Trials@uspto.gov
`571-272-7822
`
`Paper 37
`Date: September 9, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LENOVO HOLDING COMPANY, INC., LENOVO
`(UNITED STATES) INC., and MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`
`IPR2019-00988
`Patent 9,369,545 B2
`
`Before GRACE KARAFFA OBERMANN, JAMES A. WORTH, and
`PAUL J. KORNICZKY, Administrative Patent Judges.
`
`KORNICZKY, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
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`
`INTRODUCTION
`I.
`Lenovo Holding Company, Inc., Lenovo (United States) Inc., and
`Motorola Mobility LLC (“Petitioner”) filed a Petition for an inter partes
`review of claims 1–10 and 12–15 of U.S. Patent No. 9,369,545 B2
`(Ex. 1001, “the ’545 patent”). Paper 1 (“Pet.”). We issued a decision to
`institute an inter partes review of these claims. Paper 7 (“Inst. Dec.”). After
`institution, Patent Owner filed a Patent Owner Response (Paper 15, “PO
`Resp.”), Petitioner filed a Reply (Paper 24, “Reply”), and Patent Owner filed
`a Redacted Sur-Reply to Petitioner’s Reply1 (Paper 35, “Sur-reply”).
`Oral argument was held on June 10, 2020, and the transcript of the
`hearing has been entered as Paper 36 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Petitioner bears the burden of proving unpatentability of the
`challenged claims, and the burden of persuasion never shifts to Patent
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by
`a preponderance of the evidence. See 35 U.S.C. § 316(e) (2016); 37 C.F.R.
`§ 42.1(d). For the reasons that follow, we determine that Petitioner has not
`shown by a preponderance of the evidence that claims 1–10 and 12–15 of
`the ’545 patent are unpatentable. See 35 U.S.C. § 316(e).
`
`
`1 In our Order dated June 9, 2020 (Paper 34), we granted Petitioner’s
`motion to strike (Paper 29) certain portions of Patent Owner’s Sur-Reply
`(Paper 26). In response to our Order, Patent Owner filed its Redacted Sur-
`Reply.
`
`2
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`BACKGROUND AND SUMMARY
`II.
`Real Parties in Interest
`A.
`According to Petitioner, Lenovo Holding Company, Inc., Lenovo
`(United States) Inc., and Motorola Mobility LLC are the real parties-in-
`interest. Pet. 64. According to Patent Owner, DoDots Licensing Solutions
`LLC is the real party-in-interest. Paper 4, 2.
`
`Related Matters
`B.
`According to Petitioner, the ’545 patent as well as U.S. Patent
`Nos. 8,020,083 and 8,510,407 are at issue in DoDots Licensing Solutions
`LLC v. Lenovo Holding Company, Inc. et al., Case No. 18-098-MN (D.
`Del.). Pet. 64; see also Paper 4, 2 (Patent Owner identifies the district court
`action).
`
`The ’545 Patent (Ex. 1001)
`C.
`The title of the ʼ545 patent is “Accessing and Displaying Network
`Content.” Ex. 1001, code (54). The ’545 patent discloses, among other
`things, a method for accessing and displaying network content in a graphic
`user interface (“GUI”). Id. at code (57).
`According to the ’545 patent, conventional web browsers are limited
`in the “aggregation” and “presentation” of content. Id. at 1:48–51. As to the
`aggregation of content, the ’545 patent states that a user may use
`conventional web pages to view content sources in a single web page, such
`as stock, weather and sports information (id. at 1:27–38), and because the
`user is not in a position to separately aggregate the content at a client
`computer, the user is constrained to view the content that has been delivered
`
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`in the manner provided by the server computer hosting the web page (id.
`at 1:45–48). As to the presentation of content, the ’545 patent states that
`conventional content was divided into regions on a single web page. Id. at
`1:27–38. The ’545 patent identified a purported problem, noting that when
`disparate content was aggregated, it was “reassembled into a full web page
`and [] served through a full-screen browser.” Id.
`In contrast to conventional web pages, the ’545 patent discloses a
`method for accessing and displaying network content in a GUI. Id. at code
`(57). It is capable of processing distributable computer readable media. Id.
`at 4:29–30. Distributable computer readable media includes, but is not
`limited to, standard web content, such as HTML, dHTML, images,
`imbedded ActiveX and Java applications, JavaScript, CSS, Pen scripts,
`Streaming Media, and/or Flash. Id. at 4:31–34.
`According to the ’545 patent, a user logs into a server by providing a
`login identifier, which is used to obtain the user’s profile. Id. at 4:44–47.
`The user profile includes references to networked information monitors
`(NIMs). Id. at 4:54–56. In the ’545 patent, the term “networked information
`monitor” refers to a fully configurable frame with one or more controls,
`which stands in contrast to conventional web browsers, which have limited
`means to alter the browser controls. Id. at 4:56–63. A “NIM template”
`defines the characteristics of a specific NIM, including fully configurable
`frame characteristics, viewer and control characteristics, and NIM content
`references. Id. at 6:34–37; see id. at 2:30–32 (referred “a definition of a
`Networked Information Monitor (NIM)” which defines a “NIM frame”).
`After the user accesses the user profile and the NIM template defines the
`
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`characteristics of the NIM frame, the content is placed in the NIM viewer
`defined by the frame. Id. at 2:30–34.
`Illustrative Claim
`D.
`As mentioned above, the challenged claims are claims 1–10 and 12–
`15. Claim 1 is the only independent claim among the challenged claims, and
`is reproduced below:2
`1. [1.preamble] A computer-implemented method of obtaining
`content over a network and displaying the content to a user,
`the method being implemented in a client computing device in
`operative communication with a server over a network, the
`client computing device including electronic storage, a
`display, and one or more processors configured to execute one
`or more computer program modules, the method comprising:
`[1.A] transmitting a request to the server over the
`network, the request requesting network information monitor
`template;
`[1.B]: receiving the requested networked information
`monitor template from the server over the internet, the
`requested networked information monitor template having
`been transmitted from the server over the network responsive
`to the transmitted request, the networked information monitor
`template comprising:
`[1.C]: a definition of a viewer graphical user interface
`within which content in a web browser-readable language may
`be presented on the display of the client computing device; and
`[1.D]: a definition of a first content element for the
`networked information monitor template, the definition of the
`first content element referencing a first network location from
`which the first content element for the networked information
`monitor template is served over the network;
`
`
`2 For ease of reference, claim 1 includes Petitioner’s bracketed limitation
`designations. See Pet. 17–19.
`
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`[1.E]: responsive to instructions included in the requested
`networked information monitor template, presenting the
`viewer graphical user interface defined by the networked
`information monitor on the display of the client computing
`device separate from and outside of any other graphical viewer
`user interface that includes user controls for specifying the
`first network location from which the first content element for
`the networked information monitor is served over the network;
`[1.F]: responsive to instructions included in the requested
`networked information monitor template, transmitting over
`the network a first content request to the first network location
`referenced by the definition of the first content element for the
`networked information monitor template;
`[1.G]: receiving, over the network, the first content
`element transmitted responsive to the first content request;
`presenting the received the first content element in the viewer
`graphical user interface defined by the networked information
`monitor template,
`[1.I]: wherein the definition of the viewer graphical user
`interface and/or the first content element define all controls for
`enabling a user to interact with the first content element
`through the viewer graphical user interface.
`Ex. 1001, 42:22–43:4 (emphasis added).
`
`
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`Prior Art References
`E.
`Petitioner relies on the following references:
`Exhibit
`Reference
`Description
`Date
`Ex. 1006
`Hoff3
`US 5,919,247
`Issued July 6, 1999
`Berg
`Cliff Berg, How Do I
`Published Jan. 1, 1998 Ex. 1007
`Create a Signed
`Castanet Channel?, DR.
`DOBB’S JOURNAL,
`January 1, 1998
`US 6,401,134 B1
`US 5,922,044
`US 5,586,244
`US 7,216,300 B2
`US 5,778,372
`
`Razavi
`Banthia
`Berry
`Dang
`Cordell
`
`
`
`Issued June 4, 2002
`Issued July 13, 1999
`Issued Dec. 17, 1996
`Issued May 8, 2007
`Issued July 7, 1998
`
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`Ex. 1013
`
`Asserted Grounds
`F.
`Petitioner asserts that claims 1–10 and 12–15 are unpatentable on the
`following grounds:
`Ground
`Claim(s)
`
`1, 2, 10, 14
`2–5, 9
`6, 7, 12, 13, 15
`8
`
`35 U.S.C. §4
`103
`103
`103
`103
`
`1, 6, 7, 10, 12–15
`
`103
`
`1
`2
`3
`4
`
`5
`
`Reference(s)
`Hoff, Berg
`Hoff, Berg, Dang, Berry
`Hoff, Berg, Razavi, Banthia
`Hoff, Berg, Razavi,
`Banthia, Cordell
`Razavi, Banthia
`
`
`
`3 The first-named inventor is Arthur Van Hoff, but, for consistency with the
`Petition, we refer to the patent as “Hoff.”
`4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(September 16, 2011) (“AIA”), included revisions to 35 U.S.C. §103 that
`became effective on March 16, 2013. Because the ’545 patent issued from
`an application filed before March 16, 2013, we apply the pre-AIA version of
`the statutory basis for unpatentability.
`
`7
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`Ground
`
`Claim(s)
`
`35 U.S.C. §4
`103
`
`Reference(s)
`Razavi, Banthia, Dang,
`Berry
`Razavi, Banthia, Cordell
`103
`8
`7
`Pet. 1. Petitioner relies on the testimony from Dr. Vijay K. Madisetti (Ex.
`1005). Based on his statement of qualifications and experience, we find Dr.
`Madisetti qualified to opine about the understanding of a person of ordinary
`skill in the art at the time of the invention. See Ex. 1005 ¶¶ 6–30 (statement
`of qualifications and experience).
`
`6
`
`2–5, 9
`
`
`
`III. ANALYSIS
`Legal Standards
`A.
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved based on underlying factual
`determinations including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of ordinary skill in the art; and (4) when in the record, objective evidence of
`nonobviousness, such as commercial success. Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966). In that regard, an obviousness analysis “need not
`seek out precise teachings directed to the specific subject matter of the
`challenged claim, for a court can take account of the inferences and creative
`steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S.
`
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`at 418. Further, “[t]o satisfy its burden of proving obviousness, a petitioner
`cannot employ mere conclusory statements. The petitioner must instead
`articulate specific reasoning, based on evidence of record, to support the
`legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829
`F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the asserted grounds with
`these principles in mind.
`
`Level of Ordinary Skill in the Art
`B.
`Petitioner asserts that a person of ordinary skill in the art would have a
`“bachelor’s degree in Electrical or Computer Engineering, Computer
`Science, or a related field and have three or more years of experience in the
`field.” Pet. 8 (citing Ex. 1005 ¶¶ 38–41). Patent Owner does present
`evidence regarding the education and experience of a person of ordinary
`skill in the art.
`Petitioner’s proposal appears to be consistent with the prior art of
`record and with the ’545 patent. Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill
`level are not required where the prior art itself reflects an appropriate level
`and a need for testimony is not shown) (internal quotation marks and citation
`omitted). We adopt Petitioner’s asserted level of ordinary skill in the art.
`
`Claim Construction
`C.
`In an inter partes review based on a petition filed after November 13,
`2018, the claims are construed
`using the same claim construction standard that would be used
`to construe the claim in a civil action under 35 U.S.C.
`§ 282(b), including construing the claim in accordance with
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`the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the
`prosecution history pertaining to the patent.
`See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340, 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b)
`effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b).
`(2019)); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
`2005). Any special definitions for claim terms must be set forth in the
`specification with reasonable clarity, deliberateness, and precision. See In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`To resolve Petitioner’s challenge, the parties assert that two claim
`terms need to be construed: network information monitor (NIM) and
`network information monitor template (NIM template).
`Network Information Monitor (NIM)
`1.
`Patent Owner asserts that the “inventors defined NIMs in the
`specification as follows: ‘As used herein, the term networked information
`monitor or NIM refers to a fully configurable frame with one or more
`controls; the frame through which content is optionally presented.’” PO
`Resp. 8 (citing Ex. 1001, 4:56–59). Petitioner agrees that the Specification
`defines “a NIM as ‘a fully configurable frame with one or more controls’
`through which content is presented to the user.” Reply 2 (citing Ex. 1001,
`2:28–30; 4:56–67). We agree that the Specification defines a NIM as “a
`fully configurable frame with one or more controls through which content is
`presented to the user,” and this is the interpretation we apply here. Ex. 1001,
`4:56–63.
`
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`2.
`
`Network Information Monitor Template (NIM template)
`The Parties’ Contentions
`a)
`Patent Owner asserts that “the NIM template (a.k.a., NIM definition)
`is a data structure that defines the NIM; it is not the NIM and it is not an
`executable program (i.e., compiled code).” PO Resp. 8 (citing Ex. 2001
`¶¶ 20–36); id. at 2 (“NIM templates are ‘data structures,’ not applications”).
`According to Patent Owner, the Specification states that “NIMs are
`extremely flexible, because the definition of the NIM is content, rather
`than compiled code.” Id. at 8 (citing Ex. 1001, 21:58–60 (emphasis added),
`6:33–37 (“NIM templates database 74 includes a large number of NIM
`templates. Each NIM template defines the characteristics of a specific
`NIM, including fully configurable frame characteristics, view and control
`characteristics, and NIM content references.”) (emphasis added), 3:31-33
`(“FIG. 13 illustrates a data structure for a NIM definition, stored in the
`NIM application server’s template database or user profile database.”)
`(emphasis added)). Patent Owner also argues that “NIM templates are
`significantly smaller than the NIMs they define.” Id. at 9 (citing Ex. 2001
`¶ 24; Ex. 1001, 33:47–55 (“Each NIM definition contains just enough
`information to define and initialize the NIM's components (NIM frame,
`controls, etc.). For example, this information may contain data to configure
`the skeleton or frame that is filled in by NIM content from a developer’s
`server. The NIM definition is therefore fairly small in size (~2K), and is
`therefore easily distributable as an XML file or Blob (binary large object),
`which is communicated using the same mechanisms (HTTP/ HTTPS
`requests) as regular Web pages.”)).
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`Petitioner does not present a construction for a “NIM template,” but
`criticizes Patent Owner’s proposed construction and argues that a NIM
`template should encompass executable programs and compiled code. Reply
`2–4. Petitioner argues that “nothing in the claims or specification limits a
`NIM template to a data structure excluding an executable program, as Patent
`Owner proposes.” Id. at 2. Petitioner argues that Patent Owner’s examples
`of NIM templates in the Specification, which exclude compiled code and
`executable applications, are merely “non-limiting examples of NIM
`templates” (id. at 3), while certain other embodiments disclose NIM
`templates that are executable code (id. at 5). Petitioner also argues that
`extrinsic evidence––statements in another related patent and in related
`litigation––evidence that NIM templates may contain executable code. As
`discussed in our analysis below, Petitioner’s arguments are not persuasive.
`
`
`Construction of “NIM Template”
`b)
`After considering the usage of “NIM template” in the claims, the
`Specification, the prosecution history, and the parties’ contentions, we
`determine that a NIM template is a data structure which defines the
`characteristics of a NIM, including the NIM frame, view and control
`characteristics, and which excludes executable applications/compiled code.
`Turning to the usage of NIM template in the claims, claim 1, in
`relevant part, states:
`the networked information monitor template comprising:
`[1.C]: a definition of a viewer graphical user interface
`within which content in a web browser-readable language may
`be presented on the display of the client computing device; and
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`[1.D]: a definition of a first content element for the
`networked information monitor template, the definition of the
`first content element referencing a first network location from
`which the first content element for the networked information
`monitor template is served over the network.
`Ex. 1001, 42:36–47. From claim 1, we understand that the NIM template
`defines the characteristics of the viewer and the content on the viewer.
`As to the prosecution history of the ’545 patent, the parties did not
`identify, and we did not find, any portion of the prosecution history that is
`helpful in determining the meaning of NIM template.
`The Specification of the ’545 patent does address the meaning of NIM
`template. The Specification states the “NIMs allow a developer to provide
`an application feel without developing custom client applications” (Ex.
`1001, 26:33–35), and the “NIM template defines the characteristics of a
`specific NIM, including fully configurable frame characteristics, viewer and
`control characteristics, and NIM content references” (id. at 6:34–37). See
`also id. at 21:21–23 (“The NIM definitions, as discussed above, includes the
`NIM frame definition and the definition of the controls for filling the viewer
`within the frame with content.”).
`Figure 13 of the ’545 patent is reproduced below.
`
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`Figure 13 “illustrates a data structure for a NIM definition.” Id. at 21:42,
`3:31. According to the Specification, in the exemplary embodiment of
`Figure 13, “the definition of a NIM includes tags that identify the NIM 270,
`define and configure the NIM frame 271, specify and layout the controls 273
`in the NIM viewer, and specify parameters to initialize all the NIM’s
`components with content or data.” Id. at 22:4–8. This disclosure does not
`indicate that the data structure for the NIM template contains compiled code.
`The Specification states that “a NIM is defined as a frame that
`contains a collection of controls, or functional units, such as a web rendering
`control or a GIF rendering control,” and the NIM definitions “include all the
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`information needed to build a NIM frame and fill the NIM with NIM
`content.” Id. at 21:42–53. The Specification further states:
`In one embodiment, the NIM definitions are defined using
`Extensible Markup Language (XML), so that the NIM as a
`whole–the frame and the content within the viewer––is
`advantageously as flexible as standard web content. NIMs are
`extremely flexible, because the definition of the NIM is content,
`rather than compiled code. The NIM definition defines the
`structure of the NIM, and everything that is visible in a NIM is
`based on standard Internet content, such as HTML, dHTML, or
`GIFs, and is referenced or pointed to by the NIM definition. An
`“application”–type NIM, such as a web calendar or web mail,
`may be changed by the user, by the content provider, or by other
`content, while advantageously avoiding the need to distribute
`and support a hard-coded compiled application. The definition
`of a NIM thus includes everything that is needed for the NIM to
`be rendered and filled with Internet content.
`Id. at 21:55–22:3 (emphasis added). From this disclosure, we understand
`that the Specification prohibits the NIM template from using compiled code
`or an executable application. Our review of the Specification did not
`identify use of compiled code or an executable application by the NIM
`template.
`
`Petitioner argues that the data structure illustrated in Figure 13 and the
`related discussion of Figure 13 is merely one non-limiting embodiment, and
`that the Figure 13 embodiment merely describes implementing a NIM
`template as XML rather than compiled code. Reply 3–4 (citing Innova/Pure
`Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed.
`Cir. 2004) (“particular embodiments appearing in the written description
`will not be used to limit claim language that has broader effect”)).
`Petitioner’s argument is not persuasive. While we agree with Petitioner that
`the XML is one possible embodiment of a NIM template, the Specification
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`distinguishes the XML embodiment from embodiments using other
`languages for data structures, rather than distinguishing the XML
`embodiment from embodiments in which the template is compiled code.
`The Specification’s broad statement that a NIM template does not use
`compiled code or executable applications applies to all NIM templates, not
`just one particular embodiment. The Specification does not describe any
`NIM template that uses compiled code or executable applications.
`Petitioner argues that the Specification provides several examples of a
`NIM template which uses executable code. First, Petitioner references the
`Specification’s statement that “[t]he NIM definition is . . . fairly small in size
`(~2K), and is therefore easily distributable as an XML file or Blob (binary
`large object) . . . .” Reply 4–5 (citing Ex. 1001, 33:51–53). Petitioner
`argues that a “binary large object” “might contain any binary content,
`including executable code.” Id. at 4. Petitioner’s argument is not
`persuasive. The Specification refers to an “XML file” and an “XML Blob.”
`See, e.g., Ex. 1001, 34:21 (referring to “XML Blob”). In addition,
`Petitioner’s contention is attorney argument unsupported by persuasive
`expert testimony. In re Geisler, 116 F.3d 1465, 1470–1471 (Fed. Cir. 1997)
`(argument by counsel cannot take the place of evidence); In re Pearson, 494
`F.2d 1399, 1405 (CCPA 1974) (“Attorney’s arguments in a brief cannot take
`the place of evidence.”). Unlike Patent Owner, Petitioner provided no
`declarant testimony probative to the issue of how the ordinary artisan would
`understand and interpret the relevant Specification passages and the
`limitation in dispute.
`Second, Petitioner argues that the “second executable module”
`described in the specification is an embodiment of a “NIM template.”
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`IPR2019-00988
`Patent 9,369,545 B2
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`Reply 5. According to Petitioner, the Specification states a “second
`executable module defines a NIM frame for the NIM using the definition,”
`and because “the ‘second executable module’ defines a NIM frame, the
`‘second executable module’ is a NIM template under its plain and ordinary
`meaning.” Id. (citing Ex. 1001, 2:38–30, 2:44–45). Petitioner further argues
`that the “NIM definition modules” are “executable code as distinct from
`data.” Id. at 6. Petitioner’s argument is not persuasive because Petitioner
`does not identify, and we do not find, any portion of the Specification which
`discloses that the second executable module contains compiled code. In the
`context of the Specification, the second executable module and the NIM
`definition module contains the “data structure” for a NIM definition, and
`appears to mean that the content in the modules are used with the specified
`operation. See Ex. 1001, 3:31. In addition, Petitioner’s contentions about
`the meaning of NIM template, second executable module, and NIM
`definition module are attorney argument unsupported by persuasive expert
`testimony. In re Geisler, 116 F.3d at 1470–1471 (argument by counsel
`cannot take the place of evidence). The Specification does not describe any
`NIM template that uses compiled code or executable applications.
`Third, Petitioner argues that, during prosecution of a related ’874
`application,5 Patent Owner admitted that the NIM template can be executed.
`Reply 6. According to Petitioner, “the ’874 Application includes claims
`reciting ‘executing the first networked information monitor template,’ and
`
`
`5 According to Petitioner, the’545 patent indirectly claims priority to U.S.
`Patent No. 7,660,868 (the “’868 patent”), and the’545 and ’868 patents share
`essentially the same specifications. Reply 6–7. U.S. Patent Application No.
`13/215,874 (the “’874 application”) also claims priority to and shares a
`specification with the ’868 patent. Id.
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`during prosecution, Patent Owner differentiated the claims from a prior art
`reference on the basis that the prior art did not ‘teach or suggest executing’
`the claimed NIM template.” Id. at 7 (citing Ex. 1019, 6–7, 14). Petitioner
`argues that Patent Owner’s attempt to define NIM template differently in
`this proceeding is improper. Id. at 6 (citing Omega Eng’g, Inc. v. Raytek
`Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003)). As an initial matter, Exhibit
`1019 is the Second Amended Complaint in a litigation, not the prosecution
`history of the ’874 patent application. In addition, Petitioner’s contentions
`about the meaning of the disputed terms are attorney argument unsupported
`by citations to persuasive intrinsic evidence or testimony from a witness
`competent to opine about how an ordinarily skilled artisan would understand
`the terms. In re Geisler, 116 F.3d at 1470–1471 (argument by counsel
`cannot take the place of evidence). Petitioner’s argument is not persuasive.
`Fourth, Petitioner argues that “Patent Owner’s assertion that an
`application could never be a NIM template (i.e., that a NIM template cannot
`be executable) is further contradicted by its infringement allegations against
`the Petitioners in the underlying district court action, where Patent Owner
`has contended that each step of Claim 1 is performed by the use of ‘a stocks
`(finance) app, MSN weather app, sports team app, a podcast app and
`numerous other apps . . . .’” Reply 7 (citing Ex. 1020, 6–7). Petitioner’s
`argument is not persuasive because it does not present any evidence about
`how the “apps” work and how they apply to the disputed NIM template,
`compiled code, and executable applications. In addition, Petitioner’s
`contentions about the meaning of the disputed terms and apps are attorney
`argument unsupported by persuasive evidence. In re Geisler, 116 F.3d at
`1470–1471 (argument by counsel cannot take the place of evidence). A
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`parties’ infringement allegations do not override the meaning of the claims
`based on the intrinsic evidence. To the extent Petitioner is contending that
`Patent Owner is taking inconsistent claim construction positions in an effort
`to establish infringement in the related litigation, Petitioner can, of course,
`present that argument to the court should litigation continue.
`For the reasons above, we determine that a NIM template is a data
`structure which defines the characteristics of a NIM, including the NIM
`frame, view and control characteristics, and which excludes executable
`applications/compiled code.
`
`
`D. Ground 1– Obviousness over Hoff and Berg
`Petitioner contends that the subject matter of claims 1, 2, 10, and 14
`would have been obvious over the combined teachings of Hoff and Berg.
`Pet. 22–29. We first describe the prior art that Petitioner seeks to combine
`to show that independent claim 1 is obvious, and then turn to the merits of
`the combination.
`Overview of Hoff (Ex. 1006)
`1.
`Hoff is a patent titled “Method for the Distribution of Code and Data
`Updates,” and issued on July 6, 1999. Ex. 1006, codes (54), (45). Petitioner
`contends Hoff is prior art under 35 U.S.C. § 102(e). Pet. 10.
`Hoff discloses a system and method for distributing software
`applications and data to thousands of clients over a network. Ex. 1006, code
`(57). In Hoff, the applications are called “channels,” the server is called the
`“transmitter,” and the client is called the “tuner.” Id. The end-user needs to
`subscribe to a channel before it can be executed. Id. When the end-user
`subscribes to a channel, the associated code and data is downloaded to the
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`local hard-disk and, once downloaded, the channel can be executed many
`times without requiring further network access. Id. Because the channel’s
`software and data updates can be automatically downloaded and installed in
`the background at regular intervals by the tuner, Hoff states that the end-user
`is not required to manually install software updates. Id. Hoff asserts that
`this method of automatic downloading of updates achieves for the client the
`same result as the broadcast distribution of software over a connection based
`network, but wherein the client initiates each update request without
`requiring any special broadcast networking infrastructure. Id.
`
`
`Over