UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________
`
`EBAY, INC.,
`
`Petitioner,
`
`v.
`
`LEXOS MEDIA IP, LLC,
`
`Patent Owner.
`
`_______________________
`
`Case IPR2023-00337
`
`U.S. Patent No. 6,118,449
`
`_______________________
`
`PETITION FOR INTER PARTES REVIEW
`
`OF U.S. PATENT NO. 6,118,449
`
`
`
`
`
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`A.
`B.
`C.
`III.
`IV.
`V.
`
`INTRODUCTION ...................................................................................... 1
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(b) ......................... 1
`Real Parties-in-Interest ............................................................................... 1
`Related Matters ........................................................................................... 2
`Counsel and Service Information ............................................................... 7
`PAYMENT OF FEES ................................................................................ 8
`GROUNDS FOR STANDING .................................................................. 8
`PRECISE RELIEF REQUESTED ............................................................. 8
`Challenged Claim ....................................................................................... 8
`A.
`Statutory Grounds of Challenge ................................................................. 8
`B.
`LEVEL OF ORDINARY SKILL ............................................................. 10
`VI.
`OVERVIEW OF THE ’449 PATENT ..................................................... 10
`VII.
`Priority Date of the ’449 Patent ................................................................ 10
`A.
`State of the Art Before the Application for the ’449 Patent ..................... 11
`B.
`1. Cursors in Graphical User Interfaces ......................................................... 11
`2. Client/Server Systems ................................................................................ 12
`C.
`Summary of the ’449 Patent ..................................................................... 13
`VIII.
`CLAIM CONSTRUCTION ..................................................................... 14
`A.
`Claim Term Construed in APMEX: “said specific image including
`content corresponding to at least a portion of said information to be
`displayed on said display of said user’s terminal” ................................... 16
`Subsequent Claim Constructions .............................................................. 17
`B.
`DETAILED EXPLANATION OF GROUNDS ...................................... 19
`IX.
`A. Overview of Prior Art References ............................................................ 19
`1. Malamud (EX1004).................................................................................... 19
`2. Nakagawa (EX1005) .................................................................................. 22
`3. Nielsen (EX1006) ....................................................................................... 23
`B. Motivation to Combine References .......................................................... 25
`1. Legal Standard ............................................................................................ 25
`
`ii
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`

`

`C.
`
`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`2. Motivation to Download Malamud’s Application Program from a Server,
`and the Obviousness of Doing So ....................................................... 26
`3. Motivation to Combine the Teachings of Malamud and Nakagawa, and the
`Obviousness of that Combination ....................................................... 28
`4. Motivation to Combine the Teachings of Nielsen and Malamud, and the
`Obviousness of that Combination ....................................................... 29
`Ground 1: The Challenged Claims Are Rendered Obvious by Malamud
`
`31
`1. Claim 1 ....................................................................................................... 31
`2. Claim 27 ..................................................................................................... 37
`3. Claim 53 ..................................................................................................... 38
`D. Ground 2: The Challenged Claims Are Rendered Obvious by Malamud
`and Nakagawa........................................................................................... 46
`1. Claim 1 ....................................................................................................... 46
`2. Claim 27 ..................................................................................................... 50
`3. Claim 53 ..................................................................................................... 50
`E.
`Ground 3: The Challenged Claims Are Rendered Obvious by Nielsen and
`Malamud ................................................................................................... 53
`1. Claim 1 ....................................................................................................... 53
`2. Claim 27 ..................................................................................................... 59
`3. Claim 38 ..................................................................................................... 60
`4. Claim 53 ..................................................................................................... 60
`DISCRETIONARY DENIAL IS NOT APPROPRIATE ........................ 66
`The Board Should Not Deny Institution Under Fintiv ............................. 66
`A.
`The Board Should Not Deny Institution Under 35 U.S.C. § 325(d) ........ 68
`B.
`The Board Should Not Deny Institution Under General Plastic ............. 69
`C.
`CONCLUSION ........................................................................................ 69
`XI.
`LISTING OF CHALLENGED CLAIMS OF THE ’449 PATENT ........................ 70
`CERTIFICATE OF WORD COUNT UNDER 37 CFR § 42.24(d) ........................ 75
`CERTIFICATE OF SERVICE ................................................................................ 76
`
`
`
`X.
`
`
`
`iii
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`
`LIST OF EXHIBITS1
`
`
`Exhibit Title
`EX1001 U.S. Patent No. 5,995,102 entitled Server System and Method for
`Modifying a Cursor Image to James Samuel Rosen et al. (“the ’102
`Patent”).
`EX1002 U.S. Patent No. 6,118,449 entitled Server System and Method for
`Modifying a Cursor Image to James Samuel Rosen et al. (“the ’449
`Patent”).
`EX1003 Declaration of Dr. Craig Rosenberg.
`EX1004 U.S. Patent No. 6,437,800 to Mark A. Malamud (“Malamud”).
`EX1005 U.S. Patent No. 5,835,911 to Toru Nakagawa, et al. (“Nakagawa”).
`EX1006 U.S. Patent No. 5,937,417 to Jakob Nielsen (“Nielsen”).
`EX1007
`Lexos Media IP, LLC v. APMEX, Inc., No. 2:16-cv-00747-JRG-
`RSP (“APMEX”), Early Claim Construction Opinion and Order,
`Dkt. 86 (E.D. Tex., Mar. 16, 2017).
`Lexos Media IP, LLC v. Amazon.com, Inc., No. 2:22-cv-00169-
`JRG, Parties’ Joint Claim Construction and Prehearing Statement,
`Dkt. 89 (E.D. Tex., May 16, 2023) (including the exhibits attached
`thereto).
`EX1009 U.S. Patent No. 5,754,176 to Chris Crawford (“Crawford”).
`EX1010
`File History of the ’102 Patent.
`EX1011
`File History of the ’449 Patent.
`EX1012
`Curriculum Vitae of Dr. Craig Rosenberg.
`EX1013 Appendices to the Declaration of Dr. Craig Rosenberg.
`EX1014
`Lexos Media IP, LLC v. Amazon.com, Inc., No. 2:22-cv-00169-
`JRG, Claim Construction Memorandum Opinion and Order, Dkt.
`130 (E.D. Tex. Sep. 5, 2023)
`Lexos Media IP, LLC v. Nike, Inc., No. 2:22-cv-00311-JRG, Claim
`Construction Order, Dkt. 187 (E.D. Tex. Nov. 2, 2023)
`
`EX1008
`
`EX1015
`
`
`1 Given the near complete overlap of the documents relied upon in this IPR Petition
`
`and those relied upon in the IPR Petition on the related ’449 Patent, Petitioner has
`
`included in this list and in both Petitions all documents relied upon in the two IPR
`
`Petitions so that the Board need only refer to one set of Exhibits.
`
`iv
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`
`Exhibit Title
`EX1016
`Lexos Media IP, LLC v. Overstock.Com, Inc., No. 2:22-cv-2324-
`JAR-ADM, Memorandum and Order, Dkt. 99 (D. Kan. Dec. 4,
`2023)
`Lexos Media IP, LLC v. eBay, Inc., 6:22-cv-00648, Parties’ Joint
`Claim Construction and Prehearing Statement (Dkt. 76) (W.D. Tex.
`Oct. 17, 2023) (including the exhibits attached thereto)
`Lex Machina Stay Statistics on N.D. Cal.
`
`
`EX1017
`
`EX1018
`
`v
`
`

`

`I.
`
`INTRODUCTION
`
`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`
`eBay, Inc. (“Petitioner”) requests inter partes review (“IPR”) of claims 1, 38,
`
`and 53 (the “Challenged Claims”) of U.S. Patent No. 6,118,449 (“the ’449 Patent”)
`
`(EX1002) assigned to Lexos Media IP, LLC (“Lexos” or “Patent Owner”). A
`
`Motion for Joinder is being submitted herewith, requesting this proceeding be joined
`
`with IPR2023-01001, stylized Amazon.com Inc. v. Lexos Media IP, LLC (“the
`
`Amazon IPR”). A trial was instituted against the ’449 Patent in the Amazon IPR on
`
`December 12, 2023. The instant Petition is a copycat of the petition filed in the
`
`Amazon IPR and is being timely filed. As recognized by the Institution Decision in
`
`the Amazon IPR, this Petition shows that there is a reasonable likelihood of
`
`invalidity of the Challenged Claims. For the reasons set forth below and in the
`
`corresponding Motion for Joinder, review should be instituted, and the Challenged
`
`Claims should be found unpatentable and canceled.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(b)
`
`A. Real Parties-in-Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner identifies the following as the
`
`real party-in-interest: eBay, Inc.
`
`1
`
`

`

`B. Related Matters
`Petitioner is contemporaneously filing an IPR petition against claim 72 of U.S.
`
`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`
`Patent No. 5,995,102 (“the ’102 Patent”), which is a parent to the ’449 Patent.2 A
`
`motion for joinder accompanies the ’102 patent petition, seeking joinder to IPR2023-
`
`01000, which was instituted on December 12, 2023.
`
`The ’102 Patent, the ’449 Patent, and U.S. Patent No. 7,975,241 (“the ’241
`
`Patent”) (collectively, the “Lexos Patents”) are asserted against Petitioner in Lexos
`
`Media IP, LLC v. eBay, Inc., No. 3:23-cv-06314-LJC (N.D. Cal.) (the “Northern
`
`District Litigation”).3 A complaint for patent infringement was first served on
`
`Petitioner on June 6, 2022 in Lexos Media IP, LLC v. eBay, Inc., 6:22-cv-00648
`
`(W.D. Tex.) (“the Western District Case”). On December 6, 2023, Judge Albright
`
`issued an Order granting Petitioner’s request to transfer venue to the Northern
`
`District of California. See Lexos Media IP, LLC v. eBay, Inc., 3:23-cv-6314 (N.D.
`
`Cal.) (“the Northern District Litigation”). The Northern District Litigation is in an
`
`
`2 For consistency and ease of reference for the Board across both related IPR
`
`Petitions, all citations to the specification in both Petitions will be made to the
`
`column and line numbers of the ’102 Patent (EX1001).
`
`3 Lexos alleges in the District Court Litigation that it is the owner of the ’102 and
`
`’449 Patents. Lexos is recorded as the current assignee of those Patents.
`
`2
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`early stage: a Rule 26(f) report is due by February 29, 2024, and an initial case
`
`management conference is scheduled for March 7, 2024. Petitioner’s Motion to
`
`Dismiss Lexos’ Second Amended Complaint, filed June 13, 2023, also remains
`
`pending.
`
`In addition to the Northern District Litigation, Lexos appears to be currently
`
`asserting the ’102 and ’449 Patents in the following cases:
`
`Lexos Media IP, LLC v. Amazon.com, Inc., No. 2:22-cv-00169 (E.D. Tex.);
`
`Lexos Media IP, LLC v. Walmart Inc., No. 2:22-cv-00316 (E.D. Tex.);
`
`Lexos Media IP, LLC v. Overstock.com, Inc., No. 2:22-cv-02324 (D. Kan.);
`
`Lexos Media IP, LLC v. Nike, Inc., No. 2:22-cv-00311 (E.D. Tex.);
`
`Lexos Media IP, LLC v. Gap Inc., No. 2:22-cv-00299 (E.D. Tex.);
`
`Lexos Media IP, LLC v. Ulta Beauty, Inc., 2:22-cv-00292 (E.D. Tex.);
`
`Lexos Media IP, LLC v. Office Depot, LLC, No. 2:22-cv-00273 (E.D. Tex.);
`
`and
`
`Lexos Media IP, LLC v. Target Corp., No. 2:22-cv-00175 (E.D. Tex.).
`
`Also, in addition to the Western District Case, Lexos appears to have
`
`previously asserted the ’102 Patent and/or the ’449 Patent (or those patents were at
`
`issue) in the following cases, all of which are now terminated:
`
`Lexos Media IP, LLC v. CDW LLC, No. 2:22-cv-00275 (E.D. Tex.);
`
`3
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`Lexos Media IP, LLC v. MSC Industrial Direct Co., No. 3:22-cv-01736 (N.D.
`
`Tex.);
`
`Lexos Media IP, LLC. v. ABT Elecs., Inc., No. 1:22-cv-04878 (N.D. Ill.);
`
`Lexos Media IP, LLC v. N. Tool & Equip. Co., No. 2:22-cv-00355 (E.D. Tex.);
`
`Lexos Media IP, LLC v. Ace Hardware Corp., No. 2:22-cv-00304 (E.D. Tex.);
`
`Lexos Media IP, LLC v. The TJX Cos., No. 2:22-cv-00285 (E.D. Tex.);
`
`Lexos Media IP, LLC v. La-Z-Boy Inc., No. 6:21-cv-00205 (W.D. Tex.);
`
`Lexos Media IP, LLC v. ASICS Am. Corp., No. 6:21-cv-00117 (W.D. Tex.);
`
`Lexos Media IP, LLC v. Luxottica Grp. SpA, No. 6:21-cv-00096 (W.D. Tex.);
`
`Lexos Media IP, LLC v. Gift Svcs., Inc., No. 6:20-cv-01156 (W.D. Tex.);
`
`Lexos Media IP, LLC v. Urban Outfitters, Inc., No. 6:20-cv-01142 (W.D.
`
`Tex.);
`
`Ralph Lauren Corp. v. Hirshfeld, No. 20-1862 (Fed. Cir.);
`
`Ralph Lauren Corporation v. Lexos Media IP, LLC, No. 20-1864 (Fed. Cir.);
`
`Ralph Lauren Corporation et al v. Lexos Media IP, LLC, IPR2018-01749
`
`(P.T.A.B.);
`
`Ralph Lauren Corporation et al v. Lexos Media IP, LLC, IPR2018-01755
`
`(P.T.A.B.);
`
`Lexos Media IP, LLC v. Jos A Bank Clothiers, Inc., No. 1:17-cv-01317 (D.
`
`Del.);
`
`4
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`Lexos Media IP, LLC v. Oriental Trading Co., No. 1:17-cv-01318 (D. Del.);
`
`Lexos Media IP, LLC v. Ralph Lauren Corp., No. 1:17-cv-01319 (D. Del.);
`
`Lexos Media IP, LLC v. TJX Cos., No. 1:17-cv-01320 (D. Del.);
`
`Lexos Media IP, LLC v. Williams-Sonoma, Inc., No. 1:17-cv-01321 (D. Del.);
`
`Lexos Media IP, LLC v. AmeriMark Direct, LLC, No. 2:17-cv-00372 (E.D.
`
`Tex.);
`
`Lexos Media IP, LLC v. Boscov’s Dep’t Store, LLC, No. 2:17-cv-00373 (E.D.
`
`Tex.);
`
`Lexos Media IP, LLC v. APMEX, Inc., No. 2:16-cv-00747 (E.D. Tex.);
`
`Lexos Media IP, LLC v. Costco Wholesale Corp., No. 2:16-cv-00748 (E.D.
`
`Tex.);
`
`Lexos Media IP, LLC v. Musician’s Friend, Inc., No. 2:16-cv-00749 (E.D.
`
`Tex.);
`
`Lexos Media IP, LLC v. Nordstrom, Inc., No. 2:16-cv-00750 (E.D. Tex.);
`
`Lexos Media IP, LLC v. Saks Inc., No. 2:16-cv-00751 (E.D. Tex.);
`
`Lexos Media IP, LLC v. Victoria’s Secret Stores Brand Mgmnt., Inc., No.
`
`2:16-cv-00752 (E.D. Tex.);
`
`Lexos Media IP, LLC v. Recreational Equip., Inc., No. 2:15-cv-02107 (E.D.
`
`Tex.);
`
`Lexos Media IP, LLC v. Sears Brands, LLC, No. 2-15-cv-02098 (E.D. Tex.);
`
`5
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`Lexos Media IP, LLC v. The Neiman Marcus Group, LLC, No. 2:15-cv-02100
`
`(E.D. Tex.);
`
`Lexos Media IP, LLC v. Express, LLC, No. 2:15-cv-02073 (E.D. Tex.);
`
`Lexos Media IP, LLC v. Avon Prods., Inc., No. 2:15-cv-02052 (E.D. Tex.);
`
`Lexos Media IP, LLC v. The Home Depot USA, Inc., No. 2:15-cv-02051 (E.D.
`
`Tex.);
`
`Lexos Media, Inc. v. Zynga, Inc., No. 1:12-cv-07994 (S.D.N.Y.);
`
`Lexos Media, Inc. v. Zynga, Inc., No. 2:12-cv-00395 (M.D. Fla.); and
`
`Zynga Inc. v. Lexos Media, Inc., No. 5:12-cv-01952 (N.D. Cal.).
`
`As explained herein, various claim terms of the ’449 Patent have been
`
`construed in various ones of these proceedings; none of those constructions affect
`
`the instant IPR.
`
`Ralph Lauren Corporation (“RLC”) previously petitioned for inter partes
`
`review of various claims of the ’449 Patent (IPR2018-01755), and review was
`
`instituted. In a Final Written Decision (“FWD”), the Board held that RLC (1) had
`
`demonstrated that claims 27, 33, 40-41, 72, and 81-82 of the ’449 Patent were
`
`unpatentable as obvious, but (2) had not demonstrated unpatentability of claims 1-
`
`3, 5-7, 12-15, 28-29, 31-32, 38-39, 53-56, 58-63, 73-75, and 77-80. Ralph Lauren
`
`Corp. v. Lexos Media IP, LLC, IPR2018-01755, Paper 22 at 44-45 (P.T.A.B. Mar.
`
`6
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`25, 2020). RLC appealed, and the Federal Circuit affirmed the Board’s decisions.
`
`Ralph Lauren Corp. v. Hirshfeld, 852 Fed. App’x 540 (Fed. Cir. 2021).
`
`C. Counsel and Service Information
`Counsel for Petitioner eBay, Inc.
`Lead Counsel
`Back-Up Counsel
`Joshua L. Raskin
`Heath J. Briggs
`(Reg. No. 40,135)
`(Reg. No. 54,919)
`Joshua.Raskin@gtlaw.com
`briggsh@gtlaw.com
`Greenberg Traurig, LLP
`Greenberg Traurig, LLP
`One Vanderbilt Avenue
`1144 15th Street, Suite 3300
`New York, NY 10017
`Denver, CO 80202
`Phone: (212) 801-6930
`Phone: (303) 685-7418
`Fax: (212) 801-6400
`Fax: (303) 572-6500
`Back-Up Counsel
`Back-Up Counsel
`Vimal M. Kapadia
`Brian J. Prew
`(Reg. No. 73,310)
`(Reg. No. 76,717)
`Vimal.Kapadia@gtlaw.com
`prewb@gtlaw.com
`Greenberg Traurig, LLP
`Greenberg Traurig, LLP
`One Vanderbilt Avenue
`One Vanderbilt Avenue
`New York, NY 10017
`New York, NY 10017
`Phone: (212) 801-2241
`Phone: (212) 801-3129
`Fax: (212) 801-6400
`Fax: (212) 801-6400
`
`
`Back-Up Counsel
`Kathryn E. Albanese
`(Reg. No. 78,153)
`Katie.Albanese@gtlaw.com
`Greenberg Traurig, LLP
`One Vanderbilt Avenue
`New York, NY 10017
`Phone: (212) 801-6533
`Fax: (212) 801-6400
`
`
`
`7
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`A power of attorney pursuant to 37 C.F.R. §42.10(b) accompanies this
`
`Petition. Petitioner consents to and prefers electronic service by emailing ebay-
`
`Lexos-IPRs@gtlaw.com and counsel identified above.
`
`III. PAYMENT OF FEES
`
`Petitioner authorizes the U.S. Patent & Trademark Office to charge Deposit
`
`Account No. 50-2638 for the necessary fees for this Petition.
`
`IV. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’449 Patent is available for review. As noted
`
`above, Petitioner is filing herewith a Motion for Joinder to the Amazon IPR
`
`(IPR2023-01001), which was instituted on December 12, 2023. The Motion for
`
`Joinder and this Petition are timely, being filed within one month of the institution
`
`date of the Amazon IPR. 37 C.F.R. §42.122. Moreover, although Petitioner was
`
`served with a complaint for patent infringement relative to the ’449 Patent more than
`
`1-year ago, the one-year bar of § 315(b) does not apply to Motions for Joinder. 35
`
`U.S.C. §315(b).
`
`V.
`
`PRECISE RELIEF REQUESTED
`
`A. Challenged Claim
`Petitioner requests review of the Challenged Claims and cancellation of those
`
`claims as unpatentable.
`
`B. Statutory Grounds of Challenge
`
`8
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`The Challenged Claims should be canceled as unpatentable in view of the
`
`following grounds:
`
`Ground 1: Claims 1, 27, and 53 are obvious under pre-AIA 35 U.S.C. § 103
`
`over U.S. Patent No. 6,437,800 (“Malamud”)4.
`
`Ground 2: Claims 1, 27, and 53 are obvious under pre-AIA 35 U.S.C. § 103
`
`over Malamud and U.S. Patent No. 5,835,911 (“Nakagawa”).
`
`Ground 3: Claims 1, 27, 38, and 53 are obvious under pre-AIA 35 U.S.C. §
`
`103 over U.S. Patent No. 5,937,417 (“Nielsen”) and Malamud.
`
`For purposes of this proceeding only, Petitioner assumes the earliest effective
`
`filing date of the ’449 Patent is June 25, 1997.
`
`Malamud issued on August 20, 2002 from Application No. 08/329,724, which
`
`was filed on October 26, 1994, as a continuation of Application No. 08/054,564,
`
`filed on April 28, 1993. Nakagawa issued on November 10, 1998 from Application
`
`No. 517,133, which was filed on August 21, 1995, as a continuation-in-part of
`
`
`4 As noted in the Amazon I.D., it is not possible to cancel claim 27 because it has
`
`already been cancelled. (IPR2023-01001, Paper 9 at 8-9.) Because this is a copycat
`
`Petition, Petitioner includes the claim 27 arguments from the Amazon Petition to
`
`show the other challenged claims are unpatentable, which Petitioner believes was
`
`Amazon’s intent.
`
`9
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`Application No. 385,460, filed on February 8, 1995. Nielsen issued on August 10,
`
`1999 from Application No. 08/643,893, which was filed on May 7, 1996. Therefore,
`
`Malamud, Nakagawa, and Nielsen each qualify as prior art under at least § 102(e)
`
`(pre-AIA).
`
`As addressed in Section X below, none of the grounds presented herein have
`
`been previously considered.
`
`VI. LEVEL OF ORDINARY SKILL
`
`A person of ordinary skill in the art (“POSITA”) at the claimed priority date
`
`would have had experience in the fields of human factors engineering or human
`
`computer interaction. (EX1003 at ¶¶31-35.) The POSITA would have at least a
`
`bachelor’s degree in computer science, computer engineering, human factors
`
`engineering, or a related field and would have had at least two years of relevant work
`
`experience in the fields of UI design, or equivalent experience.5 (Id.)
`
`VII. OVERVIEW OF THE ’449 PATENT
`
`A. Priority Date of the ’449 Patent
`The earliest possible priority date for the ’449 Patent is June 25, 1997.
`
`
`5 Dr. Rosenberg qualified as a POSITA by the asserted priority date, and he is
`
`qualified to testify to what such a person would have understood at the time of the
`
`claimed invention. (EX1003 at ¶36.)
`
`10
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`B. State of the Art Before the Application for the ’449 Patent
`1. Cursors in Graphical User Interfaces
`A graphical user interface (“GUI”) is one form of human-computer interface
`
`that was in widespread use by 1997. (EX1003 at ¶40.) Through the use of GUIs,
`
`users were able to interact with displayed icons, objects, or text using a pointing
`
`device, such as a mouse, rollerball, or touchpad. (Id.)
`
`Computer interface devices, including pointing devices and display screens,
`
`generally have “drivers,” which are programs dedicated to communicating between
`
`the device and other software like application programs or the operating system
`
`(“OS”). (Id. at ¶¶43-44.) The OS manages computer hardware and software
`
`resources, and it can be an intermediary between application programs and hardware
`
`drivers. (Id.) For example, a “display driver” can accept commands from the OS and
`
`generate signals to the display device to render the desired text or image on the
`
`display device’s screen. (Id.)
`
`When a user moves a pointing device, such as a mouse, an image called a
`
`“cursor” moves correspondingly onscreen. (Id.) The cursor image is controlled by
`
`the OS or an application to indicate the cursor’s position on the screen. (Id.) Cursor
`
`images generally include a single pixel, called the “hotspot,” that identifies the
`
`location on the screen where input from a user would have an effect. (Id. at ¶49.)
`
`11
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`Applications and code other than the OS can affect the cursor’s appearance.
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`(Id. at ¶45.) For example, an application may modify the cursor image by sending
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`data and/or commands to the OS. (Id.)
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`While OSs have for decades provided standard images for cursors, such as an
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`arrow, they also allowed applications to customize the cursor appearance. (Id. at
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`¶¶51-54.) Because cursors were a core part of the user experience, and the user’s
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`attention was often focused on or near the cursor onscreen, computer designers
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`commonly placed additional information around the cursor. (Id. at ¶¶59-60.) For
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`example, U.S. Patent No. 5,754,176 to Crawford (filed on October 2, 1995)
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`describes a “tooltip” system built into Microsoft Windows to display help
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`information when a user held the cursor over an object displayed on the screen.
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`(EX1009 at 2:28-37.)
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`2. Client/Server Systems
`The client/server architecture is a fundamental system design that has been
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`well-known for decades. (EX1003 at ¶¶61-63; EX1005 at 3:1-5.) Client/server
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`systems can function in many ways. For example, a client can download an
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`application from a server and run that application locally. (EX1003 at ¶64.)
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`Alternatively, applications can be run on a remote server, with display information
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`sent to the client computer for display to a user. (Id.)
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`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`Client/server systems have long been a critical part of the internet, such as
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`where web browsers allow users’ computing devices (i.e., “clients”) to download
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`web pages with graphical information from websites hosted in servers. (Id. at ¶65.)
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`Given the well-known use of custom cursors and the equally well-known use of
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`client/server systems to transmit information between a server and client, it is little
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`surprise that these practices to modify a cursor’s image using content transmitted
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`between a server and client was likewise well known. (Id.) This approach was built
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`into the widely used “X Windows” system, first released in 1986. (Id. at ¶¶52-54.)
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`C. Summary of the ’449 Patent
`Consistent with the foregoing description of the state of the art in June 1997,
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`the ’449 Patent admits that it was not new for applications to change the shape of
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`cursor images. (EX1001 at 3:36-44.) The ’449 Patent, however, asserts that those
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`changes generally reflected “an internal state of the computer or the present function
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`within an application.” (Id. at 3:44-46.) The ’449 Patent asserts that this was
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`deficient because the cursor could not convey “advertising” or “change to
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`correspond with online content being displayed on the screen.” (Id. at 3:36-50,
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`2:27-32.)
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`The ’449 Patent purports to address those deficiencies through “[a] system for
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`modifying a cursor image … to a specific image having a desired shape and
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`appearance” (id. at Abstract) where the specific image represents advertising or
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`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`relates to content displayed on the screen. (Id. at 2:44-47, 2:58-3:3, 3:64-4:3, 7:7-9.)
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`For example, the ’449 Patent discloses that the cursor modification can be the
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`rendering of the cursor as a baseball bat on a sports website (id. at 17:33-34) or as a
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`pink cursor on a website about the Pink Panther (id. at 17:34-35).
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`Figure 8 of the ’449 Patent, annotated below, shows an example where the
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`cursor is modified from a standard arrow into the “specific image” of a bottle
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`(annotated with the red circle) to advertise a cola drink:
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`Figure 8 (annotated).
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`
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`VIII. CLAIM CONSTRUCTION
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`Under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), claim
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`terms are typically given their ordinary and customary meanings as understood by a
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`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`POSITA at the time of the invention based on the claim language, specification, and
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`the prosecution history of record. Id. at 1312-16. However, “[t]he Board is required
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`to construe ‘only those terms…that are in controversy, and only to the extent
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`necessary to resolve the controversy.”’ Realtime Data, LLC v. Iancu, 912 F.3d 1368,
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`1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci.
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`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
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`As noted in the Amazon IPR, aside from the previously construed claim term
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`from the APMEX case (addressed below), it is believed that no constructions of any
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`other claim terms are necessary.6 Ralph Lauren Corp. v. Lexos Media IP, LLC,
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`IPR2018-01755, Paper No. 22 at 12 (P.T.A.B. Apr. 3, 2020) (finding no claim terms
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`of the ’449 Patent needed construction).
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`As noted in the Amazon IPR, while Amazon and Patent Owner agreed to the
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`construction of some claim terms and have proposed competing constructions for
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`6 Petitioner reserves all rights to raise claim construction and other arguments,
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`including challenges under 35 U.S.C. §§ 101 or 112, in district court as relevant to
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`that proceeding. See, e.g., Target Corp. v. Proxicom Wireless, LLC, IPR2020-00904,
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`Paper 11 at 11-13 (P.T.A.B. Nov. 10, 2020). A comparison of the claims to any
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`accused products in litigation may raise controversies that are not present here given
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`the similarities between the prior art references and the ’449 Patent.
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`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`some claim terms in that district court litigation (EX1008), Petitioner contends that
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`those proposed constructions do not affect this Petition because the limitations of the
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`Challenged Claims are disclosed in, or rendered obvious by, the prior art under both
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`Amazon’s and Patent Owner’s proposed constructions, i.e., the analysis herein
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`would not differ under either party’s proposed construction.
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`A. Claim Term Construed in APMEX: “said specific image including
`content corresponding to at least a portion of said information to
`be displayed on said display of said user’s terminal”
`As noted in the Amazon IPR, Lexos asserted the ’449 Patent in Lexos Media
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`IP, LLC v. APMEX, Inc., No. 2:16-cv-00747-JRG-RSP (E.D. Tex.) (“APMEX”)),
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`and the district court construed the term “said specific image including content
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`corresponding to at least a portion of said information to be displayed on said display
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`of said user’s terminal” to mean “an image representative of at least a portion of the
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`subject or topic being displayed on the screen.” (EX1007 at 12-13). Amazon and
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`Patent Owner agreed with that construction (EX1008 at 3), and Petitioner also agrees
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`that construction should be applied here, even adopting that construction in the
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`Western District Case. (EX1017 at 2).
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`As noted in the Amazon IPR, that construction does not change the analysis
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`regarding any of the grounds presented here because, as discussed below,
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`Malamud’s preview cursor contains content corresponding to the object displayed
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`on the user’s screen to which the pointer is pointing. Additionally, Nielsen’s tooltips
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`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`contain content corresponding to the object displayed on the user’s screen to which
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`the pointer is pointing.
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`In the Board’s Institution Decision in the Amazon IPR (“the Amazon I.D.”),
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`the Board noted the APMEX construction but found that it did not need to construe
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`any claim terms to institute trial. IPR2023-01001, Paper 9 at 19-20 (P.T.A.B. Dec.
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`12, 2023).
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`B. Subsequent Claim Constructions
`Since the filing of the Amazon IPR, claim terms from the ’449 Patent have
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`been construed in three litigations. See EX1014 (Lexos Media IP, LLC v.
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`Amazon.Com, Inc., No. 2:22-cv-169-JRG, Claim Construction Memorandum
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`Opinion and Order, Dkt. 130 (E.D. Tex. Sep. 5, 2023)); EX1015 (Lexos Media IP,
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`LLC v. Nike, Inc., No. 2:22-cv-311-JRG, Claim Construction Order, Dkt. 187 (E.D.
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`Tex. Nov. 2, 2023)); and EX1016 (Lexos Media IP, LLC v. Overstock.Com, Inc.,
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`No. 2:22-cv-2324-JAR-ADM, Memorandum and Order, Dkt. 99 (D. Kan. Dec. 4,
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`2023)). In the Amazon IPR, Lexos submitted the Amazon litigation constructions.
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`(IPR2023-01001, POPR at 29-30, explaining EX2008.) The Amazon I.D. noted
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`Patent Owner’s submission and concluded:
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`“[w]e do not understand Patent Owner to be making any arguments
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`regarding the grounds in the Petition that specifically rely on, require,
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`Petition for Inter Partes Review
`U.S. Patent No. 6,118,449
`or differ from the constructions in the district court’s Order….Thus, at
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`this time, we note these constructions, but do not construe any terms.”
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`IPR2023-01001, Paper 9, at 20 (P.T.A.B. Dec. 12, 2023) (emphasis added).
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`Accordingly, the Amazon district court constructions do not impact this Petition or
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`the Motion for Joinder.
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`The Nike court generally adopted the Amazon constructions, except the
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`additional term “corresponding to” as used in the phrase “cursor image data
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`corresponding to [a/said] specific image”” was given its plain meaning while an
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`additional requirement of “and that indicates where user input can be received” was
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`added to the Amazon construction of the terms “cursor image” / “initial cursor
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`image.” (EX1015, 6-11.)
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`In the Overstock litigation, the parties agreed that the majority of the Amazon
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`and Nike constructions should be adopted, while disputing two constructions.
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`(EX1016 at 6-7.) Nonetheless, all terms were construed per the Amazon and Nike
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`constructions. (Id. at 8-14.)