`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`FACEBOOK, INC.,
`Petitioner
`
`v.
`
`EXPRESS MOBILE, INC.,
`Patent Owner
`
`
`
`
`
`Case IPR2021-01224
`Patent No. 6,546,397
`
`
`
`
`
`
`
`PATENT OWNER’S RESPONSE
`
`Under 37 C.F.R. § 42.107
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via PTAB E2E
`
`

`

`TABLE OF CONTENTS
`
`
`
`I.
`II.
`
`
`
`B.
`
`INTRODUCTION ......................................................................................... 1
`SUMMARY OF THE TECHNOLOGY ...................................................... 3
`A.
`Technology Background ....................................................................... 3
`B.
`Brief Description of the ’397 Patent Disclosure ................................... 4
`III. THE PETITION FAILS TO DEMONSTRATE THAT CLAIM 1 OF
`THE ’397 PATENT IS OBVIOUS. .............................................................. 9
`A.
`The Petition Fails Because Petitioner and its Expert Apply Erroneous
`and Previously Rejected Meanings to Terms of the Challenged Claims
` .............................................................................................................13
`Ground 1 of the Petition Fails: Claim 1 Is Not Rendered Obvious by
`the Alleged Combination of Reynolds, Bernardo, Meyer, and
`Witkowski ...........................................................................................16
`1.
`Petitioner’s expert admittedly failed to consider Reynolds and
`Bernardo in their entirety as is required— resulting in an
`erroneous conclusion that it would be obvious to combine ......16
`Reynolds, Bernardo, and Meyer fail to teach or suggest
`“presenting viewable menu having a user selectable panel of
`settings describing elements on a website, said panel of settings
`being presented through a browser on a computer adapted to
`accept one or more of said selectable settings in said panel as
`inputs therefrom, and where at least one of said user selectable
`settings in said panel corresponds to commands to said virtual
`machine” (Claim 1[a][1]/1[a][2]) .............................................23
`Reynolds and Bernardo fail to teach or suggest “generating a
`display in accordance with one or more user selected settings
`substantially contemporaneously with the selection thereof”
`(Claim 1[b]) ...............................................................................34
`Reynolds, Bernardo, and Witkowski fail to teach or suggest
`“storing information representative of said one or more user
`selected settings in a database” (Claim 1[c]) ............................43
`ii
`
`2.
`
`3.
`
`4.
`
`

`

`5.
`
`6.
`
`Reynolds and Bernardo fail to teach or suggest “generating a
`website at least in part by retrieving said information
`representative of said one or more user selected settings stored
`in said database” (Claim 1[d]) ..................................................45
`Reynolds and Meyer fail to teach or suggest “building one or
`more web pages to generate said website from at least a portion
`of said database and at least one run time file, where said at
`least one run time file utilizes information stored in said
`database to generate virtual machine commands for the display
`of at least a portion of said one or more web pages” (Claim
`1[e]) ...........................................................................................46
`Ground 2 of the Petition Fails: Claim 1 Is Not Rendered Obvious by
`the Combination of Reynolds, Bernardo, Meyer, Witkowski and
`Coombs ................................................................................................53
`Petitioner’s Attempt to Combine Four- and Five-References by Using
`the Claim as a Roadmap Should Be Rejected .....................................53
`Substitution of Judges in This Proceeding is a Violation of Express
`Mobile’s Due Process Rights ..............................................................59
`IV. CONCLUSION ............................................................................................60
`
`
`C.
`
`D.
`
`E.
`
`
`
`
`
`
`
`
`
`
`
`iii
`
`

`

`TABLE OF AUTHORITIES
`
`
`Page(s)
`
`COURT DECISIONS
`
`In re Anova Hearing Labs, Inc.,
`809 Fed. App’x. 840 (Fed Cir. 2020) ..................................................... 54, 55
`
`In re Gordon,
`733 F.3d 900 (Fed. Cir. 1984) .......................................................................40
`
`InTouch Techs., Inc. v. VGo Comm’cns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .....................................................................54
`
`McGinley v. Franklin Sports, Inc.,
`262 F.3d 1339 (Fed. Cir. 2001) .....................................................................40
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
` 868 F.3d 1013 (Fed. Cir. 2017) ....................................................................59
`
`In re Sponnoble,
`405 F.2d 578 (Fed. Cir. 1969) .......................................................................40
`
`
`AGENCY DECISIONS
`
`DirecTV, LLC v. Qurio Holdings, Inc.,
`IPR2015-02006, Paper 6 (PTAB Apr. 4, 2016) .............................................. 9
`
`Nichia Corp. v. Lighting Sci. Group Corp.,
`IPR2019-01259, Paper 45 (PTAB Jan. 8, 2021) ...........................................58
`
`Ex Parte Orbotech LT Solar, LLC,
`2012 Pat. App. LEXIS 2784 (BPAI May 31, 2012) ......................................58
`
`
`
`
`
`
`
`
`
`
`iv
`
`

`

`Exhibit
`Ex. 2001
`Ex. 2002
`Ex. 2003
`
`Ex. 2004
`
`Ex. 2005
`
`Ex. 2006
`
`Ex. 2007
`
`Ex. 2008
`Ex. 2009
`Ex. 2010
`Ex. 2011
`Ex. 2012
`
`Ex. 2013
`
`TABLE OF EXHIBITS
`
`
`Description
`Declaration of Glenn Weadock (“Weadock Decl.”)
`Curriculum Vitae of Glenn Weadock
`Complaint for Patent Infringement in Express Mobile, Inc. v.
`Facebook Inc., 6:20-cv-803-ADA (W.D. Tex.)
`Complaint for Patent Infringement in Express Mobile, Inc. v.
`Google LLC, 6:20-cv-804-ADA (W.D. Tex.)
`Defendants’ List of Proposed Claim Terms and Phrases For
`Construction in Express Mobile, Inc. v. Facebook Inc., 6:20-cv-
`803-ADA (W.D. Tex.) and Express Mobile, Inc. v. Google LLC,
`6:20-cv-804 (W.D. Tex.)
`Defendant’s Invalidity Contentions Regarding U.S. Patent Nos.
`6,546,397; 7,594,168; 9,928,044; 9,471,287; and 9,063,755 in
`Express Mobile, Inc. v. Facebook Inc., 6:20-cv-803-ADA (W.D.
`Tex.)
`Request for Ex Parte Reexamination in Reexamination of Patent
`No. 6,546,397, Serial No. 90/014,615
`Email from Phillip Morton (Tuesday, May 25, 2021, 5:22:52 PM)
`Declaration of Sam Malek (“Malek Decl.”)
`Curriculum Vitae of Sam Malek
`Transcript of Vijay K. Madisetti, Ph.D.
`Defendants’ Amended List of Proposed Claim Constructions in
`Express Mobile, Inc. v. Expedia, Inc., 6:20-cv-801-ADA (W.D.
`Tex.), Express Mobile, Inc. v. eBay Inc., 6:20-cv-802-ADA (W.D.
`Tex.), Express Mobile, Inc. v. Facebook Inc., 6:20-cv-803-ADA
`(W.D. Tex.), Express Mobile, Inc. v. Google LLC, 6:20-cv-804
`(W.D. Tex.), and Express Mobile, Inc. v. Atlassian Corp. PLC,
`6:20-cv-808-ADA (W.D. Tex., May 12, 2021)
`Order Construing Claims, in X.Commerce, Inc. v. Express Mobile,
`Inc., 3:17-cv-02605-RS (N.D. Cal. Sep. 10, 2018) (Dkt. 79) [First X
`Commerce Markman Order]
`
`
`
`
`v
`
`

`

`I.
`
`INTRODUCTION
`This Petition represents the third post-issuance attack on the ’397 patent.
`
`Here, Petitioner proposes various combinations of four disparate references against
`
`claim 1 in Ground 1. In Ground 2, Petitioner adds yet another reference, making
`
`five in total. Despite the excessive number of prior art references, the Reynolds,
`
`Bernardo, Meyer, and Witkowski references (as well as Coombs in Ground 2) teach
`
`different architectures from each other, and also from those described and claimed
`
`in the ’397 patent. As a result, the POSITA would not have been motivated to
`
`combine these references to arrive at the claimed invention. Reflecting this,
`
`Petitioner never attempts to analyze the four-reference combination of Reynolds,
`
`Bernardo, Meyer, and Witkowski as a whole as the law requires. Instead,
`
`Petitioner and its expert propose combinations of different subsets of the four
`
`references to individually attempt to reconstruct claim limitations based solely on
`
`hindsight. Even when Petitioner’s flawed analysis is considered, the POSITA
`
`would understand that the references cannot be combined from a technological
`
`standpoint and nevertheless fail to teach numerous limitations of the challenged
`
`claims.
`
`
`
`1
`
`

`

`As an example, none of the asserted references either alone in combination
`
`discloses the limitations of element 1[a]1. Petitioner splits this limitation into two
`
`elements (1[a][1]/1[a][2]) and uses two different subsets of the references to argue
`
`obviousness. Further, Petitioner proposes a 3-reference combination that fails to
`
`disclose the “virtual machine” limitation, while ignoring that two of those three
`
`references, Bernardo and Meyer, are incompatible and could not be combined from
`
`a technical standpoint. Ex. 2009, ¶¶ 35, 41-43; see also Ex. 2010. The
`
`combination fails as a matter of law. The third reference Petitioner asserts against
`
`limitation 1[a], Reynolds, is directed to a fundamentally divergent system with
`
`different goals that it would not have been obvious to combine with Bernardo.
`
`Against claim element 1[b]2, Petitioner asserts a different combination,
`
`Reynolds and Bernardo. However, at deposition, Petitioner’s expert confirmed he
`
`relied only on Bernardo to disclose the element under his own construction of the
`
`term “substantially contemporaneous,” which is contrary to the specification and
`
`cannot be reconciled with any of the district court claim constructions of the term.
`
`In fact, Bernardo teaches a generation of the display that is not substantially
`
`contemporaneous.
`
`
`1 “presenting a viewable menu having a user selectable panel of settings […]
`where at least one of said user selectable settings in said panel corresponds to
`commands to said virtual machine”
`2 “generating a display in accordance with one or more user selected settings
`substantially contemporaneously with the selection thereof;”
`2
`
`
`
`

`

`As yet another example, Petitioner asserts a deficient combination of
`
`Reynolds and Meyer against claim element 1[e]3. This combination, like the others
`
`proposed throughout the Petition, is technologically infeasible. Ex. 2009, ¶¶ 61-
`
`65; 75-79. Indeed, Reynolds instructs against Petitioner’s proposal. Id.
`
`Additionally, Petitioner’s expert confirmed during deposition that he applied a
`
`construction of “building one or more web pages” that is at odds with the Board’s
`
`findings in denying the BigCommerce IPR. That same failed analysis here should
`
`therefore be rejected.
`
`II.
`
`SUMMARY OF THE TECHNOLOGY
`A. Technology Background
`Prior to the ’397 patent, web pages were created, stored, and rendered in an
`
`inefficient manner. Individual web pages were typically created directly in HTML
`
`or by a visual editor that output completed HTML files (as is disclosed in
`
`Bernardo). Ex. 2009, ¶ 3. The result was a collection of files, including complete
`
`HTML pages, which defined the visual layout and style of a web page. The prior
`
`art methods further provided for web page interactivity by, for example, adding
`
`supplemental logic such as JavaScript commands or Java code files in a manner
`
`that was compatible with the Internet standards at the time. Id.
`
`
`3 “building one or more web pages to generate said website from at least a
`portion of said database and at least one run time file […]”
`3
`
`
`
`

`

`Earlier Web development methodologies suffered from numerous flaws.
`
`First, as an example, creation of the web page was cumbersome. Web pages could
`
`not be viewed during the creation process to see how they would appear in various
`
`browsers or devices. Ex. 2009, ¶ 4. This limitation of the prior art was
`
`problematic for editors that ran inside a browser and standalone visual editors that
`
`ran as desktop applications, as a web page author was unable to determine in real-
`
`time how any changes would affect the overall display of the web page. Id.
`
`Second, in prior art systems that use a templating system, HTML web pages
`
`began with an HTML template file, and then content was merged into the file
`
`during creation time. This required storing each individual HTML file (in HTML
`
`or pseudo-code form, along with any additional scripting files). Id., ¶ 5. Storing
`
`multiple complete, individual pages used excessive space and resulted in lengthy
`
`access times. Id. The size and formatting of the stored files led to slow
`
`downloading of the web page files to a user’s computer and slower rendering by
`
`the browser, increasing the time for a web page to load. Id.
`
`Brief Description of the ’397 Patent Disclosure
`B.
`In contrast to conventional methods, the ’397 patent taught a pioneering and
`
`unique architecture that allowed for efficient, dynamic, and user-friendly web page
`
`generation. The features of this new approach are described in roughly 64 columns
`
`of Specification text (excluding the Background section and patent claims), along
`
`
`
`4
`
`

`

`with more than sixty Figures that include actual screenshots of embodiments of the
`
`working invention. Ex. 2009, ¶ 6.
`
`The invention generally involves building a web page, not as a compilation
`
`of completed HTML files, but as a set of user-selected “objects” and “settings.” Id.
`
`at Ex. 2009, ¶ 7. The ’397 patent teaches building a web page while displaying
`
`corresponding modifications substantially contemporaneously so the page can be
`
`viewed dynamically in the editor while it is created or edited. Moreover, as the
`
`environment is browser-based, no separate native software is required:
`
`Aspects of the invention can include one or more of the following
`features. A browser based build engine is provided that includes a
`browser based interface. The entire web site build process is
`WYSIWYG (what you see is what you get), with the web designer
`working directly on and with the final web page.
`
`Ex. 1001, 2:32-37.
`
`“Working directly” with the actual web page while creating it within a web
`
`browser is a fundamental improvement in the web content creation process and a
`
`reflection of a dynamic interface that can display and regenerate webpage displays
`
`as they are being created. Id. With the editor of the ’397 patent, a creator can
`
`work within the intended browser interface to dynamically see what she will get
`
`when designing a web page. Id.
`
`
`
`5
`
`

`

`The resulting web page is not an inefficient and inflexible code file, but a
`
`collection of user selected settings of web page objects and object attributes. This
`
`collection can be saved in a database for ease of access and efficient storage:
`
`In one aspect, the invention includes a multi-dimensional array structured
`database, that, in addition to storing the numeric and string data found in
`conventional databases, also stores multi-dimensional arrays of various
`multimedia objects. They include colors, fonts, images, audio clips, video
`clips, text areas, URLs and thread objects.
`Ex. 1001, 2:5-10.
`
`Since the invention stores web page settings, rather than complete code files
`
`for each page, the page structure—the full HTML code itself—is created
`
`dynamically each time the page is loaded in a user’s Web browser at run time. This
`
`is achieved in part through a device and language-appropriate “run time engine”
`
`and related files:
`
`The invention includes a run time generation procedure that creates a
`compressed web site specific customized run time engine program
`file, with its associated database and a build engine generated HTML
`shell file.
`
`Id., 2:10-14.
`
`Each claim of the ’397 patent reflects this pioneering methodology. Claim 1
`
`of the ’397 patent, for example, recites (among other features):
`
`•
`
`displaying a user selectable panel of settings describing settings of web
`
`
`
`6
`
`

`

`page objects for constructing a website within a browser to create the
`
`pages (id., 65:44-49);
`
`•
`
`generating a display in accordance with one or more user selected
`
`settings substantially contemporaneously with the selection thereof
`
`•
`
`•
`
`(id., 65:55-57);
`
`storing information representative of those settings in a database (id.,
`
`65:58-59); and
`
`building web pages, without relying only on static HTML files, using
`
`a run time file from information stored in the database (id., 65:64-67).
`
`Claim 1 further recites a “viewable menu” of user-selectable website settings
`
`within a browser, each of which corresponds to commands to a “virtual machine.”
`
`Id., 65:47-54. During the website creation stage, the system displays changes and
`
`edits “substantially contemporaneously” with the selection of the website settings.
`
`Id., 65:55-57. This element ensures that a user, when creating a website, can
`
`immediately see changes and edits, without additional user action, as they would
`
`appear later when the page was rendered. To accomplish this, the specification
`
`describes the use of a polling technique. Ex. 1001, 22:66-23:2, FIG. 9, 24:32-36,
`
`24:41-45, 24:52-54, 24:57-59. Further, the run time file utilizes stored settings
`
`information from the database at the web rendering stage, as a mechanism for
`
`
`
`7
`
`

`

`converting the user selections of website settings into the actual viewable page
`
`without retrieving complete HTML webpages. Id., 65:64- 66:2.
`
`The ’397 patent specification notes that the manner in which data is stored
`
`allows for a relatively small “run time environment,” i.e., the basic HTML
`
`framework created by the system, as opposed to the complete HTML that had been
`
`stored in the prior art. Id., 2:60-63.
`
`The dynamic runtime generation process occurs much faster than prior
`
`methods: indeed, a page that previously took ten seconds to load can now load in
`
`one second or less. Ex. 1001, ¶ 2:60-3:3. The software architecture also permits
`
`more efficient storage of the data used to later build web pages, as well as the
`
`ability to update web pages more efficiently by editing user settings rather than
`
`editing multiple lines or multiple versions of an HTML file.
`
`The Applicant specifically recognized these numerous advantages during
`
`prosecution:
`
`In contrast, the claimed invention generates web pages using two
`features: a run time engine and a database of user settings. As
`described in the specification of the claimed invention, the database
`contains user settings, which may be thought of as attributes of
`display objects. The run time engine is used to accept the attributes
`and generate virtual machine commands, which then generate a
`display. In addition to having a smaller “footprint” (code size which is
`transmitted for display over a communication system), changes to the
`
`
`
`8
`
`

`

`code during production are more easily implemented.
`
`Ex. 1004, 341 (emphases added).
`
`As such, the ’397 patent teaches generating web pages with interactive ease
`
`of use that allows for faster design and development over prior methods. Ex. 2009,
`
`¶ 29.
`
`III.
`
`THE PETITION FAILS TO DEMONSTRATE THAT CLAIM 1 OF
`THE ’397 PATENT IS OBVIOUS.
`The Petition is founded on impermissible hindsight analysis of the exact
`
`kind disapproved of by the Board and the Federal Circuit. Petitioner splits claim 1
`
`into a variety of elements, which are then further split into sub-elements (see, e.g.,
`
`Pet., 32, 47, “Claim 1[a][1]” and “Claim 1[a][2]”). Rather than analyze its
`
`proposed four or five reference obviousness combinations as a whole to assess
`
`whether those references render the claims of the ’397 patent obvious, Petitioner
`
`relies on five different subsets of references in an attempt to show that individual
`
`elements and sub-elements of the claims were known.
`
`Petitioner’s approach represents classic hindsight that fails as a matter of law
`
`and underscores the fundamental flaws of the alleged combinations. See, e.g.,
`
`Section III.D. In DirecTV, LLC v. Qurio Holdings, Inc., IPR2015-02006, Paper 6
`
`(PTAB Apr. 4, 2016), the Board held that “given the extent of the proposed
`
`modifications as well as the thin reasoning proffered for each modification, we
`
`conclude that the Petition improperly ‘reli[es] upon ex post reasoning’ and
`
`
`
`9
`
`

`

`impermissible hindsight reconstruction to piece together the combination . . . in a
`
`manner meant to resemble the . . . patent claims . . . ‘This type of piecemeal
`
`analysis is precisely the kind of hindsight that [we] must not engage in.’” Id., 20
`
`(internal citations omitted). The Petition is the quintessential “piecemeal analysis”
`
`that the Board rejects. See also id. (“Care must be taken to avoid hindsight
`
`reconstruction by using the patent in suit as a guide through the maze of prior art
`
`references, combining the right references in the right way so as to achieve the
`
`result of the claims in suit.”) (internal citations omitted). Petitioner has “use[d] the
`
`patent in suit as a guide through [a] maze” of various asserted references, their
`
`configurations and, in some cases, characterizations changing as Petitioner
`
`considers each claim element in isolation. See, e.g., Section A.4. below. Indeed,
`
`as discussed in Section III.A.1 below, the Petition relies on so many different
`
`combinations of references with respect to a single claim that its application of the
`
`references is inconsistent and unclear as to what combinations are asserted. Even
`
`Petitioner’s expert, Dr. Madisetti, was confused about which combinations he
`
`asserted against which of the multitude of Petitioner-created sub-elements.
`
`The Petition’s flawed methodology is particularly apparent in the analysis of
`
`Dr. Madisetti who failed to consider the asserted references in their entirety. On
`
`numerous occasions, Dr. Madisetti confirmed that he had no opinion on the content
`
`of the references other than the exact portions he cited in his declaration. See
`
`
`
`10
`
`

`

`Section A.1 below. For example, when asked about Reynolds as a whole, Dr.
`
`Madisetti responded “I don’t offer such testimony. I just have pointed to
`
`exemplary sections that are part of my analysis. I do not offer a general opinion
`
`with respect to – on that – on that issue, I have disclosed portions of Reynolds that
`
`support my opinions, as in my declaration.” (Ex. 2011 [Deposition of Madisetti]
`
`90:15-91:1) When asked about a specific disclosure of Reynolds, Dr. Madisetti
`
`responded “Again, I would defer to the language of Reynolds itself. I don’t wish to
`
`summarize the language in any other way.” (Ex. 2011, 97:21-98:5) Dr. Madisetti
`
`could testify only about the portions of Reynolds he cited, stating “Again, I would
`
`defer to the portions that I cite, and – and I can answer questions from my
`
`declaration as to those portions. So I would defer to Reynolds itself and its
`
`specification.” (Ex. 2011, 102:12-18) This failure to analyze—or even consider—
`
`Reynolds as a whole is fatal: under the proper analysis, a POSITA would never
`
`combine the disparate references with Reynolds. For example, when asked about
`
`what content for display a user could contribute to the ibook disclosed in Reynolds
`
`Dr. Madisetti responded “I don’t believe I offer a general description on that issue.
`
`I was analyzing Reynolds in context of the claims at issue.” (Ex. 2011, 89:14-20)
`
`But the claims at issue are directed to generating displays through web pages;
`
`Reynolds’ disclosure of these features is highly relevant. Similarly, when asked
`
`about Bernardo, Dr. Madisetti stated that he “offer[ed] an opinion of Reynolds in
`
`
`
`11
`
`

`

`view of – as a combination with Bernardo, so that’s my – what my declaration
`
`covers,” (Ex. 2011, 117:3-6) and that he “just rel[ies] on Bernardo for the portions
`
`that [he] cite[s]” (Ex. 2011, 117:16-118:2). When asked a basic question
`
`regarding the cited portions of Lemay Web, Dr. Madisetti simply replied that “I
`
`would defer to the knowledge of a person of ordinary skill in the art […] for
`
`teaching how this works” (Ex. 2011, 173:15-21). Dr. Madisetti’s testimony
`
`confirms that he did not consider the teachings of the references as a whole, and as
`
`a result his analysis is fatally flawed and not credible.
`
`Furthermore, as discussed in Section A.1 below, Dr. Madisetti refused to
`
`offer opinions on the claim constructions cited in his declaration; stated that he
`
`analyzed each of the claim constructions in his declaration when he did not (Ex.
`
`2011, 38:14-39:7); and admitted that he did not have an opinion on whether any
`
`constructions were correct under the proper standard (Phillips). See, e.g., Ex.
`
`2011, 36:3-15 (“Now, to be clear, I’m not offering an opinion that – that – I’m not
`
`offering my own opinion on this [sic] constructions. I have applied the plain and
`
`ordinary in the view of a person of ordinary skill.”); 36:16-37:3 (“I don’t offer an
`
`independent opinion as to these constructions in any way, except that, as is
`
`described in paragraph 40, that the differences between these various constructions
`
`are not material […]”); 40:10-16 (“I do not offer an opinion on the claim
`
`construction, the claim constructions that are listed in this table.”)
`
`
`
`12
`
`

`

`Dr. Madisetti also made a wide range of factually incorrect statements
`
`regarding basic aspects of the subjects on which he has submitted himself as an
`
`expert. Ex. 2009, ¶ 24. This misunderstanding of key web development topics led
`
`him to misapply the references. Id. Additionally, as will be addressed in the
`
`discussion of specific problematic combinations, Dr. Madisetti’s testimony
`
`conflicts with his declaration in a number of places. In deposition, he was unable
`
`to explain basic teachings of the references, and could only repeat—essentially
`
`verbatim—what was written in his declaration. Dr. Madisetti’s declaration should
`
`be given no weight.
`
`A. The Petition Fails Because Petitioner and its Expert Apply
`Erroneous and Previously Rejected Meanings to Terms of the
`Challenged Claims
`Petitioner and its expert proffer numerous theories that cannot be reconciled
`
`with district court and Board claim constructions. The Petition and Dr. Madisetti’s
`
`opinions violate all constructions of 1) “substantially contemporaneously,” issued
`
`by two separate district courts, 2) “run time file,” issued by three separate district
`
`courts, and 3) “building one or more web pages,” as stated by the Board in denying
`
`the BigCommerce IPR.
`
`The courts
`
`in X Commerce and Svanaco construed “substantially
`
`contemporaneously” as “occurring immediately after” and “happening at the same
`
`period of time from a human perspective,” respectively. Ex. 1016, p.11; Ex. 1018,
`
`
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`13
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`

`

`p.16. Both constructions are consistent with the Phillips standard and require that
`
`the display be generated upon selection of the one or more user settings without
`
`requiring an additional user interaction. As described in an embodiment, “a polling
`
`loop is defined in the panel’s (panel 400) JavaScript that creates a near continuous,
`
`at least from a human perception point of view, dynamic real time link, in order to
`
`monitor events occurring inside the build engine. The result is a real time retrieval
`
`(from an ergonomic perception point of view) of necessary data and status settings
`
`from the build engine back to the interface.” Ex. 1001, 23:21-27; see also id.,
`
`10:16-53 (“results immediately processed”). As discussed in more detail below,
`
`Petitioner and its expert rely on Bernardo’s disclosure of a manual—not dynamic
`
`or immediate—preview function where a user must take additional action in order
`
`to generate a preview. See Section III.B.3. Indeed, Petitioner’s expert confirmed
`
`that it was his opinion that requiring additional user action, such as pushing a
`
`button to generate a preview, was “substantially contemporaneous.” Id. This
`
`argument is contrary to the multiple constructions of this term and should be
`
`rejected.
`
`The courts in X Commerce, GoDaddy, eGrove, and Shopify cases construed
`
`“at least one run time file” as shown below. The eGrove, GoDaddy, and Shopify
`
`constructions are identical.
`
`
`
`
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`14
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`

`

`eGrove
`one or more files,
`including a run
`time engine, that
`are downloaded or
`created when a
`browser is pointed
`to a web page or
`website (Ex.
`1017)
`
`GoDaddy
`one or more files,
`including a run
`time engine, that
`are downloaded or
`created when a
`browser is pointed
`to a web page or
`website (Ex.
`1021, p. 11)
`
`Shopify
`one or more files,
`including a run
`time engine, that
`are downloaded or
`created when a
`browser is pointed
`to a web page or
`website (Ex.
`1020, p. 2)
`
`X Commerce
`one or more files,
`including a run
`time engine, that
`are downloaded or
`created, and
`executed by a
`browser to display
`a webpage when
`the browser is
`pointed to a web
`page (Ex. 1016, p.
`8)
`
`The constructions in eGrove, GoDaddy, and Shopify are consistent with the
`
`Phillips standard. Ex. 2009, ¶ 45. While Patent Owner does not agree that a
`
`runtime file must be “executed by a browser to display a website,” the remaining
`
`portions of the X Commerce construction are identical to the other constructions
`
`and thus also consistent with Phillips. Indeed, in the underlying litigation,
`
`Petitioner agreed, proposing the same constructions as in X Commerce. Ex. 2012
`
`(Defendants’ proposed claim constructions). As discussed below, Petitioner
`
`asserts that the “run time file” in Reynolds and Meyer is disclosed by Reynolds’
`
`navigation tool modified to be implemented as a Java applet. See Section III.B.6.
`
`But Reynolds teaches away from using a Java applet. Ex. 2009, ¶¶63-65, 77. The
`
`only example given in Reynolds for delivery of the navigation tool is File Transfer
`
`Protocol (FTP), which is fundamentally incompatible with the proposed Java
`
`applet, as FTP cannot provide a Java applet “downloaded or created[, and executed
`
`
`
`15
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`

`

`by a browser to display a webpage] when a browser is pointed to a web page [or
`
`website].” Id. As explained in Section III.B.6, this argument is contrary to four
`
`consistent constructions by district courts and should be rejected by the Board.
`
`Finally, with respect to “building one or more web pages,” Petitioner relies
`
`on an argument that the Board rejected in a previous IPR petition by
`
`BigCommerce. See Section III.B.6. Namely, the Board held that the storage and
`
`retrieval of the entire web page cannot satisfy both the claim terms “generating a
`
`website” and “building one or more web pages.” Id. Here, the Board applies the
`
`Phillips standard which can be no broader than the standard it applied in rejecting
`
`these same arguments
`
`in BigCommerce under
`
`the broadest
`
`reasonable
`
`interpretation. Id. Nevertheless, Petitioner’s expert opined that the claims are
`
`invalid under this rejected theory.
`
`These attempts to stray outside the bounds of claim constructions under the
`
`Phillips standard should be soundly rejected.
`
`B. Ground 1 of the Petition Fails: Claim 1 Is Not Rendered Obvious
`by the Alleged Combination of Reynolds, Bernardo, Meyer, and
`Witkowski
`Petitioner’s expert admittedly failed to consider Reynolds
`1.
`and Bernardo in their entirety as is required— resulting in
`an erroneous conclusion that it would be obvious to
`combine
`The Federal Circuit mandates that when evaluating obviousness, “a prior
`
`patent must be considered in its entirety, i.e., as a whole, including portions that
`
`
`
`16
`
`

`

`would lead away from the invention in suit.” Panduit Corp. v. Dennison Mfg. Co.,
`
`810 F.2d 1561, 1568 (Fed. Cir. 1987) (emphasis in original) (citing W.L. Gore &
`
`Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983)).
`
`Particularly, it is impermissible “to stitch together an obviousness finding from
`
`discrete portions of prior art references without considering the references as a
`
`whole.” In re Enhanced Sec. Research, LLC, 739 F.3d 1347, 1355 (Fed. Cir.
`
`2014); see also InTouch Techs., Inc. v. VGO Communications, Inc., 751 F.3d 1327,
`
`1351 (Fed. Cir. 2014) (“A reason for combining disparate prior art references is a
`
`critical component of an obviousness analysis; ‘this analysis should be made
`
`explicit.’”) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). The
`
`prior art cannot be considered in isolation or in cherry-picked portions against the
`