CASE IPR2019-01278 (Patent 8,020,083 B1)
`CASE IPR2019-01279 (Patent 8,510,407 B1)
`
`Lenovo Holding Company, Inc., Lenovo (United States) Inc., and Motorola Mobility LLC,
`Petitioners,
`
`v.
`
`DoDots Licensing Solutions LLC,
`Patent Owner.
`PATENT OWNER’S DEMONSTRATIVE EXHIBITS
`
`Served: October 21, 2020 (per stipulation)
`Hearing: October 28, 2020, 1:00 PM Eastern Time (by video)
`Administrative Patent Judges: James A. Worth, Amber L. Hagy, and Sharon Fenick
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`1
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`CASE IPR2019-01279 (Patent 8,510,407 B1)
`
`Lenovo Holding Company, Inc., Lenovo (United States) Inc., and Motorola Mobility LLC,
`Petitioners,
`
`v.
`
`DoDots Licensing Solutions LLC,
`Patent Owner.
`PATENT OWNER’S DEMONSTRATIVE EXHIBITS
`
`Served: October 21, 2020 (per stipulation)
`Hearing: October 28, 2020, 1:00 PM Eastern Time (by video)
`Administrative Patent Judges: James A. Worth, Amber L. Hagy, and Sharon Fenick
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`1
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`AGENDA
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`• Burden of Proof
`• Claim Construction
`• NIM
`• Template
`• Hoff / Berg
`• Razavi / Anderson
`• Dependent Claims 8 & 20 (‘407 Patent)
`• Objective Indicia
`• Secret Art
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`BURDEN OF PROOF
`
`• Petitioners have the burden
`• Petitioners are bound by the arguments set forth in the Petition
`• Petitioners cannot switch theories mid-stream
`• Burden never shifts to the Patent Owner to prove non-obviousness
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`BURDEN OF PROOF
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`“As we embark on the next wave of technological and industrial
`revolutions, we must ensure that we continue to have a robust IP system,
`with rights that are reliable, predictable, and meaningfully enforceable.
`This is, in fact, more important now than ever.
`- DIRECTOR ANDREI IANCU”
`
`USPTO Website (https://www.uspto.gov/) (bold in original).
`Patent Owner’s Response (‘407 Patent) at 3-4.
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`CLAIM CONSTRUCTION (NIM)
`
`The parties 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.
`
`Petitioners’ Reply (‘083 Patent) at 2-3; Petitioner’s Reply (‘407 Patent) at 2.
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`CLAIM CONSTRUCTION (TEMPLATE)
`
`Templates are data structures, not executable code, as explained in
`great detail by Dr. Sacerdoti.
`
`Patent Owner’s Response (‘083 Patent) at 7-9; Patent Owner’s Response (‘407 Patent) at 8-9.
`Patent Owner’s Sur-reply (‘083 Patent) at 3-7; Patent Owner’s Sur-reply (‘407 Patent) at 3-7.
`
`Dr. Madisetti’s declaration with the Petition was silent as to the
`distinction between templates and executable code.
`
`No rebuttal declaration from Dr. Madisetti.
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`CLAIM CONSTRUCTION (TEMPLATE)
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`Plain and ordinary meaning of “template” bolsters the view that the
`“NIM template” is a data structure not an executable program
`
`Patent Owner’s Response (‘083 Patent) at 7-8 (citing Sacerdoti Decl., ¶¶ 38-45)
`Patent Owner’s Response (‘407 Patent) at 8 (citing Sacerdoti Decl., ¶¶ 29-36)
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`CLAIM CONSTRUCTION (TEMPLATE)
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`“FIG 13. illustrates a data structure for a NIM definition, stored in the
`NIM application server’s template database or user profile database.”
`
`‘407 Patent (Ex. 1001) at 3:63-65 (emphasis added).
`Patent Owner’s Response (‘407 Patent) at 8; Patent Owner’s Sur-reply (‘083 Patent) at 3.
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`CLAIM CONSTRUCTION (TEMPLATE)
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`“NIMs are extremely flexible, because the definition of the NIM is
`content, rather than compiled code.”
`
`‘407 Patent (Ex. 1001) at 21:48-50.
`Patent Owner’s Response (‘407 Patent) at 8.
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`CLAIM CONSTRUCTION (TEMPLATE)
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`“NIMs allow a developer to provide an application feel without
`developing custom client applications.”
`
`‘407 Patent (Ex. 1001) at 26:38-40 (emphasis added).
`Patent Owner’s Response (‘083 Patent) at 4; Patent Owner’s Response (‘407 Patent) at 6.
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`CLAIM CONSTRUCTION (TEMPLATE)
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`Templates hold “definitions,” which cannot be executable compiled
`code.
`
`Sacerdoti Decl. (‘083 Patent), ¶¶ 52-53; Sacerdoti Decl. (‘407 Patent), ¶¶ 43-44.
`Patent Owner’s Sur-reply (‘083 Patent) at 7; Patent Owner’s Sur-reply (‘407 Patent) at 6-7.
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`CLAIM CONSTRUCTION (TEMPLATE)
`
`Every reference to NIM templates is consistent that they are data
`structures not compiled code.
`
`Patent Owner’s Sur-reply (‘083 Patent) at 3-6; Patent Owner’s Sur-reply (‘407 Patent) at 3-6.
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`CLAIM CONSTRUCTION (TEMPLATE)
`
`Patent Owner’s construction would not exclude any disclosed
`embodiments.
`
`The “second executable module” is not a template.
`
`The “NIM definition modules” are not executable code.
`
`Supp. Sacerdoti Decl. (‘083 Patent), ¶¶ 13-14; Supp. Sacerdoti Decl. (‘407 Patent), ¶¶ 12-14.
`Patent Owner’s Sur-reply (‘083 Patent) at 5; Patent Owner’s Sur-reply (‘407 Patent) at 4-5.
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`CLAIM CONSTRUCTION (TEMPLATE)
`Patent Owner’s construction is not inconsistent with the claims of the
`‘083 Patent, which use the words “execute” and “instructions."
`
`No expert declaration on this point from Petitioners.
`
`As Dr. Sacerdoti explains:
`“Because a template is a data structure, not an executable
`program, one of skill in the art would understand that
`‘execute’/‘executing’ a template as used in the claims means ‘use/
`using the information from the NIM template in connection with
`specified operations.’ In this sense, a template can be ‘executed’
`even though it is not itself an ‘executable program.’ In other words,
`‘execute' used with respect to a template does not have the same
`meaning as ‘execute' used with respect to an application.”
`
`Sacerdoti Decl. (‘083 Patent), ¶ 66.
`Patent Owner’s Response (‘083 Patent) at 8-9; Patent Owner’s Sur-reply (‘083 Patent) at 3-4.
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`14
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`CLAIM CONSTRUCTION (TEMPLATE)
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`For the same reasons, Patent Owner’s construction is not inconsistent
`with it’s statements during prosecution of a related patent application
`that uses the word “execute.”
`
`No expert declaration on this point from Petitioners.
`
`Patent Owner’s Sur-reply (‘407 Patent) at 5.
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`CLAIM CONSTRUCTION (TEMPLATE)
`
`Patent Owner’s infringement contentions are consistent with its
`proffered construction, as the accused apps involve the downloading of
`templates that are data structures.
`
`An “app” is not the same thing as an “applet” or “application.”
`
`Patent Owner’s Sur-reply (‘083 Patent) at 6; Patent Owner’s Sur-reply (‘407 Patent) at 6.
`Supp. Sacerdoti Decl. (‘083 Patent), ¶ 15; Supp. Sacerdoti Decl. (‘407 Patent), ¶ 15.
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`Petitioners have submitted no evidence in support of their argument.
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`CLAIM CONSTRUCTION (TEMPLATE)
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`Any doubt regarding proper construction should be resolved in a
`manner that preserves the validity of the claims.
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005) (en banc).
`Patent Owner’s Sur-reply (‘083 Patent) at 7; Patent Owner’s Sur-reply (‘407 Patent) at 7.
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`17
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`CLAIM CONSTRUCTION (TEMPLATE)
`
`Proper construction:
`
`A “NIM Template” is a data structure that defines the characteristics of
`a specific NIM.
`
`Patent Owner’s Response (‘083 Patent) at 8; Patent Owner’s Response (‘407 Patent) at 9;
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`18
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`HOFF / BERG : HOFF IS ABOUT APPLICATIONS
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`The invention of Hoff “consists of a system and method for the large
`scale distribution of application code and data. The system consists of
`a client-side component, which the user uses to download applications,
`as well as a server-side component, which is used by a content provider
`or developer to make applications available for distribution. The
`system allows for the automatic updating, personalization, and usage
`monitoring of applications. In addition, it is possible to use the
`application even when the host computer is not always connected to
`the network.”
`
`Hoff (Ex. 1004) at 2:43-53 (emphasis added).
`Patent Owner’s Response (‘083 Patent) at 10; Patent Owner’s Response (‘407 Patent) at 10.
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`HOFF / BERG : HOFF IS ABOUT APPLICATIONS
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`Petitioners’ Reply concedes that Hoff pertains to downloading applications
`(executable code).
`
`Petitioners’ Reply (‘083 Patent) at 9; Petitioners’ Reply (‘407 Patent) at 10.
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`20
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`HOFF / BERG : BERG IS CUMULATIVE OF HOFF
`
`The Berg article does not describe anything novel and merely purports
`to illustrate the capabilities of the Castanet system created by
`Hoff. Berg (Exhibit 1007) at 1 (“I’ll examine how to create a signed
`Castanet channel for distributing signed and trustworthy content to
`users.) (emphasis added); id. at 3 (“My demonstration program is a
`Castanet channel....”) (emphasis added).
`
`Patent Owner’s Response (‘083 Patent) at 11-12; Patent Owner’s Response (‘407 Patent) at 12.
`
`Petitioners’ Reply briefs do not attempt to rebut this point.
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`HOFF / BERG : BERG’S STATUS
`
`The Board properly struck the supplemental evidence that Petitioners
`submitted on the question of whether Berg qualifies as prior art.
`
`Although Patent Owner did not raise the issue in its Patent Owner’s
`Response, that does not relieve Petitioners of their burden.
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`HOFF / BERG : DR. SACERDOTI’S TESTIMONY UNREBUTTED
`
`Dr. Sacerdoti explained why Hoff / Berg does not invalidate Claim 1.
`
`Petitioners did not submit a rebuttal declaration from Dr. Madisetti.
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`RAZAVI / ANDERSON: “APPLETS”
`
`Razavi’s invention is a method and system “for detaching Java applets
`from the constraints of the application which provides the Java virtual
`machine for executing those applets.”
`
`Razavi at 3:13-15 (emphasis added).
`Patent Owner’s Response (‘083 Patent) at 13; Patent Owner’s Response (‘407 Patent) at 13.
`
`Anderson’s invention likewise is about Java applets.
`
`Patent Owner’s Response (‘083 Patent) at 13; Patent Owner’s Response (‘407 Patent) at 14.
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`APPLETS ARE PROGRAMS (EXECUTABLE CODE)
`
`“Applets and applications were known in the art to be executable
`code.”
`
`Sacerdoti Decl. (‘083 Patent), ¶ 89; Sacerdoti Decl. (‘407 Patent), ¶ 83.
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`RAZAVI / ANDERSON: DR. SACERDOTI’S TESTIMONY UNREBUTTED
`
`Dr. Sacerdoti explained why there was no motivation to combine these
`references and why even if combined they don’t invalidate Claim 1.
`
`Patent Owner’s Response (‘083 Patent) at 13; Patent Owner’s Response (‘407 Patent) at 14.
`
`Petitioners did not submit a rebuttal declaration from Dr. Madisetti.
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`DEPENDENT CLAIMS 8 & 20 (‘407 PATENT)
`
`Petitioners submitted no evidence that having a markup language file
`associated with an application is the same as having a markup language
`file included in a data structure.
`
`Patent Owner’s Response (‘407 Patent) at 14-15; Sacerdoti Decl. (‘407 Patent), ¶¶ 96-97.
`
`Petitioners’ Reply did not rebut Patent Owner’s argument and
`evidence.
`
`Patent Owner’s Sur-reply (‘407 Patent) at 9.
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`OBJECTIVE INDICIA
`
`Supreme Court has emphasized the importance of the objective indicia
`in an obviousness analysis.
`
`Objective indicia help guard against hindsight and “the temptation to
`read into the prior art the teachings of the invention in issue.”
`
`Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
`Patent Owner’s Sur-reply (‘083 Patent) at 10; Patent Owner’s Sur-reply (‘407 Patent) at 10.
`
`Factfinders should consider “the distortion caused by hindsight bias”
`and “be cautious of arguments reliant upon ex post reasoning.”
`
`KSR International Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
`Patent Owner’s Sur-reply (‘083 Patent) at 11; Patent Owner’s Sur-reply (‘407 Patent) at 10-11.
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`OBJECTIVE INDICIA
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`Objective indicia “may often be the most probative and cogent
`evidence in the record.”
`
`Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed Cir. 1983).
`Patent Owner’s Sur-reply (‘083 Patent) at 11; Patent Owner’s Sur-reply (‘407 Patent) at 11.
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`OBJECTIVE INDICIA
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`The Supreme Court made clear in Graham that the list of objective
`indicia is flexible and open ended:
`
`“Such secondary considerations as commercial success, long felt but
`unsolved needs, failure of others, etc., might be utilized to give light to
`the circumstances surrounding the origin of the subject matter sought
`to be patented.”
`
`Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966) (emphasis added).
`Patent Owner’s Sur-reply (‘083 Patent) at 11; Patent Owner’s Sur-reply (‘407 Patent) at 11.
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`OBJECTIVE INDICIA
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`• Patent Owner submitted evidence of commercial success.
`
`• Petitioners presented no evidence of contemporaneous invention or
`independent development.
`
`• The Patent Examiner for the ‘083 Patent expressly considered
`Petitioners’ main references and did not find that they rendered the
`claims obvious.
`
`Patent Owner’s Response (‘083 Patent) at 14-15; Patent Owner’s Response (’407 Patent) at 15-16.
`Patent Owner’s Sur-reply (‘083 Patent) at 9-12; Patent Owner’s Sur-reply (‘407 Patent) at 9-12.
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`OBJECTIVE INDICIA: NO EVIDENCE FROM PETITIONERS
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`Dr. Madisetti did not address objective indicia in his declaration.
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`32
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`SECRET ART
`
`Patent Owner respectfully submits that a change in the law relating to
`“secret art” is warranted as it relates to unpublished patents and
`patent applications. The same “public accessibility” standard
`applicable to printed publications should apply.
`
`Hoff, Razavi and Anderson are patents that each were published only
`after the critical date for the ‘545 Patent (April 26, 1999), as those
`patents were issued on July 6, 1999, June 4, 2002 and December 7,
`1999, respectively.
`
`Patent Owner’s Response (‘083 Patent) at 15-16; Patent Owner’s Response (‘407 Patent) at 16-17.
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`CONCLUSION
`
`Thank you.
`
`Perry Goldberg
`
`Lewis E. Hudnell III
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