`Patent 6,546,002 B April 25, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`INTERNATIONAL BUSINESS MACHINES CORPORATION,
`Petitioner,
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`v.
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`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
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`Case IPR2015-00089
`Patent 6,546,002 B1
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`Before GREGG I. ANDERSON, JON B. TORNQUIST, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
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`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`INTRODUCTION
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`Background
`A.
`International Business Machines Corporation (“Petitioner”) filed a
`Petition (Paper 2, “Pet.”) pursuant to 35 U.S.C. §§ 311–319 to institute inter
`partes review of claims 1–24 of U.S. Patent No. 6,546,002 (“the ’002 patent,”
`Ex. 1004). Intellectual Ventures II LLC (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). Based on these submissions, on April
`27, 2015, we granted the Petition and instituted trial for claims 1, 2, 4, 6–12,
`14, and 16–24 of the ’002 patent. Paper 8 (“Institution Decision” or “Dec.
`Inst.”).
`After institution of trial, Patent Owner filed a Patent Owner Response.
`Paper 19 (“PO Resp.”). Petitioner filed a Reply. Paper 27 (“Pet. Reply”). In
`addition, the parties rely upon expert testimony. Petitioner proffered the
`Declaration of Henry Lieberman (“Lieberman Declaration,” Ex. 1001). Patent
`Owner proffered the Declaration of Dr. Tim Williams (“Williams
`Declaration,” Ex. 2005). A transcript of the deposition of Dr. Williams
`(“Williams Dep.,” Ex. 1032) was submitted by Petitioner. A transcript of the
`deposition of Mr. Lieberman (“Lieberman Dep.,” Ex. 1026) taken by Patent
`Owner was filed as an exhibit by Petitioner.
`Patent Owner filed a Motion to Exclude Under 37 C.F.R. § 42.64(c)
`(“Motion,” “Mot.,” Paper 32). Petitioner filed an Opposition to Patent
`Owner’s Motion to Exclude (“Opposition,” “Opp.,” Paper 37), and Patent
`Owner filed a Reply to the Opposition to Motion (“Reply to Opposition,” “PO
`Reply,” Paper 38). The Motion is denied for the reasons set out below.
`An oral hearing was held on January 15, 2016. The transcript of the
`consolidated hearing for this case and IPR 2015-00092 has been entered into
`the record. Paper 43 (“Tr.”).
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`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
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`Decision is issued pursuant to 35 U.S.C. § 318(a). We conclude for the
`reasons that follow that Petitioner has shown by a preponderance of the
`evidence that claims 1, 2, 4, 6–12, 14, and 16–24 of the ʼ002 patent are
`unpatentable.
`Related Proceedings
`B.
`Petitioner advises us that Patent Owner (“IV” in the case listing that
`follows) has asserted the ’002 patent in the following seven patent
`infringement lawsuits, none of which name Petitioner as a defendant: (1) IV v.
`PNC Fin. Servs.Grp., Inc., 2:13-cv-00740 (W.D. Pa.); (2) IV v. Capital One
`Fin. Corp., 8:14-cv-00111 (D. Md.); (3) IV v. PNC Fin. Servs. Grp., Inc.,
`2:14-cv-00832 (W.D. Pa.); (4) IV v. Citigroup, Inc., 1:14-cv-04638
`(S.D.N.Y.); (5) IV v. Erie Indem. Co., 1:14-cv-00220 (W.D. Pa.); (6) IV v. Old
`Republic Gen. Ins. Grp., Inc., 2:14-cv-01130 (W.D. Pa.); and (7) IV v.
`Highmark, Inc., 2:14-cv- 01131 (W.D. Pa.). Pet. 1. Petitioner also filed a
`separate petition for an inter partes review of claims 25–49 of the ’002
`patent.1 Id.
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`C. The ’002 Patent
`The ’002 patent describes a system and method for using a mobile
`interface agent to access information of a user. Ex. 1004, Abstract. The
`’002 patent describes using a mobile interface agent that allows a user to
`“access documents, files, programs, applications, URL bookmarks, IP
`addresses, telephone numbers, television channels, radio stations, and other
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`1The co-pending petition is IPR2015-00092.
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`Patent 6,546,002 B1
`menu items from any computer.” Id. The information accessed is specific to
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`the user. Id.
`Figure 15 of the ’002 patent is reproduced below:
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`Figure 15 is a block diagram showing profile managers of multiple
`communication networks connected by a gateway. Ex. 1004, 5:41–44. Figure
`15 shows Mobile Interface Agent (“MIA”) 102a running on a Windows 95 PC
`and MIA 102b running on a cellular telephone. Id. at 16:36–54. The MIA of
`the ’002 patent allows access to “[a user’s] menu items (e.g., software
`programs, applications, files, folders, documents, telephone numbers, radio
`stations, and television channels), URL bookmarks, and user profile data.” Id.
`at 5:58–61.
`The MIA may also “periodically update or query user profile data,
`facilitate the sharing of memory and data structures between
`applications/services both local and remote, allow various types of user
`interfaces to be attached (voice menu system, human-like graphical icon, etc.)
`and perform intelligent multi-platform conversion of application data.” Ex.
`1004, 5:62–67. The MIA “can be accessible using any computer from any
`geographical location so long as the computer can be connected to a network.”
`Id. at Abstract. For example, “[t]he mobile interface agent can be accessible
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`using a computer, cable set top box, cellular phone, or other device from any
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`geographical location.” Id. at 4:44–46.
`The ’002 patent further explains that, during the process of initializing
`and creating a MIA, “MIA 102 downloads the appropriate information such as
`user profile, URL links, applications registered, etc. Some of the information
`downloaded may depend on the platform, geographical location, etc. that
`corresponds to the user’s connection location.” Ex. 1004, 14:50–54. “For
`example, if a user has purchased a Windows 98 only license for MS Word and
`moved to an Apple MacOS device, then the MS Word menu item may be
`disabled or not downloaded.” Id. at 14:54–57.
`Figure 1B is reproduced below:
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`Figure 1B illustrates a menu used by the MIA once a user has logged on to the
`computer. Id. at 5:1–3. The set of menu items included in a MIA are
`“associated with a user’s specific configuration and profile.” Id. at 14:33–34.
`The “menu items/pointers shown in the user interface can be used to access
`and retrieve user specific resources and information.” Id. at 6:14–16.
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`D. Illustrative Claims
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`Method claims 1 and 11 are the two independent claims of the
`challenged claims and are reproduced below.
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`1. A method for retrieving user specific resources and
`information stored either on a local device or a network server,
`the method comprising the steps of:
`retrieving a mobile interface from the network server to the local
`device;
`displaying the mobile interface on the local device, the mobile
`interface including a plurality of pointers corresponding to the
`user specific resources and information; and
`retrieving the user specific resources and information using the
`plurality of pointers displayed on the mobile interface.
`Ex. 1004, 17:9–21.
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`11. A method for retrieving user specific resources and
`information stored either on a local device or a network server,
`the method comprising the steps of:
`displaying the mobile interface on the local device, the mobile
`interface including a plurality of pointers corresponding to the
`user specific resources and information;
`retrieving user profile and configuration data from the network
`server to the local device, wherein the user profile and
`configuration data is used to update the data associated with the
`mobile interface;
`retrieving the user specific resources and information using the
`plurality of pointers displayed on the mobile interface.
`Id. at 17:54–67.
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`E. Grounds Upon Which Trial was Instituted
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`Inter partes review was instituted on the following grounds:
`(1)
`claims 1, 2, 7, 8, 11, 12, 17, and 18 as anticipated under 35
`U.S.C. § 102 by Richardson;2
`(2)
`claims 4 and 14 as obvious over under 35 U.S.C. § 103 over
`Richardson and Pezzullo;3
`(3)
`claims 6 and 16 as obvious under 35 U.S.C. § 103 over
`Richardson and Davis;4
`(4)
`claims 9, 19, and 21–23 as obvious under 35 U.S.C. § 103 over
`Richardson and Arnold;5
`(5)
`claims 10 and 20 as obvious under 35 U.S.C. § 103 over
`Richardson and Pocock;6
`(6)
`claim 24 as obvious under 35 U.S.C. § 103 over Richardson,
`Raman,7 and Arnold;
`(7)
`claims 1, 2, 8, 11, 12, and 18 as anticipated under 35 U.S.C.
`§ 102 by Murray;8
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`2Tristan Richardson, et al., Virtual Network Computing,
`IEEE INTERNET COMPUTING, Vol. 2, No. 1, 33–38 Jan./Feb. 1998
`(“Richardson,” Exs. 1006 and 1007 (proof of publication)).
`3 U.S. Patent No. 5,615,257 to Pezzullo, et al., issued Mar. 25, 1997
`(“Pezzullo,” Ex. 1011).
`4 U.S. Patent No. 5,473,692 to Davis, issued Dec. 5, 1995 (“Davis,” Ex. 1012).
`5 Int’l App. Publ. No. WO 98/12833 to Arnold et al., published Mar. 26, 1998
`(“Arnold,” Ex. 1013).
`6 Eur. Patent No. 0396062 B1 to Pocock et al., published Oct. 23, 1996
`(“Pocock,” Ex. 1014).
`7 T.V. Raman, Emacspeak–A Speech Interface, PROC. OF THE SIGCHI
`CONFERENCE ON HUMAN FACTORS IN COMPUTING SYSTEMS, 66–71 (Apr. 1996)
`(“Raman,” Exs. 1018 and 1019).
`8 Mark Murray and Troy Roberts, Effective Use of Individual User Profiles
`with Software Distribution, Digest of the Large Scale System,
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`(8)
`claims 6 and 16 as obvious under 35 U.S.C. § 103 over Murray
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`and Davis;
`claims 7 and 17 as obvious under 35 U.S.C. § 103 over Murray;
`(9)
`(10) claims 9, 19, and 21–23 as obvious under 35 U.S.C. § 103 over
`Murray and Arnold; and
`(11) claim 24 as obvious under 35 U.S.C. § 103 over Murray, Raman,
`and Arnold. Dec. Inst. 36.
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`ANALYSIS
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`Claim Construction
`A.
`In inter partes review, claim terms are given their broadest reasonable
`interpretation in light of the Specification in which they appear. See 37
`C.F.R. § 42.100(b). We presume that claim terms have their ordinary and
`customary meaning. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062
`(Fed. Cir. 2016) (“Under a broadest reasonable interpretation, words of the
`claim must be given their plain meaning, unless such meaning is inconsistent
`with the specification and prosecution history.”); In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term
`must be set forth in the specification with reasonable clarity, deliberateness,
`and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
`absence of such a special definition or other consideration, “limitations are not
`to be read into the claims from the specification.” In re Van Geuns, 988 F.2d
`1181, 1184 (Fed. Cir. 1993).
`Petitioner and Patent Owner both propose constructions for the terms
`“mobile interface” and “pointer” as recited in claims 1 and 11. Pet. 5–8; PO
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`Administration of Windows NT Workshop, 1−9 (Aug. 1997) (“Murray,” Exs.
`1008 and 1009 (proof of publication)).
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`Resp. 9–13.
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`1. “mobile interface”
`Independent claim 1 recites “retrieving a mobile interface from the
`network server to the local device” (emphasis added). Independent claim 11
`includes a similar recitation, “displaying the mobile interface on the local
`device, the mobile interface including a plurality of pointers corresponding to
`the user specific resources and information” (emphasis added). In the
`Institution Decision, we preliminarily construed “mobile interface” to mean “a
`user interface accessible on different computing devices.” Dec. Inst. 9.
`Petitioner agrees with our construction from the Institution Decision
`and argues against adoption of Patent Owner’s proposed construction. Pet.
`Reply. 2–4. Patent Owner proposes “mobile interface” be construed as “a user
`interface accessible on different computing devices and capable of
`dynamically accessing user-specific data on a network server and local
`device.” PO Resp. 9–10.
`Patent Owner’s support for including “dynamically accessing” user-
`specific data as part of its proposed construction includes the following
`citation from the Specification:
`The present invention is further directed to a mobile interface
`agent that can be used to dynamically access resources stored
`either locally in the computer device or across a network
`including programs, applications, bookmarked URLs, user
`profiles, IP addresses, telephone numbers, television channels,
`radio stations, and the like that are specific to a user via any
`computer device.
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`PO Resp. 10 (citing Ex. 1004, 1:11–16). Patent Owner also relies on the
`Williams Declaration and other portions of the Specification that describe
`periodically updating and synchronizing the “profile data” and adjusting a
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`pointer when the user moves from a Windows 95 machine to an Apple
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`Macintosh machine. Id. at 11 (citing Ex. 1004, 5:61–62, 7:52–55, 13:21–27;
`Ex. 2005 ¶ 39). Patent Owner concludes that “[t]he Board’s construction
`encompasses any interface—even those that are incapable of dynamically
`accessing data from different devices, locations, and computing platforms.”
`Id. at 12; see also Ex. 2005 ¶ 41 (“the Board’s construction encompasses any
`interface”).
`Our preliminary construction is consistent with the Specification. For
`example, the Specification describes a “mobile interface agent” (“MIA”),9
`which “allows the user to access documents, files, programs, applications,
`URL bookmarks, IP addresses, telephone numbers, television channels, radio
`stations, and other menu items from any computer that is connected to a
`network.” Pet. 6 (citing Ex. 1004, 4:49–54 (emphasis in Petition); id. at 5:58–
`61). The Specification also explains that the interface is “mobile” because it is
`accessible by a user from “any computer type device connected to the
`network.” Ex. 1004, 4:21–24.
`The parties appear to agree that the “mobile interface” is an interface
`that is accessible on different computing devices. Patent Owner’s proposal
`includes the additional language “dynamically accessing user specific data on
`a network server and local device.” Although the term “dynamically access”
`is used in the Specification of the ’002 patent, the meaning of that term is not
`explained. Also, the type and location of the data being accessed already is
`specified in the various claims of the ’002 patent. See, e.g., Ex. 1001, 17:9–
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`9 Patent Owner states that “mobile interface” is sometimes referred to as
`“mobile interface agent.” Tr. 35, 9–15. Our review of the Specification
`supports the conclusion that the terms are used synonymously. See, e.g., Ex.
`1004, Abstract.
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`11, 19:15–18, 19:33–35. Thus, we are not persuaded that the term “mobile
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`interface” is appropriately limited by the method of data access or by the type
`and location of the data being accessed.
`During oral argument Patent Owner was asked why insertion of
`“dynamically accessing” would not constitute reading a limitation from the
`Specification into the claims. Patent Owner argues support is found at column
`1, lines 11 through 16, of the ’002 patent reproduced above, which describes
`the “present invention.” See PO Resp. 10, Tr. 53:23–54:22. Petitioner points
`out that “the ’002 [patent Specification] refers to the ‘present invention’ 62
`times to describe aspects of the mobile interface and potential uses.” Pet.
`Reply 3. Dr. Williams’s deposition includes testimony that his construction of
`“mobile interface” is based on the phrase “the present invention” in the
`Specification. Ex. 1032, 52:9–54:13. The use of “dynamically accessing” in
`association with “the present invention” at one place, in the Specification does
`not rise to the level of a special definition set forth with clarity, deliberateness,
`and precision. In re Paulsen, 30 F.3d at 1480.
`Patent Owner does not explain why the ’002 patent’s descriptions of
`periodically updating, synchronizing, and adjusting pointer data10 are relevant
`to “dynamically accessing” user specific resources. See PO Resp. 11. The
`Williams Declaration does not include testimony that might support Patent
`Owner’s position. See Ex. 2005 ¶¶ 36–41. Rather, the Williams Declaration
`repeats the citations to the Specification and lacks any discussion of what a
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`10 “To the user, this process would be automatic and transparent since the user
`can simply click a data file, which is pointer data in his/her mobile interface
`agent.” Ex. 1004, 3:5–8 (emphasis added). The term “pointer data” is not a
`claim term and has not been construed.
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`person of ordinary skill in the art would have understood about the term
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`“mobile interface.” Id.
` Finally, our preliminary construction is not so broad as to encompass
`“any interface” but rather only an interface that is “accessible on different
`computing devices.” We are not persuaded that it should be narrowed by
`inclusion of “dynamically accessing.”11 As such, our preliminary construction
`is the broadest reasonable construction consistent with the Specification.
`Thus, we adopt our preliminary construction of “mobile interface” as our final
`construction, namely we construe “mobile interface” to mean “a user interface
`accessible on different computing devices.”
`2. “pointer”
`Independent claims 1 and 11 both recite “the mobile interface including
`a plurality of pointers corresponding to the user specific resources and
`information.” Ex. 1004, 17:14−17 and 57−60 (emphasis added). In the
`Institution Decision, we preliminarily construed “pointer” as “a link or
`shortcut to an item.” Dec. Inst. 10.
`Petitioner agrees with our preliminary construction of “pointer.” Pet.
`Reply 4. Patent Owner contends “[t]he inventor of the ’002 Patent acted as
`his own lexicographer, defining pointer: ‘A pointer in this context is a
`reference to a type of menu item that can be accessible on the computer, PDA
`or a server.’” PO Resp. 12 (citing Ex. 1004, 1:36–38, 10:8–10). According
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`11 A district court likewise did not include “dynamically accessing” in its
`construction and construed “mobile interface” as recited in the claims of the
`’002 patent as “[a] user interface, accessible on various computing devices,
`allowing a user to access files and other data from various computing
`devices.” Ex. 1031, 6 (Final Order Regarding Claim Construction and Patent
`Summaries, IV v. Citigroup, Inc., 1:14-cv-04638 (S.D.N.Y. June 30, 2015),
`ECF No. 90).
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`to Patent Owner, our preliminary construction is “incomplete.” Id. Patent
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`Owner cites a portion of the Specification that we relied on for our
`preliminary construction (Ex. 1004, 9:62–11:4).12 Id. Notwithstanding that,
`Patent Owner continues to argue that when a user activates a pointer it
`“accesses the corresponding item.” Id. at 12–13 (citing Ex. 1004, 10:10–16).
`Patent Owner then argues the Specification explains that the accessed item
`“can be accessible on the computer, PDA or a server,” thereby supporting its
`proposed construction. Id. at 12–13 (citing Ex. 1004, 1:36–38, 10:8–10).
`The Specification states “[a] user interface in an [Operating System
`(OS)] generally includes ‘pointers’ to software programs, applications, files,
`folders, documents, and other menu items. A pointer in this context is a
`reference to a type of menu item that can be accessible on the computer,
`[Portable Digital Assistants (PDA)] or a server.” Ex. 1004, 1:34–38
`(emphasis added). The Specification describes that pointers are found on the
`“Start” menu bar and provide “a link to folders, files, and programs (e.g., a
`word processing program).” Id. at 1:39–47. The Specification concludes
`with: “As discussed earlier, a pointer is a link/shortcut to an item such as a
`file, URL, IP address, telephone number, television channel, radio station,
`application, or service.” Id. at 10:8–10 (emphasis added).
`We are not persuaded that the construction proposed by Patent Owner
`represents the broadest reasonable construction of the term “pointer,” as
`described in the ’002 patent. The ’002 patent discusses a broad array of
`electronic devices that may be used in conjunction with the mobile interface
`agent, including “a computer, cable set top box, cellular phone, or other
`device.” Id. at 4:44–45. Patent Owner does not explain why the description
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`12 Dec. Inst. 10 (citing Ex. 1004, 10:8–10).
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`of a “pointer” in one particular “context,” i.e., on a computer or PDA,
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`indicates a clear intent to require that all pointers be “a reference to a type of
`menu item” or “accessible on a computer, PDA, or server.” Accordingly, we
`apply the broadest definition of the term provided in the ’002 patent: “a link
`or shortcut to an item.” Ex. 1001, 10:8–10 (“As discussed above, a pointer is
`a link/shortcut to an item such as . . . .”).
`At oral argument, Patent Owner represented that “a proper
`understanding” of our preliminary construction can “get you to the same
`place” as our preliminary construction. Tr. 37:4–8. Additionally, counsel
`argued it is important that there be a “reference” to an item, rather than only “a
`visual representation of an icon.” Id. at 37:14–21, 36:2–5. We do not adopt
`Patent Owner’s proposed construction of “pointer” and disagree that our
`preliminary construction requires a “reference” to an item. Neither do we
`agree that “a visual representation of an icon” is unequivocally not an icon.
`To say that our preliminary construction requires a “reference” is another way
`of reading one isolated sentence of the Specification into the construction. We
`decline to import limitations from the Specification into the claims. See, e.g.,
`Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
`2004).
`The record also includes extrinsic evidence that a pointer is understood
`in the computer field to mean “[a] data item that specifies the location of
`another data item.” IEEE Dictionary, 785 (6th Ed., 1996), Ex. 2001. It is
`unnecessary to rely on extrinsic evidence to reach our construction when the
`term can be “understood from a careful reading of the public record.” See
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).
`In sum, adopting Patent Owner’s construction requires importation of
`limitations from the Specification which are unnecessary to achieve the
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`correct construction. Thus, our preliminary construction is the broadest
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`reasonable construction consistent with the Specification and we adopt our
`preliminary construction of “pointer” as our final construction. Specifically,
`we construe the term “pointer” to mean “a link or shortcut to an item.”
`B. Analysis of Anticipation Grounds Based on Richardson
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`In order for a prior art reference to serve as an anticipatory reference, it
`must disclose every limitation of the claimed invention, either explicitly or
`inherently. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We must
`analyze prior art references as a skilled artisan would. See Scripps Clinic &
`Res. Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991) (to
`anticipate, “[t]here must be no difference between the claimed invention and
`the reference disclosure, as viewed by a person of ordinary skill in the field of
`the invention”), overruled on other grounds by Abbott Labs. v. Sandoz, Inc.,
`566 F.3d 1282 (Fed. Cir. 2009). As the Federal Circuit has held:
`This modest flexibility in the rule that “anticipation” requires
`that every element of the claims appear in a single reference
`accommodates situations where the common knowledge of
`technologists is not recorded in the reference; that is, where
`technological facts are known to those in the field of the
`invention, albeit not known to judges. It is not, however, a
`substitute for determination of patentability in terms of § 103.
`Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268–69 (Fed. Cir.
`1991).
`1. Richardson (Ex. 1006)
`Richardson describes a Virtual Network Computing (“VNC”) system
`where an entire desktop environment can be accessed from any Internet-
`connected machine. Ex. 1006, 33.13 A Network Computer (“NC”) “aims to
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`13 Page references are to the page numbers in Richardson and not the exhibit
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`give users access to centralized resources from simple inexpensive devices.”
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`Id. In the VNC system, the server is accessed in the same way as a NC but the
`server also supplies “an entire desktop environment that can be accessed from
`any Internet-connected machine using a simple software NC.” Id.
`“The technology underlying the VNC system is a simple protocol for
`remote access to graphical user interfaces.” Id. at 35. Because it works at the
`framebuffer level, the protocol “applies to all operating systems, windowing
`systems, and applications—indeed to any device with some form of
`communications link.” Id.
`Figure 1 of Richardson is reproduced below:
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`Figure 1 illustrates the VNC architecture. The VNC client interacts with the
`display and/or input devices. Ex. 1006, 35. The VNC server is the endpoint
`where changes to the framebuffer originate. The client inputs to the server
`when the “user presses a key or pointer button.” Id.
`Figures 2(b) and 2(c) of Richardson are reproduced below.
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`page numbers provided by Petitioner.
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`IPR2015-00089
`Patent 6,546,002 B1
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`Figure 2(b) illustrates “a Windows 95 desktop from an X viewer. Ex. 1006,
`36. Figure 2(c) illustrates “a Unix desktop from a Java applet within Internet
`Explorer.” Id.
`The viewers may access the user’s personal computing environment.
`Ex. 1006, 36. Richardson provides various examples of user desktops being
`accessed from different viewers using the VNC system. Id. at Fig. 2. Any
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`IPR2015-00089
`Patent 6,546,002 B1
`user interface may be accessed, including CDs, video recorders, telephone
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`answering machines, and car stereos or GPS receivers. Id. at 36–37. Using
`the remote access protocol, a mobile phone could be used to access the
`devices. Id. at 37.
`2. Independent Claims 1 and 11 as Anticipated by Richardson
`Patent Owner identifies two limitations from claims 1 and 11 and an
`additional limitation from claim 11 that Patent Owner argues are not disclosed
`by Richardson. See PO Resp. 13. As to the remaining limitations of claims 1
`and 11, we are persuaded Petitioner has shown sufficiently that they are
`present in Richardson. See Pet. 12–19, 20–23 and 25–26 (claim chart); Ex.
`1001 ¶¶ 62–94. Our analysis of Patent Owner’s arguments relative to claims 1
`and 11 are addressed below.
`a. “the mobile interface including a plurality of pointers”
`Both claims 1 and 11 recite “the mobile interface including a plurality
`of pointers” (“the pointer limitation”). Petitioner cites Richardson’s disclosure
`of retrieving the “entire desktop environment” from the VNC server, i.e.,
`“network server,” to the client or viewer, i.e., “local device.” Pet. 14 (citing
`Ex. 1006, 33, 35). According to Petitioner, the recited “mobile interface” is
`met by the user’s desktop because it “can be accessed from any Internet-
`connected machine.” Id.
`Premised on the user’s desktop being the “mobile interface,” Petitioner
`argues Figure 1 of Richardson (shown above) depicts “the VNC viewer
`(client) is the local device that displays the user’s mobile desktop.” Pet. 15
`(citing Ex. 1006, Fig. 1; Ex. 1001 ¶ 75). Richardson’s Figure 2(b) depicts
`using the VNC system to access a Windows 95 desktop, including a number
`of icons such as “My Computer” and “Internet Explorer.” Id. (citing Ex.
`1006, 36, Fig. 2). Citing the preceding disclosure, Petitioner contends “[o]ne
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`IPR2015-00089
`Patent 6,546,002 B1
`having ordinary skill in the art would have understood that the icons on the
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`Windows desktop are pointers because they provide links such that when the
`user clicks on an icon, the computer retrieves the corresponding resources and
`information.” Id. at 16 (citing Ex. 1001 ¶ 78).
`Patent Owner argues Richardson does not disclose the “pointer
`limitation” and cannot anticipate claims 1 and 11. PO Resp. 13, 16, 18–22;
`Tr. 36:15–22, 40:17–43:17. Patent Owner identifies two reasons supporting
`its position. First, Patent Owner argues “the VNC desktop displayed at the
`VNC client—the alleged ‘mobile interface’—does not include pointers.” PO
`Resp. 18. Second, “the VNC desktop displayed at Richardson’s VNC client
`does not dynamically access user-specific data.” Id. These arguments are
`based, in part, on Patent Owner’s proposed constructions of “pointer” and
`“mobile interface.” As discussed above, we do not adopt Patent Owner’s
`proposed constructions.
`Patent Owner argues Richardson operates differently than the claimed
`invention because “[w]hen the VNC client user clicks on an icon, the client
`computer does not retrieve resources and information; it merely transmits a
`click event for a given x-y display coordinate.” PO Resp. 19 (citing Ex. 2005
`¶ 53). If any “changes occur as a result of the click event,” the VNC server
`only sends updated screenshots to the VNC client. Id. at 19–20 (citing Ex.
`2005 ¶ 53). Patent Owner argues Richardson’s VNC client transmits an x-y
`coordinate “regardless of whether the click coincides with an icon or menu
`item.” Id. Based on the preceding, Patent Owner argues Richardson does not
`disclose a “pointer” under our construction of “pointer” as “a link or shortcut
`to an item.” Id. at 20.
`The Williams Declaration testimony is that a VNC system, such as
`Richardson, takes messages from a client mouse or keyboard and
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`IPR2015-00089
`Patent 6,546,002 B1
`communicates “screen change rectangles” between the VNC client and server.
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`Ex. 2005 ¶ 56. Relying on this testimony, Patent Owner argues that the use of
`the x-y coordinates in Richardson are not “pointers” but merely “graphics
`primitives.” PO Resp. 21–22 (citing Ex. 1006, 35; Ex. 2005 ¶ 56). Thus,
`Patent Owner concludes the VNC system of Richardson, i.e., the “mobile
`interface,” also does not include pointers. Id. at 22.
`In sum, Patent Owner argues that “a visual representation of an icon
`that, when resolved elsewhere–at the server, for instance” is not a pointer. See
`Tr. 37:22–38:5; see also id. at 41:8–21 (Richardson’s information “resides at
`the server”), 45:13–46:2 (Richardson does not bring the “resource down to the
`mobile interface”). Part of Patent Owner’s contention regarding Richardson is
`that “the client computer does not retrieve the MS Word document when the
`icon is clicked, nor does the icon refer to the MS Word document.” PO Resp.
`7 (citing Ex. 2005 ¶ 57).
`These arguments are not persuasive because the claims do not specify
`where the “pointer” is resolved. Thus, the location where an application is
`resolved or executed, whether it is the client or the server, does not distinguish
`Richardson from the claims. For example, claim 1 recites that the “pointers
`correspond[] to the user specific resources and information.” See Ex. 1004,
`17:14–17. Indeed, the Specification states that “pointer data” “may exist
`either locally in the computer device or may exist as a resource accessible
`across a network.” See Pet. Reply 14 (citing Ex. 1004, 8:42–44, Fig. 15
`(depicting remote database 136 storing “pointer dat