Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper # 36
`Entered: December 21, 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.
`__________
`
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`__________
`
`
`Record of Oral Hearing
`Held: October 28, 2020
`__________
`
`
`
`Before JAMES A. WORTH, AMBER L. HAGY, SHARON FENICK,
`Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper # 36
`Entered: December 21, 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.
`__________
`
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`__________
`
`
`Record of Oral Hearing
`Held: October 28, 2020
`__________
`
`
`
`Before JAMES A. WORTH, AMBER L. HAGY, SHARON FENICK,
`Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`JOHN C. ALEMANNI, ESQ.
`of: Kilpatrick Townsend & Stockton LLP
`4208 Six Forks Road, Suite 1400
`Raleigh, North Carolina 27609
`jalemanni@kilpatricktownsend.com
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`PERRY GOLDBERG, ESQ.
`of: Progress LLP
`11620 Wilshire Boulevard, 9th Floor
`Los Angeles, California 90025
`goldberg@progressllp.com
`
`
`
`The above-entitled matter came on for hearing on Wednesday,
`
`October 28, 2020, commencing at 1:00 p.m. EDT, via
`Video/Teleconference.
`
`
`
`
`
`2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`
`
`
`P-R-O-C-E-E-D-I-N-G-S
`
`1:02 p.m.
`JUDGE FENICK: Good afternoon, everyone. This is our
`combined hearing for Cases IPR 2019-01278 and 01279 between Petitioner,
`Lenovo Holding Company, Incorporated, Lenovo (United States)
`Incorporated, and Motorola Mobility LLC, and Patent Owner, DoDots
`Licensing Solutions LLC.
`I'm Judge Fenick and with me are Judges Worth and Hagy. I'd like
`to get the parties' appearances, if we could. From Petitioner, please?
`MR. ALEMANNI: Thank you, Your Honor. My name is John
`Alemanni with Kilpatrick Townsend on behalf of Petitioner, Lenovo.
`JUDGE FENICK: Thank you. You're coming in clearly. And
`for Patent Owner?
`MR. GOLDBERG: Hello, Your Honor. This is Perry Goldberg
`from Progress LLP for the Patent Owner, DoDots.
`JUDGE FENICK: I hear Mr. Goldberg, but I'm not seeing him.
`I'm wondering if my panel is having the same situation.
`MR. ROGERS: Hi, Judges. When counsel speaks, it may take a
`couple seconds for them to appear on video because the video follows the
`audio.
`
`So when they start speaking for a few seconds, they should appear.
`JUDGE FENICK: Okay. Thank you. I see him. I see you
`now, Mr. Goldberg. Thank you.
`MR. GOLDBERG: Okay.
`
`
`
`3
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`
`JUDGE FENICK: Welcome to everyone. It's good to have you
`here, and we appreciate that you made the effort to do this by video.
`We set forth the procedure for the hearing and the trial order, and
`we're going to hear both of these cases at the same time.
`And each of the parties will have 60 minutes to each present their
`arguments which you can divide up as you see fit.
`We do have the whole record in front of us, and we have the slides
`that you submitted yesterday.
`But just so that we have a clear record, it would be helpful if you
`could let us know what slide you're on when you're presenting or what
`exhibit or filing you're referencing and what page.
`Also, it's useful if you mute the line when you're not speaking. And
`if it's been a little while since you've last spoken, it would be helpful if you
`identify yourself for the court reporter.
`And after our time is up, we'll pause and make sure that the court
`reporter doesn't have any questions about spellings or other concerns to
`address.
`I also wanted to discuss the motion to strike that we have pending
`before us. And we're going to -- we haven't issued an order with respect to
`that. But our order will issue shortly or with our final written decision.
`And the order will indicate that we are going to grant the motion with
`respect to the supplemental declaration of Dr. Sacerdoti but not striking the
`entire sur-reply.
`I understand that the slides may have references to the supplemental
`declaration. And we'll -- as the slides are not evidence, we don't need to
`
`
`
`4
`
`
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`change them. But I'm just telling you for the sake of our argument today
`that that's what's going to be happening.
`And I think that's everything. I wonder if, Mr. Alemanni, do you
`have any questions before we begin?
`MR. ALEMANNI: No, Your Honor. I do not.
`JUDGE FENICK: Mr. Goldberg?
`MR. GOLDBERG: Yes, thank you, Your Honor. There is one
`issue which is the parties exchanged the demonstratives last week.
`And the Patent Owner provided objections to five of the slides of
`Petitioners.
`The response from the Petitioners was first they have no objections
`to the Patent Owner's slides, but they do defend the five slides that we
`objected to.
`And so there are basically three categories of objections. So the
`slides 2 and 12 contain a new argument from the Petitioners, sort of a new
`way of articulating their argument, I guess.
`And I'm not sure it's going to be a distinction with the difference or
`
`not.
`
`But it did stand out to us, and it was -- it struck me as very peculiar.
`I'm not sure where they're going with it, but we did object to them
`making a new flavor of argument on slides 2 and 12.
`On slide 7, they focus on figure 5, and that's not something that they
`ever referenced in their petition or any other papers or -- and Dr. Madisetti's
`declaration.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`5
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`
`And so the fact that figure 5 has certain components that are also
`discussed in the spec doesn't give them free reign to now focus on figure 5
`as a standalone item. That's on slide 7.
`Then the other two slides we objected to are 32 and 34 because this
`panel has already granted the Patent Owner's motion to strike with respect to
`the new evidence and argument that the Petitioners submitted relating to
`whether Berg was publicly accessible.
`And so the panel has already said no, what they were submitting is
`not appropriate because the Patent Owner did not raise that in the Patent
`Owner's response.
`And so they've, for whatever reason, decided to put the same
`information in their slides. That was 32 and 34.
`After we objected, they changed slide 34. So they put in a new
`slide in the same spot, but it's sort of for the same reason.
`Anyway, they didn't serve that in a timely fashion, so they shouldn't
`be able to put in a new slide yesterday.
`And it's clear that what they're trying to do is make some kind of
`new argument and put in some evidence about Berg's public accessibility
`after it's already been said that they shouldn't do that.
`JUDGE FENICK: Can you tell me again with respects to slides 2
`and 12 what specifically is the objection?
`MR. GOLDBERG: They talk about there's this phrase, quote-
`unquote, “include text,” which that's not the way that Patent Owner has
`argued about the template, not the way that Petitioners -- that argument has
`never been joined or made.
`
`
`
`6
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`
`So it's just sort of a new way of trying to conceptualize the dispute
`between the parties.
`And like I said, I'm not sure if it's going to end up making a
`difference or not.
`But I did want to note that it's not something that they've articulated
`previously.
`We haven't had an opportunity to delve into whether that's an
`appropriate way to articulate things.
`JUDGE FENICK: Okay. Thank you, Mr. Goldberg.
`MR. GOLDBERG: Thank you.
`JUDGE FENICK: So as I said before in the order regarding the
`motion to strike, arguments about public accessibility are -- we no longer are
`going to consider those arguments or new argumentation based on those.
`So I encourage a party -- either party to point out anything they
`consider to be new argument, like you have, Mr. Goldberg.
`And any time that is spent on them, I guess, is -- it's time we spent
`on an argument that we may not consider.
`So I'm not going to rule on the objections now, but they're in the
`record now.
`And Mr. Alemanni, I don't know if you have anything you'd like to
`say regarding these, or --
`MR. ALEMANNI: I can briefly. I don't want to waste the panel's
`
`time.
`
`The two slides -- the initial two slides I pointed Mr. Goldberg to,
`they're actually Patent Owner's arguments, Patent Owner's response.
`
`
`
`7
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`
`And I pointed him to the page and the Patent Owner's response in the
`portion of the declaration to which we're relying on.
`The figure, it's -- our expert opined on all the descriptions about the
`figure without reproducing the figure, and then we relied on that testimony.
`So I think that's fair.
`On the public accessibility, yes, I understand, Your Honor. We're
`not to argue the evidence that was excluded.
`We're not to argue the public accessibility that we presented in the
`reply. We understand that. We will abide by that.
`However, we did argue in the petition that Berg was a publication.
`We relied on evidence which we submitted with the petition. And
`so I think it's fair game for me to at least walk through the evidence that we
`submitted and the fact that Patent Owner did not challenge that evidence.
`JUDGE FENICK: Okay. Thank you. Are there any further
`issues before we start, Mr. Goldberg?
`MR. GOLDBERG: Just a very, very brief response to that is just
`we disagree that this is Patent Owner's argument with respect to those first
`two slides and the portion Dr. Sacerdoti's declaration that we were pointed to
`does not support that contention.
`And then with respect to slides 32 and 34, slide 32, they've submitted
`a legal citation that they have not previously provided. And so that's
`something that would be new.
`And slide 34 also had to do with something they hadn't submitted
`
`before.
`
`
`
`8
`
`
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`
`And so they're certainly welcome to walk through the Berg
`declaration that they submitted with their petition.
`And I welcome them doing that because I think it'll be clear that they
`haven't met their burden of proof.
`And that's why they're working so hard to submit new evidence in
`argument at every turn.
`And so even though we haven't made an argument about all the
`reasons why they haven't met the standard, that doesn't relieve them of their
`burden. So they're free to try to meet their burden.
`JUDGE FENICK: Okay. Thank you. Thanks very much.
`Again, we're not going to rule on these objections now.
`But the parties understand our point of view and the time spent on
`certain issues may not be -- may be counter to our prior indication and may
`not be helpful to you.
`Okay. With that, I think if there's nothing further, I'd like to start
`hearing the arguments from Petitioner. Mr. Alemanni, would you like to
`reserve time?
`MR. ALEMANNI: Yes, Your Honor. I think it'll probably be 15
`minutes or so at the end, 15 to 20 minutes. But I'd just like to reserve
`whatever I have left.
`JUDGE FENICK: Would you like me to tell you because we don't
`have the benefit of our timer and lights, or --
`MR. ALEMANNI: I can keep time, Your Honor. It's fine.
`JUDGE FENICK: Okay.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`9
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`
`MR. ALEMANNI: I can keep track of it. If you feel like it's
`helpful --
`(Simultaneous speaking.)
`JUDGE FENICK: No, that's fine. I'll tell you -- at the end of your
`presentation, I'll tell you how much time. Okay. All right. Thanks.
`Please begin --
`MR. ALEMANNI: Okay, great. Thank you.
`JUDGE FENICK: -- when you're ready.
`MR. ALEMANNI: Thank you, Your Honor. Again, John
`Alemanni on behalf of Petitioner Lenovo.
`We presented demonstratives. The slides, they're not listed as
`exhibits here, but we did file them. So I presume Your Honors have copies
`of those.
`So I'll start with slide 2. The disputes here are fairly narrow. The
`challenged claims are obvious.
`The disputes are over a term called template. We believe the
`template should be construed broadly enough to include executable code as
`is recited in the claims of the '083 application or patent and as are described
`in the specifications.
`Patent Owner's argument is that the definition of template or the
`definition of definition should be narrowed to include, for example, text and
`a structured file, like an XML file.
`And so that's sufficient. In fact, it's the only thing that qualifies this
`sort of data structure that has text or something in it as the template. So we
`disagree as to that.
`
`
`
`10
`
`
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`
`We disagree about -- we also -- it's sort of a subissue. But we
`disagree about the construction of execute and as it fits together.
`And I'll describe it in more detail. I'm sure Your Honors are
`familiar.
`And then there's the conclusory argument that Patent Owner makes
`about dependent claims 8 and 20 which I'll address.
`And if there's time, depending on time is I'll address the Patent
`Owner's secondary considerations evidence and why it's insufficient to
`overcome the prima facie case of obviousness.
`And so slide 3 just talks about the claims that are at issue. Let me
`skip forward to slide 6, if I may.
`It's a little confusing, but I don't think there's any dispute here. The
`patents have different descriptions.
`So the '083 has a description that talks about Dot, D-O-T for the
`court reporter, and application media packages.
`The '407 patent talks about network information monitors, a NIM.
`And so there's -- I don't think there's any dispute between the parties
`that a template is a definition, that a NIM is a media package, that a NIM is -
`- they're the same language. So that's not in dispute.
`And there's no dispute that the claims derive support from the '407
`specification rather than the '083, although the specifications need to be read
`together because they're all part of the intrinsic record.
`And then if I go back, let me talk a little bit about the patent itself.
`And I'll try to be brief. We set this out in our petition at the beginning.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`11
`
`
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`
`So the '083 and the '407 patents are directed to a method of accessing
`internet content.
`So essentially, they're directed to presenting internet content in a
`frame, so a particular type of user interface that the user would see on her
`screen. So that's what the NIM is.
`And the alleged innovation, if you read the background, we set this
`out in some detail in the beginning of our petition and it's also in Dr.
`Madisetti's declaration.
`But if you look at the patent, what it says, the innovation is
`essentially being able to detach or untrap internet content from the regular
`browser interface.
`And so we cited this section at the end of the '407 patent which is
`Exhibit 1001 at column 2, lines 43 through 55.
`And they identify essentially three problems, and they all have to do
`with user interface.
`So there's no ability to do smaller web pages is one problem. The
`second problem they identify is there's no ability to control the framework,
`the frame in which the contents provided.
`And then the third issue actually sounds like something that would
`be applicable like Google or Facebook. It talks about the ability to gather
`usage information.
`But all of these things, all these three problems that they describe at
`the end of the background have to do with the presentation of information to
`the user with a graphical user interface.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`12
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`
`They don't talk about the way it's constructed. So it appears as we
`say in the background that they view the innovation as a problem in the
`graphical user interface.
`And that's why -- unless the figures focus on the user interface, that's
`why the patent provides a definition for NIM but is silent as to template and
`is silent as to execute.
`And that's also why the only claims at issue today and the only
`claims in either of the two patents that recite anything related to the structure
`of the template or the structure of the definition are claims 8 and 20 for this
`patent.
`
`And so with that, I'll move -- and this is slide 7. There's a figure in
`the two patents that sort of describes what it is that is presented to the user.
`And Dr. Madisetti talked about the various elements of this in his
`declaration.
`But essentially, it's just a simple little window that the user sees.
`So this is the NIM, the network information monitor. It's the
`window the user sees.
`It's called a Dot. It's got that little eye thing. Looks like an eye
`with an eyebrow in the left.
`It's got an X on the top right corner which is a control. It's a close
`
`button.
`
`It's displaying internet content. So you see the weather
`information. That's internet content.
`And so how the Patent Owner described it -- this is their Patent
`Owner response at page 12 -- is that rather than implementing custom
`
`
`
`13
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`application, Dot -- this is a Dot -- are defined using XML which we
`disagree.
`They can be defined that way, but we disagree that they're limited to
`
`that.
`
`And filled with standard internet content such as HTML, GIFs and
`the like.
`And if you look at the specification and the way it creates this thing,
`I'm looking specifically at column 8, lines 38 through 42.
`It doesn't matter. This is throughout the specification. That is that
`it uses standard technology.
`And so to present internet content, it actually is part of the Microsoft
`browser's software.
`It's the rendering object, Microsoft Internet Explorer rendering
`
`object.
`
`So what's allegedly special, what the background talks about, what
`the claims recite what's special or innovative according to the inventors at
`least is that you create this simple interface.
`And so that leads us to the actual claim terms. And again, there is
`no dispute here.
`The patentee set out a clear and explicit definition of the term,
`network information monitor or NIM, said it refers to a fully configurable
`frame, so the thing that I showed you on 7, with one or more controls for the
`X.
`
`And that's where the content can be presented. So the HTML
`content is presented through that.
`
`
`
`14
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`
`Again, this is a view. So the NIM is the thing that the user sees.
`It's the user interface.
`And then if we look at the way that's used in the claims on slide 9.
`So slide 9 is the '083 patent, claim 1. And then slide 10 is the '407
`patent, claim 1.
`I'm just going to talk about those two as representative as opposed to
`walk you through more.
`But it's really just these independent claims, and there's a couple of
`dependent claims from the '407 that I think we're going to be discussing.
`And so the claim is a client device comprising a storage means for
`storing network information monitor templates.
`And it explicitly says, I've highlighted here, a network information
`template comprises instructions, so element 1-D, configured to cause the
`NIM to request content, and instructions to cause the NIM to generate the
`interface, so that's the NIM, and then an electronic display, not surprisingly,
`and then 1-G, one or more processors configured to execute the NIM
`template.
`And so it explicitly calls out that this is an executable NIM template.
`Claim 9 in this patent is similar.
`And then if we go to slide 10, a lot of the same terms but not used in
`quite the same way.
`So this is claim 1 from the '407 patent, a client computing device
`
`again.
`
`
`
`15
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`
`Again, it includes electronic storage. But in this case, the network
`information monitor template is associated with the NIM. And it's a
`definition of the graphical user interface again.
`But this claim, instead of requiring that the NIM template be an
`executable instead recites in element 1-C the computer program modules are
`executed.
`And so the one or more program modules are configured to access
`the network information monitor which is then defined by the template.
`So it recites executing. It recites the network information monitor.
`It recites the template.
`But the way that the claims are constructed is somewhat different.
`And then like the '083, there's another independent claim 13 but I'm
`not going to talk about.
`So I just want to -- I want to focus on what we agree on. So slide
`11, we agree that the Patent Owner set out a definition of the NIM, a fully
`configurable frame with one or more controls and then through which
`content is presented to the user. So we agree with that.
`We also agree that template -- the term template and the term NIM
`are different.
`And I guess the other thing we agree, it's not on this slide. But the
`other thing we agree is that the template is the same as a definition.
`So the definition in the '083, the Dot definition, for example, is
`synonymous with template in this.
`But then slide 12, what we disagree with, which is a longer list
`which may not be surprising since we're here, the NIM template we believe
`
`
`
`16
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`should be accorded its plain and ordinary meaning, namely that a template is
`broad is enough - that term template is broad enough to cover an executable
`which is required by the claims of the '083 or text that's in some sort of
`structured file that Patent Owner's expert talks about being a data structure,
`like an XML file.
`We believe the template is broad enough to cover either one of those
`embodiments.
`And just in the '083, it's limited to an executable embodiment. So
`that's what we'll argue.
`And we'll walk through this. We'll walk through the evidence.
`But essentially, our argument that the claims or that the word
`template -- the term template, the term definition is that broad, supported by
`the explicit language of the claims which is where we start.
`And if we broaden that out and we look at the intrinsic record, the
`intrinsic record also supports that.
`Patent Owner will point at a few things that maybe are a little
`confusing. And I'll grant that they're a little bit confusing.
`But if there is lexicography, it must be clear and it's just simply not
`
`clear.
`
`And then we'll also demonstrate that execute should be given its
`plain ordinary meaning, that execute means execute.
`In fact, I don't think -- I'm not aware that Patent Owner is arguing
`that execute in the '407 patent has a construction other than execute.
`I think they mean to construe it one way in the '407 and one way in
`the '083 but I'm not positive. I'll wait.
`
`
`
`17
`
`
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`
`But we disagree with Patent Owner that in the '083 that execute
`means something other than execute.
`And then just a quick slide 13 on the laws of claim construction.
`I think when I look at Patent Owner's argument, to me, they begin
`with extrinsic evidence.
`Their expert goes out and finds some obscure references like the
`Department of Agriculture to try to find something that fits what they want it
`to be.
`
`Then they work into the specification and they talk about how maybe
`the specification could support their construction.
`But I think it's really telling that if you look at the Patent Owner's
`briefing, the claims aren't there.
`They never reproduce the claim and talk about the context of the
`terms they're talking about.
`Their expert, Dr. Sacerdoti -- forgive me. I want to make sure I get
`that right, Sacerdoti. He also doesn't include the claims in his declaration
`or his supplemental declaration which is now excluded.
`But his declaration, he never includes it. And actually, I'll point out
`a couple problems with his testimony that result from that.
`But I think the reason they don't include the claims is clear, and it's
`because their constructions don't make sense in the context of the claims
`themselves.
`And so we want to make sure that we start with the claims as the law
`requires, work out to the intrinsic evidence.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`18
`
`
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`
`But we'll also show how we believe the extrinsic evidence supports
`the construction that we propose.
`And so slide 14, I just wanted to put up a slide briefly. Not to be
`too repetitive, but I want to put up a slide briefly that focuses on those
`elements we think clearly support our proposed construction.
`So beginning with the claims. The claims say that the template is
`executable.
`We agree -- and I'm looking at 1-G. We agree in 1-G that the
`network information monitor has the construction.
`You execute the template that defines the NIM. And so execution
`should have its plain and ordinary meaning. Their template should have its
`plain and ordinary meaning.
`When you look at that particular clause in the context of 1-E --
`maybe 1-D and 1-E. I may have misstated, in light of it.
`The earlier -- the other limitations that have instructions configured
`to cause, I mean, it's clearly instructions that will be executed.
`And so the claim itself is clear that the NIM template should be or
`can be an executable.
`Again, we're not arguing it's limited to an executable, whether it can
`
`be.
`
`And we know -- if we go to slide 15, we know execute has a plain
`and ordinary meaning.
`I think really execute probably has a plain and ordinary meaning to a
`layperson.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`19
`
`
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`
`But at least to one of skill in the art, Dr. Sacerdoti admitted that
`execute means execute. It means execute an executable program.
`It's how its described. It's how he thinks about it. So he gave
`some testimony, again, extrinsic evidence.
`But this does not support that you would go back to the specification
`and try to redefine a term based on his testimony.
`So again, execute means execute. Template means template or
`perhaps definition.
`They should be construed as having their plain ordinary meanings.
`What Patent Owner is arguing, slide 16, is lexicography. So
`lexicography, it has to be clear. It has to be expressed in order to redefine
`the term.
`The heavy presumption -- we're all patent lawyers. The heavy
`presumption is that a term takes on its plain and ordinary meaning unless it's
`been redefined --
`(Simultaneous speaking.)
`JUDGE HAGY: Counsel, I have a question on that. Can you hear
`
`me?
`
`Yeah, I have a question on this because, I mean, a word can have
`multiple plain and ordinary meanings.
`I mean, execute can mean, like, football, execute a play. But that
`doesn't mean that it's crunching code.
`And I'm also looking for examples in the '083 patent and say --
`because I just did a word search.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`20
`
`
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`
`And it does seem to use execute potentially in different -- slightly
`different meanings depending on the context.
`So for example, in column 18 around line 61, it talks about E-Trade.
`It says, E-Trade's primary business is to enable users to execute
`securities trading online.
`So you're executing a trade. You're buying and selling stock. But
`that doesn't mean you're crunching code in that context.
`MR. ALEMANNI: Yes, I agree with you. I agree with you, Your
`
`Honor.
`
`There are places in the specification that use execute. In that way, I
`think there's places in the specification that talk about, like, executing sort of
`a process.
`It's used in several different ways. But the plain and ordinary
`meaning, to a computer programmer of execute in terms of software is to
`execute an executable program. Dr. Sacerdoti testified to that.
`The burden -- we have the burden of showing unpatentability.
`That's absolutely true.
`But the Patent Owner wants you to redefine a term like execute as
`something other than what their own expert is, the plain and ordinary
`meaning in relation to software, which is executing an executable program,
`then they need to show something in the record that shows clearly and
`expressly that they've redefined that in terms of software. And --
`JUDGE HAGY: Right. But doesn't that --
`MR. ALEMANNI: -- they haven't done it.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`21
`
`
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`
`JUDGE HAGY: -- beg the question a little bit because you're
`saying in terms of software.
`But the way I understand Patent Owner's argument is that these NIM
`templates aren't necessarily software, that it's a structure.
`And so to say that execute means crunch code in the context of
`software.
`But if we agree that a template is a data structure and not software,
`then doesn't that also provide additional context for what execute means
`there?
`
`MR. ALEMANNI: I think it could except that argument is then
`circular because what you have to do first is you have to decide that it can
`only be a data structure. And that's not supported by the specification.
`And then once you decide that it has to be a data structure, then you
`go back and redefine execute to be -- and in fact, if you look at paragraph 56
`of their expert's declaration, that's precisely what he does.
`He says, okay -- he doesn't talk about the computer science area.
`He just talks about the fact that, well, if the template isn't something
`that is not executable.
`The template is a data structure. That means execute doesn't mean
`execute.
`If you look at it in context with our expert, he walked through and
`said, he read the claims. They don't need construction.
`He looked at the NIM template -- at the template. He looked at the
`claim that says execute the template.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`22
`
`
`
`IPR 2019-01278 (Patent 8,020,083 B1)
`IPR 2019-01279 (Patent 8,510,407 B1)
`
`
`And then he spelled out how the prior art showed executing the
`template.
`And so if we're looking to extrinsic evidence as to how the claim
`should be construed, our expert, one, said it should be plain and ordinary and
`then walked through how one of skill in the art would understand execute in
`the context of the claims and in applying the prior art.
`JUDGE FENICK: So another place where we have intrinsic
`evidence is the portion of the '407 patent at column 21 where it talks about
`an embodiment in which the NIM definitions ar
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
