`
`
`
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`
`
`
`Paper 26
`Filed: June 4, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`NETFLIX, INC.,
`PETITIONER,
`
`v.
`
`GOTV STREAMING, LLC,
`PATENT OWNER.
`
`
`
`CASE IPR2023-00758
`PATENT 8,478,245
`
`
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY
`37 C.F.R. §§ 42.23 & 42.24(c)(4)
`
`

`

`IPR2023-00758
`
`
`
`Patent 8,478,245
`
`TABLE OF CONTENTS
`TABLE OF AUTHORITIES ................................................................................... iii
`CURRENT EXHIBIT LIST ...................................................................................... v
`CLAIM LISTING ...................................................................................................... x
`I.
`INTRODUCTION .............................................................................................. 1
`II. CLAIM CONSTRUCTION ............................................................................... 1
`A. “Customized to Said Application” Means “Created For” the
`Application Program .................................................................................... 1
`B. The Pages of Compiled Content Must Be in Part Generated by
`the Executing Application ........................................................................... 4
`C. All Claims Require the Recited “Application” to Run
`Remotely ...................................................................................................... 6
`III. HARIKI IN VIEW OF HARRIS FAILS TO RENDER ANY
`CLAIM OBVIOUS .......................................................................................... 10
`A. No Single Application Petitioner Identifies Renders any
`Independent Claim Obvious ...................................................................... 10
`1. The UI Skin (Identified as the “Custom Configuration”)
`Does Not Configure a Plurality of Rendering Blocks to
`Render Content in a Manner Customized to a Web Server
`(Identified as the “Application”) ......................................................... 10
`2. The HTML Files (Identified as the “Compiled Content”)
`Sent to the Mobile Device Are Not Generated in Part from
`the Execution of the Web Browser (Identified as the
`“Application”) ..................................................................................... 15
`B. Hariki’s UI Skin Is Not “Applicable” to the Received HTML
`Files ............................................................................................................ 16
`C. Petitioner Has Failed to Show Independent Claim 23 and Its
`Dependents, Claims 24–33, Are Obvious Because Hariki’s
`Engines Do Not Read HTML Files Sent to the Wireless
`Device ........................................................................................................ 19
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`IPR2023-00758
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`Patent 8,478,245
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`D. Hariki Does Not Disclose a GUI Rendering Block that controls
`the Rendering of a Ticker .......................................................................... 19
`IV. CONCLUSION ................................................................................................ 20
`
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`

`IPR2023-00758
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`
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`Patent 8,478,245
`
`TABLE OF AUTHORITIES
`
`Cases
`ACTV, Inc. v. Walt Disney Co.,
`346 F.3d 1082 (Fed. Cir. 2003) .............................................................................. 2
`AllVoice Computing PLC v. Nuance Communs., Inc.,
`504 F.3d 1236 (Fed. Cir. 2007) .............................................................................. 2
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) ............................................................................ 14
`AstraZeneca AB v. Mylan Pharms. Inc.,
`19 F.4th 1325 (Fed. Cir. 2021) ............................................................................... 3
`B/E Aerospace, Inc. v. C&D Zodiac, Inc.,
`962 F.3d 1373 (Fed. Cir. 2020) ............................................................................ 13
`DSS Tech. Mgmt., Inc. v. Apple Inc.,
`885 F.3d 1367 (Fed. Cir. 2018) ............................................................................ 14
`Eon Corp. IP Holdings v. Silver Spring Networks,
`815 F.3d 1314 (Fed. Cir. 2016) .............................................................................. 3
`Graham v. John Deere Co.,
`383 U.S. 1, 36 (1966)s .......................................................................................... 13
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ..................................................................... 11, 13
`Kilopass Tech. Inc. v. Sidense Corp.,
`No. 10-cv-02066, 2014 WL 3956703 (N.D. Cal. Aug. 12, 2014) ......................... 9
`KS Himpp v. Head-Wear Tech., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) ..................................................................... 14, 18
`Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n,
`22 F.4th 1369 (Fed. Cir. 2022) ............................................................................... 2
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) .............................................................................. 8
`Loral Fairchild Corp. v. Sony Corp.,
`181 F.3d 1313 (Fed. Cir. 1999) .............................................................................. 6
`Masimo Corp. v. Sotera Wireless, Inc.,
`No. 2022-1415, 2023 WL 6307959 (Fed. Cir. Sept. 28, 2023) ............................. 3
`
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`

`IPR2023-00758
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`Patent 8,478,245
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`Outside the Box Innovations v. Travel Caddy, Inc.,
`695 F.3d 1285 (Fed. Cir. 2012) ............................................................................ 13
`PAR Pharm., Inc. v. TWI Pharm., Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) ............................................................................ 17
`PowerOasis, Inc. v. T-MOBILE USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) .............................................................................. 8
`Rembrandt Diagnostics, LP v. Alere, Inc.,
`76 F.4th 1376 (Fed. Cir. 2023) ............................................................................. 10
`Skky, Inc. v. Mindgeek, S.A.R.L.,
`859 F.3d 1014 (Fed. Cir. 2017) ............................................................................ 18
`TF3 Ltd. v. Tre Milano, LLC,
`894 F.3d 1366 (Fed. Cir. 2018) .............................................................................. 8
`TurboCare Div. of Demag Delaval v. General Elec.,
`264 F.3d 1111 (Fed. Cir. 2001) .............................................................................. 8
`Wis. Alumni Rsch. Found. v. Apple Inc.,
`905 F.3d 1341 (Fed. Cir. 2018) .............................................................................. 7
`Statutes
`35 U.S.C. § 112 ......................................................................................................7, 8
`35 U.S.C. § 316(e) ................................................................................................... 16
`Other Authorities
`PTAB Consolidated Trial Practice Guide (Nov. 2019) ........................................... 18
`
`
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`IPR2023-00758
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`Patent 8,478,245
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`CURRENT EXHIBIT LIST1
`
`No. Brief Description
`1001 U.S. Patent No. 8,478,245
`1002
`Expert Declaration of Ben Bederson (“Bederson”)
`1003 Curriculum Vitae of Benjamin B. Bederson, Ph.D.
`1004
`File History of U.S. Patent No. 8,478,245 (corrected)
`1005 U.S. Patent Application Publication No. 2007/0150617 (“Hariki”)
`1006 U.S. Patent Application Publication No. 2003/0023755 (“Harris”)
`1007 U.S. Patent No. 7,447,486 (“Tamura”)
`1008 U.S. Patent No. 6,996,627 (“Carden”)
`1009 U.S. Patent No. 6,669,564 (“Young”)
`1010 U.S. Patent No. 6,732,183 (“Graham”)
`1011 U.S. Patent No. 6,507,727 (“Henrick”)
`1012 Webpage excerpt from Computer History Museum at
`https://www.computerhistory.org/tdih/april/6/ (last accessed
`March 29, 2023)
`https://www.webdesignerdepot.com/2009/05/the-evolution-of-cell-
`phone- design-between-1983-2009/
`Excerpts from Dan R. Olsen, Jr., Developing user interfaces (1998)
`1014
`1015 Alok Sinha, Client-server computing, in Communications of the ACM,
`35, 7 (1992)
`Tim Berners-Lee, Robert Cailliau, Ari Luotonen, Henrik Frystyk
`Nielsen, and Arthur Secret, The World-Wide Web.
`Communications of the ACM 37, 8 76-82 (August 1994),
`available at http://dx.doi.org/10.1145/179606.179671
`Eric Kasten, HTML: A Gentle Introduction, Linux Journal (July 1995),
`1017
`1018 U.S. Patent Application Publication No. 2013/0124961 (“Linburn”)
`1019 U.S. Patent No. 8,111,326 (“Talwar”)
`
`See Ex. 2029, 5:21–6:11.1 Relevant portions of exhibits may be highlighted to help
`the Panel locate cited sections.
`
`1016
`
`1013
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`No. Brief Description
`1020 Order re Scheduling Conference, GoTV Streaming, LLC v. Netflix, Inc.,
`2:22-cv-07556 (C.D. Cal. issued Feb. 13, 2023) (Doc. 61)
`1021 Complaint in GoTV Streaming, LLC v. Netflix, Inc., No. 2:22-cv-07556-
`RGK-SHK (C.D. Cal. October 17, 2022)
`1022 U.S. Patent Application Publication No. 2003/0106022 (“Goodacre”)
`1023
`https://web.archive.org/web/20070406171650/http://www.zenzui.com/
`products.html
`1024 Memorandum in Opposition to GoTV Streaming, LLC’s Motion for
`Judgment as a Matter of Law
`1025 Declaration of Stephen A. Marshall in support of Petitioner’s
`unopposed motion for pro hac vice admission.
`Excerpts from Trial Transcript Day 2
`1026
`1027 Associated, Cambridge Learner’s Dictionary (3rd ed. 2007)
`1028
`From, Merriam-Webster’s Collegiate Dictionary (11th ed. 2007)
`1029 Deposition of Mr. Stuart Lipoff (April 2, 2024) (“Lipoff Dep.”)
`2001 CAMPBELL-KELLY ET AL., Mainframes to Smartphones: A History of
`the International Computer Industry, Ch. 11 (Harvard Univ.
`Press 2015)
`2002 GALAZZO, Timeline from 1G to 5G: A Brief History on Cell Phones
`(Sept. 21, 2020), available at https://www.cengn.ca/information-
`centre/innovation/timeline-from-1g-to-5g-a-brief-history-on-cell-
`phones/
`2003 Cingular MEdia Mall Games and Motorola Page (March 23, 2006),
`available at
`https://web.archive.org/web/20060323054853/http://www-
`xl.cingularextras.com/fuel/enduser/portal/endUserHTMLDir?c1=
`3&dc=0 and
`https://web.archive.org/web/20060323054841/http://www-
`xl.cingularextras.com/fuel/enduser/portal/endUserHTMLSelectP
`hone?makeName=motorola&dc=0
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`IPR2023-00758
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`Patent 8,478,245
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`No. Brief Description
`2004
`Suite, Definition & Meaning - Merriam-Webster, available at
`https://www.merriam-webster.com/dictionary/suite
`2005 U.S. Patent No. 7,380,205 to Bezrukov et al. (filed Oct. 28, 2003)
`2006
`Scheduling Order, GoTV Streaming, LLC v. Netflix, Inc., 2:22-cv-
`07556 (C.D. Cal. issued Feb 14, 2023) (Doc. 62)
`2007 Klausner Decisions re Motions to Stay Pending IPR, Docket Navigator
`(generated June 8, 2023)
`2008 Order Granting Stipulated Stay Pending IPR, Flexstent, LLC v. Abbott
`Labs., No. 5-18-cv-02479 (C.D. Cal. Oct. 18, 2019) (Doc.77)
`2009 Order Denying Renewed Stipulated Stay Pending IPR, Shenzhen
`Gooloo E-Commerce Co., Ltd. v. Pilot, Inc., No. 2-22-cv-02219
`(C.D. Cal. Jan. 12, 2023) (Doc. 95)
`2010 Renewed Joint Stipulation to Stay Case Pending Resolution of Inter
`Partes Reviews of ’653 Patent, Shenzhen Gooloo E-Commerce
`Co., Ltd. v. Pilot, Inc., No. 2-22-cv-02219 (C.D. Cal. Jan. 11,
`2023) (Doc. 94)
`2011 Klausner Time to Trial in Patent Cases, Docket Navigator (generated
`June 8, 2023)
`2012 U.S. District Court—Judicial Caseload Profile for Central California
`from Federal Court Management Statistics–Profiles (Mar. 31,
`2023), available at
`https://www.uscourts.gov/sites/default/files/data_tables/fcms_na
`_distprofile0331.2023.pdf
`2013 Order Denying Netflix’s Motions, including for Invalidity under § 101,
`GoTV Streaming, LLC v. Netflix, Inc., 2:22-cv-07556 (C.D. Cal.
`issued May 24, 2023) (Doc. 109)
`2014 Order re Scheduling Conference , GoTV Streaming, LLC v. Netflix,
`Inc., 2:22-cv-07556 (C.D. Cal. issued Feb. 13, 2023) (Doc. 61)
`Excerpts from Redacted and De-designated Corrected Declaration of
`Dr. John Villasenor Regarding Invalidity of U.S. Patent Nos.
`8,989,715; 8,478,245; and 8,103,865, GoTV Streaming, LLC v.
`Netflix, Inc., 2:22-cv-07556 (C.D. Cal. served June 23, 2023)
`
`2015
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`Patent 8,478,245
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`2019
`
`2020
`
`No. Brief Description
`2016
`ZHANG, Systematic Approach to Construct and Assess Power
`Electronic Conversion Architectures Using Graph Theory and Its
`Application in a Fuel Cell System, 2019, Vol. 12 Iss. 6, pp.
`1499–1509, The Institution of Engineering and Technology
`(2019), available at
`https://ietresearch.onlinelibrary.wiley.com/doi/epdf/10.1049/iet-
`pel.2018.6143
`2017 U.S. Patent No. 7,404,032 to Ware et al. filed July 13, 2004 (“Ware”).
`2018 Declaration of Joshua S. Wyde regarding authentication of exhibits
`(Aug. 17, 2023)
`Excerpts from Trial Transcript Day 2, GoTV Streaming, LLC v. Netflix,
`Inc., No. 2:22-cv-07556 (C.D. Cal. Oct. 18, 2023)
`Excerpts from Trial Transcript Day 3, GoTV Streaming, LLC v. Netflix,
`Inc., No. 2:22-cv-07556 (C.D. Cal. Oct. 19, 2023)
`2021 Defendant Netflix, Inc.’s Notice of Motion and Rule 50(a) Motion for
`Judgment as a Matter of Law, GoTV Streaming, LLC v. Netflix,
`Inc., No. 2:22-cv-07556 (C.D. Cal. Oct. 19, 2023) (Dkt. 389)
`2022 Declaration of Mr. Stuart Lipoff
`2023 Generate, Free On-Line Dictionary of Computing, available at
`https://foldoc.org/generate (last updated June 15, 1995).
`2024 Output, TechTerms.com; The Computer Dictionary, available at
`https://techterms.com/definition/output (last updated December
`12, 2006)
`From, Merriam-Webster.com Dictionary, available at
`https://www.merriam-webster.com/dictionary/from (last visited
`December 12, 2023)
`2026 Customized, Merriam-Webster.com Dictionary, available at
`https://www.merriam-webster.com/dictionary/customized (last
`visited Jan. 05, 2024)
`2027 Application-Specific, Wiktionary, available at
`https://en.wiktionary.org/wiki/application-specific (last visited
`Dec. 15, 2023)
`
`2025
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`No. Brief Description
`2028
`Ticker, Merriam-Webster.com Dictionary, available at
`https://www.merriam-webster.com/dictionary/ticker (last visited
`Jan. 18, 2024)
`2029 Deposition of Dr. Benjamin Bederson (Jan. 10, 2024)2
`2030
`Second Declaration of Joshua S. Wyde regarding authentication of
`exhibits (Jan. 26, 2024)
`
`
`
`
`
`
`
`
`2 Per Party agreement, Dr. Bederson conducted a consolidated deposition
`regarding U.S. Patent Number 8,989,715 in IPR No. IPR2023-00757; Patent
`No. 8,478,245 in IPR No. IPR2023-00758; and U.S. Patent No. 8,103,865 in IPR
`No. IPR2023-00759. See Ex. 2029, 5:21–6:11.
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`Patent 8,478,245
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`
`1pre
`
`1a
`
`1b
`
`1c
`
`1d
`
`1e
`
`1f
`
`1g
`
`2
`
`3
`
`4
`
`5
`
`CLAIM LISTING3
`
`Limitation
`1. A method of rendering content on a wireless device, said method
`comprising:
`receiving an identification of a custom configuration of a plurality of
`rendering blocks of said wireless device,
`wherein said custom configuration is associated with an application and
`configures said plurality of rendering blocks to render content in a
`manner customized to said application;
`receiving compiled content generated in part from execution of said
`application
`wherein said compiled content comprises render commands expressed
`in a syntax that is generic to said wireless device;
`using a graphical user interface comprising said plurality of rendering
`blocks to generate renderable content based on said compiled content
`and said custom configuration; and
`rendering said renderable content on said wireless device, wherein said
`receiving compiled content comprises: receiving first compiled content
`specific to a first page of said application; and receiving second
`compiled content specific to a second page of said application
`wherein said custom configuration is applicable to both said first and
`second compiled content.
`2. A method as described in claim 1 wherein said using a graphical user
`interface comprising said plurality of rendering blocks to generate
`renderable content comprises: processing said compiled content using
`a reader of said wireless device; and issuing commands from said
`reader to individual rendering blocks of said graphical user interface
`based on said rendering commands of said compiled content.
`3. A method as described in claim 1 wherein said renderable content
`comprises audio content and display content.
`4. A method as described in claim 1 wherein said compiled content is
`partially resultant from said application operating on a remote server.
`5. A method as described in claim 1 wherein said compiled content is
`specific to the rendering capabilities of said wireless device.
`
`
`3 Patent Owner uses Petitioner’s numbering designation for consistency, but
`designates three sub-limitations for 23h.
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`Patent 8,478,245
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`
`6
`
`7
`
`8
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`9
`
`10
`
`11
`
`12pre
`
`12a
`
`12b
`
`12c
`
`12d
`
`12e
`
`12f
`
`Limitation
`6. A method as described in claim 1 wherein each of said plurality of
`rendering blocks operates specific to a wireless device type of said
`wireless device and each is instructed using a syntax that is generic to
`said wireless device type.
`7. A method as described in claim 6 wherein said custom configuration
`comprises a syntax that is generic regarding said wireless device type.
`8. A method as described in claim 1 wherein said custom configuration
`comprises configuration information and content specific to said
`application.
`9. A method as described in claim 1 wherein said custom configuration
`is one of a plurality of memory-stored custom configurations stored by
`said wireless device and wherein further said identifying said custom
`configuration comprises receiving an identifier that identifies said
`custom configuration.
`10. A method as described in claim 1 further comprising receiving and
`storing said custom configuration.
`11. A method as described in claim 1 wherein said plurality of
`rendering blocks of said graphical user interface comprises: a first
`block that controls the rendering of ticker information across a display
`screen of said wireless device; a second block that controls the
`rendering of button images on said display screen; and a third block
`that controls the rendering of audio on a speaker of said wireless device.
`12. A non-transitory computer usable medium comprising instructions
`therein that when executed by a processor implement a method of
`rendering content on a wireless device, said method comprising:
`receiving an identification of a custom configuration of a plurality of
`rendering blocks of said wireless device,
`wherein said custom configuration is associated with an application and
`configures said plurality of rendering blocks to render content in a
`manner customized to said application;
`receiving compiled content generated in part from execution of said
`application
`wherein said compiled content comprises render commands expressed
`in a syntax that is generic to said wireless device;
`using a graphical user interface comprising said plurality of rendering
`blocks to generate renderable content based on said compiled content
`and said custom configuration; and
`rendering said renderable content on said wireless device, wherein said
`receiving compiled content comprises: receiving first compiled content
`specific to a first page of said application; and receiving second
`compiled content specific to a second page of said application,
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`IPR2023-00758
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`Patent 8,478,245
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`
`12g
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`Limitation
`wherein said custom configuration is applicable to both said first and
`second compiled content.
`13. A non-transitory computer usable medium as described in claim 12
`wherein said using a graphical user interface comprising said plurality
`of rendering blocks to generate renderable content comprises:
`processing said compiled content using a reader of said wireless device;
`and issuing commands from said reader to individual rendering blocks
`of said graphical user interface based on said rendering commands of
`said compiled content.
`14. A non-transitory computer usable medium as described in claim 12
`wherein said renderable content comprises audio content and display
`content.
`15. A non-transitory computer usable medium as described in claim 12
`wherein said compiled content is partially resultant from said
`application operating on a remote server.
`16. A non-transitory computer usable medium as described in claim 12
`wherein said compiled content is specific to the rendering capabilities
`of said wireless device.
`17. A non-transitory computer usable medium as described in claim 12
`wherein each of said plurality of rendering blocks operates specific to
`a wireless device type of said wireless device and each is instructed
`using a syntax that is generic to said wireless device type.
`18. A non-transitory computer usable medium as described in claim 17
`wherein said custom configuration comprises a syntax that is generic
`regarding said wireless device type.
`19. A non-transitory computer usable medium as described in claim 12
`wherein
`said
`custom
`configuration
`comprises
`configuration
`information and content specific to said application.
`20. A non-transitory computer usable medium as described in claim 12
`wherein said custom configuration is one of a plurality of memory-
`stored custom configurations stored by said wireless device and
`wherein further said identifying said custom configuration comprises
`receiving an identifier that identifies said custom configuration.
`21. A non-transitory computer usable medium as described in claim 12
`wherein said method further comprises receiving and storing said
`custom configuration.
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`
`22
`
`23pre
`
`23a
`
`23b
`
`23c
`
`23d
`
`23e
`
`23g
`
`23f
`
`23h.1
`
`Limitation
`22. A non-transitory computer usable medium as described in claim 12
`wherein said plurality of rendering blocks of said graphical user
`interface comprises: a first block that controls the rendering of ticker
`information across a display screen of said wireless device; a second
`block that controls the rendering of button images on said display
`screen; and a third block that controls the rendering of audio on a
`speaker of said wireless device.
`23. A wireless device operable to communicate with a remote server,
`said wireless device comprising:
`a transceiver coupled to a bus and operable to receive a custom
`configuration that is associated with an application,
`said transceiver also operable to receive compiled content generated in
`part from execution of said application and
`comprising a plurality of rendering commands expressed in a syntax
`that is generic to said wireless device;
`a memory coupled to said bus and operable to store said compiled
`content and said custom configuration;
`a processor coupled to said bus and operable to implement the
`following: a graphical user interface comprising a plurality of rendering
`blocks and operable to generate renderable content based on said
`compiled content and said custom configuration
`an engine for reading said compiled content and responsive thereto for
`causing said graphical user interface to generate said renderable content
`based on said render commands;
`wherein said custom configuration is operable to configure said
`plurality of rendering blocks to render content in a manner customized
`to said application;
`a display device coupled to said bus and operable to render a portion of
`said renderable content,
`23h.2 wherein said compiled content comprises: a first compiled content
`specific to a first page of said application; and a second compiled
`content specific to a second page of said application,
`23h.3 wherein said custom configuration is applicable to both said first and
`second compiled content.
`24. The wireless device as described in claim 23 wherein said engine is
`further operable to issue commands to individual rendering blocks of
`said graphical user interface based on said plurality of rendering
`commands of said compiled content.
`25. The wireless device as described in claim 23 further comprising an
`audio rendering device coupled to said bus and wherein said renderable
`content comprises audio content and display content.
`
`24
`
`25
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`Patent 8,478,245
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`26
`
`27
`
`28
`
`29
`
`30
`
`31
`
`32
`
`33
`
`Limitation
`26. The wireless device as described in claim 23 wherein said compiled
`content is partially resultant from said application operating on a
`remote server.
`27. The wireless device as described in claim 23 wherein said compiled
`content is specific to the rendering capabilities of said wireless device.
`28. The wireless device as described in claim 23 wherein each of said
`plurality of rendering blocks operates specific to a wireless device type
`of said wireless device and each is instructed using a syntax that is
`generic to said wireless device type.
`29. The wireless device as described in claim 28 wherein said custom
`configuration is expressed in a syntax that is generic to said wireless
`device type.
`30. The wireless device as described in claim 23 wherein said custom
`configuration comprises configuration information and content specific
`to said application.
`31. The wireless device as described in claim 23 wherein said custom
`configuration is one of a plurality of memory-stored custom
`configurations stored in said memory.
`32. The wireless device as described in claim 23 wherein said plurality
`of rendering blocks of said graphical user interface comprises: a first
`block that controls the rendering of ticker information across said
`display screen of said wireless device; a second block that controls the
`rendering of button images on said display screen; and a third block
`that controls the rendering of audio on a speaker of said wireless device.
`33. The wireless device as described in claim 23 wherein said plurality
`of rendering blocks of said graphical user interface comprises: a first
`block that controls the rendering of a scroll bar on said display screen
`of said wireless device; a second block that controls the rendering of an
`input box on said display screen of said wireless device; and a third
`block that control the rendering of a text display region on said display
`screen of said wireless device.
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`- xiv -
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`

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`IPR2023-00758
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`I.
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`INTRODUCTION
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`
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`Patent 8,478,245
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`Petitioner now has clarified some of its positions, but it also has
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`inappropriately taken new invalidity positions in its Reply as identified herein.
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`Regardless, Petitioner has not shown any claim is obvious as there is not one
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`application that meets the claim limitations, at least because the UI skin Petitioner
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`identifies as the custom configuration does not customize for Hariki’s web server
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`and Hariki’s web browser does not generate the HTML, even in part, still less while
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`executing remotely so that the web browser’s compiled content can be received by
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`a wireless device. Additionally, Petitioner has not shown Hariki’s engines, that
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`process the UI skin, read HTML, the identified compiled content, for claims 23–33,
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`or a that Hariki’s “title bars” have scrolling text such that they are rendering blocks
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`for rendering a ticker for claims 11, 22, and 32.
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`II. CLAIM CONSTRUCTION
`A. “Customized to Said Application” Means “Created For” the Application
`Program
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`[1b/12b/23f] wherein said custom configuration . . . [configures/is operable
`to configure] said plurality of rendering blocks to render content in a manner
`customized to said application
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`Petitioner first argues that the Board should define “customized to an
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`application” per a separate limitation “associated with an application,” citing ACTV
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`for the uncontroversial proposition that the surrounding words of a claim should be
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`- 1 -
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`IPR2023-00758
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`Patent 8,478,245
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`considered when defining a term.4 Reply 2–3. Looking at the surrounding words,
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`however, the Board can see that the claim lists the “associated” and “configures”
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`limitations separately, so there is “a presumption that those components are distinct.”
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`Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1382 (Fed.
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`Cir. 2022) (citation omitted). The claims require the custom configuration be more
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`than “associated” with the application. The custom configuration must also
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`configure rendering blocks to “render content in a manner customized to said
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`application.” Limitations 1b/12b/23f. It is inappropriate to merge the two
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`requirements to “read out” the narrower requirement. See AllVoice Computing PLC
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`v. Nuance Communs., Inc., 504 F.3d 1236, 1247–48 (Fed. Cir. 2007) (explaining
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`that courts should not merge separate terms because this would make one limitation
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`superfluous).
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`Second, Petitioner argues that Patent Owner is attempting to vary the plain
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`meaning of the term “customized,” Reply 3–4; however, as set forth in the Response,
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`“created for” is the plain meaning of the term customized. Paper 21 (“POR”) 20
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`(explaining that this is the dictionary meaning and how a POSITA uses the term in
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`the relevant field). Moreover, it is often the case that an applicant has not explicitly
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`
`4
`In ACTV the language of the claims defined the term, so the court simply adopted
`the definition and found there was no reason to look to extrinsic evidence. ACTV,
`Inc. v. Walt Disney Co., 346 F.3d 1082, 1090 (Fed. Cir. 2003).
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`- 2 -
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`IPR2023-00758
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`
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`Patent 8,478,245
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`defined a term, and in such a case it is proper to use words not found in the
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`specification to capture the meaning in light of the patent’s teachings. Masimo Corp.
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`v. Sotera Wireless, Inc., No. 2022-1415, 2023 WL 6307959, at *3 (Fed. Cir. Sept.
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`28, 2023) (affirming a term as the definition of a claim limitation even though the
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`“specification does not use the term” because “there is nothing inconsistent between
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`the plain meaning [the PTAB] derived from the intrinsic evidence and the meaning
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`it drew from the dictionary”).
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`Here, at least because the specification teaches there is a corresponding
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`custom configuration the server chooses based upon the application, a POSITA
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`understood that “customized to” means “created for.” Ex. 2022 ¶91; see also
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`AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1330 (Fed. Cir. 2021)
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`(“[T]he ordinary meaning of a claim term is not ‘the meaning of the term in the
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`abstract’ . . . Instead, the ‘ordinary meaning’ of a claim term is its meaning to the
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`ordinary artisan after reading the entire patent.”) (quoting Eon Corp. IP Holdings v.
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`Silver Spring Networks, 815 F.3d 1314, 1320 (Fed. Cir. 2016)) (second level of
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`internal quotations removed).
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`Third, Petitioner critiques Patent Owner for putting forth several synonymous
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`definitions all generally meaning “created for” and takes particular issue with
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`Patent Owner’s proposal that a custom configuration must be “designed for” an
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`application. Reply 4. There is nothing controversial in this understanding: it is
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`IPR2023-00758
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`Patent 8,478,245
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`straight-forward that to have a customized configuration that customizes the look and
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`feel of an application, the creator must know what the application is, in the same
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`way a tailor cannot make a “custom” suit without knowing who will be wearing the
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`suit. See Ex. 2022 ¶¶90–91.
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`B. The Pages of Compiled Content Must Be in Part Generated by the
`Executing Application
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`[1c/12c/23b] [receiving/said transceiver also operable to receive] compiled
`content generated in part from execution of said application
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`In light of Petitioner’s protestation that Patent Owner “offers no coherent
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`construction at any point,” see Reply 12, Patent Owner makes clear that
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`Patent Owner’s proposed construction of “compiled content is generated in part
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`from execution of said application” means “said application produces/outputs some
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`part of the compiled content during its execution.” POR 32; Ex. 2022 ¶107.
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`Petitioner mostly summarizes Patent Owner’s positions correctly, Reply 12–
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`14: (1) the limitation requires the application to generate (i.e., be the “source of”)
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`the compiled content, POR 28–30; (2) “from execution” means the running
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`application is the source of the compiled content, not a “but for” cause or “triggering
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`event,” id. 32–33; and, (3) the “in part” of “generated in part” refers to the
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`generation, id. 35–36.
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`However, Petitioner misunderstands Patent Owner’s position in one regard:
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`Patent Owner ack