Trials@uspto.gov
`571-272-7822
`
`Paper 37
`Date: January 5, 2021
`
`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.
`
`IPR2019-01279
`Patent 8,510,407 B1
`
`Before JAMES A. WORTH, AMBER L. HAGY, and SHARON FENICK,
`Administrative Patent Judges.
`FENICK, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Granting In Part Petitioner’s Motion to Strike
`37 C.F.R. 42.5
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`INTRODUCTION
`I.
`This is a Final Written Decision in this inter partes review
`challenging the patentability of claims 1, 8–13, and 20–24 of U.S. Patent No.
`8,510,407 B1 (Ex. 1001, “the ’407 patent”). We have jurisdiction under 35
`U.S.C. § 6(b)(4). 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). Having reviewed the parties’ arguments and supporting evidence,
`for the reasons discussed below, we find that Petitioner has not demonstrated
`by a preponderance of the evidence that any of claims 1, 8–13, and 20–24
`are unpatentable. Additionally, for the reasons discussed below, in
`Section III.I, we grant-in-part Petitioner’s Motion to Strike (Paper 31).
`II. BACKGROUND AND SUMMARY
`A. Procedural History
`Lenovo Holding Company, Inc., Lenovo (United States) Inc., and
`Motorola Mobility LLC (“Petitioner”) filed a Petition for an inter partes
`review of claims 1, 8–13, and 20–24 (“the challenged claims”) of the ’407
`patent. Paper 2 (“Pet.”). DoDots Licensing Solutions LLC (“Patent
`Owner”) did not file a Preliminary Response. In view of the preliminary
`record, we concluded that Petitioner satisfied the burden, under 35 U.S.C.
`§ 314(a), to show that there was a reasonable likelihood that Petitioner
`would prevail with respect to at least one of the challenged claims.
`
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`Accordingly, we instituted an inter partes review of all the challenged
`claims, on all of the asserted grounds. Paper 7 (“Inst. Dec.”).
`Patent Owner filed its Response. Paper 18 (“PO Resp.”). Petitioner
`filed a Reply. Paper 21 (“Reply”). After receiving authorization, Patent
`Owner filed a motion to strike certain portions of the Reply and exhibits
`referenced and Petitioner filed an opposition. Paper 23; Paper 24. In an
`order relating to this motion to strike, we granted Patent Owner’s motion and
`determined that a certain portion of the Reply was untimely and, along with
`certain exhibits, would not be considered. Paper 25, 4–7.
`Patent Owner filed a Sur-reply. Paper 27 (“Sur-reply”). After
`receiving authorization, Petitioner filed a motion to strike Patent Owner’s
`Sur-reply and a supplemental declaration filed with the Sur-reply. Paper 31
`(“Pet. Mot.” or “Petitioner’s Motion to Strike”). Patent Owner filed an
`opposition. Paper 32 (“PO Opp.”). We address Petitioner’s Motion to
`Strike, infra Section III.I, and grant the motion with respect to the
`supplemental declaration, but not with respect to the Sur-reply.
`On October 28, 2020, we held an oral hearing, the transcript of which
`is of record. Paper 36 (“Tr.”).
`B. Real Parties in Interest
`Petitioner indicates that Lenovo Holding Company, Inc., Lenovo
`(United States) Inc., and Motorola Mobility LLC are the real parties-in-
`interest. Pet. 67.
`Patent Owner indicates that DoDots Licensing Solutions, LLC is the
`real party-in-interest. Paper 4 (Patent Owner’s Mandatory Notices), 2.
`C. Related Matters
`According to Petitioner and Patent Owner, the ’407 patent at issue
`here is also asserted in DoDots Licensing Solutions LLC v. Lenovo Holding
`
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`Company, Inc. et al., No. 18-098-MN (D. Del.) (“the related district court
`action”). Pet. 67–68; Paper 4 (Patent Owner’s Mandatory Notices), 2.
`Petitioner notes that the related district court action also involves U.S. Patent
`Nos. 9,369,545 and 8,020,083 (“the ’083 patent”), and that Petitioner filed a
`petition for inter partes review of the patentability of certain claims in U.S.
`Patent No. 9,369,545 in IPR2019-00988 (final written decision finding no
`claims unpatentable issued, see IPR2019-00988, Paper 37 (Sept. 9, 2020))
`and a petition for an inter partes review of the patentability of certain claims
`in U.S. Patent No. 8,020,083 (inter partes review instituted, see IPR2019-
`01278, Paper 8 (Jan. 24, 2020); final written decision pending). Pet. 68.
`D. The ’407 Patent
`The title of the ʼ407 patent is “Displaying Time-Varying Internet
`Based Data Using Application Media Packages.” Ex. 1001, code (54). The
`’407 patent discloses, in part, a software component for accessing and
`displaying network content. Id. at code (57). A Networked Information
`Monitor (NIM) is a “fully configurable frame with one or more controls”
`with content optionally presented through the frame. Id. at 2:61–63, 5:21–
`24. When a NIM is opened by a user, the frame is presented in the user’s
`display and network content is retrieved and presented in a viewer enclosed
`by the frame. Id. at 19:63–20:30. The network content may be identified
`via URLs included in the NIM definition. Id. at code (57), 20:24–27. The
`network content is time-varying, e.g., as in an image that varies over time.
`Id. at code (57). The Specification describes that the frame according to 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.” Id. at 5:24–28.
`
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`E. Illustrative Claim
`Claims 1 and 13 are the only independent claims among the
`challenged claims. Claim 1 is reproduced below with Petitioner’s limitation
`designations added in brackets for ease of reference:
`1. [1.Preamble] A client computing device configured to
`access content over a network, the client computing device
`comprising:
`[1.A] electronic storage configured to store networked
`information monitor template associated with a networked
`information monitor, [1.B] the networked information monitor
`template having therein a definition of a viewer graphical user
`interface having a frame within which time-varying content in a
`web browser-readable language may be presented on a display
`associated with the client computing device, wherein the frame
`of the viewer graphical user interface lacks controls for enabling
`a user to specify a network location at which content for the
`networked information monitor is available; and
`[1.C] one or more processors configured to execute one or
`more computer program modules, the one or more computer
`program modules being configured to access the networked
`information monitor defined by the networked information
`monitor template, wherein accessing the networked information
`monitor defined by the networked information monitor template
`results in:
`
`[1.D] transmission, over a network to a web server
`at a network location, of a content request for content to
`be displayed within the frame of the viewer graphical user
`interface defined by the networked information monitor
`template;
`[1.E] reception, over the network from the web
`server at the network location, of content transmitted from
`the web server in response to the content request, the
`content being time-varying;
`[1.F] presentation, on the display, of the viewer
`graphical user interface defined by the networked
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`information monitor template outside of and separate from
`any graphical user interface of any other application; and
`[1.G] presentation, on the display within the frame
`of the viewer graphical user interface defined by the
`networked information monitor, of the time-varying
`content received from the web server.
`F. Evidence
`Petitioner relies on the following references:
`Reference
`Description
`Van Hoff et al.
`US 5,919,247
`(“Hoff”)1
`Berg
`
`Date
`Issued July 6,
`1999
`Jan. 1, 1998
`
`Exhibit
`Ex. 1004
`
`Ex. 1009
`
`Cliff Berg, How Do I Create a
`Signed Castanet Channel?,
`DR. DOBB’S JOURNAL,
`January 1, 1998
`US 5,983,227
`
`US Patent Application
`Publication 2002/0023110 A1
`US 6,401,134 B1
`
`US 5,999,941
`
`Nazem
`
`Fortin et al.
`(“Fortin”)
`Razavi et al.
`(“Razavi”)
`Andersen
`
`
`
`Issued Nov.
`9, 1999
`Published
`Feb. 21, 2002
`Issued June 4,
`2002
`Issued Dec. 7,
`1999
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1006
`
`Ex. 1012
`
`
`1 The last name of the first-named inventor is Van Hoff, but, for consistency
`with the Petition, we refer to this patent as “Hoff.”
`
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`G. Asserted Grounds
`Petitioner asserts that claims 1, 8–13, and 20–24 would have been
`unpatentable on the following grounds:
`Claim(s) Challenged 35 U.S.C. §2
`1, 9–13, 21–24
`103
`8, 20
`103
`1, 9–13, 21–24
`103
`8, 20
`103
`
`
`Reference(s)/Basis
`Hoff, Berg, Nazem or Admitted
`Prior Art (“APA”)3
`Hoff, Berg, Nazem or APA, Fortin
`Razavi, Andersen
`Razavi, Andersen, Fortin
`
`III. ANALYSIS
`A. Legal Standards
`It is a petitioner’s burden to demonstrate unpatentability.
`See Dynamic Drinkware, 800 F.3d at 1378 (citing Tech. Licensing Corp. v.
`Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter 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 skill in the art; and (4) objective evidence of nonobviousness, i.e.,
`
`
`2 Because the claims at issue have an effective filing date prior to the
`effective date of the AIA’s amendments to 35 U.S.C. § 103, we apply the
`pre-AIA version of § 103 in this Decision.
`3 The Petition cites column 1, lines 56–67 of the ’407 patent as the APA.
`Pet. 23–24, 26.
`
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`secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966). “To 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 the
`principles stated above in mind.
`B. Level of Ordinary Skill in the Art
`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. 1003 (“Madisetti Decl.”) ¶ 44). Patent Owner does
`not provide an alternative description of the proper level of ordinary skill or
`comment on Petitioner’s proposal.
`Petitioner’s proposal appears to be consistent with the prior art of
`record. 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). We adopt this proposal for this Final Written
`Decision.
`
`C. Claim Construction
`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 the ordinary
`and customary meaning of such claim as understood by one of
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`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) (setting forth claim construction standard in civil actions). 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).
`1. “outside of and separate from any graphical user interface
`of any other application”
`In the Petition, Petitioner requests that we construe one term, found in
`element 1.F of claim 1: that presentation of the viewer graphical user
`interface (“GUI”) defined by the networked information monitor template be
`“outside of and separate from any graphical user interface of any other
`application.” Pet. 4–8. Petitioner argues that the correct construction should
`be “so that the viewer [graphical user interface] is distinct from and not
`presented within the frame of any other GUI generated by another
`application.” Id. Because our ultimate decision does not rest on the
`construction of this claim term, we do not construe it. See Vivid Techs., Inc.
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
`terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying
`Vivid Techs. in the context of an inter partes review).
`
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`2. “network information monitor”
`To resolve Petitioner’s challenge, the parties assert that two claim
`terms need to be construed: “network information monitor” and “network
`information monitor template” (or “NIM template”). PO Resp. 7–9;
`Reply 2–9; Sur-reply 2–7 (“The heart of the dispute between the parties with
`respect to claim construction relates to the term ‘template’ as used in the
`phrase ‘networked information monitor . . . template.’”). Each term is
`introduced in each of the two independent claims from among the
`challenged claims. Ex. 1001, 42:28–64, 43:61–44:31. We address “network
`information monitor” first.
`Patent Owner argues that “[t]he 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 (quoting Ex. 1001, 5:21–24); Ex. 2004 ¶ 22. Petitioner agrees
`that “network information monitor” is defined in the Specification. Reply 2
`(citing Ex. 1001, 2:59–61, 5:18–29); Tr. 14:20–23 (Petitioner’s counsel
`stating that “[t]he patentee set out a clear and explicit definition of the term,
`network information monitor or NIM, said it refers to a fully configurable
`frame . . . with one or more controls.”); see Ex. 1003 ¶ 33.
`The definition of NIM provided in the Specification describes a frame
`“through which content is optionally presented.” Ex. 1001, 5:21–24. Claim
`1 also describes the subject of the definition in a NIM template alternatively
`as (a) a NIM (in 1.C), (b) “a viewer graphical user interface having a frame
`within which time-varying content in a web browser-readable language may
`be presented on a display associated with the client computing device” (in
`1.B), or (c) a “viewer graphical user interface” (in 1.D, 1.F, 1.G). Id. at
`
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`42:28–64. Thus the definition of NIM provided in the Specification is
`consistent with the use in the claim. With respect to the word “optionally”
`in the Specification definition, we note that, in the claims, time-varying
`content is recited as being presented on the display within a frame (element
`1.G and the last element of claim 13). Id.; see also id. at 43:61–44:31.
`For these reasons, we determine that the correct construction of a NIM
`is “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.
`3. “network information monitor template”
`a) The Parties’ Contentions
`Patent Owner asserts: “the NIM template 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. 8–9. Petitioner, while not presenting a proposed
`construction, argues that the Patent Owner’s construction should be rejected
`as not supported by a definition in the ’407 patent, and specifically argues
`that Patent Owner’s proposed definition is flawed because it excludes an
`executable program from being a NIM template. Reply 1–9.
`Patent Owner supports its proposed constructions with references to
`the Specification. Patent Owner quotes the Specification’s description that
`“[e]ach NIM template defines the characteristics of a specific NIM.”
`PO Resp. 8 (quoting Ex. 1001, 21:48–50) (emphasis omitted). With respect
`to “the definition of the NIM,” Patent Owner quotes the Specification’s
`statement that “the definition of the NIM is content, rather than compiled
`code” and cites additionally Figure 13, which “illustrates a data structure for
`a NIM definition.” Id. (quoting Ex. 1001, 21:48–50, 3:63–65) (emphasis
`omitted). Patent Owner additionally quotes the Specification’s description
`of the NIM definition as “fairly small in size” and “easily distributable”
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`because it “contains just enough information to define and initialize the
`NIM’s components.” Id. at 9 (quoting Ex. 1001, 33:55–65).
`Patent Owner additionally relies on the testimony of its expert,
`Dr. Sacerdoti, regarding the plain and ordinary meaning of the word
`“template,” and on Dr. Sacerdoti’s testimony that, according to the ’407
`patent, a NIM template is not compiled code, and cannot be an executable
`application or applet. Id. at 8–9 (citing Ex. 2004 ¶¶ 29–36, 47–53).
`Petitioner argues that the plain and ordinary meaning of the term
`should control, and that “nothing in the claims or specification limits a NIM
`template to a data structure excluding an executable program.” Reply 1–3.
`Petitioner argues that Figure 13 of the ’407 patent and the accompanying
`disclosure, cited by Patent Owner, are merely directed to a non-limiting
`example of a NIM template. Id. at 3–4. Petitioner also argues that Patent
`Owner’s reliance on the language describing a NIM definition as “fairly
`small in size” is also exemplary. Id. at 4 (quoting Ex. 1001, 33:60).
`Petitioner notes that the “fairly small in size” NIM definition is further
`described in this portion of the ’407 patent as “therefore easily distributable
`as an XML file or Blob (binary large object).” Id. (quoting Ex. 1001, 33:60–
`61). Petitioner contends that this binary large object “might contain any
`binary content, including executable code.” Id. Thus, Petitioner argues,
`rather than finding indications that the patentee acted as lexicographer,
`Patent Owner improperly reads limitations from these examples, which the
`Petitioner contends are non-limiting, into its definition of “NIM template.”
`Id. at 2–5.
`Additionally, Petitioner argues that the Patent Owner’s proposed
`construction improperly excludes disclosed embodiments. Id. at 5.
`Petitioner quotes the ’407 patent’s reference to “[a] second executable
`
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`module” that “defines a NIM frame for the NIM using the definition.” Id.
`(quoting Ex. 1001, 3:8–10) (emphasis omitted). Petitioner also discusses the
`portion of the Specification that describes users sharing NIMS via database
`that stores “Share Module[s]” including “multiple . . . individual [NIM]
`definition modules” or “multiple packs of NIMs that have been shared . . .
`containing multiple NIM definition modules.” Ex. 1001, 34:4–15, Fig. 24
`(discussed and quoted-in-part at Reply 5–6). Petitioner argues that
`Dr. Sacerdoti “confirmed that a person of ordinary skill in the art would
`understand that ‘[a] module would be a chunk of code’ and that an
`‘executable module’ is ‘executable computer code.’” Reply 6 (quoting
`Ex. 1019, 69:22–70:13).
`Petitioner additionally argues that, in the related ’083 patent, the
`claims describe one or more processors that “execute the first [NIM]
`template such that the graphical user interface of the first [NIM] is presented
`to a user.” Id. at 7 (emphasis omitted); see Tr. 63:19–64:5, 71:6–14 (Patent
`Owner’s and Petitioner’s counsel each agreeing that “NIM template” in the
`’407 patent should be construed the same way in this inter partes review as
`it is in the inter partes review (IPR2019-01278) of claims of the ’083
`patent). Additionally Petitioner argues that Patent Owner’s definition is
`contradicted by Patent Owner’s statements in the prosecution history of
`other related patents and by Patent Owner’s infringement allegations against
`Petitioner in the related district court action. Id. at 7–8 (citing Ex. 1016, 6–
`7, 14; Ex. 1015, 6, 7, 10–12). As discussed in our analysis below,
`Petitioner’s arguments are not persuasive.
`b) Construction
`After considering the usage of “NIM template” in the claims, the
`Specification, and the prosecution history, and reviewing the parties’
`
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`contentions and evidence, we determine that 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.
`Turning to the usage of NIM template in the claims, from the
`language of claim 1, we understand that 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 . . .” (1.B,
`1.D, 1.F). Ex. 1001, 42:28–64; see also id. at 43:61–44:31 (similar
`limitations in claim 13). From our examination of the claims, 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 ’407 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 ’407 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, 26:38–40), 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 6:66–7:2). See
`also id. at 21:12–14 (“The NIM definitions, as discussed above, include[]
`the NIM frame definition and the definition of the controls for filling the
`viewer within the frame with content.”).
`Figure 13 of the ’407 patent is reproduced below.
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`
`Figure 13 “illustrates a data structure for a NIM definition.” Id. at
`21:32, 3:63–65. 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 21:61–65. 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 21:33–35; 21:41–43. 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 21:45–60 (emphases 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
`disclosure of use of compiled code or an executable application by the NIM
`template.
`As discussed, Petitioner argues that the data structure illustrated in
`Figure 13 and the related discussion of Figure 13 merely describe 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) (“[P]articular embodiments appearing in
`the written description will not be used to limit claim language that has
`broader effect.”)). Petitioner’s argument is not persuasive. Although we
`agree with Petitioner that the XML embodiment is one possible embodiment
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`of a NIM template, the Specification 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 is content, rather than 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.
`With respect to Petitioner’s argument that a NIM template “might
`contain any binary content, including executable code,” Petitioner’s
`argument is not persuasive. Reply 4. The Specification refers to distribution
`of an NIM definition “as an XML file or Blob (binary large object)” and
`later, in the same context, to an “XML Blob.” Ex. 1001, 33:61, 34:28. In
`addition, Petitioner’s contention is attorney argument unsupported by
`persuasive expert testimony. In re Geisler, 116 F.3d 1465, 1470–71 (Fed.
`Cir. 1997) (argument by counsel cannot take the place of evidence); In re
`Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument 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 have understood and interpreted the relevant passages from
`the Specification and their bearing on the limitation in dispute.
`With respect to the “second executable module” and “NIM definition
`modules” described in the Specification, Petitioner’s arguments are again
`not persuasive. Reply 5–6. Petitioner does not identify, and we do not find,
`any portion of the Specification that discloses that the second executable
`module contains compiled code. In the context of the Specification, the
`“second executable module” described as acting to “define[] a NIM frame
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`for the NIM using the definition” is preceded by the description of a first
`executable module that “identif[ies] a definition of a Networked Information
`Monitor.” Ex. 1001, 3:6–9. Although Petitioner argues that the second
`executable module is a NIM template, the second executable module is
`described in the Specification as “using the definition” that was identified by
`the first module. Id. (emphasis added). Petitioner only highlights the
`described action of the second executable module to “define a NIM frame”
`but does not explain the interaction with the first executable module, or
`support the assertion that the second executable module is a NIM template
`or that the discussed NIM definition modules are executable modules.
`See Reply 5–6. Although Petitioner cites Dr. Sacerdoti’s deposition
`testimony relating to the word “module,” Petitioner’s contentions about the
`meaning of NIM template, and whether the “second executable module” or
`“NIM definition module” are NIM templates or executable modules, are
`attorney argument unsupported by persuasive expert testimony. In re
`Geisler, 116 F.3d at 1470–71. The Specification does not describe any NIM
`template that uses compiled code or executable applications. Rather, the
`Specification provides that “[e]ach NIM definition contains just enough
`information to define and initialize the NIM’s components (NIM frame,
`controls, etc.)” and “the definition of the NIM is content, rather than
`compiled code.” Ex. 1001, 33:55–57; Ex. 2004 ¶ 46.
`Petitioner’s argument regarding the claim term of the ’083 patent
`describing “execut[ion of] the first networked information monitor template
`such that the graphical user interface of the first networked information
`monitor is presented to the user” amounts to one sentence, and does not
`address the context of the phrase in the claims of that patent, or present any
`testimony regarding whether one of ordinary skill in the art, reading those
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`claims, would determine that, in the cited claim 1 of the ’083 patent, the
`networked information monitor template is described as executable code.
`Reply 7; Ex. 1013, 47:42–48:8. Petitioner’s contentions about the meaning
`of the disputed terms in the context of the ’083 claims and the prosecution
`history of a related application (Reply 6–7) 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 1470–71. As such,
`Petitioner’s argument is not persuasive.
`Lastly, Petitioner’s argument with respect to the positions taken by
`Patent Owner in the related district court action, in which, according to
`Petitioner, “Patent Owner has contended that each step of Claim 1 is
`performed by the use of” an “app” is again attorney argument. See Reply 8–
`9. Although Petitioner cites the Second Amended Complaint, that
`document, with respect to the ’407 patent, describes generally that
`“Yogabook, in connection with the weather app” satisfies the limitations,
`and does