Trials@uspto.gov
`571-272-7822
`
`Paper 25
`Entered: June 1, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HULU, LLC, NETFLIX, INC., and SPOTIFY USA INC.,
`Petitioner,
`
`v.
`
`CRFD RESEARCH, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00259
`Patent 7,191,233 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, THOMAS L. GIANNETTI, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`I. BACKGROUND
`Petitioners Hulu, LLC, Netflix, Inc., and Spotify USA Inc.
`(collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) seeking inter
`partes review of claims 1–6, 8–11, 13–15, 17–20, 23–25, 29–31, 34–36, and
`38–41 of U.S. Patent No. 7,191,233 B2 (Ex. 1001, “the ’233 patent”)
`pursuant to 35 U.S.C. §§ 311–319. On June 3, 2015, we instituted an inter
`partes review of claims 1–6, 8–11, 13–15, 17–20, 23–25, 29–31, 34–36, and
`38–41 on four grounds of unpatentability (Paper 8, “Dec. on Inst.”). Patent
`Owner CRFD Research, Inc. filed a Patent Owner Response (Paper 13,
`“PO Resp.”), and Petitioner filed a Reply (Paper 16, “Reply”). An oral
`hearing was held on January 19, 2016, and a transcript of the hearing is
`included in the record (Paper 24, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This final written
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has not
`shown by a preponderance of the evidence that claims 1–6, 8–11, 13–15,
`17–20, 23–25, 29–31, 34–36, and 38–41 are unpatentable.
`
`
`A. The ’233 Patent1
`The ’233 patent describes a system and method for “user-directed
`transfer of an on-going software-based session from one device to another
`
`
`1 The ’233 patent also is the subject of Cases IPR2015-00055 and
`IPR2015-00627, in which inter partes reviews were instituted, and was the
`subject of Case IPR2015-00157, in which the request for inter partes review
`was denied. On April 22, 2016, we issued a final written decision in
`Case IPR2015-00055 determining that claims 1, 4–6, and 8–11 of the
`’233 patent had been shown to be unpatentable.
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`device.” Ex. 1001, col. 1, ll. 8–11. A user may have a number of
`communication-enabled devices (e.g., cellular telephone, wireless personal
`digital assistant (PDA), laptop computer, desktop computer) through which
`the user conducts software application sessions. Id. at col. 1, ll. 15–52. The
`user may conduct a session on one device and then decide to switch to
`another device. Id. at col. 1, ll. 53–59. For example, the user may want to
`switch from a stationary device to a mobile device, or to switch to a device
`with a different graphical user interface. Id. According to the ’233 patent,
`conventional systems that required the user to “discontinue the current
`session on the first device and reinitiate a new session on the second device”
`could entail inconveniences such as the history of the original session being
`lost or time delays involved in logging off and reinitiating. Id. at col. 1,
`ll. 59–66.
`Figure 1 of the ’233 patent is reproduced below.
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`Figure 1 depicts wireless clients 120 (e.g., a cellular telephone or PDA) and
`wired clients 125 (e.g., a desktop or laptop computer) of a user that connect
`over various networks to application services network 105. Id. at col. 4,
`ll. 4–11, 30–33, col. 5, ll. 3–6. Wireless clients 120 and wired clients 125
`execute client programs that support session services for the respective
`devices, and are “configured to have a preferred mode of interaction,
`i.e., modality,” such as a graphical user interface for transferring sessions
`between devices. Id. at col. 4, ll. 33–50. Application services network 105
`provides session-based services (e.g., instant messaging, database querying),
`and application server 140 provides applications for those services
`(e.g., instant messaging application, database querying application), to
`wireless clients 120 and wired clients 125. Id. at col. 5, ll. 21–30.
`The ’233 patent describes the method of session transfer as follows:
`(1) a “redirect or transfer command” is sent from a first device (wireless
`client 120 or wired client 125); (2) session server 145 begins intercepting
`messages destined for the first device; (3) the first device transmits a
`“transaction or session history” to session server 145; (4) session server 145
`retrieves the previously stored “device profile” of the second device to
`which the session is to be redirected, “convert[s] the stored messages [of the
`session history] into a data format” and/or modality compatible with the
`second device, and converts the “state” of the session to a state compatible
`with the second device; and (5) when the user activates the second device,
`session server 145 “pushes the converted session to the redirected device
`over the network 100 as a normal session with the converted transaction
`log.” Id. at col. 7, l. 46–col. 8, l. 58, Figs. 3A–3B.
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`
`B. Illustrative Claim
`Claim 1 of the ’233 patent recites:
`1. A method for redirecting an on-going, software based
`session comprising:
`conducting a session with a first device;
`specifying a second device;
`discontinuing said session on said first device; and
`transmitting a session history of said first device from
`said first device to a session transfer module after said session
`is discontinued on said first device; and
`resuming said session on said second device with said
`session history.
`
`
`C. Prior Art
`The pending grounds of unpatentability in the instant inter partes
`review are based on the following prior art:
`U.S. Patent No. 6,963,901 B1, filed July 24, 2000, issued
`Nov. 8, 2005 (Ex. 1004, “Bates”);
`Mun Choon Chan & Thomas Y. C. Woo,
`Next-Generation Wireless Data Services: Architecture and
`Experience, IEEE PERS. COMM., Feb. 1999, 20 (Ex. 1005,
`“Chan”); and
`Bo Zou, Mobile ID Protocol: A Badge-Activated
`Application Level Handoff of a Multimedia Streaming to
`Support User Mobility (2000) (M.S. thesis, University of
`Illinois at Urbana-Champaign) (Ex. 1006, “Zou”).
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`D. Pending Grounds of Unpatentability
`The instant inter partes review involves the following grounds of
`unpatentability:
`Reference(s)
`Bates
`
`Claim(s)
`Basis
`35 U.S.C. § 102(e) 1–3, 23, and 24
`
`Bates and Chan
`
`Bates and Zou
`
`Bates, Zou, and Chan
`
`35 U.S.C. § 103(a) 1–6, 8–11, 23–25,
`and 29–31
`35 U.S.C. § 103(a) 13, 14, 34, and 35
`
`35 U.S.C. § 103(a) 15, 17–20, 36, and
`38–41
`
`
`II. ANALYSIS
`A. Claim Interpretation
`The Board interprets claims using the “broadest reasonable
`construction in light of the specification of the patent in which [they]
`appear[].” 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo
`Speed Techs. LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under this
`standard, we interpret claim terms using “the broadest reasonable meaning
`of the words in their ordinary usage as they would be understood by one of
`ordinary skill in the art, taking into account whatever enlightenment by way
`of definitions or otherwise that may be afforded by the written description
`contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
`1054 (Fed. Cir. 1997). 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
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`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) (“The ordinary and customary
`meaning is the meaning that the term would have to a person of ordinary
`skill in the art in question.” (internal quotation marks omitted)). A patentee,
`however, may rebut this presumption by acting as his or her own
`lexicographer, providing a definition of the term in the specification with
`“reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`In the Decisions on Institution in Cases IPR2015-00055,
`IPR2015-00157, IPR2015-00259, and IPR2015-00627, we interpreted
`various claim terms of the ’233 patent as follows:
`Claim Term
`Interpretation
`“modality”
`a preferred mode of interaction
`
`“device profile”
`
`“in response to . . .
`activation of said
`second device”
`“session”
`
`“discontinuing”
`
`“discontinued”
`
`“session transfer
`module”
`
`information pertaining to the operation of a
`device, such as the data format or modality of
`the device
`in response to the second device being made
`active, such as by a user logging on to the
`second device
`a series of information transactions between
`communicating devices during a particular
`time period
`terminating or otherwise stopping, with the
`ability to be resumed
`terminated or otherwise stopped, with the
`ability to be resumed
`computer hardware and/or software that
`participates in the transfer of a session
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`See Dec. on Inst. 6–9; DISH Network Corp. v. CRFD Research, Inc.,
`Case IPR2015-00627, slip op. at 6–9 (PTAB June 3, 2015) (Paper 9);
`Unified Patents Inc. v. CRFD Research, Inc., Case IPR2015-00157, slip op.
`at 6–9 (PTAB Apr. 30, 2015) (Paper 8); Iron Dome LLC v. CRFD Research,
`Inc., Case IPR2015-00055, slip op. at 6–10 (PTAB Apr. 27, 2015)
`(Paper 10). The parties do not dispute these interpretations in their Patent
`Owner Response and Reply. We do not perceive any reason or evidence
`that compels any deviation from these interpretations. Accordingly, we
`adopt our previous analysis for purposes of this Decision.
`We note one additional issue regarding the ordering of steps in the
`claims. To determine whether the steps of a method claim that do not
`otherwise recite an order must nonetheless be performed in a particular
`order, we first “look to the claim language to determine if, as a matter of
`logic or grammar, they must be performed in the order written.” Altiris, Inc.
`v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). “If not, we next
`look to the rest of the specification to determine whether it ‘directly or
`implicitly requires such a narrow construction.’” Id. at 1370 (citation and
`emphasis omitted); see also Mformation Techs., Inc. v. Research In Motion
`Ltd., 764 F.3d 1392, 1398–99 (Fed. Cir. 2014) (“a claim ‘requires an
`ordering of steps when the claim language, as a matter of logic or grammar,
`requires that the steps be performed in the order written, or the specification
`directly or implicitly requires’ an order of steps” (citation omitted)).
`Claim 1 expressly requires that “transmitting a session history of said
`first device from said first device to a session transfer module” take place
`“after said session is discontinued on said first device.” Independent claims
`13, 23, and 34 similarly recite that the session history is transmitted “after”
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`the session is discontinued on the first device. The parties agree that the
`claims require a specific order for transmitting the session history and
`discontinuing the session on the first device (i.e., the session must be
`discontinued first). See Pet. 23–24; PO Resp. 5.2
`
`
`B. Asserted Grounds
`Petitioner argues that claims 1–3, 23, and 24 are anticipated by Bates
`under 35 U.S.C. § 102(e); that claims 1–6, 8–11, 23–25, and 29–31 are
`unpatentable over Bates and Chan under 35 U.S.C. § 103(a); that claims 13,
`14, 34, and 35 are unpatentable over Bates and Zou under 35 U.S.C.
`§ 103(a); and that claims 15, 17–20, 36, and 38–41 are unpatentable over
`Bates, Zou, and Chan under 35 U.S.C. § 103(a). Pet. 15–47. We have
`reviewed the Petition, Patent Owner Response, and Reply, as well as the
`evidence discussed in each of those papers, and are not persuaded, by a
`preponderance of the evidence, that the challenged claims are unpatentable
`based on any of the asserted grounds.
`
`
`1. Bates
`Bates describes a method of “sharing . . . browser information
`between at least two browser applications.” Ex. 1004, col. 1, ll. 63–66.
`A user may operate one browser program (e.g., Netscape Navigator) on a
`
`2 In the final written decision in Case IPR2015-00055, we interpreted
`claim 1 not to require that the “specifying” step take place before the
`“discontinuing” step. Iron Dome LLC v. CRFD Research, Inc.,
`Case IPR2015-00055, slip op. at 8–10 (PTAB Apr. 22, 2016) (Paper 30).
`Given our analysis herein regarding whether Bates teaches the
`“transmitting” step, we need not interpret the “specifying” step for purposes
`of this Decision.
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`first client computer, and then choose to use a different browser program
`(e.g., Internet Explorer) on a second client computer. Id. at col. 4, ll. 41–47.
`The first client computer stores “browser information” and transmits the
`information to the second client computer for use with the second browser
`program. Id. at col. 4, ll. 49–61. Bates describes the browser information as
`“information generated during a browsing session, i.e., a period of time
`when the browser 240 is executing on a client computer 106 and a network
`connection exists between the client 106 and the network 104 allowing a
`user to traverse network addresses corresponding to the servers 108.” Id. at
`col. 4, ll. 61–67. For example, browser information may include a history of
`websites visited during a browsing session, bookmarks, cookies, and
`browser configurations. Id. at col. 4, l. 67–col. 5, l. 6.
`Bates discloses various data input windows that allow the user to
`input parameters for the transfer. Id. at col. 5, l. 47–col. 8, l. 54. The user
`may enter “an e-mail address for a computer (e.g., a remote client computer
`106) to which the browser information” will be sent. Id. at col. 5, ll. 51–56,
`Fig. 3. Bates discloses an exemplary embodiment where browser
`information is transmitted via email, but states that “any method or system
`(e.g., file transfer protocol (FTP))” may be used. Id. at col. 3, ll. 21–26. The
`user also may choose what browser information to share with the second
`client computer and when. Id. at col. 5, l. 64–col. 8, l. 54, Figs. 4, 5.
`
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`
`Figure 5 of Bates is reproduced below.
`
`
`Figure 5 depicts a data input window that allows a user to “select when
`browser information will be transmitted to a remote client computer 106,”
`such as upon user request, at shutdown, or when the first client computer is
`idle (“e.g., when the computer 106 enters a standby or hibernation mode”).
`Id. at col. 7, l. 53–col. 8, l. 5. The first client computer transmits the browser
`information (e.g., in an email message) to the second client computer
`whenever such a “share event” occurs, and the second client computer uses
`the information to configure its browser program. Id. at col. 8, l. 55–col. 10,
`l. 55, Figs. 7, 8.
`
`
`2. Anticipation Ground (Claims 1–3, 23, and 24)
`Independent claims 1 and 23 recite transmitting the session history of
`a first device from the first device to a session transfer module “after said
`session is discontinued on said first device.” Petitioner contends that Bates
`discloses transmitting the session history (i.e., browser information, such as
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`website history, bookmarks, and browser configurations) after session
`discontinuation, citing Bates’s disclosure of “terminat[ing] the browsing
`session” and three “share events” shown in Figure 5: “upon user request,”
`“at shutdown,” and “at idle period.” Pet. 20–24 (citing Ex. 1004, col. 10,
`l. 61–col. 11, l. 1, Fig. 5). Specifically, Petitioner argues that
`Bates discloses that a user may choose when to send the
`browser information (i.e., the session history), including “upon
`user request,” “at shutdown” or “at idle period” . . . . These
`time periods either necessarily would be, or could be, after
`discontinuation of the session on the first computer. At
`shutdown on the first computer, the session would be
`“discontinued” because it would be stopped, but could be
`resumed. If the session had idled on the first computer, it
`would also be “discontinued” because it would be stopped, but
`could be resumed. Finally, since Bates does not put any time
`restriction on when the user can request that the browser
`information be transferred “upon user request,” Bates allows for
`browser
`information
`transmission at any number of
`user-selected times. One of ordinary skill in the art would
`appreciate that one of those times could be after the session is
`discontinued on the first device.
`Id. at 23–24 (citations and emphasis omitted). Petitioner cites the testimony
`of Mark Claypool, Ph.D., in support. Id. (citing Ex. 1003 ¶ 122).
`Patent Owner responds that Petitioner’s assertions as to when the
`three share events “could” occur with respect to discontinuation of the
`session on the first client computer are insufficient to demonstrate that Bates
`discloses transmitting the session history “after said session is discontinued
`on said first device,” relying on the testimony of Prasant Mohapatra, Ph.D.
`PO Resp. 15–22 (citing Ex. 2001 ¶¶ 27–32). According to Patent Owner,
`transmission does not necessarily occur after discontinuation of the session
`in Bates, and it is equally likely that transmission occurs during a session or
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`concurrently with the session being discontinued. Id. at 16–19. Patent
`Owner also points out that Bates describes the sequence of events in
`Figure 7, including the transmission of browser information (step 720), as
`occurring “during a browsing session”—not after a session is discontinued
`on the first client computer. Id. at 14–16 (citing Ex. 1004, col. 8, ll. 55–57).
`Having reviewed all of the parties’ arguments and supporting
`evidence, we conclude that Petitioner has not shown, by a preponderance of
`the evidence, that Bates expressly or inherently discloses transmitting the
`session history “after said session is discontinued on said first device.” See
`Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251,
`1255–56 (Fed. Cir. 1989) (“Anticipation requires that every limitation of the
`claim in issue be disclosed, either expressly or under principles of inherency,
`in a single prior art reference.”).
`We begin by noting that there is nothing in Bates explicitly disclosing
`when the alleged “session” ends. Petitioner acknowledged this at the
`hearing. Tr. 42:5–8. Bates, however, does disclose what occurs during a
`“session.” The term “session” in the claims means a series of information
`transactions between communicating devices during a particular time period.
`See supra Section II.A. Bates uses the slightly different term “browsing
`session,” which it defines as the “period of time when the browser 240 is
`executing on a client computer 106 and a network connection exists between
`the client 106 and the network 104 allowing a user to traverse network
`addresses corresponding to the servers 108.” Ex. 1004, col. 4, ll. 61–67.
`Thus, the “browsing session” in Bates is the period of time when the
`browser program is “executing” on the client computer and the client
`computer has an open connection to the network servers with which it is
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`communicating. During this time, the client computer in Bates generates
`browser information in response to user input (e.g., by creating a history of
`websites visited by the user). See id. at Abstract (“A first browser executing
`on a first computer generates browser information in response to user
`input.”), col. 9, ll. 17–46 (describing the generation and storage of browser
`information in buffer 242), col. 2, ll. 2–10 (reciting “generating the
`user-configured browser information during execution of a first network
`browser on a first computer in response to user-input commands”), claim 1
`(same). Accordingly, the alleged “session” in Bates (i.e., the series of
`information transactions between communicating devices) occurs during the
`time period of what Bates refers to as the “browsing session.”
`Figure 7 of Bates depicts the steps performed by the client computer
`“during a browsing session,” id. at col. 8, ll. 55–57, and is reproduced
`below.
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`As shown in Figure 7, the client computer begins processing an event at
`step 704, determines whether the event is a share event (e.g., “upon user
`request,” “at shutdown,” or “at idle period”) at step 710, and transmits the
`browser information at step 720. Id. at col. 8, l. 55–col. 9, l. 37. Thus, we
`agree with Patent Owner and Dr. Mohapatra that transmission of the session
`history in Bates occurs during the session, not after the session is
`discontinued as required by the claims. See PO Resp. 12–16; Ex. 2001
`¶¶ 27–28.
`We also note that, when asked at the hearing when in the sequence of
`steps in Figure 7 the “session” ends, Petitioner acknowledged that it is not
`disclosed explicitly, but stated that the “session” would end “at [step] 704”
`when a share event (e.g., “at shutdown”) is first processed. Tr. 41:15–42:11.
`Patent Owner argued that the end of the “session” is not shown explicitly in
`Figure 7, but would occur at some point after transmission of the browser
`information in step 720. Id. at 34:5–15. Given Bates’s disclosure that the
`entirety of Figure 7 occurs “during a browsing session,” we agree with
`Patent Owner. See Ex. 1004, col. 8, ll. 55–57. Petitioner does not point to
`any specific disclosure in Bates, or provide any persuasive explanation,
`showing that the series of information transactions between the client
`computer and network server(s) would stop at step 704. Indeed, Petitioner
`argued at the hearing that it may be the case that the user has stopped
`browsing after the event at step 704, but acknowledged that if there was
`“anything you need to finish up at that point, . . . there could be some
`residual” communications. Tr. 42:12–20. Dr. Claypool also testified during
`cross-examination that certain steps of Figure 7 that take place after step
`704, such as steps 706, 710, 712, 714, 716, and 718, run only when the
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`browser program is still executing. See Ex. 2004, 32:16–34:18. Thus, we
`are not persuaded by Petitioner’s argument that the “session” is discontinued
`at step 704.
`Petitioner also argues that the following disclosure in Bates discloses
`the required session discontinuation:
`[C]onsider a user reading messages posted on a bulletin board,
`inputting data into a web page or performing some other task
`during a browsing session. Prior to completing the task, the
`user may be required to terminate a browsing session. In such
`an event, the necessary browser information may be collected
`and transmitted to a remote computer containing another
`browser program.
`Ex. 1004, col. 10, ll. 58–65; see Pet. 20–21; Tr. 24:9–25:18. We are not
`persuaded that this portion of Bates implies a sequential order for the last
`two sentences (i.e., that the browsing session is terminated before
`transmission of the browser information). The fact that “the user may be
`required to terminate a browsing session” before completing a task does not
`mean necessarily that the browsing session actually is terminated at that
`time. To the contrary, as discussed above, Bates’s description of Figure 7
`indicates that transmission of browser information occurs “during a
`browsing session.” See Ex. 1004, col. 8, l. 55–col. 9, l. 37.
`Petitioner further points to the three share events themselves (“upon
`user request,” “at shutdown,” and “at idle period”) and argues that when
`they occur, transmission of the session history “necessarily would be, or
`could be, after discontinuation of the session.” Pet. 23–24. Dr. Claypool’s
`corresponding testimony largely repeats Petitioner’s arguments in the
`Petition. See Ex. 1003 ¶ 122. We are not persuaded. Petitioner does not
`explain sufficiently or point to sufficient supporting evidence showing that
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`transmission must occur after discontinuing the session in any of the three
`cited share events in Bates, as would be required for a finding of inherency.
`See MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir.
`1999) (explaining that inherency requires that “the prior art necessarily
`functions in accordance with, or includes, the claimed limitations”). Further,
`Patent Owner explains why, for each of the three share events cited by
`Petitioner, it is at least equally likely that transmission occurs before
`discontinuing the session. PO Resp. 16–18. For example, Dr. Mohapatra
`testifies that
`a transmission that occurs “immediately upon user request” is
`not necessarily concurrent with a transmission after a session is
`discontinued. User requests may occur at any time, and are
`especially likely to occur during a browsing session as a user
`comes across interesting information or performs actions that
`the user wishes to preserve as browsing history or other session
`events. Therefore, it is equally, if not more, likely that such a
`user request will be made (and a corresponding transmission of
`session state effected) while the user is engaged in a current
`session.
`Ex. 2001 ¶ 29. We find Dr. Mohapatra’s testimony on these points
`persuasive and supported by the disclosure of Bates. See id. ¶¶ 27–32.
`Nor is Petitioner’s argument that transmission of the session history
`“could” occur after discontinuing the session in Bates persuasive. See Pet.
`24; Reply 5–6, 9. Petitioner contends that because Bates “does not put any
`time restriction” on when the session history can be transmitted, it allows for
`transmission “at any number of user-selected times,” such that “[o]ne of
`ordinary skill in the art would [have] appreciate[d] that one of those times
`could be after the session is discontinued on the first device.” Pet. 24.
`However, “‘[t]he mere fact that a certain thing may result from a given set of
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`circumstances is not sufficient’ to show anticipation where the claim, as
`here, requires more.” Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d
`1309, 1321 (Fed. Cir. 2016) (citation omitted); see also MEHL/Biophile,
`192 F.3d at 1365 (noting that a “possibility” that under certain circumstances
`a laser designed for tattoo removal may be pointed at hair follicles “does not
`legally suffice to show anticipation” of a patent involving laser hair
`removal). Petitioner’s position essentially disregards the specific ordering
`required by the claims, and would have a reference anticipate as long as
`there is some possibility of the required ordering, regardless of what the
`reference actually discloses. As explained above, Bates does not disclose
`explicitly when the alleged “session” ends, but does disclose that
`transmission occurs “during the browsing session,” which is the period of
`time when the series of information transactions of the “session” takes place.
`See Ex. 1004, col. 8, l. 55–col. 9, l. 37.
`Finally, we note that Petitioner makes three arguments in its Reply
`that are procedurally improper and not entitled to consideration. Pursuant to
`37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the
`corresponding . . . patent owner response.” See also Intelligent Bio-Systems,
`Inc. v. Illumina Cambridge Ltd., – F.3d –, 2016 WL 2620512, at *8–9 (Fed.
`Cir. May 9, 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)); Apple Inc. v. e-Watch, Inc.,
`Case IPR2015-00412, slip op. at 44 (PTAB May 6, 2016) (Paper 50)
`(“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean embark
`in a new direction with a new approach as compared to the position
`originally taken in the Petition. Accepting such belatedly presented new
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`arguments would be unjust to the Patent Owner and we decline to do so.”);
`Rules of Practice for Trials Before the Patent Trial and Appeal Board and
`Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule,
`77 Fed. Reg. 48,612, 48,620 (Aug. 14, 2012) (“Oppositions and replies may
`rely upon appropriate evidence to support the positions asserted. Reply
`evidence, however, must be responsive and not merely new evidence that
`could have been presented earlier to support the movant’s motion.”); Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012)
`(“While replies can help crystalize issues for decision, a reply that raises a
`new issue or belatedly presents evidence will not be considered and may be
`returned. . . . Examples of indications that a new issue has been raised in a
`reply include new evidence necessary to make out a prima facie case for the
`patentability or unpatentability of an original or proposed substitute claim,
`and new evidence that could have been presented in a prior filing.”).
`First, Petitioner provides a lengthy explanation as to how a person of
`ordinary skill in the art would have understood Bates to operate based on the
`alleged timing of Microsoft Windows shutdown signals and the interaction
`between a browser application and email software. Reply 6–9. Petitioner’s
`explanation amounts to a new theory for why Bates allegedly discloses
`transmitting the session history “after said session is discontinued on said
`first device” that was not discussed in the Petition. See Pet. 20–24 (citing
`only Bates’s disclosure of the events “upon user request,” “at shutdown,”
`and “at idle period”); Tr. 9:1–4 (acknowledging that shutdown signals are
`not discussed in the Petition). Indeed, Petitioner does not cite in its Reply
`any testimony from Dr. Claypool’s declaration or other evidence submitted
`with the Petition, but rather relies solely on the cross-examination testimony
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`of Patent Owner’s declarant, Dr. Mohapatra. See Pet. 20–24 (citing
`Ex. 1003); Reply 6–9 (citing Ex. 1018); Tr. 13:18–21.
`Further, even if considered, Petitioner’s new theory is not persuasive.
`Petitioner, for example, cites distinct portions of Dr. Mohapatra’s testimony
`where he answered questions about how Bates’s system “could” operate—
`not how a person of ordinary skill in the art would have understood the
`system actually to operate. See Reply 6–9 (citing Ex. 1018, 58:16–19,
`59:3–6, 77:9–13, 120:13–18); Tr. 35:24–36:14. From these excerpts of
`testimony and others, Petitioner pieces together an alleged sequence of
`events that would occur in Bates. See Reply 6–9. Petitioner, however, never
`cites any portion of the testimony where Dr. Mohapatra was provided the
`full sequence of events proposed by Petitioner and agreed that Bates
`operates in that manner. This deficiency was evident at the oral hearing,
`where Petitioner utilized a demonstrative exhibit showing five steps and
`argued that disparate excerpts from Dr. Mohapatra’s testimony support
`aspects of that alleged sequence. See Paper 23, 12; Tr. 15:9–16:6,
`22:15–23:20. We do not agree that Dr. Mohapatra’s testimony supports
`Petitioner’s new theory for how a person of ordinary skill in the art would
`have understood Bates’s system to operate, and Petitioner points to no other
`evidence to support its theory.
`Second, Petitioner argues that if the user selects “periodic” as the
`share event, the session history can be transmitted before or after the session
`is discontinued. Reply 9. In its Petition, however, Petitioner relied only on
`the “upon user request,” “at shutdown,” and “