IPR2023-00939 (U.S. Patent No. 8,510,407)
`PO’s Preliminary Response
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`APPLE INC.,
`Petitioner
`v.
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner
`Case IPR2023-00939
`U.S. Patent No. 8,510,407
`
`__________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF UNITED STATES PATENT NO. 8,510,407
`
`
`
`
`

`

`IPR2023-00939 (U.S. Patent No. 8,510,407)
`PO’s Preliminary Response
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`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Page
`INTRODUCTION. .......................................................................................... 1
`
`THE ’407 PATENT. ........................................................................................ 4
`
`A.
`B.
`
`The background of the claimed invention. ............................................ 4
`The previous Lenovo ’407 IPR. ............................................................ 8
`
`III. THE LEVEL OF ORDINARY SKILL IN THE ART. .................................10
`
`IV. CLAIM CONSTRUCTION. .........................................................................11
`
`V.
`
`THE SLIVKA REFERENCE. .......................................................................12
`
`A.
`B.
`
`The prosecution of the Slivka patent. ..................................................13
`Availability of the Slivka application, the Slivka FH, and the Slivka
`appendices to the public. .....................................................................14
`
`B.
`
`VI. APPLE FAILS TO ESTABLISH THAT THE PRIMARY REFERENCE IT
`ACTUALLY RELIES ON IS 102(E) PRIOR ART. .......................................17
`A. Apple fails to identify with particularity the grounds for challenging
`each claim and the evidence that supports each of those grounds. .....17
`Apple fails to establish that the Slivka documents it relies on as its
`primary reference are §102(e) prior art. ..............................................20
`1.
`Slivka application is not §102(e) prior art. ...............................20
`2.
`The Slivka file history is not §102(e) prior art. ........................22
`Apple fails to establish that the appendices are part of the patent or the
`patent application. ...............................................................................23
`Even if the appendices were part of the unpublished application, the
`appendices are not 102(e) prior art. .....................................................28
`
`C.
`
`D.
`
`i
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
`PO’s Preliminary Response
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`
`E.
`
`The unavailability of the Slivka application and Slivka FH (along with
`the appendices) as §102(e) prior art is fatal to Apple’s petition and
`necessitates its denial...........................................................................30
`
`VII. PETITIONER FAILS TO MEET THE REQUIREMENTS OF §§37 C.F.R.
`42.104(B)(3) AND 42.104(B)(4)...................................................................31
`
`VIII. PETITIONER DOES NOT EXPLAIN ANY DEFECT IN THE
`EXAMINER’S PRIOR CONSIDERATION OF SLIVKA UNDER THE
`TWO-PART ADVANCED BIONICS FRAMEWORK APPLYING THE
`BECTON DICKINSON FACTORS. ..............................................................35
`
`IX. CONCLUSION. .............................................................................................37
`
`
`
`
`
`ii
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
`PO’s Preliminary Response
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`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte
`GmbH,
`IPR2019-01469, Paper 6 (P.T.A.B. Feb. 13, 2020) .................................. 3, 35, 36
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8, 17-18 (Dec. 15, 2017) ......................................... 35, 37
`Benitec Biopharma Ltd. v. Cold Spring Harbor Laboratory,
`IPR2016-00014, Paper 7 (P.T.A.B. Mar. 23, 2016) ........................................... 36
`Carefusion Corporation v. Baxter International, Inc.,
`IPR2016-01456, Paper 9 (P.T.A.B. Feb. 6, 2017) ........................................ 33, 34
`Clickbooth.com LLC v. Essociate, Inc.,
`IPR2015-00464, Paper 9 (P.T.A.B. July 9, 2015) .............................................. 32
`
`Duodecad IT Services Luxembourg S.A.R.L, et al. v. WAG
`Acquisition, LLC.,
`IPR2015-01036, Paper 17 (P.T.A.B. October 20, 2016) .............................. 22, 23
`Floteck Indus., Inc. v. Nat’l Oilwell DHT, L.P.,
`IPR2015-01210, Paper 11 (P.T.A.B. Nov. 6, 2015) ........................................... 32
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) .......................................................................... 17
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 17
`Lenovo Holding Co, Inc. et al. v. DoDots Licensing Sols.,
`IPR2019-00988 (PTAB September 9, 2020) ........................................................ 8
`Lenovo Holding Co. v. DoDots Licensing Sols. LLC,
`2021 U.S. App. LEXIS 36126 (Fed. Cir. Dec. 8, 2021) ............................. 1, 5, 10
`Lindsay Corporation v. Valmont Industries,
`IPR2015-01039, Paper 7 (P.T.A.B. Sept. 24, 2015)........................................... 32
`
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
`PO’s Preliminary Response
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`Medshape, Inc. v. Cayenne Med., Inc.,
`IPR2015-00848, Paper 9 (P.T.A.B. Sep 14, 2015) ............................................. 33
`Ex parte Miyazaki,
`89 U.S.P.Q.2d 1207 (BPAI Nov. 19, 2008) ....................................................... 33
`On Demand Mach. Corp. v. Ingram Indus.,
`2003 U.S. Dist. LEXIS 28275 (E.D. MO. 2003) ................................................ 29
`Phillips v AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 11
`Riverwood Int’l Corp. v R.A. Jones & Co.,
`324 F.3d 1346 (Fed. Cir. 2003) .......................................................................... 29
`SAS Institute, Inc. v. Complementsoft, LLC,
`IPR2013- 00226 Paper 9 (P.T.A.B. Aug. 12, 2013) ........................................... 32
`Sequenom, Inc., v. The Board of Trustees of the Leland Stanford
`Junior University
`IPR2014-00337, Paper 11 (P.T.A.B. July 16, 2014) .................................... 21, 22
`Statutes
`35 U.S.C. § 102(e) ............................................................................................passim
`35 U.S.C. § 112(f) .................................................................................................... 31
`35 U.S.C. §122 ................................................................................................... 15, 21
`35 U.S.C. § 282(b) ................................................................................................... 11
`35 U.S.C. § 312(a)(3) ............................................................................................... 17
`35 U.S.C. § 316(e) ................................................................................................... 17
`35 U.S.C. §325(d) ...................................................................................................... 3
`Other Authorities
`37 C.F.R. §1.11(a) .............................................................................................. 16, 23
`37 C.F.R. §1.96 .................................................................................................passim
`
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
`PO’s Preliminary Response
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`37 C.F.R. § 42.100(b) .............................................................................................. 11
`37 C.F.R. §42.104(b) ........................................................................................passim
`65 FR 57024 ....................................................................................................... 15, 21
`
`
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
`PO’s Preliminary Response
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`
`Exhibit No.
`2001
`
`2002
`
`2003
`
`2004
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`2010
`
`2011
`2012
`
`PATENT OWNER’S EXHIBIT LIST
`Description
`Lenovo Holding Co, Inc. et al. v. DoDots Licensing Sols.,
`IPR2019-00988 (PTAB Jan. 19, 2021)
`Lenovo Holding Co. v. DoDots Licensing Sols. LLC, 2021 U.S.
`App. LEXIS 36126, at *2 (Fed. Cir. Dec. 8, 2021)
`US Patent No. 6,061,695 (“Slivka”) as granted and available
`from the USPTO Patent Center
`Slivka application made available by the USPTO Patent Center
`Document and Transaction history from USPTO Patent Center
`relating to the Slivka patent disclosing a “Request to Make of
`Record Noted Concerns in Granted Patent” letter sent by the
`Slivka patent owner
`Excerpts from prosecution history of ’407 patent showing an
`IDS filed by the patent owner on March 4, 2013 (highlight
`added by Patent Owner)
`Excerpts from prosecution history of ’407 patent showing
`Examiner’s comments on the IDS filed by the patent owner on
`March 4, 2013 (highlights added by Patent Owner)
`Copy of the MPEP Chapter 600 and patent rules as they existed
`in 1996 when the application was filed
`Unabridged, prosecution history of the Slivka patent
`Claim construction order from Western District of Texas in
`DoDots Licensing Sol’n LLC v. Samsung, Case No. 6:22-CV-
`00535-ADA-DTG
`Transmittal Letter accompanying the Slivka patent application
`Defendants’ Proposed Claim Constructions, dated March 1,
`2023, in DoDots Licensing Sol’n LLC v. Apple Inc., et al., Case
`No. 6:22-CV-00533-ADA-DTG
`
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
`PO’s Preliminary Response
`
`
`Patent Owner DoDots Licensing Solutions LLC (“DoDots” or “patent
`
`owner”) submits this Patent Owner Preliminary Response to Apple Inc.’s
`
`(“petitioner” or “Apple”) petition (Paper No. 2, “petition”) and requests the Board
`
`to deny institution of inter partes review of claims 1-16 of U.S. patent no.
`
`9,369,407 (“the ’407 patent,” Ex. 1001).
`
`I. Introduction.
`Petitioner asks the Board to institute an inter partes review of the ’407
`
`patent, which DoDots has asserted in a concurrently pending district court
`
`litigation. But this Board has once before determined that the ’407 patent is not
`
`unpatentable in a previous IPR brought by Lenovo Holding Co (“Lenovo ’407
`
`IPR”). Ex. 2001. The Federal Circuit affirmed the Board’s final written decision.
`
`See Lenovo Holding Co. v. DoDots Licensing Sols. LLC, 2021 U.S. App. LEXIS
`
`36126, at *2 (Fed. Cir. Dec. 8, 2021) (attached as Ex. 2002).
`
`Apple’s attempt to have this Board adjudicate the validity of the ’407 patent
`
`once again should be denied for the reasons set forth below:
`
`First, Apple cobbles together three separate documents and attempts to
`
`characterize them as a single §102(e) prior art reference. See e.g., Petition at 7, 10.
`
`Specifically, while Apple argues that its primary reference is a patent called
`
`“Slivka,” a closer review of the petition shows that Apple is actually relying on
`
`(and citing to) three separate Slivka documents to construct its obviousness
`
`1
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
`PO’s Preliminary Response
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`argument: (i) U.S. Patent No. 6,061,695 (the “Slivka patent”); (ii) an unpublished
`
`patent application that matured into the Slivka patent (“Slivka application”); and
`
`(iii) the file history associated with the Slivka patent (“Slivka FH”). Apple without
`
`any support argues that these three documents should be treated collectively as a
`
`single §102(e) prior art reference. There is no basis for this conclusion because, as
`
`set forth below, the unpublished Slivka application and the Slivka FH are not (and
`
`cannot be) 102(e) references.
`
`Apple’s obviousness argument is largely based on the contents of the
`
`appendices that were submitted with the Slivka application. Apple argues that the
`
`appendices teach several of the claim elements found in the independent claims of
`
`the ’407 patent. However, as discussed below, the appendices are not part of either
`
`the Slivka patent or the Slivka patent application. In fact, the appendices are not
`
`even included when a user obtains a copy of the Slivka patent from the USPTO
`
`Patent Center. The only way for the public to obtain the appendices is to order the
`
`Slivka FH. Moreover, the appendices themselves are not 102(e) prior art.
`
`Ultimately, the unavailability of Slivka application or the Slivka FH (along with
`
`the appendices included in the Slivka FH) as §102(e) prior art is fatal to Apple’s
`
`petition and should lead to its denial.
`
`Denial of the petition is warranted also because the petitioner fails to meet
`
`its threshold burden set forth in 37 C.F.R. §§ 42.104(b)(3), and 42.104(b)(4).
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`2
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
`PO’s Preliminary Response
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`Petitioner has taken up contradictory and irreconcilable positions on claims terms
`
`in this proceeding and the district court. While arguing to the district court that a
`
`phrase in the ’083 patent claims should be construed as a means-plus-function
`
`limitation, the petitioner in this petition fails to identify the structure corresponding
`
`to the claimed function, as required under 37 C.F.R. §§ 42.104(b)(3). While
`
`DoDots does not believe that the claims of the ’083 patent contain any means-plus-
`
`function limitation, Apple’s failure to set forth a construction it believes is correct
`
`(and has advocated for in the district court) and the failure to provide any support
`
`for the means-plus-function term are independent grounds for denial. This defect in
`
`the petition affects all challenged claims. The Board has consistently denied IPR
`
`petitions that fail to meet the threshold requirements set forth in 37 C.F.R. §§
`
`42.104(b)(3) and 42.104(b)(4).
`
`Apple’s petition should also be denied under 35 U.S.C. §325(d) because the
`
`Slivka patent was substantively considered by the PTO during prosecution of
`
`the ’407 patent. Apple does not and cannot demonstrate otherwise. Likewise,
`
`Apple also has not shown any errors made by the patent examiner in applying the
`
`Slivka patent. The patent examiner’s decision to allow the ’407 patent after
`
`considering the Slivka patent should result in the denial of Apple’s petition under
`
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-
`
`01469, Paper 6 (P.T.A.B. Feb. 13, 2020).
`
`3
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
`PO’s Preliminary Response
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`II. The ’407 patent.
`A. The background of the claimed invention.
`In the late 1990s, more than seven years before the first iPhone was released,
`
`the inventors John and George Kembel (twin brothers and Stanford University
`
`alumnae) developed “dot” technology, which today is known as the mobile app.
`
`The ’407 patent, titled “Accessing and displaying network content,” discloses the
`
`fundamental technology used in modern-day mobile apps and the stores used to
`
`download and install those apps onto mobile devices (e.g., Apple App Store and
`
`Samsung Galaxy Store).
`
`At that time of the invention, accessing Internet content involved the use of
`
`downloaded web browsers running on a personal computer or mobile device. But
`
`web browsers were limiting and hindered the way in which web content was
`
`viewed on mobile devices. For example, users and application developers had
`
`limited control over the presentation of internet content; content was essentially
`
`trapped within the frame of the browser. See Ex. 1001 at 2:25-30. The Kembels
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`recognized early on that there was dissatisfaction with web browsers and there was
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`a “growing desire for individual users to fully control the aggregation and
`
`presentation of content and web applications that appear on a client computer.” See
`
`Id. at 2:30-36. The Kembels sought to eliminate the need for web browsers. To do
`
`so, they developed an approach of delivering content over the Internet outside a
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
`PO’s Preliminary Response
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`web browser. Notably, when the Kembels conceived of their patented technology,
`
`there was no word for mobile apps. So, the Kembels coined the terms “dot” or
`
`“Network Information Monitor (NIM)”—which today are colloquially referred to
`
`as an app. These “dots” are “fully configurable frame[s] with one or more
`
`controls” through which content is presented on the display of a device and viewed
`
`by the user. See Id. at 5:21-28.
`
`At the time of invention described in the ’407 patent (i.e., in the late 1990s),
`
`web browsers (e.g., Microsoft Internet Explorer, Netscape Navigator) were
`
`installed on computers and used to retrieve and display websites and their
`
`webpages. A person would manually navigate between the different webpages of a
`
`website by e.g., (1) entering a webpage in a URL entry field, or (2) using forward
`
`and backward browsing buttons to move between web pages. The ’407 patent
`
`changed this paradigm.
`
`As the Federal Circuit, DoDots’ patents “relate to a method for accessing
`
`and displaying Internet content in a graphical user interface (“GUI”).” Lenovo v.
`
`DoDots, 2021 U.S. App. LEXIS 36126, at *2. The way the patented technology
`
`does that is to use a “Networked Information Monitor (NIM)” or “Dot” as a way to
`
`view content in a format other than the conventional web browser. The NIM or Dot
`
`(now mobile app) allowed for the display of content via a data structure that
`
`defined the characteristics of the Dot called a “NIM template.” Id.
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
`PO’s Preliminary Response
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`The NIM (mobile app), which is generated by the NIM template, is a “fully
`
`configurable frame with one or more controls; the frame through which content is
`
`optionally presented. The configurable frame used in accordance with the
`
`invention stands in contrast to present web browsers, which are branded by the
`
`browser vendor and which have limited means by which to alter the controls
`
`associated with the browser.” Ex. 1001 at 5:24-28. And a NIM developer (i.e.,
`
`Mobile App Developer) “has full control over all aspects of the appearance and
`
`functionality of NIM frame 137. Thus, a NIM developer has the ability to control,
`
`for example, the functionality located at any corner of frame 137, functionality
`
`placed along the top or bottom of the frame, or on the sides of the frame.” Id. at
`
`17:32-37. Such customizability provided added flexibility over traditional web
`
`browsers.
`
`Figure 12 of the ’407 patent further describes how a NIM template is
`
`delivered to user’s device to eventuate the installation of a NIM (i.e., an app):
`
`6
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
`PO’s Preliminary Response
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`
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`Id. at Fig. 12. The process is similar to how users today download and execute
`
`apps from the Apple App Store. Specifically, a NIM template is transmitted by
`
`TCP/IP to define the Dot that will receive content and interaction for a user over a
`
`network. When the user “clicks on the name of a NIM” [i.e., the name of the app],
`
`a request is sent “to the applications server 50 via the transmission channel 44 (step
`
`241).” Id. at 20:8-13. The client computing device then retrieves the NIM
`
`definition from the NIM template database” (app store), installs the app using
`
`information in the .apk file (NIM template) and, when the user runs the app,
`
`creates a frame in the display of the user interface. Id. at 20:18-42. Put another
`
`way, the patent lays out the process for delivering both the data defining the
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
`PO’s Preliminary Response
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`creation of a NIM and also retrieving the content to be displayed within the frame
`
`of the NIM.
`
`The previous Lenovo ’407 IPR.
`B.
`The Board previously considered the validity of the ’407 patent in Lenovo
`
`Holding Co, Inc. et al. v. DoDots Licensing Sols., IPR2019-00988 (PTAB
`
`September 9, 2020) (attached as Ex. 2001). There, the Board found that the ’407
`
`patent discloses, in part, a software component for accessing and displaying
`
`network content. See Ex. 2001 at 4. This component, termed an “Application
`
`Media Package” or “Dot,” is a “fully configurable frame with one or more
`
`controls” with content optionally presented through the frame. Id. When a user
`
`opens a Dot, the frame is presented in the user’s display, and network content is
`
`retrieved and presented in a viewer enclosed by the frame. Id. A “NIM template”
`
`defines the characteristics of a specific NIM, including fully configurable frame
`
`characteristics, viewer and control characteristics, and NIM content references. Id
`
`One key dispute in the prior Lenovo IPR proceeding related to the
`
`construction of the term “networked information monitor template” (“NIM
`
`template”). The Board concluded (and the Federal Circuit affirmed) that this term
`
`means “a data structure that defines the characteristics of a NIM, including the
`
`NIM frame, view, and control characteristics, which excludes executable
`
`applications/compiled code.” See., Ex. 2001 at 14, See also., Ex. 2002. Though the
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
`PO’s Preliminary Response
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`construction itself is important, the reasons for reaching this construction are
`
`equally important.
`
`The Board noted that according to the specification, claims, and prosecution
`
`history, a NIM template is a data structure that defines the characteristics of a
`
`NIM, including the NIM frame, view and control characteristics, and that excludes
`
`executable applications/compiled code. See Id. at 13-14. According to the claims,
`
`the NIM template, stored in electronic storage of a client computing device (1.A),
`
`includes the definition of a NIM (1.C) / “viewer graphical user interface having a
`
`frame.” See Id. at 14.
`
`Though the Board noted that the meaning of a NIM template is not
`
`specifically defined in the ’407 patent specificaiton, the patent makes clear that
`
`each NIM template “defines the characteristics of a specific NIM, including fully
`
`configurable frame characteristics, view and control characteristics, and NIM
`
`content references.” Id.
`
`The Board acknowledged that the ’407 specification, “does not indicate that
`
`the data structure for the NIM template contains compiled code.” Id. at 15. As a
`
`result, the Board agreed that the definition of a NIM “is content, rather than
`
`compiled code.” Id. at 16. The Board further noted that the specification’s teaching
`
`that “[a]n 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
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
`PO’s Preliminary Response
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`advantageously avoiding the need to distribute and support a hard-coded compiled
`
`application.” Id.
`
`The Board concluded that “[f]rom these disclosures, we understand that the
`
`Specification prohibits the NIM template from using compiled code or being an
`
`executable application. Our review of the Specification did not identify disclosure
`
`of use of compiled code or an executable application as the NIM template.” Id. at
`
`15. In summarizing its position, the Board stated, “[t]he Specification does not
`
`describe any NIM template that uses compiled code or executable applications.”
`
`Id. at 18. Rather, the Specification provides that “each NIM Definition contains
`
`just enough information to define, layout, and initialize a NIM’s components
`
`(frame, controls, etc.)” and “the definition is content, rather than compiled code.”
`
`Id.
`
`Based on its constructions, the Board found that the prior art Lenovo relied
`
`on did not render the ’407 patent unpatentable. The Federal Circuit affirmed the
`
`Board. See Lenovo v. DoDots, 2021 U.S. App. LEXIS 36126.
`
`III. The level of ordinary skill in the art.
`In the Lenovo ’407 IPR, the Board found 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 corresponding
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
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`industry work experience.” Ex. 2001 at 9. DoDots agrees that this is the correct
`
`standard for a POSITA and adopts it for this IPR.
`
`IV. Claim construction.
`In an inter partes review, claims are “construed using the same claim
`
`construction standard that would be used to construe the claims in a civil action
`
`under 35 U.S.C. § 282(b), including construing the claims in accordance with the
`
`ordinary and customary meaning of such claims as understood by one of ordinary
`
`skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. §
`
`42.100(b). The proper claim construction standard is the one set forth in Phillips v
`
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`
`With respect to the ’407 patent, this Board, the Court of Appeals, Federal
`
`Circuit and the United States District Court, Western District of Texas have
`
`already construed some of the claim terms. DoDots adopts each of the prior claim
`
`construction Orders for this IPR.
`
`For completeness, a copy of the District Court’s claim construction order in
`
`the co-pending litigation against Samsung is attached as Ex. 2010. Patent Owner
`
`has not made any arguments based on the District Court’s claim construction in
`
`this document but expressly reserves the rights to do so in any further proceedings
`
`as appropriate.
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
`PO’s Preliminary Response
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`V. The Slivka reference.
`Apple’s petition describes its grounds of invalidity using the following table
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`and identifies its primary reference as “Slivka”:
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`Petition at 7.
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`Though the above table states that Apple is relying on a patent called Slivka,
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`a closer review of the petition, however, shows that Apple actually relies on three
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`separate Slivka documents in both Grounds 1 and 2—specifically, Apple relies on
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`(i) the Slivka patent; (ii) the unpublished Slivka application; and (iii) the Slivka file
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`history. Apple suggests that these three documents—Slivka patent, Slivka
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`application, and Slivka FH—should be treated collectively as a single §102(e)
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`prior art reference.1 The reasons behind Apple’s attempt to blur the nature of its
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`1 In its petition, Apple argues that the Slivka patent is §102(e) prior art. See
`Petition at 10 (stating “Slivka was filed December 6, 1996 and issued May 9, 2000,
`qualifying as prior art at least under 35 U.S.C. §102(e)(pre-AIA).” Apple does not
`argue that the Slivka patent (and for that matter, either the Slivka application or the
`Slivka FH) qualify as prior art under any other §102 section. For that reason, this
`POPR will set forth arguments only on why the Slivka application and the Slivka
`FH are not prior art references under §102(e).
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
`PO’s Preliminary Response
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`primary reference becomes apparent upon review of how the Slivka application
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`was submitted, what the Slivka patent includes and, more importantly, what the
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`Slivka patent does not include, and when each of the three Slivka documents were
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`available to the public.
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`A. The prosecution of the Slivka patent.
`The Slivka application was filed on December 6, 1996. The application was
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`accompanied by a transmittal letter that, among other things, stated the following:
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`Exs. 2009 and 2011 (highlights added).
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`The transmittal letter that accompanied the Slivka application notes that the
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`application contains “34 pages of specification, 4 pages of claims, an abstract, an
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`unsigned Combined Declaration and Power of Attorney and 177 pages of
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`appendices.” Id. The 177 pages of appendices contain twenty separate appendices.
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`Appendices A, C, D, E and F, which form the backbone of Apple’s petition, set
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`forth code for an HTM file.2
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`2 An HTM file “is a webpage written using Hypertext Markup Language
`(HTML).” See generally https://fileinfo.com/extension/htm.
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
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`• Appendix A is a 2-page printout of a HTM file titled “DESKTOP.HTM”
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`• Appendix C is a 3-page printout of a HTM file titled “INFOPANE.HTM”
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`• Appendix D is a 2-page printout of a HTM file titled “NEWS.HTM”
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`• Appendix E is a 1-page printout of a HTM file titled “TICKER.HTM”
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`• Appendix F is a 1-page printout of a HTM file titled “TICKHOST.HTM”
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`These statements evince Slivka’s intention that the 177 pages of appendices, which
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`includes Appendices A, C, D, E and F that Apple relies on to construct its
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`invalidity arguments, are separate from the patent specification. Id.
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`Indeed, the transmittal letter shows Slivka did not take any of the steps
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`required by 37 C.F.R. §§1.96(a) and (b) to submit the appendices relating to
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`computer program listings with the Slivka application. Id. Specifically, 37 C.F.R.
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`§1.96 requires computer program listings to be submitted as drawings or as part of
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`the specification (by positioning the printed copies of appendices between the
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`specification and the claims) or submitting computer printout sheets for use as
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`camera ready copy when a patent is subsequently printed or as a microfiche. Ex.
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`2008 at 21-22.
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`B. Availability of the Slivka application, the Slivka FH, and the
`Slivka appendices to the public.
`The Slivka application was never published because the rule requiring
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`publication of applications “after the expiration of a period of eighteen months
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
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`from the earliest filing date for which a benefit is sought” did not become effective
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`until November 29, 2000. See 65 FR 57024 (Changes to Implement Eighteen-
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`Month Publication of Patent Applications effective November 29, 2000 discussing
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`amendments to 35 U.S.C. §122(b)(1)). Moreover, on or after November 29, 2000,
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`the Slivka application remained unpublished under 35 U.S.C. §122 in view of the
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`rule that “an application shall not be published if that application is no longer
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`pending.” See 35 U.S.C. §122(b)(2)(i). Given that the Slivka patent issued on May
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`9, 2000, the Slivka application was “no longer pending” on or after November 29,
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`2000 and therefore was never published. Id.
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`The first publication of anything related to Slivka was the Slivka patent itself
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`on May 9, 2000, approximately thirteen months after the effective filing date of the
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`’407 patent (i.e., April 26, 1999). But as published, the Slivka patent did not
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`include any of the appendices, including appendix A, C, D, E and F. See Ex 1001.
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`Indeed, to this day, the appendices are not included with the Slivka patent when the
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`Slivka patent is obtained from the USPTO Patent Center. See Ex. 2003.
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`Moreover, today, while the Slivka application is one of two documents
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`accessible online as part of the file history, it does not include a copy of any
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`appendix (including appendices A, C, D, E, and F). See Exs. 2004 and 2005. It
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`appears that the Slivka patent owner sent a “Request to Make of Record Noted
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`Concerns in Granted Patent” on March 1, 2001. See Ex. 2005. This request is not
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`IPR2023-00939 (U.S. Patent No. 8,510,407)
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`available publicly and, therefore, the public has no way to determine what the
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`purported concerns were. Id. The request, however, neither resulted in a certificate
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`of correction to the granted patent nor resulted in a change to the patent application
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`that is available for download today from the USPTO Patent Center. See Ex 2003,
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`and Ex. 2004. Indeed, the patent office did not even make the “Request to Make of
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`Record Noted Concerns in Granted Patent” part of the file history. Id. The end
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`result is that neither the Slivka patent application as filed nor the Slivka patent
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`included the appendices. Id.
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`The only way for the public to obtain a copy of the appendices submitted
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`with the Slivka application is to obtain a copy of the patent file history. See Ex.
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`2009. But, as per 37 C.F.R. §1.11(a), the Slivka FH can become “open to
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`inspection by the public” only upon the issuance of the Slivka patent. In other
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`words, the Slivka FH (and, therefore, the appendices) was not available to the
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`public until at least May 9, 2000, which is 13 months after the April 26, 1999
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`effective filing date of the ’407 patent.3
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`3 In its petition, Apple fails to provide any evidence on when the Slivka FH was
`available to the public. DoDots, therefore, assumes that 37 C.F.R. §1.11(a) was
`followed and the