Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Date: December 12, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMAZON.COM,INC.,
`Petitioner,
`
`V.
`
`LEXOS MEDIAIP, LLC,
`Patent Owner.
`
`IPR2023-01000
`Patent 5,995,102
`
`Before PHILLIP J. KAUFFMAN, JEFFREY S. SMITH,and
`SHARONFENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of /nter Partes Review
`3SUS.C. $ 314
`
`
`571-272-7822
`
`Paper 9
`Date: December 12, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMAZON.COM,INC.,
`Petitioner,
`
`V.
`
`LEXOS MEDIAIP, LLC,
`Patent Owner.
`
`IPR2023-01000
`Patent 5,995,102
`
`Before PHILLIP J. KAUFFMAN, JEFFREY S. SMITH,and
`SHARONFENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of /nter Partes Review
`3SUS.C. $ 314
`
`
`
`IPR2023-01000
`Patent 5,995,102
`
`I.
`
`INTRODUCTION
`
`A.—Background and Summary
`
`Amazon.com, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”),
`
`requesting an inter partes review of claim 72 (“challenged claim”) of U.S.
`
`Patent No. 5,995,102 (Ex. 1001, “the ?102 patent’). Lexos Media IP, LLC
`
`(“Patent Owner”) filed a preliminary response. Paper 8 (Prelim. Resp.”’).
`
`The Boardhas authority to determine whetherto institute an inter
`
`partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35
`
`U.S.C. § 314(a), we may not authorize an inter partes review unless the
`
`information in the Petition “showsthat there is a reasonable likelihood that
`
`the petitioner would prevail with respect to at least 1 of the claims
`
`challenged in the petition.” For the reasons that follow, we institute an inter
`
`partes review asto the challenged claim of the ’102 patent on all grounds of
`
`unpatentability presented.
`
`B.
`
`Real Parties in Interest
`
`Petitioner identifies Amazon.com, Inc.; Amazon.com Services LLC;
`
`and Amazon.com Sales, Inc. as the real parties in interest. Pet. 1.
`
`Patent Owneridentifies only itself as the real party in interest. Paper
`
`6 (Patent Owner’s Mandatory Notices), 1.
`
`C.
`
`Related Matters
`
`Petitioner identifies the following proceeding as a related matter:
`
`Lexos Media IP, LLC y. Amazon.com, Inc., No. 2:22-cv-00169-JRG (E.D.
`
`Tex.) (“the related district court litigation’”’). Pet. 1-2. Petitioner
`
`additionally lists as related 12 pending and 30 terminated cases involving the
`
`°102 patent and/or U.S. Patent No. 6,118,449.
`
`/d. at 2-4. Petitioner notes
`
`that the ’102 patent was the subject of inter partes review proceeding
`
`
`
`IPR2023-01000
`Patent 5,995,102
`
`IPR2018-01749 (“the 1749 IPR”), and that the Federal Circuit affirmed the
`
`Board decision in that proceeding.
`
`/d. at 5.
`
`Patent Ownerlists twelve pendingcasesas related, including the
`
`related district court litigation. Paper 6, 1.
`
`D.
`
`The 102 Patent
`
`The °102 patent is directed to “[a] system for modifying a cursor
`
`image, as displayed on a video monitor of a remote terminal, to a specific
`
`image having a desired shape and appearance.” Ex. 1001, code (57). The
`
`context of the invention relates to a graphical user interface in which a
`
`pointing device (e.g., a mouse) is used by the user to navigate a video
`
`display, and in which movementof the pointing device1s indicated by a
`
`corresponding movement of a cursor on the video display.
`
`/d. at 3:22—26,
`
`8:24—-37. A generic cursor may be an arrow,pointing hand, hourglass,etc.
`
`Id. at 3:57-61. The ’102 patent relates to changing that generic cursor by
`
`sending data and control signals from a remote computer to replace such a
`
`cursor with a cursor having an appearancethat is associated with other
`
`content being displayedto the user, e.g., a logo, mascot, or an imageof a
`
`product or service, related to the other content being displayedto the user.
`
`Id. at 3:4-9, 17:5-18:3. Figure 8 of the ’102 patent, reproduced below,
`
`shows a web pageaccording to the invention.
`
`
`
`IPR2023-01000
`Patent 5,995,102
`
`
`‘SporsNews|Soeeee
`
`STPtate
`STATESTET 608
`
`
`
`
`
`Stay |aUES[i (a ti fox |
`oua?ta
`
`
`
`
`
`“Try Fizzy Cola!_
`i
`Get Busy With Fizzy
`
`
`COSearch HPShES
`TTY Weather
`
`
`|
`[ChannelBySearchitt| Travel with
`TenerBY SECC_3
`
`Ans & Enterfainmest=MyChannel : SEARCHIT! ‘
`
`
`: vee:
`Business & Investing
`News
`|
`
`Careers&Education —Peogle&Chat i
`Computers & interme?
`Politics
`r
`
`Looeneceneebasteeeantenene__l NewThings|
`ne4
`_Aaa
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`ty
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`
`|
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`82
`
`
`
`StockQuotes - GookMights - Newsgroups - Shareware |
`
`FIG.8
`
`|
`Health &Science
`Soatls
`|
`
`LI!
`|
`Lifestyle
`Travel & Regional
`| cenceeeeeeeeee
`terete
`
`Doneee
`
`In Figure 8, shown above, web page60a is displayed to a user, including
`
`bannerad 62 for cola. /d. at 5:30-32, 13:31-41. The cursor to be used with
`
`this web page changes from a standard cursor(e.g., an arrow) to cola-bottle-
`
`shaped cursor 44a in association with the banner ad 62.
`
`/d.
`
`The ’102 patent describes interactions between a server system and a
`
`user’s terminal to effect the cursor change.
`
`/d. at 4:4—9, 5:37-65, 7:16—-40.
`
`The user terminal is controlled by an operating system (“OS”), and
`
`application programssuch as a browser running on the user terminal use an
`
`application programminginterface (“API”) to interface with the OS. /d. at
`
`7:29-40, Fig. 2.
`
`The server system transmits specified content information to the user
`
`terminal, including information to be displayed on the user’s computer (such
`
`as a hypertext markup language (“HTML”) webpage), cursor display
`
`instruction, and cursor display code. /d. at 8:4—23. The cursor display
`
`instruction indicates where the cursor image data corresponding to the new
`
`
`
`IPR2023-01000
`Patent 5,995,102
`
`appearance of the cursor resides.
`
`/d. at 8:49-64. The cursor display code
`
`causes the user’s terminal to display that cursor imagedata in place of the
`
`original cursor, using the API of the operating system to effect these
`
`changes. /d. at 8:34—37, 8:52-57, 13:19-30.
`
`E.
`
`Challenged Claim
`
`Claim 72 is reproduced below,with identifiers in brackets
`
`corresponding to the identifiers set forth by Petitioner (Pet. 58—59) and with
`
`additional identifiers added by the Board.
`
`72. A method for modifying an initial cursor image displayed on
`a display of a user terminal connected to at least one
`server, comprising:
`[a] receiving a request at said at least one server to provide
`specified content information to said user terminal;
`[b] providing said specified content information to said user
`terminal in responseto said request, said specified content
`information including at
`least one
`cursor display
`instruction andat least one indication of cursor image data
`corresponding to a specific image; and
`[c.1.1] transforming said initial cursor image displayed on said
`display of said user terminal into the shape and appearance
`of said specific image in response to said cursor display
`instruction,
`[c.1.2] wherein
`said
`specified
`content
`information includes information thatis to be displayed on
`said display of said user’s terminal, [c.1.3] wherein said
`specific image includes content correspondingto at least a
`portion of said information that is to be displayed on said
`display of said user’s terminal, and [c.11] wherein said
`cursor display instruction indicates a cursor display code
`operable to process said cursor display instruction to
`modify said cursor imageto said cursor image in the shape
`and appearance of said specific image responsive to
`movement of said cursor image over a display of said at
`least a portion of said information to be displayed on said
`display of said user’s terminal.
`
`Ex. 1001, 24:10—36.
`
`
`
`IPR2023-01000
`Patent 5,995,102
`
`F.
`
`Evidence
`
`Petitioner relies on the following patent evidence.
`
`
`Nakagawaet al.|U.S. Patent No. 5,835,911 Ex. 1005
`
`
`“Nakagawa”
`
`
`
`Sset.al.|U.S.PatentNo. 6,437,800BI
`Nielsen U.S. Patent No. 5,937,417
`Ex. 1006
`
`“Malamud”’
`
`Petitioner also relies on a declaration from Dr. Craig Rosenberg
`
`(Ex. 1003). Patent Ownerrelies on a declaration from Dr. Michael Shamos
`
`(Ex. 2001).
`
`G.—Asserted Grounds
`
`Petitioner asserts that claim 72 would have been unpatentable on the
`
`following grounds:
`
`
`
`Malamud, Nakagawa
`
`Nielsen, Malamud
`72
`103
`
`Il.
`
`ANALYSIS
`
`A.
`
`Discretionary Denial
`
`Institution of inter partes review 1s discretionary. See Harmonic Inc.
`
`v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
`
`permitted, but never compelled, to institute an IPR proceeding.”’).
`
`' The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287-88 (2011), amended 35 U.S.C. § 103. Because the claims
`were issued before 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. See Ex.
`1001, code (45).
`
`
`
`IPR2023-01000
`Patent 5,995,102
`
`Patent Owner argues that we should exercise discretion to deny
`
`institution under 35 U.S.C. § 314(a) because the factors identified in Apple,
`
`Inc. v. Fintiv, Inc., 1PR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`
`(precedential) (“Fintiv”), weigh in favor of denying institution. Prelim.
`
`Resp. 3—23. Petitioner argues we should not discretionarily deny institution
`
`under 35 U.S.C. § 314(a). Pet. 50-53.
`
`Patent Owner additionally argues that we should exercise discretion to
`
`deny institution under 35 U.S.C. § 325(d) based on the 1749 IPR. Prelim.
`
`Resp. 23-27. Petitioner argues we should not discretionarily deny
`
`institution under 35 U.S.C. § 314(a). Pet. 53-56.
`
`For the reasons discussed below, we do not exercise our discretion to
`
`deny undereither §§ 314(a) or 325(d).
`
`1.
`
`Discretion - 35 U.S.C. § 314(a)
`
`The precedential decision in Fintiv identifies a non-exclusivelist of
`
`factors parties may consider addressing wherethere is a related, parallel
`
`district court action to determine whether such action provides any basis for
`
`discretionary denial. Fintiv, 5—16. The Director has issued additional
`
`guidance on the application of intiv. See Katherine K. Vidal, Interim
`
`Procedure for Discretionary Denials in AIA Post-Grant Proceedings with
`
`Parallel District Court Litigation (June 21, 2022)" (“Fintiv Memorandum’’).
`
`The Fintiv Memorandumstates that “the PTAB will not
`
`discretionarily deny institution in view ofparallel district court litigation
`
`where a petitioner presents a stipulation not to pursue in a parallel
`
`proceeding the same grounds or any grounds that could have reasonably
`
`? Available at https://www.uspto.gov/sites/default/files/documents/interim_
`procdiscretionarydenialsaiaparalleldistrictcourtlitigationmemo20
`220621 pdf.
`
`
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`IPR2023-01000
`Patent 5,995,102
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`been raised before the PTAB.” Fintiv Memorandum, 3 (citing Sofera
`
`Wireless, Inc. vy. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1,
`
`2020) (precedential as to § II.A) (“‘Sotera’’)); see id. at 7-9. The Fintiv
`
`Memorandum explains that such a stipulation “mitigates concerns of
`
`potentially conflicting decisions and duplicative efforts between the district
`
`court and the PTAB.” /d. at 7.
`
`Here, Petitioner provides a Sotera stipulation. Pet. 50. Specifically,
`
`Petitioner stipulates that if we institute review, “Petitioner will not pursue
`
`the groundsraised, or that reasonably could have been raised, in this IPR.”
`
`Id. (referencing Sotera),.
`
`Patent Ownerasserts we should deny the Petition despite Petitioner’s
`
`Sotera stipulation because “the sameissues can be tried by the consolidated
`
`defendants, who have not offered the samestipulation.” Prelim. Resp. 20.
`
`Patent Ownerarguesthat “[a] Sotera stipulation is not a magic bullet under
`
`the circumstanceshere.” /d. at 21. But Patent Owner’s only citation is to a
`
`non-precedential decision issued before the /intiv Memorandum wasissued.
`
`Id. (citing Cisco Sys., Inc. v. Estech Sys., Inc., 1PR2021-00329, Paper 13
`
`(PTAB June 6, 2021)).
`
`While other parties may be able to raise duplicative issues in the
`
`consolidated proceeding, Petitioner here has stipulated it will not, following
`
`the Sotera formulation. By offering this stipulation, Petitioner has done
`
`whatit can to ensure “that there is minimal potential overlap of the two
`
`proceedings” between these twoparties. Sofera, 20.
`
`BecausePetitioner provides a Sotera stipulation, we decline to
`
`exercise the discretion under § 314(a) to deny institution in view of the
`
`related district court litigation. See Fintiv Memorandum,3, 7, 9.
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`
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`IPR2023-01000
`Patent 5,995,102
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`2.
`
`Discretion - 35 U.S.C. $ 3235(d)
`
`The Director may deny institution of inter partes review when “the
`
`same or substantially the sameprior art or arguments previously were
`
`presented to the Office.” 35 U.S.C. § 325(d). We apply a two-parttest
`
`whenevaluating whether to exercise discretion under § 325(d). See
`
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Gerdte GmbH,
`
`IPR2019-01469, Paper 6 at 8 (Feb. 13, 2020) (precedential) (“Advanced
`
`Bionics’”’). Specifically, we consider:
`
`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the
`same arguments previously were presented to the Office; and (2)
`if either condition of first part of the framework 1s satisfied,
`whether the petitioner has demonstrated that the Office erred in
`a manner material to the patentability of challenged claims.
`
`Id. In doing so, we broadly consider the factors discussed in
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper
`
`8 (Dec. 15, 2017) (precedential as to § III.C.5, first para.; informative)
`
`(“Becton, Dickinson”). Id. at 9-11.
`
`In particular, we consider Becton, Dickinson factors(a), (b), and (d) to
`
`determine whether the same or substantially the sameprior art or arguments
`
`previously were presented to the Office.
`
`/d. at 10. These factors relate to:
`
`(a) the similarities and material differences between the asserted
`art and the prior art
`involved during examination;
`(b)
`the
`cumulative nature of the asserted art and the prior art evaluated
`during examination; ... [and]
`(d) the extent of the overlap
`between the arguments made during examination and the manner
`in which Petitioner relies on the prior art or Patent Owner
`distinguishes the priorart.
`
`Becton, Dickinson, 17-18. While these factors mention examination, we are
`
`instructed that
`
`
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`IPR2023-01000
`Patent 5,995,102
`
`The factors set forth in Becton, Dickinson should be read
`broadly .
`.
`. to apply to any situation in whicha petition relies on
`the same or substantially the same art or arguments previously
`presented to the Office during a proceeding pertaining to the
`challenged patent. For example, although Becton, Dickinson
`factors (a) and (b) pertain to art evaluated “during examination,”
`these factors more broadly provide guidance as to whetherthe art
`presented in the petition is the “sameor substantially the same”
`as the prior art previously presented to the Office during any
`proceeding,
`including prior AIA proceedings.
`Similarly,
`although Becton, Dickinson factor (d) pertains to arguments
`made “during examination,” this factor more broadly provides
`guidance as to whether the arguments presented in the petition
`are “the same or substantially the same” as the arguments
`previously presented to the Office during any proceeding.
`
`Advanced Bionics, 10; see id. at 8. Our consideration “[a]t bottom .
`
`.
`
`.
`
`reflects a commitment to defer to previous Office evaluations of the
`
`evidence of record unless material error is shown.” /d. at 9.
`
`Patent Ownerarguesthat the same art was presented in the 1749 IPR.
`
`Prelim. Resp. 25—27. Patent Owner describes that Malamud was considered
`
`in the 1749 IPR and describes Nakagawa and Nielsen as cumulative over art
`
`considered in the 1749 IPR.
`
`/d. (citing Ex. 2018 (1749 IPR, Paper 2 (1749
`
`IPR petition) , 38, 44-47). We agree that Malamud was presented and
`
`considered in the 1749 IPR. Patent Owner additionally argues that the
`
`presentation of Malamud in the 1749 IPR parallels the arguments that are
`
`before us now.
`
`/d. at 25-26.
`
`However, as Petitioner correctly asserts, the arguments made in the
`
`1749 IPR were markedly different from the arguments presented in this
`
`proceeding with respect to whether and how Malamudteaches“specified
`
`content information... Pet. 55-56. The 1749 IPRpetitioner relied on
`
`information in Malamud’s transmitted messagethat “tells the operating
`
`10
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`
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`IPR2023-01000
`Patent 5,995,102
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`system what type of cursor to display and sets forth the contents and type of
`
`information to be displayed in the cursor” (Ex. 1004, 5:49—52) for teaching
`
`the “specified content information includ[ing] information that is to be
`
`displayed on said display of said user’s terminal”(limitation c.1.2) in claim
`
`72. 1749 IPR, Paper 21 (1744 IPRfinal written decision), 17. This led toa
`
`deficiency in the petition’s showingfor the recitation (limitation c.11 of claim
`
`72) that the cursor image is modified “responsive to movementof said
`
`cursor image over a display of said at least a portion of said information to
`
`be displayed on said display of said user’s terminal.” /d. at 17-19, 24-26. It
`
`wasthis argument in the 1749 IPR that was found to be fatal to arguments of
`
`unpatentability regarding claim 72 of the ’102 patent and an additional claim
`
`at issue in that proceeding.
`
`/d. at 25—26 (“Petitioner has not adequately
`
`demonstrated how Malamud. . . teaches or suggests this limitation because
`
`it has failed to explain how Malamud’s cursor image could exhibit
`
`movementoveritself.”).
`
`Here, however, Petitioner does not rely on Malamud’s transmitted
`
`message as including the “specified content information”of limitation c.1.2
`
`as the petition in the 1749 IPR did; rather, Petitioner here relies on the
`
`application program in Malamudasincluding this information. Pet. 34, 37;
`
`see infra at § ILE.2. We consider, therefore, with respect to Becton,
`
`Dickinson factor (d), this is a significant area in which there is no overlap
`
`between the arguments previously made, which weredispositive in the 1749
`
`IPR, and the manner in which Petitioner in this proceedingrelies on
`
`Malamud. Even though Malamudwasbefore the Board in the 1749 IPR,the
`
`arguments presented in the Petition here were not previously considered by
`
`the Office.
`
`11
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`
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`IPR2023-01000
`Patent 5,995,102
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`Wenote that in Advanced Bionics, factor (d) was not considered
`
`because a determination had been madewith respect to factors (a) and (b)
`
`that the art had been previously presented to the Office in the context of
`
`examination. Advanced Bionics, 20. In deciding not to analyze this factor,
`
`the Board in AdvancedBionics noted that it had determined that the sameart
`
`had been presented to the Office, so “the first condition of the first part of
`
`the framework [was] satisfied” and no further analysis was necessary for that
`
`first prong of the Advanced Bionicstest.
`
`However, Advanced Bionics involved a determination regarding the
`
`prosecution of the challenged patent in that proceeding, and in such cases,it
`
`may be the case that “the record of the Office’s previous consideration of the
`
`artis... silent.” /d. at 10. In such situations, Advanced Bionicsinstructs,
`
`proceeding to the second prong after determining that the same art was
`
`previously before the Office, without considering whether the same
`
`arguments appear in the record, may be merited.
`
`But where, as here, the prior presentation was in a prior inter partes
`
`review, even if factors (a) and (b) might lead us to concludethat the sameart
`
`wasbefore the Office, it is necessary for us to evaluate factor (d). The
`
`consideration of the art by the Office in inter partes review proceedingsis
`
`limited to the arguments made bythe petitioner. See Sirona Dental Sys.
`
`GmbH vy. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (the
`
`Board is not permitted “to deviate from the groundsin the petition and raise
`
`its own obviousnesstheory”); Koninklijke Philips N.V. v. Google LLC, 948
`
`F.3d 1330, 1336 (Fed. Cir. 2020) (holding that the Board erred by raisingits
`
`own obviousness theory based on combination of references not provided in
`
`the petition).
`
`12
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`IPR2023-01000
`Patent 5,995,102
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`Our evaluation of the first prong of Advanced Bionics makes clear
`
`that our “commitmentto defer to previous Office evaluations of the evidence
`
`of record”is not implicated, because there was no previous determination
`
`regarding the asserted art in the manner in whichit is presented in this
`
`proceeding. Wetherefore do not move forward to the second portion of the
`
`Advanced Bionics framework, which would require us to determineif the
`
`Office erred in such a prior evaluation.
`
`For these reasons, we decline to exercise the discretion to deny the
`
`Petition under 35 U.S.C. § 325(d).
`
`B.
`
`Legal Standards
`
`It is a petitioner’s burden to demonstrate unpatentability. See
`
`Dynamic Drinkware, LLC vy. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`
`(Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
`
`1316, 1326-27 (Fed. Cir. 2008)). Petitioner bears “the burden of proving
`
`... unpatentability by a preponderanceof the evidence.” 35 U.S.C.
`
`§ 316(e); see 37 C.F.R. § 42.1(d) (2018).
`
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`
`differences between the claimed subject matter and the prior art are “such
`
`that the subject matter as a whole would have been obviousat the time the
`
`invention was madeto 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 obviousness1s resolved based on underlying factual
`
`determinations, including:
`
`(1) the scope and contentof 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,1.e.,
`
`13
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`IPR2023-01000
`Patent 5,995,102
`
`secondary considerations.2 Graham vy. John Deere Co., 383 U.S. 1, 17-18
`
`(1966).
`
`Additionally, the obviousness inquiry typically requires an analysis of
`
`“Whether there was an apparent reason to combine the known elements in
`
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing /n
`
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`
`reasoning with some rational underpinning to support the legal conclusion of
`
`obviousness”’)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
`
`(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
`
`v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)). “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.” /n re
`
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`
`Weanalyze the asserted grounds with the principles stated above in
`
`mind.
`
`C.
`
`Level of Ordinary Skill in the Art
`
`Petitioner contendsthat:
`
`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. 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 hadat least two years of relevant
`work experience in the fields of UI design, or equivalent
`experience.
`
`> The present record contains no evidence or argumentrelating to secondary
`considerations.
`
`14
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`IPR2023-01000
`Patent 5,995,102
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`Pet. 7-8 (citing Ex. 1003 4] 31-35). At this time, Patent Owner does not
`
`contest Petitioner’s proposed definition for one of ordinary skill in theart.
`
`Prelim. Resp. 28; see Ex. 2001
`
`29.
`
`For the purposes of this Decision, we adopt Petitioner’s formulation
`
`for the level of skill of one of ordinary skill in the art, which appears to be
`
`consistent with the level of skill in the art reflected in the prior art of record
`
`and the disclosure of the ’102 patent. See Okajima v. Bourdeau, 261 F.3d
`
`1350, 1355 (Fed. Cir. 2001) (“the priorart itself [may] reflect[] an
`
`appropriate level” as evidence of the ordinary level of skill in the art)
`
`(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,
`
`163 (Fed. Cir. 1985)).
`
`D.
`
`Claim Construction
`
`Petitioner argues that no claim terms needto be construed, with the
`
`exception of a term construed in Lexos Media IP, LLC v. APMEX, Inc.,
`
`2:16-cv-00747-JRG-RSP (E.D. Tex.) (“APMEXlitigation”). Pet. 13-15.
`
`Patent Owneralso argues that we should apply the construction adopted in
`
`the APMEXlitigation. Prelim. Resp. 30.
`
`In that case, the district court construed “content correspondingto at
`
`least a portion of said information to be displayed on said display of said
`
`user’s terminal” to mean “an image representative of at least a portion of the
`
`subject or topic being displayed on the screen.” Ex. 1007, 9-13. The
`
`district court specifically considered whether any icon that changes based on
`
`being positioned over displayed content (including, e.g., a magnification
`
`icon that appears whena cursoris positioned over certain displayed content,
`
`such as a guitar image) is content corresponding to the displayed content,
`
`and determinedthat the term should be construed more narrowly.
`
`/d. at 11—
`
`12 (“If a user were to see the magnification icon off by itself. .
`
`. the user
`
`15
`
`
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`IPR2023-01000
`Patent 5,995,102
`
`would not think, ‘guitar!’”). Petitioner contends, however, that adopting or
`
`rejecting this claim construction “does not change the analysis regarding any
`
`of the grounds presented,” as the prior art relied on for the similar recitation
`
`in claim limitation c.1.3 of claim 72 meets the narrower construction adopted
`
`by the district court in the APMEX litigation, and by implication, would
`
`meet the broader construction considered by that court. Pet. 15.
`
`Patent Owneradditionally contends that we should apply the district
`
`court’s constructions issued in the APMEXlitigation, for the claim terms
`99 ¢¢
`
`“cursor display code,”
`
`“cursor display instruction,” and “cursor image.”
`
`Prelim. Resp. 29 (citing Ex. 2008). These claim constructions wereset forth
`
`in the Claim Construction Memorandum Opinion and Order, which was
`
`filed on September 5, 2023, after the filing of the Petition in this proceeding.
`
`Ex. 2008 (“Order’’).
`
`In its Order, the district court made the following constructions
`
`relevant to the challenged claim of the ’102 patent:
`
`
`
`“cursor display code”
`
`“cursor display instruction”
`
`“cursor image,”“initial cursor
`image,” “modified cursor image”
`
`“computer code for modifying the
`display of the cursor image”
`“an instruction operable to modify
`the display of a cursor image”
`“a movable image on a display
`screen whoseposition can be
`controlled through a user interface”
`“modifying an initial cursor image’| Plain and ordinary meaning
`“modify said cursor image”
`“specific image”
`
`
`
`
`
`Plain and ordinary meaning
`
`Ex. 2008, 7-18, 22.
`
`Petitioner makes specific reference to the “cursor display code”
`
`construction adopted by the district court in its Order, and appears to make
`
`arguments consistent with these constructions. Pet. 36. We do not
`
`16
`
`
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`IPR2023-01000
`Patent 5,995,102
`
`understand Patent Owner to be making any arguments regarding the grounds
`
`in the Petition that specifically rely on, require, or differ from the
`
`constructionsin the district court’s Order.
`
`“The Board is required to construe ‘only those terms .
`
`.
`
`. that are in
`
`controversy, and only to the extent necessary to resolve the controversy.”
`
`Realtime Data, LLC v. lancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019)
`
`(alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`
`200 F.3d 795, 803 (Fed. Cir. 1999)). Thus, at this time, we note these
`
`constructions, but do not construe any terms.
`
`E.
`
`Obviousness over Malamud
`
`Petitioner argues that claims 72 would have been obvious over
`
`Malamud. Pet. 27-37. Patent Ownerpresents arguments disputing certain
`
`aspects of Petitioner’s showing. Prelim. Resp. 38-41, 45-51.
`
`For the reasons discussed below, we determinethat Petitioner has
`
`established a reasonable likelihood that it would prevail in showing that
`
`claim 72 is unpatentable over Malamud.
`
`1.
`
`Malamud (Ex. 1004)
`
`Malamudrelates to information cursors for use in an operating system
`
`or application programs. Ex. 1004, code (57). “[An] information cursor
`
`includes a pointing portion to point to objects displayed on a video display
`
`and an information portion to display information about an object to which
`
`the pointing portion points.” /d. One such information cursoris a
`
`“combined name and preview cursor,” which is shown in Malamud’s Figure
`
`4, reproduced below:
`
`17
`
`
`
`IPR2023-01000
`Patent 5,995,102
`
`
`
`_ vioco|=@
`DISPLAY |-——
`
`
`
`| | | |
`
`CON
`
`| |
`
`SGCOMBINED NAME AND CY 7
`
`PREVIEW CURSOR
`
`Figure 4 illustrates combined name and preview cursor 38 pointing to book
`
`icon 32. Id. at 2:47—49, 4:4-18. Combined nameand preview cursor 38
`
`includes pointing portion 28 in the shape of an arrow pointing to book icon
`
`32. Id. at 3:65—-68, 4:46, 4:8-9. Combined nameandpreview cursor 38
`
`also includes name box 30, which displays the name of the object the cursor
`
`is pointing to.
`
`/d. at 3:39-43, 4:8-13. Lastly, combined name and preview
`
`cursor 38 includes preview portion 36, which holds a preview of the contents
`
`of the object the cursor is pointing to.
`
`/d. at 4:14—18. Other cursors include
`
`only someof this information; a name cursor may includeonly the pointing
`
`portion and the name, and a preview cursor only the pointing portion and
`
`preview portion. /d. at 3:30—43, 3:59-4:3.
`
`To implementthe display of cursors, the OS of the terminal maintains
`
`a message queue for each program that generates windows, and when a
`
`mouse event occurs, such as positioning or a mouseclick, a message from
`
`the OS is placed into the queue for the program.
`
`/d. at 4:56—5:9. The
`
`application program can respondbypassing, to the OS, information for the
`
`18
`
`
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`IPR2023-01000
`Patent 5,995,102
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`cursor, e.g., a text string for a name box and a pointer to graphical
`
`information for a preview portion.
`
`/d. at 5:47-65.
`
`2.
`
`Analysis of Claim 72
`
`a)
`
`Preamble
`
`Petitioner does not assert that the preamble of the claim 1s limiting,
`
`but argues that Malamudteaches “a method for modifying an initial cursor
`
`image displayed on the display of a user terminal connected to at least one
`
`server.” Pet. 27—28. Petitioner cites Malamud’s “conventional cursor”
`
`displayed whenthe cursoris positioned at a location where no “named
`
`entity” is present and Malamud’s teaching that when the cursor is moved
`
`over a namedentity the cursor image is modified to an information cursor
`
`including text or a graphical image related to the object on the display screen
`
`to which the cursoris pointing.
`
`/d. (citing Ex. 1004, 2:66—3:1, 3:59—4:3,
`
`5:32-—39). Petitioner acknowledges that Malamud doesnot addressthe user
`
`terminal being connected to a server, but argues that connecting a user
`
`computer to a server was“desirable, beneficial, well known to [persons of
`
`ordinary skill in the art], and commonplace.” /d. at 28 (citing Ex. 1003
`
`4] 88-94).
`
`Patent Owner doesnot present any argumentsrelating to this showing.
`
`Without determining whether or not the preamble is limiting, on this
`
`record, we determine that Petitioner has established sufficiently, for
`
`purposesofinstitution, Malamudteachesor suggests the recitations in the
`
`preamble of claim 72.
`
`b)
`
`Limitation a and limitation c.i.2
`
`Petitioner argues that limitation a, “receiving a requestat said at least
`
`one server to provide specified content information to said user terminal,”is
`
`taught or suggested by Malamud’s use of information cursors by an
`
`19
`
`
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`IPR2023-01000
`Patent 5,995,102
`
`application program. Pet. 29-30. Petitioner’s argumentis that Malamud’s
`
`application program teaches the specified content information, and “includes
`
`information that is to be displayed on said display of said user’s terminal”as
`
`recited in limitation c.1.2, thus we address both limitations together.
`
`Petitioner argues that the application program includes content
`
`displayed on the screen and instructions regarding a modified cursor,
`
`including “whether to display an information cursor, when to display the
`
`cursor, the type of information cursor to display, and an indication of the
`
`content of the information cursor.” /d. at 29, 34 (citing Ex. 1004, code (57),
`
`3:59-4:18, 4:56—59, 5:24-45, Figs. 3, 4; Ex. 1003 4] 96, 104). Petitioner
`
`argues that the “specified content information” of limitation a is taught or
`
`suggested by Malamud’s application program.
`
`/d. at 29. Petitioner further
`
`contends that, while Malamudis silent regarding how its data processing
`
`system would obtain the application program, one of ordinary skill in the art
`
`would have knownto request and download application programs from a
`
`server, and would have been motivated to download application programs.
`
`Id. at 22-24, 30 (citing Ex. 1003 4 88-93). Thus, Petitioner argues, it
`
`would have been obvious for one of ordinary skill in the art to request an
`
`application program such as in Malamud from a server. /d. at 30 (citing
`
`Ex. 1003 4 97).
`
`Patent Ownerarguesthat Petitioner’s assertion that Malamud’s
`
`application program i
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