Facebook, Inc.*
`v.
`Express Mobile, Inc.
`IPR2021-01455 (Patent 9,063,755 B2)
`IPR2021-01456 (Patent 9,471,287 B2)
`IPR2021-01457 (Patent 9,928,044 B2)
`Petitioner’s Demonstratives
`December 6, 2022
`
`Before Jeffrey S. Smith, Amber L. Hagy, Aaron W. Moore, and Russell E. Cass,
`Administrative Patent Judges
`
`* Google LLC, Expedia, Inc., Homeaway.com, Inc., Squarespace, Inc., Wix.com, Ltd., and Wix.com, Inc. have
`been joined as petitioners in IPR2021-01455
`
`* Google LLC has been joined as petitioner in IPR2021-01457 and IPR2021-01456
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`1
`
`Facebook's Exhibit 1034
`
`
`v.
`Express Mobile, Inc.
`IPR2021-01455 (Patent 9,063,755 B2)
`IPR2021-01456 (Patent 9,471,287 B2)
`IPR2021-01457 (Patent 9,928,044 B2)
`Petitioner’s Demonstratives
`December 6, 2022
`
`Before Jeffrey S. Smith, Amber L. Hagy, Aaron W. Moore, and Russell E. Cass,
`Administrative Patent Judges
`
`* Google LLC, Expedia, Inc., Homeaway.com, Inc., Squarespace, Inc., Wix.com, Ltd., and Wix.com, Inc. have
`been joined as petitioners in IPR2021-01455
`
`* Google LLC has been joined as petitioner in IPR2021-01457 and IPR2021-01456
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`1
`
`Facebook's Exhibit 1034
`
`
`
`IPR2021-01455 - Claim 1 of the ’755 Patent
`
`U.S. Patent 9,063,755 B2
`Ex. 1001
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`2
`
`
`
`IPR2021-01456 - Claim 1 of the ’287 Patent
`
`U.S. Patent 9,471,287 B2
`Ex. 1001
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`3
`
`
`
`IPR2021-01457 - Claim 1 of the ’044 Patent
`
`U.S. Patent 9,928,044 B2
`Ex. 1001
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`4
`
`
`
`IPR2021-01455 - Instituted Grounds (’755)
`
`• Ground 2 adds NFS Administration for the ability to retrieve
`code from a remote network-connected server
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`5
`
`
`
`IPR2021-01456 - Instituted Grounds (’287)
`
`• Ground 2 adds NFS Administration for the ability to retrieve
`code from a remote network-connected server
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`6
`
`
`
`IPR2021-01457 - Instituted Grounds (’044)
`
`• Ground 2 adds NFS Administration for the
`ability to retrieve code from a remote network-
`connected server
`
`• Grounds 3 & 4 further add Witkowski to
`address narrow construction of “database”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`7
`
`
`
`Claim Construction
`Terms previously proposed or construed in district court case
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`8
`
`
`
`Claim Construction
`• Terms previously proposed or construed in district court cases:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`9
`
`
`
`Prior Art
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`10
`
`
`
`Java
`
`Java Source Code
`
`Java Compiler
`
`Java Bytecode
`
`file.java
`
`file.class
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(E.g., Anderson, pp.0035, 0039; Ambrose-Haynes, p.0055)
`11
`
`
`
`Java
`
`Java Bytecode
`
`Java Virtual Machine
`
`jvm.dll
`Microsoft Windows
`
`libvm.so
`
`Linux
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(E.g., Anderson, pp.0035; Ambrose-Haynes, pp.0055-0057)
`12
`
`
`
`Anderson (Ex. 1003)
`
`(Anderson, p.0035)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(E.g., Petition (-01456) at 15-16)
`13
`
`
`
`Anderson (Ex. 1003)
`
`(Anderson, pp.00102, 00287)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(E.g., Petition (-01456) at 12-13, 15-16, 33-35)
`14
`
`
`
`Anderson (Ex. 1003)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Anderson, pp.00286, 00287)
`
`(E.g., Petition (-01456) at 33-35)
`15
`
`
`
`Anderson (Ex. 1003)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Anderson, pp.00301, 00307)
`
`(E.g., Petition (-01456) at 28-30)
`16
`
`
`
`Bowers (Ex. 1004)
`
`Additional detail about same Google search web services described in Anderson
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Anderson, p.00102)
`
`(E.g., Petition (-01456) at 14, 22-25)
`17
`
`
`
`Jacobs (Ex. 1005)
`
`Additional detail about same Google search web services described in Anderson
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Jacobs, pp.00104-00105)
`
`(E.g., Petition (-01456) at 66-68)
`18
`
`
`
`Ambrose-Haynes (Ex. 1006)
`
`Describes well-known characteristics of Java
`
`(Ambrose-Haynes, p.0055)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(E.g., Petition (-01456) at 14, 61-62)
`19
`
`
`
`Geary (Ex. 1011) (’287 & ’044)
`
`Describes standard Java technologies (such as classes and subclasses)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Geary, p.0084 (red annotation added))
`
`(E.g., Petition (-01456) at 14, 36-39)
`20
`
`
`
`NFS Administration (Ex. 1007) (’287) & Witkowski (Ex. 1013) (’287 & ’044)
`
`• NFS Administration:
`Cited for ability to retrieve code from a remote network-
`connected server
`
`• Witkowski:
`Cited in the event of a narrow construction of “database”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(E.g., Petition (-01457) at 15-16)
`21
`
`
`
`Key Disputes
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`22
`
`
`
`IPR2021-01456 - Key Disputes (’287)
`
`• “Application”
`
`• “Player”
`
`• “authoring tool configured
`to…[produce] a Player”
`
`• Motivation to Combine
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`23
`
`
`
`IPR2021-01455 - Key Disputes (’755)
`
`• “Application”
`
`• “Player”
`
`• “authoring tool configured
`to…[produce] a Player”
`
`• Motivation to Combine
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`24
`
`
`
`IPR2021-01457 - Key Disputes (’044)
`
`• “application”
`
`• “player”
`
`• Motivation to Combine
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`25
`
`
`
`“Application”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`26
`
`
`
`“Application” - Petition
`• Java application (portable bytecode) produced using Creator authoring tool
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Anderson, pp.0035, 0087)
`
`(Petition (-01456) at 15-16, 58-61)
`
`27
`
`
`
`Java
`
`Java Source Code
`
`Java Compiler
`
`Java Bytecode
`
`file.java
`
`file.class
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(E.g., Anderson, pp.0035, 0039; Ambrose-Haynes, p.0055)
`28
`
`
`
`Java
`
`Java Bytecode
`
`Java Virtual Machine
`
`jvm.dll
`Microsoft Windows
`
`libvm.so
`
`Linux
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(E.g., Anderson, pp.0035; Ambrose-Haynes, pp.0055-0057)
`29
`
`
`
`“Application” - Petition
`• Java application produced using Creator authoring tool
`
`(Ex. 1002 (Madisetti), ¶139)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition (-01456) at 61)
`
`30
`
`
`
`“Application” - Petition
`• Patent specification identifies Java program as an “Application”
`
`(’287, 5:59-64)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition (-01456) at 58)
`
`31
`
`
`
`“Application”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`32
`
`
`
`“Application” - Patent Owner Arguments
`
`• PO: A Java application is not “device independent code” because:
`
`1. Java is “specific to the… programming language… of a device”
`
`2. Java is “specific to the… platform of a device”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(PO Resp. (-01456) at 12-16)
`
`33
`
`
`
`“Application” - Response to Patent Owner
`• Patent specification confirms Java application is “device-independent code”
`
`. . .
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(’287, 5:13-19, 5:60-6:1)
`
`(Reply (-01456) at 2-4)
`
`34
`
`
`
`“Application” - Response to Patent Owner
`• Patent specification only describes PDL as exemplary embodiment,
`device-independent format
`
`(’287, 6:54-58; see generally, ’287, 6:54-7:20)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply (-01456) at 5)
`
`35
`
`
`
`“Application” - Response to Patent Owner
`• Prior Art confirms that Java applications are “device-independent code”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`36
`
`(Anderson, p.0035; Ambrose-Haynes, p.0055)
`
`(Reply (-01456) at 5-6)
`
`
`
`“Application” - Response to Patent Owner
`• “programming language… of a device” does not refer to any programming
`language that can be used to write software for a device
`
`. . .
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ex. 1021 (Madisetti), ¶24)
`(Reply (-01456) at 7-8)
`
`37
`
`
`
`“Application” - Response to Patent Owner
`• “programming language… of a device” does not refer to any programming
`language that can be used to write software for a device
`
`. . .
`
`Java is not “specific to” the
`programming language of a device
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ex. 1022, pp.005-006, 008; see also Ex. 1021 (Madisetti), ¶24)
`
`(Reply (-01456) at 7-8)
`
`38
`
`
`
`“Application” - Response to Patent Owner
`• “the… platform of a device” refers to the specific technology platform of the device
`such as its hardware and processor – not platform-independent Java bytecodes:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ex. 1021 (Madisetti), ¶26)
`(Reply (-01456) at 9-10)
`
`39
`
`
`
`“Application” - Response to Patent Owner
`• “the… platform of a device” refers to the specific technology platform of the
`device such as its hardware and processor – consistent with specification:
`
`(’287, 5:4-17; see also Ex. 1021 (Madisetti), ¶26)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply (-01456) at 9-10)
`
`40
`
`
`
`“Application” - Response to Patent Owner
`• “the… platform of a device” refers to the specific technology platform of the device
`such as its hardware and processor – not platform-independent Java bytecodes:
`
`Java is not “specific to” the platform of a device
`
`(Ex. 1022, pp.005-006; Ex. 1023, p.003; see also Ex. 1021 (Madisetti), ¶26)
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply (-01456) at 9-10)
`
`41
`
`
`
`“Application” - Response to Patent Owner
`• PO’s reading of “device-independent code” construction would render claims inoperable –
`no “Application” could ever be “device-independent code”
`Even Applications in PDL format are generated using the authoring
`platform running on a device, and rely on that platform’s programming
`language and Player to execute the resulting Application:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(’287, 6:8-15, 24:1-3;
`see also ’287, 5:27-28, 14:3-6)
`(Reply (-01456) at 10-12)
`
`42
`
`
`
`“Player”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`43
`
`
`
`“Player” - Response to Patent Owner
`
`?
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply (-01456) at 12-13)
`
`44
`
`
`
`“Player” - Petition
`
`• Java Virtual Machine (“JVM”)
`
`(Ambrose-Haynes, p.0055)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition (-01456) at 61-62)
`
`45
`
`
`
`“Player” - Patent Owner Arguments
`
`• PO: JVM is not a “Player” because patent specification describes a Player and
`virtual machine as separate components
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(’287, Fig. 2B (highlighting added))
`
`(PO Resp. at 16-20)
`
`46
`
`
`
`“Player” - Response to Patent Owner
`
`• Patent specification:
`
`. . .
`
`• ’287 claim 1 (see also ’755 claim 1 & ’044 claim 14):
`
`(’287, 11:11-13, 12:10-11)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply (-01456) at 14-15)
`
`47
`
`
`
`“Player” - Response to Patent Owner
`
`• Patent specification:
`
`• JVM:
`
`(’287, 12:10-11)
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply (-01456) at 15)
`
`48
`
`
`
`“Authoring tool configured to…[produce] a Player”
`(IPR2021-01455 & IPR2021-01456) (’755 & ’287)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`49
`
`
`
`“Authoring tool configured to…[produce] a Player” (’287 only)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Institution Decision (-01456) at 22)
`
`50
`
`
`
`“Authoring tool configured to…[produce] a Player” - Petition
`1. Authoring tool produces the JVM (“a Player”) by loading the JVM into the
`computer’s memory to execute Java applications
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ambrose-Haynes, p.0056; Anderson, p.0076)
`(Petition (-01455) at 52-55)
`
`51
`
`
`
`“Authoring tool configured to…[produce] a Player” - Petition
`2. Authoring tool produces the JVM (“a Player”) in connection with
`software installation
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ambrose-Haynes, p.0055; Anderson, p.00215)
`(Petition (-01455) at 52-55)
`
`52
`
`
`
`“Authoring tool configured to…[produce] a Player” - Patent Owner Arguments
`
`1. Re loading JVM into computer’s memory:
`
`• PO:
`Authoring tool cannot
`already resides on computer
`
`“produce” JVM because JVM
`
`• PO: Ambrose-Haynes describes JVM launched by ColdFusion
`server, not ColdFusion Studio
`
`2. Re authoring tool software installation:
`
`• PO: Java Development Kit (“JDK”) does not include a JVM
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(PO Resp. (-01456) at 21-25)
`
`53
`
`
`
`“Authoring tool configured to…[produce] a Player” - Response to Patent Owner (’287 only)
`
`PO does not address Board’s determination or analysis
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply (-01456) at 16)
`
`54
`
`
`
`“Authoring tool configured to…[produce] a Player” - Response to Patent Owner
`Nothing in claim 1 requires obtaining Player from another computer –
`separately recited in dependent claims
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply (-01456) at 17)
`
`55
`
`
`
`“Authoring tool configured to…[produce] a Player” - Response to Patent Owner
`“Authoring tool” as applied to Ambrose-Haynes includes
`ColdFusion server and studio components
`
`. . .
`
`Even under PO’s line-drawing, JVM could still be loaded first time application
`attempts to utilize Java
`
`(Ex. 1024, p.002)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ambrose-Haynes, p.0056)
`
`(Reply (-01456) at 17-18)
`
`56
`
`
`
`“Authoring tool configured to…[produce] a Player” - Response to Patent Owner
`
`Java Development Kit (“JDK”) does include a JVM
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ex. 2030, p.1)
`
`(Reply (-01456) at 18-19)
`
`57
`
`
`
`Motivation to Combine
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`58
`
`
`
`Obvious to implement “authoring tool,” “Application” and “Player” on same computer
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`59
`
`(Anderson, pp.0077, 00303)
`
`(Reply (-01456) at 19-21)
`
`
`
`Obvious to implement “authoring tool,” “Application” and “Player” on same computer
`
`(Ex. 1022, p.007)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply (-01456) at 20)
`
`60
`
`
`
`JVM (“Player”) provides instructions for the display of the device
`
`(Ex. 1003, pp.00287, 00307)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply (-01456) at 21-22)
`
`61
`
`
`
`Anderson and Ambrose-Haynes are Properly Combinable
`
`(Institution Decision (-01456) at 67)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply (-01456) at 23-26)
`
`62
`
`
`
`Anderson and Ambrose-Haynes are Properly Combinable
`
`“[T]he mere disclosure of alternative designs does not teach
`away.”
`
`In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012)
`(quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004))
`
`“A known or obvious composition does not become patentable
`simply because it has been described as somewhat inferior to
`some other product for the same use.”
`In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply (-01456) at 23-24)
`
`63
`
`
`
`Anderson and Ambrose-Haynes are Properly Combinable
`
`. . .
`
`(Ambrose-Haynes, pp.0054, 0069)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Reply (-01456) at 24)
`
`64
`
`
`
`(Institution Decision (-01456) at 67)
`
`“The claims were rejected in view of thirteen references… The
`large number of cited references does not negate the
`obviousness of
`the combination,
`for the prior art uses the
`various elements for the same purposes as they are used by
`appellants, making the claimed invention as a whole obvious
`in terms of 35 U.S.C. § 103.”
`
`In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)
`(Reply (-01456) at 26-27)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`65
`
`
`
`Secondary Considerations
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`66
`
`
`
`Litigation Timeline
`
`IPR Petition
`Sept. 1, 2021
`
`PO Response
`June 23, 2022
`
`Petitioner Reply
`Sept. 15, 2022
`
`Shopify
`Litigation Begins
`March 2019
`
`Express Mobile’s
`technological importance
`theory fully disclosed
`Dec. 2020
`
`Shopify Jury
`Verdict
`Aug. 31, 2022
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Pet. Resp. re Objective Evidence at 1-2)
`67
`
`
`
`Dec. 2020 Shopify Motion to Exclude – Technological Importance Theory
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ex. 1030 at 0043)
`(Pet. Resp. re Objective Evidence at 2)
`68
`
`
`
`Shopify Jury Instructions
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ex. 1033 at 0020)
`(Pet. Resp. re Objective Evidence at 5)
`69
`
`
`
`Shopify Jury Verdict
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ex. 2041)
`70
`
`
`
`Pending Post-Trial JMOL Motion – Patent Owner’s Opposition
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ex. 1032 at 0028)
`(Pet. Resp. re Objective Evidence at 2-3)
`71
`
`
`
`Pending Post-Trial JMOL Motion
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ex. 1031 at 0031)
`(Pet. Resp. re Objective Evidence at 2-3)
`72
`
`
`
`Mangrove Partners v. VirnetX Inc., IPR2015-01047, Paper 122 at 25 (PTAB Jul. 14, 2020)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Pet. Resp. re Objective Evidence at 3-4)
`73
`
`
`
`Ingenico Inc. v. IOENGINE, LLC, IPR2019-00929, Paper 53 at 93-94 (PTAB Sep. 21, 2020)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Pet. Resp. re Objective Evidence at 3-4)
`74
`
`
`
`Ingenico Inc. v. IOENGINE, LLC, IPR2019-00929, Paper 53 at 93-94 (PTAB Sep. 21, 2020)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Pet. Resp. re Objective Evidence at 3-4)
`75
`
`
`
`Thank you
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`76
`
`
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