; Madisetti Decl. (Ex. 1003), ¶¶ 112-118. As explained by Dr.
`
`Madisetti, “because the channel applications contain instructions and data used to
`
`create a GUI and display content, such applications include the claimed NIM
`
`template.” Madisetti Decl. (Ex. 1003), ¶¶ 214-215. Thus, the combination of Hoff,
`
`Berg and Nazem or Admitted Prior Art discloses the claimed NIM template.
`
`Patent Owner provides no other arguments in relation to the disclosures of Hoff,
`
`Berg and Nazem or Admitted Prior Art, except to argue that Hoff and Berg are
`
`cumulative of the art of record and that Nazem and the Admitted Prior Art are cited
`
`4 In Hoff, the channel data is “133” when stored on the server and “161” when stored
`
`on the client system. See Hoff, 4:29-30.
`
`10
`
`
`
`only for the “time-varying content” limitation. The former argument is addressed
`
`separately in Section VII.A below. The latter argument need not be addressed because
`
`Hoff and Berg disclose the only elements Patent Owner argues are not taught in the
`
`combination. Further, Patent Owner’s expert admitted his unfamiliarity with Berg and
`
`how the source code disclosed in Berg would operate at his deposition. Ex. 1019 at
`
`79:14-80:7. Thus, Patent Owner’s expert has little basis to question Dr. Madisetti’s
`
`explanation of and conclusions regarding Berg.
`
`Thus, Claims 1, 9-13, and 21-24 are obvious over the combination of Hoff, Berg
`
`and Nazem or Admitted Prior Art and should be cancelled.
`
`B. Berg is Prior Art
`While Patent Owner does not challenge Berg’s status as prior art in this
`
`proceeding, Patent Owner did so in a related proceedings (Lenovo, et al. v. DoDots
`
`Licensing Solutions, IPR2019-00988, Paper 15, at 4), alleging without support that it
`
`was not publicly accessible.5 But a prior art reference is publicly accessible if
`
`5 Patent Owner has waived any arguments challenging the public accessibility of Berg.
`
`See IPR2019-001279, Scheduling Order, Paper 8, at 7 ("Patent Owner is cautioned that
`
`any arguments for patentability not raised in the response may be deemed waived.");
`
`see also, IPR2016-00174, Decision Denying Request for Rehearing, Paper No. 28 (Jul.
`
`25, 2017) at 3 (citing In re Nuvasive, Inc., 842 F.3d 1376, 1380 (Fed. Cir. 2016))
`
`(finding arguments not raised in a Patent Owner’s Response deemed waived even if
`
`the arguments were raised in a Preliminary Response).
`
`11
`
`
`
`“disseminated or otherwise made available to the extent that persons interested and
`
`ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate
`
`it.” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008). Here, the
`
`evidence demonstrates that Berg was publicly accessible.
`
`Mr. Berg testified that his article was publicly accessible. Berg Dec. (Ex. 1005),
`
`at ¶¶ 2-3. His testimony stands unrebutted and Patent Owner did not even request to
`
`depose Mr. Berg during the discovery period and thus has no basis on which to
`
`challenge his testimony.
`
`Moreover, a copy of the Dr. Dobbs periodical including Berg (Ex. 1009) was
`
`publicly available in the Library of Congress in Washington, D.C. as of December 4,
`
`1997. Vassilkova Dec. (Ex. 1017), ¶ 7. The version of Berg obtained by Ms.
`
`Vassilkova bears a time stamp that states “LIBRARY OF CONGRESS” and
`
`“COPYRIGHT OFFICE” and indicates the date “December 4 1997.” Id. In Ms.
`
`Vassilkova’s experience, this indicates that the stamp was applied to the document by
`
`the Library of Congress on December 4, 1997. Id., at ¶ 11. The stamped version of
`
`Berg is included as an Attachment to Ms. Vassilkova’s declaration. See id., at pp. 2-14.
`
`Thus, Berg was publicly available. Telefonaktiebolaget LM Ericsson v. TCL Corp., 941
`
`F.3d 1341, 1347 (Fed. Cir. 2019) (affirming Board decision that a journal in a library
`
`was publicly accessible).
`
`Further, one of skill in the art at the time of the alleged invention could have
`
`searched the Library of Congress holdings by subject, name, title, or word to locate
`
`12
`
`
`
`Berg. See Lib. Of Cong. Catalog (Ex. 1018). Such on-line databases provide public
`
`accessibility. Palo Alto Networks, Inc. v. Finjan, Inc., IPR2015-01979, Paper 62, p.27
`
`(PTAB March 15, 2017) (finding public accessibility when a POSITA could locate a
`
`journal through a library database and a specific article in the journal through an on-
`
`line database).
`
`Finally, Patent Owner’s expert confirmed that he, personally, was aware of Dr.
`
`Dobb’s journal at the time of the invention based on “[j]ust general knowledge of what
`
`was going on in the field at the time.” Ex. 1019 (Sacerdoti Deposition) at 78:10-21
`
`(further explaining “I don’t know if every software developer was aware of [it] but I
`
`was. That’s all I’m saying.”)
`
`Thus, Petitioners have established that Berg was publicly accessible more than
`
`one year before April 26, 1999, the earliest possible priority date of the ’407 Patent.
`
`IV. THE COMBINATION OF RAZAVI & ANDERSON RENDERS THE
`CLAIMS OBVIOUS
`A. Razavi and Anderson Disclose the NIM template
`The combination of Razavi and Anderson discloses a NIM template and renders
`
`Claims 1, 9-13, and 21-24 obvious. As with its assertion in relation to the combination
`
`of Hoff, Berg and Nazem or Admitted Prior Art, Patent Owner’s argument here relies
`
`on its improperly narrow construction of NIM template. Specifically, since Patent
`
`Owner improperly contends that a NIM template excludes an executable program, it
`
`incorrectly asserts that these references cannot disclose a NIM template because they
`
`are directed to Java applets. Response, at 13-14.
`13
`
`
`
`Razavi discloses a “Jukebox” java applet that is received by the client. Petition,
`
`at 41-47, 57-58, 61-64 (citing Razavi, at 5:51-56, 7:29-33). Similarly, Anderson
`
`discloses a stock price quoting applet displaying received stock prices in a GUI.
`
`Petition, at 46 (citing Anderson, at 6:34-40). These applets include the claimed NIM
`
`template.
`
`The applet in Razavi contains instructions and data used to create a GUI on the
`
`client and to display content within that GUI. Razavi’s source code contains
`
`parameters that define the Jukebox GUI, including, for example: “(1) selbox –
`
`selection box portion of the GUI, (2) controller – controller portion of the GUI, (3)
`
`UIPanel – frame to hold the GUI elements, (4) detachedFrame – frame to hold GUI
`
`elements when Jukebox applet is detached….” Petition, at 42 (citing Razavi, Appx. A,
`
`2). Similarly, Anderson discloses display applets and a POSITA would understand that
`
`the applets downloaded in Anderson include instructions and data defining the GUI
`
`rendered by the applet. Petition, at 46–47 (citing Anderson at 6:34-40; Madisetti Decl.
`
`(Ex. 1003), ¶ 252). Thus, at least Razavi, if not Anderson, disclose receiving a NIM
`
`template under the plain and ordinary meaning of that term.
`
`Patent Owner does not contend that any other limitation is absent from the
`
`combination; the combination discloses all elements of the claim.
`
`One of Skill in the Art Would Have Combined Razavi and Anderson
`B.
`Patent Owner baldly asserts, “as Dr. Sacerdoti explains, Petitioners are incorrect
`
`in their argument that one of ordinary skill in the art would have been motivated to
`
`14
`
`
`
`combine these two references, as they were attempted [sic] to solve different
`
`problems.” Response, at 14.
`
`As set out in the petition and supported by Dr. Madisetti’s testimony, one of
`
`skill in the art would have combined Razavi and Anderson. One rationale to support a
`
`conclusion of obviousness is the use of a known technique to improve similar devices
`
`(methods, or products) in the same way to achieve predictable results. See KSR Int’l
`
`Co. v. Teleflex Inc., 550 U.S. 398, 416-418 (2007). Razavi and Anderson disclose
`
`similar and conventional systems, Java applets that display networked content through
`
`a generated GUI. Petition, at 62–64 (citing Madisetti Decl. (Ex. 1003), ¶¶ 361–63). As
`
`explained in the Petition, one of skill in the art would have been motivated to employ
`
`the client computing device disclosed in Anderson to download and execute the
`
`detachable applets disclosed in Razavi, and because of the similarities of the two
`
`systems would have had a reasonable expectation of success in doing so. Petition, at
`
`62-64 (citing Madisetti, ¶¶ 361-63).
`
`Claims 1, 9-13, and 21-24 are obvious over the combination of Razavi and
`
`Anderson and should be cancelled.
`
`V.
`
`PATENT OWNER DOES NOT SEPARATELY ARGUE THE
`DEPENDENT CLAIMS
`Patent Owner provides no argument or analysis as to why any of the dependent
`
`claims are patentable except to argue—as to dependent claims 8 and 20—that while
`
`Fortin discloses “a Java application and an associated markup language file,” the
`
`Petition does not provide evidence that this is the same as “having a markup language
`15
`
`
`
`file included in a data structure (NIM template).” Response, at 14-15. The Petition,
`
`relying on Dr. Madisetti explains why claims 8 and 20 are invalid. Petition, at 64-67
`
`(citing Madisetti, at ¶¶ 365-370, 376, 382). Thus Petitioners have met their burden.
`
`Further, because Patent Owner failed to raise any other argument in its Response,
`
`Patent Owner has waived any separate arguments as to the patentability of the other
`
`dependent claims. Instead, they rise or fall with independent Claims 1 and 12. Thus,
`
`Petitioners’ arguments stand unrebutted. All the dependent claims are invalid and
`
`should be cancelled.
`
`VI. PATENT OWNER’S EVIDENCE OF SECONDARY CONSIDERATIONS
`IS UNAVAILING
`To demonstrate nonobviousness based on “commercial success,” Patent Owner
`
`must “show both commercial success and that a nexus exists between that success and
`
`the merits of the claimed invention.” Transocean Offshore Deepwater Drilling, Inc. v.
`
`Maersk Drilling USA, Inc., 699 F.3d 1340, 1350 (Fed
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