Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 22
`Entered: March 25, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RALPH LAUREN CORPORATION,
`Petitioner,
`
`V.
`
`LEXOS MEDIAIP, LLC,
`Patent Owner.
`
`IPR2018-01755
`Patent 6,118,449
`
`Before PHILLIP J. KAUFFMAN,J. JOHN LEE, and SHARON FENICK,
`Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`DECISION
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`Tel: 571-272-7822
`
`Paper 22
`Entered: March 25, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RALPH LAUREN CORPORATION,
`Petitioner,
`
`V.
`
`LEXOS MEDIAIP, LLC,
`Patent Owner.
`
`IPR2018-01755
`Patent 6,118,449
`
`Before PHILLIP J. KAUFFMAN,J. JOHN LEE, and SHARON FENICK,
`Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`DECISION
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2018-01755
`Patent 6,118,449
`
`I. INTRODUCTION
`
`Ralph Lauren Corporation (“Petitioner”) filed a Petition (Paper 2,
`
`“Pet.’’), requesting an inter partes review of claims 1-3, 5—7, 12—15, 27-29,
`
`31-33, 38-41, 53-56, 58-63, 72-75, and 77-82 (“challenged claims”’) of
`
`U.S. Patent No. 6,118,449 (Ex. 1002, “the ’449 patent”). Lexos MediaIP,
`
`LLC (“Patent Owner”) waivedits right to file a preliminary response.
`
`Paper 6. Applying the standard set forth in 35 U.S.C. § 314(a), which
`
`authorizes institution of an inter partes review when“the information
`
`presented in the petition .
`
`.
`
`. and any response. .
`
`. showsthatthere is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least
`
`1 of the claims challengedin the petition,” we instituted an inter partes
`
`review of challenged claims of the ’449 patent on the groundsasserted in the
`
`Petition. Paper 7 (“Inst. Dec.””); Paper 9 (errata). Followinginstitution,
`
`Patent Owner submitted a Response (Paper 15, “PO Resp.”), Petitioner filed
`
`a Reply (Paper 16, “Pet. Reply”), and Patent Ownerfiled a Sur-Reply
`
`(Paper 17, “PO Sur-Reply”). An Oral Hearing on this matter and a related
`
`case (IPR2018-01749) was held on January 6, 2020. The Hearing Transcript
`
`(“Tr.”) is included in the record as Paper 21.
`
`Wehavejurisdiction under 35 U.S.C. § 6(b)(4). This Final Written
`
`Decision issues under 35 U.S.C. § 318(a). Having considered the evidence
`
`of record, and for the reasons discussed below, Petitioner has demonstrated
`
`by a preponderanceofthe evidencethat claims 27, 33, 40, 41, 72, 81 and 82
`
`of the ’449 patent are unpatentable under 35 U.S.C. § 103(a), but has not
`
`demonstrated by a preponderance of the evidencethat claims 1-3, 5—7, 12—
`
`15, 28, 29, 31, 32, 38, 39, 53-56, 58-63, 73-75, and 77-80 of the ’449
`
`patent are unpatentable.
`
`
`
`IPR2018-01755
`Patent 6,118,449
`
`Il.
`
`BACKGROUND
`
`A.
`
`Real Parties in Interest
`
`Petitioner identifies itself and Club Monaco Corporation, Club
`
`Monaco US LLC, Ralph Lauren Media LLC, PRL USA Holdings,Inc., and
`
`Adobe Systems Incorporated as real parties in interest. Pet. 1-2. Patent
`
`Owneridentifies itself as the real party in interest, and notes that Cote IP
`
`Services, LLC and Lexos Media, Inc. each own 50% of Patent Owner Lexos
`
`Media IP, LLC’s stock. Paper4, 2.
`
`B._Related Proceedings
`
`Petitioner and Patent Ownereachindicate that the ’449 patentis at
`
`issue in: Lexos Media IP, LLC v. Ralph Lauren Corp.et al., No. 1:17-cv-
`
`01319-LPS(D. Del.). Pet. 1; Paper 4, 2. Petitioner and Patent Owner
`
`additionally indicate that the ’449 patentis at issue in: Lexos Media IP, LLC
`
`v. Jos A Bank Clothiers, Inc., No. 1:17-cv-01317 (D. Del). Pet. 1; Paper 4,
`
`2. Patent Owner additionally indicates that the ’449 patent is at issue in:
`
`Lexos Media IP, LLC v. TJX Cos., Inc., No. 1:17-cv-01320 (D. Del), and
`
`Lexos Media IP, LLC v. Boscov’s Department Store, LLC, No. 2-17-cv-
`
`00373 (E. D. Tx.). Paper 4, 2-3. Along with these pendinglitigations,
`
`Petitioner and Patent Ownerdescribe orlist additional, now-terminated,
`
`cases in which Patent Ownerasserted the ’449 patent and/or U.S. Patent No.
`
`5,995,102 (Ex. 1001, “the ’102 patent”), from which the ’449 patent claims
`priority. Pet. 2-3; Paper 4, 2-4. The ’102 patentis the subject of IPR2018-
`
`01749, filed by Petitioner, in which a final written decision is pending. Pet.
`
`2; Paper 4, 4; Ralph Lauren Corp. v. Lexos Media IP, LLC, IPR2018-01749.
`
`
`
`IPR2018-01755
`Patent 6,118,449
`
`C.
`
`Overview ofthe ’449 Patent
`
`The 449 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 is used by the user to navigate a video display, and in which
`movementofthe pointing device is indicated by a corresponding movement
`
`of a cursor on the video display.
`
`/d. at 8:24-37. A generic cursor may be an
`
`arrow, pointing hand, hourglass, etc. Jd. at 3:57-61. The °449 patentrelates
`
`to changing that generic cursor by sending data and control signals from a
`
`remote computer to replace such a cursor with a cursor with an appearance
`
`that is associated with other content being displayedto the user, e.g., a logo,
`
`mascot, or an image of a productor service, related to the other content
`
`being displayed to the user. Jd. at 3:4-9, 17:5-18:3. Figure 8 of the 449
`
`patent, reproduced below, shows a web page according to the invention.
`
`' Exhibit 1001 is the ’102 patent, which appears to have an identical
`specification to the ’449 patent, excepting the priority information (Ex.
`1002, 1:4—5) and the claims. For consistency with the petition in IPR2018-
`01749, Petitioner’s citations to the identical portions of the specification are
`to the ’102 patent’s specification. Pet. 2 n.2. We adopt this convention.
`
`
`
`
`
`
`n
`lleiieSiereaereel
`
`Try Fizzy Cola!
`
`__.,
`
`
`
`IPR2018-01755
`Patent 6,118,449
`
`Weicome to SportsNews
`
`lS
`
`lAddress(_SSCSTCOCOFsCF
`:
`
`Get Busy With Fizzy
`
`In Figure 8, shown above, web page 60ais displayed to a user, including
`
`bannerad 62 for cola. Jd. at 13:31-37. The cursor to be used with this web
`
`page changesfromastandard cursor(e.g., an arrow) to cola-bottle-shaped
`
`cursor 44a in association with the banner ad 62. Id.
`
`The ’449 patent describes interactions between a server system and a
`
`user’s terminal to effect the cursor change. Jd. at 4:4—9, 5:37-49, 5:48-65,
`
`7:16-40. The user terminal is controlled by an operating system (“OS”), and
`
`application programs such as a browser running on the user terminal use an
`
`application programminginterface (“API”) to interface with the OS. Jd. 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”) web page), cursor display
`
`instruction, and cursor display code. Jd. at 8:4—-23. The cursor display
`
`instruction indicates where the cursor image data corresponding to the new
`
`
`
`IPR2018-01755
`Patent 6,118,449
`
`appearanceofthe cursor resides. Jd. at 8:49-64. The cursor display code
`
`causesthe user’s terminal to display that cursor image data in place of the
`
`original cursor, using the API of the operating system to effect these
`
`changes. Jd. at 8:34—37, 8:52-57; 13:19-30.
`
`D.
`
`Illustrative Claims
`
`Ofthe challenged claims, claims 1, 27, 53, and 72 are independent.
`
`Claims 27 and 53 are reproduced below, with formatting changesfor
`
`readability:
`
`Claim 27 recites:
`
`[Preamble]? A server system for modifying a cursor image
`27.
`to a specific image having a desired shape and appearance
`displayed on a display of a remote user’s terminal, said system
`comprising:
`[a] cursor image data correspondingto said specific image;
`[b] cursor display code, said cursor display code operable to
`modify said cursor image; and
`[c.i] a first server computer for transmitting specified content
`information user_terminal,to said remote
`
`
`
`
`
`[c.ii] said specified content information including at least
`one cursor display instruction indicating a location of said
`cursor image data, said cursor display instruction and said
`cursor display code operable to cause said user terminalto
`display a modified cursor image on said user’s display in
`the
`shape and appearance of said specific image,
`
`information is
`[c.iii] wherein said specified content
`transmitted to said remote user terminalby said first server
`computer responsive to a request from said user terminal
`for said specified content information, and wherein said
`
`? The Petition provides bracketed labels for the elements of the independent
`claims. See, e.g., Pet. 30-44; Ex. 1009. For clarity, we use these labels in
`this Decision.
`
`
`
`IPR2018-01755
`Patent 6,118,449
`
`comprises
`further
`information
`content
`specified
`information to be displayed on said display of said user’s
`terminal,
`
`[c.iv] 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, and wherein said
`cursor display code is operable to process said cursor
`display instruction to modify said cursor image to said
`cursor image in the shape and appearance ofsaid specific
`image in response to movementofsaid cursor image over
`a specified location on said display of said user’s terminal,
`and whereinsaid specific imagerelates to at least a portion
`of said information to be displayed on said display of said
`remote user’s terminal.
`
`Ex. 1002, 20:35-67.
`
`Claim 53 recites:
`53. [Preamble] 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.i] 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, wherein said specified content information
`includes informationthat is to be displayed on said display
`of said user’s terminal, 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
`
`
`
`IPR2018-01755
`Patent 6,118,449
`
`[c.ii] wherein said cursor display instruction indicates a
`cursor display code operable to process said cursor display
`instruction to modify said cursor image to said cursor
`image in the shape and appearanceof said specific image
`in response 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, and
`wherein said specific image has a shape and appearance
`relating to said information to be displayed.
`
`Ex. 1002, 22:29-58.
`
`E._Evidence Relied Upon by Petitioner
`
`Exhibit
`
`Malamudet. al. U.S. Patent No. 6,437,800|Aug. 20, 2002 Ex. 1004
`
`Anthias U.S. Patent No. 5,920,311|July 6, 1999 Ex. 1005
`
`
`
`
`.
`(filed Dec. 6, 1993)
`
`Petitioner relies on the following references:
`
`Reference
`
`
`
`
`
`
`
`(“Malamud”)
`(filed Oct. 26, 1994)
`Bl
`
`
`
`
`
`
`
`
`Nielsen U.S. Patent No. 5,991,781|Nov. 23, 1999 Ex. 1006
`
`
`
`
`(filed Sept. 27, 1996)
`
`Baker U.S. Patent No. 5,715,416|Feb. 3, 1998 Ex. 1007
`
`
`
`
`
`(filed Sept. 30, 1994)
`Petitioner also relies on a declaration from Benjamin B. Bederson,
`
`Ph.D. (Ex. 1003).
`
`F.
`
` Asserted Grounds
`
`Petitioner presents the following grounds of unpatentability, each on
`
`the basis of pre-AIA 35 U.S.C. § 103(a):
`
`
`
`
`
`
`1, 7, 15, 27, 33, 41, 53, 54, 63,
`72, 73, 82
`
`.
`Malamud, Anthias
`
`
`
`
`
`
`
`
`IPR2018-01755
`Patent 6,118,449
`
`Claims Challenged
`
`
`
`
`
`
`12, 14, 38, 40, 60, 62, 79, 81
`
`2, 3, 5, 6, 28, 29, 31, 32, 55, 56,
`58, 59, 74, 75, 77, 78
`13,7 39, 61, 80
`
`1, 7, 15, 27, 33, 41, 53, 54, 63,
`72, 73, 82
`12, 14, 38, 40, 60, 62, 79, 81
`
`
`Malamud, Anthias, Nielsen
`
`.
`Malamud, Anthias, Baker
`Malamud, Anthias, Nielsen, Baker
`
`.
`Baker, Anthias
`Baker, Anthias, Nielsen
`
`
`
`
`
`
`Pet. 1.
`
`I. ANALYSIS
`
`A. Legal Standards
`
`It is a petitioner’s burden to demonstrate unpatentability. See
`
`Dynamic Drinkware, LLC v. Nat’! 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 priorart 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
`
`3 Petitioner refers to claim 3, not claim 13, in the Petition tablelisting the
`groundsand references, but this appears to be a typographical mistake.
`Compare Pet. 1 with id. at 52-53; see Pet. Reply 5.
`
`
`
`IPR2018-01755
`Patent 6,118,449
`
`(2007). The question of obviousnessis resolved based on underlying factual
`
`determinations, including: (1) the scope and contentofthe 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.,
`
`secondary considerations.* Graham v. 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 knownelements in
`
`the fashion claimed bythe patent at issue.” KSR, 550 U.S. at 418 (citing
`
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`
`reasoning with somerational 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. Thepetitioner must instead articulate specific reasoning, based
`
`on evidenceofrecord, to support the legal conclusion of obviousness.”
`
`In 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.
`
`B.
`
`Level of Ordinary Skill in the Art
`
`Petitioner proposesthat a person ofordinary skill in the art would
`
`have had“at least a master’s degree in Computer Science, Computer
`
`Engineering,or a related field, or hold a bachelor’s degree in Computer
`
`4 The record contains no evidencerelating to secondary considerations.
`
`10
`
`
`
`IPR2018-01755
`Patent 6,118,449
`
`Science, Computer Engineering, or equivalent and have at least two years of
`relevant work experience in the fields of UI [(user interface)] design and
`
`OSs.” Pet. 10-11. In the Institution Decision, we preliminary adopted
`
`Petitioner’s proposed definition, noting that the priorart in this case
`
`demonstrated the level of ordinary skill in the art at the time of the invention.
`
`Inst. Dec. 10 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`
`2001)). Patent Owner does not commentonor dispute Petitioner’s proposal,
`
`and instead cites Okajima’s holding regarding the level ofskill in the prior
`
`art without raising any issues regarding whetherthe prior art here reflects a
`
`level of ordinary skill different from that proposed by Petitioner. PO Resp.
`
`10 (citing Okajima, 261 F.3d at 1355). We adopt Petitioner’s definition as
`
`consistent with the ’449 patent andthe assertedpriorart.
`
`C.
`
`Claim Construction
`
`Petitioner and Patent Owneragree that the °449 Patent is expired.
`
`Pet. 11; PO Resp. 9; see also Ex. 1002, 1; Ex. 1012, 135-138 (terminal
`
`disclaimer to the term of the ’102 patent); Ex. 1001, code (22). “[T]he
`
`Board’s review of the claims of an expired patent is similarto that of a
`
`district court’s review.” In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir.
`
`2012). In this context, claim terms generally are given their ordinary and
`
`customary meaning, as understood by a person of ordinary skill in the art, at
`
`the time of the invention, taking into consideration the language ofthe
`
`claims, the specification, and the prosecution history of record, because the
`
`expired claims are not subject to amendment. Phillips v. AWH Corp., 415
`
`F.3d 1303, 1312-19 (Fed. Cir. 2005) (en banc).
`
`Only termsthat are in controversy need to be construed, and then only
`
`to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am.
`
`1]
`
`
`
`IPR2018-01755
`Patent 6,118,449
`
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). The Petitioner
`
`proposed construction of several claim terms in the Petition. Pet. 12-18.
`
`However, noneof these claim terms require construction to resolve the
`
`controversy. Petitioner also argued for a construction of an additional term
`
`(“wherein said specified content information further comprises information
`
`to be displayed on said display of said user’s terminal’) in its Reply. Pet.
`
`Reply 13. Patent Owner contendsthat this argument is a new argument
`
`raised improperly forthefirst time in the Reply. PO Sur-Reply 10-11. We
`
`agree. Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respondto
`
`arguments raised in the corresponding ... patent owner response.” See also
`
`Acceleration Bay, LLCv. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed.
`
`Cir. 2018) (concluding that the Board did not abuseits discretion in refusing
`
`to consider portions of a reply declaration “rais[ing] a new obviousness
`
`argumentfor [a claim] limitation that could have been madein the petition”
`but wasnot); Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d
`1359, 1369-1370 (Fed. Cir. 2016) (concluding that the Board did not abuse
`
`its discretion in refusing to consider reply brief arguments advocating a
`
`“new theory” of unpatentability under 37 C.F.R. § 42.23(b)). Therefore, we
`
`will not address the new construction proposedfor this claim term.
`
`D.
`
`Alleged Obviousness of Claims 1, 7, 15, 27, 33, 41,
`53, 54, 63, 72, 73, and 82 over Malamud and Anthias
`
`Petitioner argues that claims 1, 7, 15, 27, 33, 41, 53, 54, 63, 72, 73,
`
`and 82 would have been obvious over a combination of Malamud and
`
`Anthias. Pet. 30-46. For the reasons discussed below, we determine that
`
`Petitioner has not demonstrated the unpatentability of claims 1, 7, 15, 53, 54,
`
`12
`
`
`
`IPR2018-01755
`Patent 6,118,449
`
`63, and 73 over Malamud and Anthias, but has demonstrated the
`
`unpatentability of claims 27, 33, 41, 72, and 82 over Malamudand Anthias.
`
`1. Overview ofMalamud (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.” Jd. One such information cursoris a
`
`“combined nameandpreview cursor,” which is shown in Malamud’s Fig. 4,
`
`reproducedbelow:
`
`ECO 40
`|
`DISPLAY
`|
`Lab
`BOOK
`|
` /cON
`|
`|
`Le
`
`|
`|
`j?
`
`
`|
`BOOK COVER
`D eee
`\* 4
`56
`|
`|
`
`COMBINED NAME AND Lg. 7
`
`JG
`
`/
`
`PREVIEW CURSOR
`
`Figure4 illustrates combined name and preview cursor 38 pointing to book
`
`icon 32. /d. at 4:4-18. Combined nameand preview cursor 38 includes
`
`pointing portion 28 in the shape of an arrow pointing to book icon 32. Jd. at
`
`3:65-68, 4:46, 4:8-9. Preview portion also includes name box 30, which
`
`13
`
`
`
`IPR2018-01755
`Patent 6,118,449
`
`displays the nameof the object the cursor is pointing to. Jd. at 3:39-43, 4:9—
`
`13. Lastly, combined nameand preview cursor 38 includes preview portion
`
`36, which holds a preview of the contents of the object the cursor is pointing
`
`to. Id. at 4:14-18. Other cursors include only someofthis information; a
`
`namecursor may include only the pointing portion and the name, and a
`
`preview cursoronly the pointing portion and preview portion.
`
`/d. at 3:30-
`
`43, 3:59-4:3.
`
`To implement the 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 mouse click, a message from
`
`the OS is placed into the queue for the program. Jd. at 4:56—-5:9. The
`
`application program can respondbypassing, to the OS, information for the
`
`cursor, €.g., a text string for a name box and a pointerto graphical
`
`information for a preview portion. Jd. at 5:47—65.
`
`2. Overview ofAnthias (Ex. 1005)
`Anthias relates to a distributed window presentation system in which
`
`graphics data, generated in a remote system, is displayed for a user.
`
`Ex. 1005, code (54), (57), 1:24-33. Anthias refers to the remote system as
`
`the client, and the user’s system as the server presentation system. Id. 1:24—
`
`33. The remote system can associate a particular cursor type with a display
`
`area displayed at the user’s system, and different cursors can be displayed in
`
`different parts of the display area. Jd. at 4:16-23. For example, the cursor
`
`might change shape,color, or flashing frequencyas it passes from the
`
`background windowareasto an area associated with an application. Jd. at
`
`3:4-7, 4:21-23.
`
`
`
`IPR2018-01755
`Patent 6,118,449
`
`Petitioner argues that claim 1 would have been obvious over Malamud
`
`3. Claim 1
`
`and Anthias. Pet. 30-38.
`
`a. Claim I [Preamble]: A server system for modifying a
`cursor image to a specific image having a desired shape
`and appearance displayed on a display ofa remote
`user's terminal
`
`Petitioner argues that Malamud’s information cursor teaches the
`
`modification of a cursor to appear as a specific image having a desired shape
`
`and appearance, including an information portion, which is displayed on a
`
`user’s terminal. Pet. 30 (citing Ex. 1004, 3:59-4:3; Ex. 1003 J 116).
`
`Petitioner argues that a “server” and “remote user’s terminal” are found in
`
`Anthias’s teaching of a data processing system implemented with a
`
`client/server model, in which an application running on a remote system
`
`(denoted “client” in Anthias) controls a display on a terminal, including the
`
`use of a modified cursor in certain window areas. Id. at 31 (citing Ex. 1005,
`
`1:24—33; Ex. 1003 J 117-118).
`
`Petitioner contends that one of ordinary skill would have combined
`
`Malamud and Anthias, as contemporary references each dealing with
`
`responding to a cursor location on a screen, in order to reduce storage
`
`requirements and processing overhead at the user terminal. Jd. at 27—28, 31
`
`(citing Ex. 1005, 2:30-34; Ex. 1003 fq 112, 117.)
`
`Patent Owner does not make any arguments specific to the preamble
`
`of claim 1 or directed to the propriety of the combination of Malamud and
`
`Anthias. See, e.g., PO Resp. 9-18.
`
`Generally, a preamble does not limit a claim. Allen Eng’g Corp.v.
`
`Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). Here, we need
`
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`not decide whether claim 1’s preamble limits the claims because, whether
`
`the preambleis limiting or not, we agree with Petitioner that the combination
`
`of Malamudand Anthias teaches the preamble. Specifically, the
`
`combination of Anthias’ teaching of a data processing system implemented
`
`with a client/server model and Malamud’s teaching regarding modification
`
`of a cursor displayed to a user teaches or suggests this preamble. Ex. 1004,
`
`3:59-4:3; Ex. 1005, 1:24-33; Ex. 1003 9] 116-118.
`
`b. Claim I[a]: cursor image data corresponding to said
`specific image
`
`Petitioner argues that Malamudteacheslimitation [a]. Pet. 32.
`
`Petitioner argues that Malamuddisclosesthat the graphical preview portion
`
`of its information cursoris stored as a bitmap image. /d. (citing Ex. 1004,
`
`5:16-18, 5:59-62; Ex. 1003 § 122). Petitioner contends that the pointers to
`
`the bitmaps teach the cursor image data oflimitation [a]. Jd.
`
`Patent Owner does not make any arguments specific to this limitation
`
`of claim 1. See, e.g., PO Resp. 9-18.
`
`We agree with Petitioner that Malamud teacheslimitation [a] of claim
`
`1. Specifically, Malamud teaches that appearance ofcursorsis dictated by
`
`bitmapsstored in an operating system, and that a pointer to a bitmap is used
`
`to identify which bitmap should be used for a cursor. Ex. 1004, 5:16—18,
`
`5:59-62.
`
`c. Claim 1[b]: cursor display code, said cursor display
`code operable to modify said cursor image
`
`Petitioner contends Malamud’s conventional OS would be understood
`
`by a person ofordinary skill in the art to “include[] functions or applications
`
`to display and modify graphics” on the user interface including cursors.
`
`Pet. 32-33 (citing Ex. 1004, 3:6-8, 5:47-53, Fig. 6; Ex. 1003 § 122).
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`Petitioner specifically notes Malamud’s discussion relating to how the cursor
`
`display is effectuated, in which a windowprocedure “passes a message to
`
`the operating system .
`
`.
`
`. that tells the operating system what type of cursor
`
`to display andsets forth the contents and type of information to be displayed
`
`in the cursor.” Jd. at 33 (quoting Ex. 1004, 5:49-52). Thus, Petitioner
`
`argues that Malamud’sfunctionsor applications in the OS that display the
`
`changeable information cursors teach the cursor display code operable to
`
`modify the cursor image. Jd. at 32-33.
`
`Patent Owner does not make any argumentsspecific to this limitation
`
`of claim 1. See, e.g., PO Resp. 9-18.
`
`Weagree with Petitioner that one of ordinary skill in the art would
`
`have understood Malamudto teach or suggest limitation [b] of claim 1.
`
`Specifically, Malamud teaches messages passed to the operating system
`
`relating to the display of cursors with different content (e.g., name or
`
`preview cursors), and one ofordinary skill would have understood code
`
`comprising functions or applications to be used to modify the cursor image.
`
`Ex. 1004, 5:16—-18, 5:47—53; 5:59-62; Ex. 1003 § 122.
`
`d. Claim I [c.i]: a first server computerfor transmitting
`specified content information to said remote user
`terminal
`
`Petitioner argues that the combination of Malamud and Anthias
`
`teaches limitation [c.i]. Pet. 33-34. In the Petition, Petitioner argues with
`
`respect to this limitation that:
`
`Malamud, in view of Anthias, discloses an application
`program’s window procedure (“first server computer”) and an
`OS (“remote user
`terminal’) on a client-server network.
`Malamudteachesthat the window procedure transmits a message
`(“specified content information”) to the OS, which employs
`
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`IPR2018-01755
`Patent 6,118,449
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`functions or applications (“cursor display code”) to display its
`information portion.
`(citing Ex. 1004, 4:53—54, 5:53-57, Ex. 1003 [ff 129-130). Thecited
`Id.
`portions of Malamud describe the OS’s control over the windowing user
`
`interface, and describe the operating system transmitting a message
`
`requesting that an information cursor be displayed. Ex. 1004, 4:53—54,
`
`5:53-57. Petitioner’s contention is that the limitation’s “specified content
`
`information” is taught by Malamud’s transmitted message, whichis
`
`described in Malamud as a messagethat“tells the operating system what
`
`type of cursor to display and sets for the contents and type of information to
`
`be displayed in the cursor.” Jd. at 5:49-52. Petitioner additionally describes
`
`the specified content information as this message in argumentsrelating to
`
`limitation [c.ii] and [c.ili]. Pet. 34, 36.
`
`Our Decision on Institution noted the Petition’s reliance on
`Malamud’s messagesentrelating to a preview cursorto teach the “specified
`
`content information”of this claim limitation. Inst. Dec. 16-18. In the
`
`Reply, however, Petitioner argues that the “specified content information”
`
`includes any information to be displayed ontheclient, such as “all
`
`information necessary to display [a] website” and, more broadly, “all
`
`graphics data.” Pet. Reply 6-10. Petitioner arguesthat the Petition referred
`
`to the discussion of the preamble and the teachings of Anthias “for
`
`disclosure of the transmission of launch information, including underlying
`
`objects,” and that the “specified content information would haveincludedall
`
`of the information to be displayed on the remote user terminal on launch,
`
`including the objects over which cursors could later be moved and
`
`modified.” Jd. at 8-9; Tr. 10:4—15, 21:24—23:1, 25:2-27:17.
`
`18
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`IPR2018-01755
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`However, we agree with the Patent Ownerthat the Petition did not
`
`relate the “specified content information” broadly toall information
`
`transferred, but rather specifically to information in a message concerning
`
`the display of an information cursor. See PO Resp. 13 n.1, 15—16; PO Sur-
`
`' Reply 3. While Petitioner argues that the reference to Anthias’ teachings as
`
`addressedin the portion ofthe Petition relating to the preamble of claim 1
`
`teaches the origination at a serverof all graphics data, the Petition describes
`
`the “specified content information” as taught by the messagerelating to
`
`cursor display. Pet. 33-34. Even when describing Anthias’ teachings, the
`
`Petition and the cited declaration describe the combination in terms of
`
`messages regarding the movementof a cursor and responsive messages
`
`regarding cursor display, not other information transferred between the
`
`remote system and the user’s system.
`
`/d. at 30-31; Ex. 1003 fj 117-118.
`
`A petitioner must choose which groundsofinvalidity to assert in the
`
`petition and “the expedited nature of IPRs bring with it an obligation for
`
`petitioners to maketheir case in their petition to institute.” Jntelligent Bio-
`
`Sys., 821 F.3d at 1369 (Fed. Cir. 2016); Wasica Fin. GmbH v. Cont'l Auto.
`
`Sys., Inc., 853 F.3d 1272, 1286 (Fed. Circ. 2017) (a petitioner is foreclosed
`
`from “shifting” in post-petition arguments to a new theory ofprimafacie
`
`obviousness based on a different passage of a prior art reference than was
`
`used in the petition); see PTAB Consolidated Trial Practice Guide
`
`November2019,° 73 (‘Petitioner may not submit new evidence or argument
`
`in reply that it could have presentedearlier, e.g., to make out a primafacie
`
`> Available at https://www.uspto.gov/TrialPracticeGuideConsolidated
`
`19
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`IPR2018-01755
`Patent 6,118,449
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`case of unpatentability.”); Trial Practice Guide Update August 2018,° 14
`
`(same).
`
`Therefore, we evaluate Petitioner’s arguments with respect to
`
`limitation [c.i] relying upon Malamud’s messagerelating to a preview cursor
`
`in Malamudto teach the “specified content information.” Patent Owner
`
`does not make any argumentsrelating to whether Malamud’s message,in
`
`view of the teachings of Anthias, teaches limitation [c.i] of claim 1. See,
`
`e.g., PO Resp. 9-18.
`
`Weagree with Petitioner that the combination of Malamudand
`
`Anthias teacheslimitation [c.i] of claim 1. Specifically, Malamud teaches
`
`the transmission of a messagerelating to the display of information cursors
`
`(e.g., name or preview cursors), and Anthias teaches or suggests the
`
`server/client configuration. Ex. 1004, 4:53-54, 5:53-57; Ex. 1005, 1:24-33;
`
`Ex. 1003 J 117, 130.
`
`e. Claim I[c.ii]: said specified content information
`including at least one cursor display instruction
`indicating a location ofsaid cursor image data, said
`cursor display instruction and said cursor display code
`operable to cause said user terminal to display a
`modified cursor image on said user’s display in the shape
`and appearance ofsaid specific image
`Petitioner, as discussed supra, argues that the “cursor image data”is
`
`taught by Malamud’s preview portion of an information cursor, whichis
`
`stored as a bitmap. Consistently, Petitioner contends that the pointer to the
`
`location of that bitmap for the preview portion, described by Malamud as
`
`being transmitted from the window procedureto the OS, teaches or suggests
`
`6 Available at https://go.usa.gov/KU7GP
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`20
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`IPR2018-01755
`Patent 6,118,449
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`limitation [c.ii]’s “at least one cursor display instruction indicating a location
`
`of said cursor image data.” Pet. 34 (citing Ex. 1004, 5:57-62; Ex. 1003
`
`{ 136). Petitioner additionally notes that this pointer and the functions or
`
`applications in the OS (which Petitioner argues teaches cursor display code)
`
`operate together to cause the display of a modified cursor image including
`
`the preview portion. Pet. 34—35 (citing Ex. 1004, 3:6—8, 4:53-55, 5:47-57,
`
`Fig. 6; Ex. 1003 ¥ 134).
`
`Patent Ownerdoes not make any arguments specific to this limitation
`
`of claim 1. See, e.g., PO Resp. 9-18.
`
`Weagree with Petitioner that Malamudteaches limitation[c.ii] of
`
`claim 1. Specifically, Malamud’s disclosure that “if the cursor to be
`
`displayed is a preview cursor .
`
`.
`
`. a message .
`
`.
`
`. includ[ing] a pointer to a
`
`bitmap of graphical information that the operating system should usein the
`
`preview portion,” teaches a cursor display instructio
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