IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`SHOPIFY INC. AND SHOPIFY (USA),
`INC.,
`
`Plaintiffs and
`Counterclaim Defendants,
`
`Case No. 1:19-cv-00439-RGA
`
`v.
`
`EXPRESS MOBILE, INC.,
`
`Defendant and
`Counterclaim Plaintiff.
`
`SHOPIFY INC. AND SHOPIFY (USA) INC.’S INITIAL INVALIDITY CONTENTIONS
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`I.
`
`INTRODUCTION
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`Pursuant to the Court’s October 15, 2019 Scheduling Order (Dkt. No. 36) and paragraph
`
`4(d) of the Default Standard for Discovery, Plaintiffs Shopify Inc. and Shopify (USA), Inc.
`
`(collectively, “Shopify”) hereby serve their initial invalidity contentions (“Invalidity
`
`Contentions”) for U.S. Patent Nos. 6,546,397 (“the’397 patent”), 7,594,168 (“the’168 patent”,
`
`collectively with the ’397 patent, the “First Set of Patents”), 9,063,755 (“the ’755 patent”),
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`9,471,287 (“the ’287 patent”) and 9,928,044 (“the ’044 patent”, collectively with the ’755 patent
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`and the ’287 patent, the “Second Set of Patents,” and the Second Set of Patents collectively with
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`the First Set of Patents, “the Patents-in-Suit”).
`
`The prior art identified in these disclosures is identified with respect to Express Mobile
`
`Inc.’s (“Express Mobile”) asserted claims (the “Asserted Claims”), as disclosed in Express
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`Mobile’s Initial Infringement Contentions (“Infringement Contentions”), served August 29,
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`2019. Shopify reserves the right to rely on additional references with respect to claims later
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`identified by Express Mobile as of the service of these disclosures, and to object to any assertion
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`of additional claims. Shopify’s discovery and investigation in connection with this lawsuit are
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`continuing and, thus, these disclosures are based on information obtained to date. Express
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`Mobile has failed to produce relevant, discoverable information relating to these contentions and
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`Shopify reserves the right to supplement these disclosures in light of Express Mobile’s failure to
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`produce the requested information. As just one example, Express Mobile has failed to produce
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`at least three file histories for patent applications related to the Second Set of Patents, which may
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`provide additional invalidity bases. Additionally, Shopify is informed and believes that Express
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`Mobile already is in possession of further prior art to the Patents-in-Suit, and Shopify
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`incorporates that prior art material to the extent Express Mobile has failed to produce it in a
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`timely fashion. To the extent that Shopify obtains additional information, including the
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`information improperly withheld by Express Mobile or other information, Shopify reserves the
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`right to supplement these Invalidity Contentions.
`
`These Invalidity Contentions are not an admission by Shopify that the accused products,
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`including any current or past iteration of these products, are covered by, or infringe these claims.
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`Shopify reserve all rights to amend or supplement these Invalidity Contentions, including after
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`the Court issues a claim construction ruling, or if Express Mobile amends its infringement
`
`contentions to specifically point out and explain its infringement theories.
`
`The Asserted Claims are invalid as anticipated by prior art under 35 U.S.C. § 102 and/or
`
`that the Asserted Claims are obvious in view of prior art and the knowledge of a person having
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`ordinary skill in the art under 35 U.S.C. § 103. Shopify reserves the right to rely on any
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`identified piece of prior art individually to anticipate the Asserted Claims and/or to render them
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`obvious in view of the knowledge of one having ordinary skill in the art or in combination with
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`other references identified herein. Shopify reserves the right to respond to any allegations of
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`secondary considerations of obviousness set forth by Express Mobile or its expert witness, in due
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`course under the schedule set by the Court for expert reports and discovery.
`
`The charts attached as Exhibits to these Invalidity Contentions specifically point out, as
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`non-limiting examples, where the prior art anticipates, either expressly or inherently, and/or
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`renders obvious each element of the Asserted Claims. Shopify’s citation to exemplary and
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`illustrative portions of the prior art references should not be construed to mean that other
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`portions of the prior art references are not also relevant to the validity of the claims. Other
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`passages of the identified prior art may additionally disclose, either expressly or inherently,
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`information relevant to the validity of one or more elements of the Asserted Claims. Shopify
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`reserves the right to rely on any unquoted portions of the prior art as further evidence of the
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`invalidity of the Asserted Claims. Moreover, Shopify reserves the right to rely on any evidence,
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`including expert testimony, to provide context to or aid in understanding the cited portions of the
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`identified prior art.
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`Certain pieces of identified prior art inherently or implicitly disclose features of the
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`Asserted Claims. Shopify reserves the right to rely on inherency and/or secondary documents to
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`demonstrate the invalidity of the Asserted Claims based on the inherent or implicit disclosure in
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`these cited prior art references. Further, Shopify may rely on any evidence, including expert
`
`testimony, to establish the express, implicit, or inherent disclosure of certain features of the prior
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`art, or the knowledge of a person of ordinary skill in the art, to invalidate the Asserted Claims.
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`Shopify also reserves the right to rely on any evidence, including expert testimony, to prove that
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`the disclosures or prior art cited herein are enabled or to explain the meaning of a term used in
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`the disclosures or any prior art cited herein.
`
`For the prior art that renders the Asserted Claims obvious, non-limiting examples of the
`
`reasons why the prior art renders the asserted claims obvious, including exemplary identification
`
`of any such combinations of prior art showing obviousness is provided below. One of ordinary
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`skill in the art would recognize that each charted prior art item can be combined with other
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`charted prior art items when a particular prior art item lacks or does not explicitly disclose an
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`element or feature of an Asserted Claim including for the reasons discussed herein, as well as for
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`reasons to be explained by expert testimony according to the Court’s schedule for such
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`disclosures.
`
`The United States Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)
`
`emphasized that inventions arising from ordinary innovation, ordinary skill, or common sense
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`should not be patentable. Id. at 402, 412-13, 419-22, 427-28. A patent claim may be obvious if
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`the combination of elements was obvious to try or if there existed at the time of the invention a
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`known problem for which there was an obvious solution encompassed by the patent’s claims.
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`When a work is available in one field of endeavor, design incentives and other market forces can
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`prompt variations of it, either in the same field or a different one. If a person of ordinary skill
`
`can implement a predictable variation, Section 103 likely bars its patentability. Id. at 417. The
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`Court stated that courts should “look to interrelated teachings of multiple patents; the effects of
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`demands known to the design community or present in the marketplace; and the background
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`knowledge possessed by a person having ordinary skill in the art, all in order to determine
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`whether there was an apparent reason to combine the known elements in the fashion claimed by
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`the patent at issue.” Id. at 418. KSR does not mandate evidence of a motivation or suggestion to
`
`combine prior art references. See Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir.
`
`2008); TGIP, Inc. v. AT&T Corp., 527 F. Supp. 2d 561, 580-81 (E.D. Tex. 2007). “[A] court can
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`take account of the inferences and creative steps that a person of ordinary skill in the art would
`
`employ” to resolve the question of obviousness. KSR, 550 U.S. at 418.
`
`Applying the principles of KSR to the Asserted Claims, one of ordinary skill in the art
`
`tasked with implementing such a system in accordance with the Asserted Claims would be
`
`motivated to investigate the various existing systems, solutions, patents, and other publications,
`
`including those identified herein, to address his or her particular needs. The combinations and
`
`modifications of the prior art to invalidate the Asserted Claims would have arisen from ordinary
`
`innovation, ordinary skill, or common sense and/or would have been obvious to try or otherwise
`
`predictable in the fields of website creation. A person of ordinary skill would have had a
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`reasonable expectation of success in combining known prior art to achieved the claimed
`
`inventions given that the results achieved in the field of website creation are predictable, since
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`software code implemented according to well-known programming languages, and especially
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`where the Asserted Claims are directed to well-known prior art functionality. A person having
`
`ordinary skill in the art would have been motivated to combine the prior art based on the nature
`
`of the problem to be solved, the teachings of the prior art, and the knowledge of persons having
`
`ordinary skill in the art.
`
`In light of the above, and for the reasons stated herein and in the attached claim charts:
`
`• Claims 1-6, 9, 11-15, 19, 23, and 37 of the ’397 patent are invalid for failing to
`
`comply with 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`• Claims 1-4, and 6 of the ’168 patent are invalid for failing to comply with 35
`
`U.S.C. §§ 101, 102, 103, and/or 112.
`
`• Claims 1, 3, 5-7, 11, 12, 14-18, and 22 of the ’755 patent are invalid for failing to
`
`comply with 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`• Claims 1, 3, 5-7, 11-13 of the ’287 patent are invalid for failing to comply with 35
`
`U.S.C. §§ 101, 102, 103, and/or 112.
`
`• Claims 1, 3-7, 11-13, 15, 17-21, 25-27 of the ’044 patent are invalid for failing to
`
`comply with 35 U.S.C. §§ 101, 102, 103, and/or 112.
`
`II.
`
`U.S. PATENT NO. 6,546,397
`
`A.
`
`35 U.S.C. §§ 102 and 103: Anticipation and Obviousness
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`Shopify identifies the following prior art now known to it that anticipates or renders
`
`obvious certain claims of the ’397 patent (the “’397 Asserted Claims”), either expressly or
`
`inherently as understood by a person having ordinary skill in the art, as demonstrated in the
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`accompanying charts. Each of these prior art patents, publications, and systems anticipates
`
`and/or renders obvious the asserted claims. In some instances, Shopify has treated certain prior
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`art as anticipating, where certain elements are inherently present based at least on Express
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`Mobile’s apparent claim constructions in Express Mobile’s infringement contentions.
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`The following references and systems1 are prior art under at least 35 U.S.C. §§ 102(a),
`
`(b), (e), and/or (g).
`
`TABLE 1: INVALIDATING PRIOR ART FOR THE ’397 PATENT
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`PRIOR ART BASIS
`102(e)
`102(e)
`102(a) and/or (b)
`
`102(e)
`102(a) and/or (b)
`102(a) and/or (b)
`
`102(e)
`102(e)
`102(e)
`102(a) and/or (b)
`
`102(a) and/or (b)
`102(a) and/or (b)
`
`REFERENCE
`U.S. Patent No. 6,230,174 (“Berger”)
`U.S. Patent No. 6,185,587 (“Bernardo”)
`Z. Yan and K. Zhang, A Visual Programming Tool for User
`Interface and Web Page Generation (1998) (“Yan”)
`U.S. Patent No. 6,141,018 (“Beri”)
`FrontPage 2000, Microsoft Corporation (“FrontPage”)
`M. Gaedke et al., Web Content Delivery to Heterogeneous Mobile
`Platforms, Proceedings of the Workshops on Data Warehousing
`and Data Mining: Advances in Database Technologies (Nov. 19-
`20, 1998) (“Gaedke”)
`U.S. Patent No. 6,313,835 (“Gever”)
`U.S. Patent No. 6,343,302 (“Graham”)
`U.S. Patent No. 6,175,842 (“Kirk”)
`T. Kopetzky & M. Muhlhauser, Visual preview for link traversal
`on the World Wide Web, Computer Networks 31 (“Kopetzky”)
`PCT International Publ. No. WO 98/20434 (“Lenz”)
`S. Liew, et al., INTELLECT: A System for Authoring, Distributing,
`and Presenting Multimedia Contents over the Internet, IEEE Int’l
`Conference on Multimedia Computing and Systems (June 7-11,
`1999) (“Liew”)
`U.S. Patent No. 6,369,821 (“Merrill”)
`A. Müller, et al., Towards the Virtual Internet Gallery, IEEE
`International Conference on Multimedia Computing and Systems
`(June 7-9, 1999) (“Müller”)
`NetObjects Fusion 4.0 (“NetObjects”)
`Netscape Composer, by Netscape Communications Corporation
`(“Netscape Composer”)
`V. Quint & I. Vatton, An Introduction to Amaya, W3 Consortium
`(Feb. 20, 1997) (“Quint”)
`R. Guetari, et al., Amaya: an Authoring Tool for the Web,
`Proceedings of the 5th Maghrebian Conference on Software
`
`1 To the extent that a system anticipates a claim, the underlying references and admitted prior art
`also anticipate and/or render the claim obvious alone or in combination with other references.
`
`102(e)
`102(a) and/or (b)
`
`102(a) and/or (b)
`102(a) and/or (b)
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`102(a) and/or (b)
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`102(a) and/or (b)
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`Engineering and Artificial Intellegence (1998) (“Quint1”)
`B. Sawyer & D. Greely, Creating GeoCities Websites, Muska &
`Lipman Publishing (1999) (“Sawyer”)
`P. Selfridge & T. Kirk, Cospace: Combining Web Browsing and
`Dynamically Generated, 3D, Multiuser Environments, AT&T
`Labs. (Spring 1999) (“Selfridge”)
`U.S. Patent Appl. Publ. No. 2002/0091725 (“Skok”)
`F. Tamiosso, et al., Building Interactive Animations using VRML
`and Java, Brazilian Symposium on Computer Graphics and Image
`Processing (Oct. 14-17, 1997) (“Tamiosso”)
`Silverstream System, by Silverstream Software, Inc.
`(“Silverstream”)
`
`A. Crespo and E. Bier, WebWriter: A Broswer-Based Editor for
`Constructing Web Applications, Fifth Annual World Wide Web
`Conference (May 6-10, 1996) (“WebWriter I”) and A. Crespo et
`al., Responsive Interaction for a Large Web Application, 29
`Computer Networks and ISDN Systems 8-13, 1507-17 (Sept.
`1997) (“WebWriter II,” collectively with Web Writer I, “Web
`Writer”)
`U.S. Patent No. 6,396,500 (“Qureshi”)
`Java Studio, by Sun Microsystems (“Java Studio Program”) and/or
`Weaver, L. and Robertson, L., Java Studio By Example, Sun
`Microsystems Press (1998)
`U.S. Patent No. 5,842,020 (“Faustini”)
`U.S. Patent No. 6,219,680 (“Bernardo ’680”)
`OLAP, Relational and Multidimensional Database Systems,
`George Colliat (“Colliat”)
`U.S. Patent No. 5,905,985 (“Malloy”)
`U.S. Patent No. 6,209,029 (“Epstein”)
`
`
`102(a) and/or (b)
`
`102(a) and/or (b)
`
`102(e)
`102(a) and/or (b)
`
`102(a) and/or (b)
`
`102(a) and/or (b)
`
`102(e)
`102(a) and/or (b)
`
`102(a), (b) and/or (e)
`102(e)
`102(a) and/or (b)
`
`102(a) and/or (e)
`102(e)
`
`Charts citing exemplary disclosures of each limitation of each asserted claim in each of
`
`the above references may be found as Exhibits A-* to these Invalidity Contentions. These
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`invalidity assertions are not an admission by Shopify that any of the accused products are
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`covered by or infringe these claims, particularly when these claims are properly construed. These
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`invalidity assertions are not an admission that Shopify concedes any claim construction implied
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`or suggested by Express Mobile’s Counterclaims or Infringement Contentions.
`
`Shopify reserves the right to identify additional prior art references that, when combined
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`with the prior art, would render the subject matter of the claims obvious. Each anticipatory prior
`
`art reference disclosed in the preceding section, either alone or in combination with other prior
`
`art, also renders the ’397 Asserted Claims invalid as obvious. Each anticipatory prior art
`
`reference may be combined with (1) information known to persons skilled in the art at the time
`
`of the alleged invention, (2) any of the other anticipatory prior art references, and/or (3) any of
`
`the additional prior art identified in this section. Shopify’s contention that the anticipatory prior
`
`art references may be combined to render the asserted claims of the ’397 patent obvious under 35
`
`U.S.C. § 103 is not an admission or suggestion that the references do not independently
`
`anticipate or render obvious the asserted claims. Moreover, in addition to the below
`
`combinations, one of ordinary skill in the art would have arrived at the claimed invention based
`
`on the references and admitted prior art listed in the attached claim charts in combination with
`
`the references in this section and its subsections and the natural progression of the field or
`
`common sense.
`
`1.
`
`Prosecution History and Related Applications
`
`Shopify incorporates by reference the prior art references of record in the prosecution of
`
`the ’397 patent and related applications, as well as the prior art discussed in the specification of
`
`each of these patents. Shopify reserves the right to present additional arguments.
`
`2.
`
`Obviousness
`
`A consideration of the KSR obviousness factors leads to the conclusion that the ’397
`
`patent is invalid for obviousness.
`
`The knowledge of a person of ordinary skill in the art at the time of the alleged invention
`
`would have included all prior art, including knowledge of the features of various programming
`
`languages available at the time, and a person of ordinary skill in the art would have considered
`
`the prior art in view of this background knowledge. This would include, for example, in addition
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`to the references listed in Table 1:
`
`• Cascading Style Sheets, level 1, W3C Recommendation 17 Dec 1996, revised 11 Jan
`
`1999, which was published by W3C at least as early as January 11, 1999 and constitutes
`
`prior art to the Patents-in-Suit under at least 35 U.S.C. §§ 102(a) and/or (b);
`
`• Cascading Style Sheets, level 1, W3C Recommendation 17 Dec 1996, which was
`
`published by W3C at least as early as December 17, 1996 and constitutes prior art to the
`
`Patents-in-Suit under at least 35 U.S.C. §§ 102(a) and/or (b);
`
`• Cascading Style Sheets, level 2 CSS2 Specification, W3C Recommendation 12 May
`
`1998, which was published by W3C at least as early as May 12, 1998 and constitutes
`
`prior art to the Patents-in-Suit under at least 35 U.S.C. §§ 102(a) and/or (b);
`
`• Standard ECMA-262, published by ECMA at least as early as June 1997 and constitutes
`
`prior art to the Patents-in-Suit under at least 35 U.S.C. §§ 102(a) and/or (b);
`
`• Standard ECMA-262 2nd Edition, published by ECMA at least as early as August 1998
`
`and constitutes prior art to the Patents-in-Suit under at least 35 U.S.C. §§ 102(a) and/or
`
`(b);
`
`• Standard ECMA-262 3rd Edition, published by ECMA at least as early as December
`
`1999 and on information and belief constitutes prior art to the Patents-in-Suit under at
`
`least 35 U.S.C. §§ 102(a) and/or (b);
`
`• J. Gosling, et al., The Java Language Specification, published by Addison-Wesley, which
`
`was published at least as early as 1996 and constitutes prior art to the Patents-in-Suit
`
`under at least 35 U.S.C. §§ 102(a) and/or (b);
`
`• L. Friendly and B. Joy, The Java Virtual Machine Specification, published by Addison-
`
`Wesley, which was published at least as early as 1997 and constitutes prior art to the
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`Patents-in-Suit under at least 35 U.S.C. §§ 102(a) and/or (b);
`
`• HTML 3.2 Reference Specification, W3C Recommendation January 14, 1997, which is a
`
`specification for HTML 3.2 published by W3C at least as early as January 14, 1997 and
`
`which constitutes prior art to the Patents-in-Suit under at least 35 U.S.C. §§ 102(a) and/or
`
`(b);
`
`• HTML 4.0 Specification, W3C Recommendation, revised on April 24, 1998, which is a
`
`specification for HTML 4.0 published by W3C at least as early as April 24, 1998 and
`
`which constitutes prior art to the Patents-in-Suit under at least 35 U.S.C. §§ 102(a) and/or
`
`(b);
`
`• V. Piroumian, Java GUI Development, Sams (1999) (“Piroumian”), and which
`
`constitutes prior art to the Patents-in-Suit under at least 35 U.S.C. §§ 102(a);
`
`•
`
`J. Zukowski, Java AWT Reference, O’Reilly (1997) (“Zukowski”), and which constitutes
`
`prior art to the Patents-in-Suit under at least 35 U.S.C. §§ 102(a) and/or (b);
`
`• David Flanagan, Java in a Nutshell, O’Reilly (1997) and which constitutes prior art to the
`
`Patents-in-Suit under at least 35 U.S.C. §§ 102(a) and/or (b); and
`
`•
`
`Java and Java Virtual Machines, by Sun Microsystems, which constitute prior art to the
`
`Patents-in-Suit under at least 35 U.S.C. §§ 102(a) and/or (b).
`
`In light of this background knowledge and the state of the art, a person of ordinary skill in
`
`the art would have been motivated to combine any one of the references in Table 1 with any
`
`other of the references in Table 1 in a manner that renders obvious each asserted claim of the
`
`’397 patent. Under KSR, 550 U.S. 398, a person of ordinary skill in the art would have perceived
`
`a number of motivations to implement such a combination.
`
`As an initial matter, many of the prior art references for the First Set of Patents address
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`the problem of designing software for creating and displaying websites or components of
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`websites, and each of the prior art references listed in Table 1 is at least related to the field of
`
`website creation. In addressing the problem of designing software for authoring and displaying
`
`websites, one of ordinary skill in the art would have been motivated to combine the teachings of
`
`such significant research. For example, a person of ordinary skill would have understood that
`
`laymen may not possess knowledge of the programming language(s) that may be used to create
`
`websites, and in designing an authoring tool, a person of ordinary skill in the art would have
`
`looked to references that disclose simplified or more user-friendly processes for creating and
`
`displaying websites. See, e.g., Bernardo at 1:61-67 (“Among the inherent difficulties in creating
`
`and maintaining such Web sites is that the HTML used to define the Web pages . . . is difficult to
`
`compose and read.”); Bernardo ’680 at 2:49-55; Faustini at 4:59-67 (“As the Java system and
`
`applet creation becomes more widely used, the need to simplify the development of these
`
`applications becomes desirable.”); Yan at 3 (“A good user interface design should reduce the
`
`user’s information load and avoid overloading the user’s memory, because people are better at
`
`recognizing information than recalling information. The user should not be expected to recall a
`
`set of complex commands. Instead, a list of commands, options, or data should be presented to
`
`the user [Treu 94].”).
`
`“WYSIWYG editors” (an acronym for “What-You-See-Is-What-You-Get editors”) were
`
`a principal prior art tool for providing such a simplified and user-friendly processes for creating
`
`and displaying website content. Indeed, many of the prior art references listed in Table 1 are in
`
`the specific field of WYSIWYG webpage editors and/or browser-based WYSIWYG webpage
`
`editors, including Java Studio, WebWriter, Graham, Yan, NetObjects, Quint, Quint1, Sawyer
`
`and Silverstream. A person of ordinary skill in the art would have recognized that these
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`references all disclose simplified and user-friendly tools for designing and displaying websites
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`and would have looked to any of these references when designing a website authoring tool.
`
`Additionally, a person of ordinary skill designing software tools for creating and
`
`displaying websites would have looked to all the teachings of the prior art regarding functionality
`
`that a user might wish to integrate into a webpage or to display the webpage, and would have
`
`incorporated such functionality into the software to appeal to users. Indeed, many of the prior art
`
`references listed in Table 1 describe various components that could be included in websites to
`
`provide greater interactivity or an enhanced user experience. For example, Gever teaches the
`
`ability to select an animation for inclusion in a web page. Gever at 8:12-19 (“According to the
`
`selected category, the user is provided with a list of titles of basic animation sequences. Each of
`
`the animation sequences is generated by a respective script, preferably written in the JavaScript
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`language, or as an executable Java program, which is stored on server 26. The user may preview
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`any of the animation sequences on display 22 in order to select an animation sequence which
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`forms a basis of the Web page to be created for the user.”); see also Tamioso at 1-2 (discussing
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`the use of Java to develop interactive animations); Berger at 2:51-56 (discussing the
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`development of animations for web pages); Beri at 2:40-53 (discussing animated marquees);
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`Merrill at 1:62-2:58 (discussing scripts to control animations). Similarly, Liew teaches a
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`multimedia content-development and deployment platform that could be used to generate web
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`pages with multimedia content such as audio, video, and animation. See, e.g., Liew at 63 (“With
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`reference to Fig. 1, the media-coordination subsystem at the client is responsible for the
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`coordination of the retrieval of multimedia data and their presentation. Media such as text,
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`images, audio, video, animation, etc. are supported.”); see also Kopetsky at 1526-28 (discussing
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`visual previews of linked content). And Müller likewise discloses a multimedia virtual internet
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`“gallery” through which the user could view three-dimensional representations of artworks for
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`sale. E.g., Müller at 2-8; see also Selfridge at 28 (discussing the development of Web-accessible
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`3D interactive environments). A person or ordinary skill in the art would have been motivated to
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`combine any of these references with one another or with any of the references on website
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`authoring tools in order to create websites (and related authoring tools) with greater interactivity
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`and user appeal.
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`A person of ordinary skill would also have recognized the need to minimize the size of
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`files required to display a webpage in light of limited user bandwidth, and would have looked to
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`all known techniques and research to address this problem, including the references listed in
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`Table 1. See, e.g., William Stanek, Java Archives in Java 1.2, PC Magazine 1999 (“An added
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`bonus of using compressed archive files is that they can greatly improve the performance of
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`applets, and these performance benefits extend to both sides of the client/server Web equation.
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`Compressed archives take up less file space, and your browser can download these archives
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`many times faster than the original uncompressed files. On the Web server, the time savings are
`
`also substantial. With separate files, the server generates a separate HTTP transaction for each
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`file. Each transaction uses server resources and can take a few seconds to generate. Thus, by
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`bundling many files into a single file, you can speed up the server’s response time and reduce the
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`dreaded wait––and we all hate to wait.”); Colliat at 65-67 (discussing a database structure with
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`the advantages of “faster calculation, much less disk space, and less programming effort”);
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`David Flanagan, Java in a Nutshell, O’Reilly (1997) at 99-100 (“Prior to Java 1.1, each of these
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`files was loaded through a separate HTTP request, which is fairly inefficient. With Java 1.1, all
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`(or many) of the files an applet needs can be combined into a single JAR file, which an applet
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`viewer or Web browser can download with a single HTTP request. [In addition, a manifest file in
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`the JAR] can be used by the applet viewer or Web browser to verify that the files in the archive
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`have not been corrupted since the JAR was created.”); Gaedke at 206 (“Information to be
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`delivered to mobile devices may have to be adapted to bandwidth availability and transmission
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`cost.”); Lenz at 1:29-2:4 (claimed invention directed in part to solving the “problem with
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`conventional web sites [that] the size of the data files that need to be downloaded by a user is
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`increasing significantly”). A person of ordinary skill in the art would have been motivated to
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`combine these references with any of the references on website authoring tools or website
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`multimedia content in order to generate websites (and related authoring tools) with better
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`performance in light of internet bandwidth limitations.
`
`A person of ordinary skill would have further recognized the problem of displaying a
`
`webpage on devices with disparate display capabilities and browser window sizes, and would
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`have looked to all known techniques and research to address this problem, including the
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`references listed in Table 1. See, e.g., U.S. Patent No. 6,300,947 (“Kanevsky”) at 1:18-21 (“If
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`such a web site is accessed from devices with small screens (e.g., palmtops, web phones), only
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`small parts of the web pages can be viewed by users . . . .”); Gaedke at 206 (“PDAs and other
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`mobile devices have very little screen real estate compared to desktop computers.”); Qureshi at
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`3:38-46 (“Although the browser is used to generate a graphical display of objects included in an
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`HTML page, the dimensions of the browser’s display window can differ from the dimensions
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`initially coded for the display space of the page. The size of the browser’s display window can
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`vary according to the resolution of the video display or the window dimensions that are selected
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`by a user.”); see also Selfridge at 27 (“Cospace sits ‘on top’ of the Web . . . . It does so in a way
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`that is transparent to the Web sites themselves. This means that Web sites are not required to be
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`modified in any way.”); Kirk at Abstract (similarly discussing platform-independent “cospace”
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`content). A person of ordinary skill in the art would have been motivated to combine these
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`references with any of the references on website authoring tools or website content and file size
`
`in order to generate websites (and related authoring tools) with better and more user-friendly
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`cross-platform performance.
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`Additionally, it would have been obvious to implement any of the features disclosed in
`
`the references in Table 1 in a platform-independent (as opposed to platform-dependent) manner.
`
`For example, by the time of the alleged invention, the use of Java and Java virtual machines was
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`widespread, and a person of ordinary skill in the art would have recognized that he or she could
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`develop content a single time in Java (such as a single Java applet) to be deployed through a
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`website to different users, without the need to develop multiple versions of the content for the
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`various operating systems and hardware that different users may have. Indeed, at the time of the
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`alleged invention, authoring tools such as the SilverStream system supported this type of “write-
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`once” approach in a simplified and more user-friendly environment compared to creating web
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`pages with Java in the first instance. E.g., SilverStream Website, previously available at
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`http://silverstream.com:80/products/demo/screengrabdemo/demo.html, at BC_EM589,
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`BC_EM594 (noting that “[Java] can produce sophisticated applications that run in any Web
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`browser, on all platforms,” and that SilverStream supports the development of these applications
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`“in a single, integrated application environment that, for the first time, unifies all Web
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`application development and deployment functions in a complete, consistent, integrated
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`solution”). Such a “write-once” approach would have been obvious to a person of ordinary skill
`
`in the art because it was a convention