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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-010671; Patent 8,407,356 B1
`Case IPR2016-011412; Patent 8,458,245 B1
`Case IPR2016-011553; Patent 8,694,657 B1
`Case IPR2016-011564; Patent 8,458,245 B1
`Case IPR2016-01157; Patent 8,407,356 B1
`Case IPR2016-01158; Patent 8,473,552 B1
`Case IPR2016-011595; Patent 8,694,657 B1
`____________
`
`Record of Oral Hearing
`Held: October 19, 2017
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. McKONE, and MELISSA A.
`HAAPALA, Administrative Patent Judges.
`
`
`1 Case IPR2017-00624 has been joined with this proceeding
`2 Case IPR2017-00655 has been joined with this proceeding
`3 Case IPR2017-00622 has been joined with this proceeding
`4 Case IPR2017-00709 has been joined with this proceeding.
`5 Case IPR2017-00659 has been joined with this proceeding.
`
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`IPR2016-01067; Patent 8,407,356 B1, et al.
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`HEIDI L. KEEFE, ESQUIRE
`DANIEL J. KNAUSS, JD, Ph.D.
`Cooley, LLP
`3175 Hanover Street
`Palo Alto, California 94304-1130
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`VINCENT J. RUBINO, III, ESQUIRE
`ENRIQUE W. ITURRALDE, ESQUIRE
`Brown Rudnick
`Seven Times Square
`New York, New York 10036
`
`
`
`
`The above-entitled matter came on for hearing on Thursday, October
`
`19, 2017, commencing at 9:00 a.m., at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
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`IPR2016-01067; Patent 8,407,356 B1, et al.
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`P R O C E E D I N G S
`- - - - -
`JUDGE EASTHOM: Good morning. I see my colleagues are
`online. I'm Judge Easthom. We have Judge Haapala in Denver and Judge
`McKone to my right in Detroit. This is the group of cases Facebook, Inc.,
`petitioner, versus Windy City Innovations, LLC. There are four patents
`challenged here and there are seven different cases but with five joinders for
`five of these cases. Cases IPR2016-1067, 1141 and then 1155 through 1159.
`The patents involved are 8,407,356, 8,458,245, 8,694,657, and then
`8,473,552.
`Petitioner, can we begin with you introducing yourself for the
`record, please.
`MS. KEEFE: My pleasure, Your Honor. Heidi Keefe for
`petitioner, Facebook. And with me is my colleague, Dan Knauss. Also just
`so the record is clear, in the audience, Andrew Cates is an associate who
`works with us. And Kate Duval is from Facebook, the client.
`JUDGE EASTHOM: Welcome everyone. How about patent
`
`owner?
`
`MR. RUBINO: Good morning, Your Honor. Vincent Rubino
`from the law firm of Brown Rudnick on behalf of patent owner, Windy City.
`And with me also from the law firm of Brown Rudnick is Enrique Iturralde.
`JUDGE EASTHOM: I'm sorry, can you pronounce his name
`
`again.
`
`MR. RUBINO: Sure. Enrique Iturralde.
`JUDGE EASTHOM: Thank you. A couple preliminaries, we sent
`out a hearing order and these cases are all related. In fact, I think you can
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`correct me later, but I think all the specs are continuations from the same
`common ancestor patent. So with that, we decided that we have all these
`overlapping issues, each side is granted an hour and a half. Petitioner will
`go first and then save any rebuttal time you want. Patent owner, prior to the
`rebuttal time, of course, will respond, and then we'll go from there.
`With that, why don't we proceed. And Ms. Keefe, I suppose you
`are going to start.
`MS. KEEFE: It's my pleasure, Your Honor. And I'll be beginning
`and if it please the Court, we would like to reserve 40 minutes. So our
`opening conversation will last hopefully less than but aimed at 50 minutes. I
`will be speaking on the petitions that revolve around the primary Roseman
`reference that were originally filed by Facebook, and I'll do that for about
`30 minutes. Mr. Knauss will then stand up and address the petitions that
`Microsoft originally filed that Facebook joined, and he'll do that for about
`20 minutes. Since so many of the issues are in common, most will be dealt
`with in my presentation, and then only those unique to the Microsoft
`petitions will be dealt with by Mr. Knauss.
`JUDGE EASTHOM: Thank you.
`MS. KEEFE: As Your Honor already mentioned, while there are a
`number of petitions here, they really revolve around very similar issues.
`With respect to the issues that I'm going to speak to, these are all addressing
`the Roseman reference as the primary reference with additional the
`Rissanen, Vetter, Pike, Westaway or Lichty references offered for basically
`support and/or limited elements in dependent claims. I just have copies of
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`the claims here in your presentation, and we'll refer back to them as
`necessary.
`In terms of claim construction across all of the cases, really though
`these are relatively long patents and relatively lots of claims, the debates turn
`on a small subset of issues. And that small subset of issues seems to revolve
`around the words "token", "censor", "channel", "database" and "pointer".
`With respect to token, the parties do not dispute that the definition
`being given in this proceeding is piece of information associated with user
`identity. Channel, the parties don't dispute the Board's interpretation, the
`channel is a group of participator computers in active communication.
`Similarly, the parties do not dispute the Board's interpretation of pointer or
`pointer triggered message on demand as a link or reference to a file, data or
`service and then a message where the content of the message is specified by
`a pointer and found on demand of the operator of the participator software.
`Instead, the dispute seems to revolve --
`JUDGE EASTHOM: Excuse me, Ms. Keefe, I'm sorry to
`interrupt. I should have mentioned this earlier. It might be best if you
`would just point out what slide number you are on.
`MS. KEEFE: Absolutely. I apologize to the remote users. I was
`on slide 7 discussing the Board's constructions that were being applied.
`JUDGE McKONE: I assume this is the slide deck for the 1156
`through 59 matters?
`MS. KEEFE: That's correct, Your Honor. Thank you very much.
`That's the one that lists all four of the petitions on the front. That's the
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`easiest way for me to distinguish between the two. One has four listed. The
`other has three listed.
`On slide 8, we show a side-by-side of what appears to be the
`dispute in terms of the word "database". We had originally -- petitioner had
`originally proposed a collection of logically related data, and the panel had
`used that construction in its institution decision. Patent owner subsequently
`has attempted to argue that the database also require persistence and
`associated tools, associated with tools for interacting with the data such as a
`DBMS or database messaging management service.
`However, there's no intrinsic -- this is slide 9. There's no intrinsic
`support for patent owner's proposed construction regarding persistent storage
`and a database management system. Instead, the patent specification is
`actually very thin on what a database is. In fact, typically throughout the
`specification, the only use of the word "database" is through a reference to
`the fact that there is a database. No more instructions on what that database
`is or has to include. There's actually no mention in the specification
`whatsoever of a database management system nor is it reflected in any of the
`claims.
`
`Instead, what patent owners point to for their proposed support of
`including tools or a database management system are self-serving statements
`made in prosecution of a related application. So in a related application that
`actually is not involved in the IPRs in this case, patent owners submitted an
`IDS after the institution decision was entered in this case. In that IDS they
`included a statement that perhaps the Patent Office should look carefully to,
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`the databases, and then included a list of things that they thought a database
`should require.
`Self-serving statements of that form have been rejected by the
`Federal Circuit in the Moleculon Research versus CBS case which basically
`states that when a patent owner simply puts material into an unrelated
`application with no reason, that is not used as intrinsic evidence to define a
`term. So here there's simply no support for the notion that a DBMS must be
`included or the tools therein.
`In fact, textbook examples that we have provided at, for example,
`Exhibit 1017, pages 1 through 2, indicates that the database is merely the
`collection of data, collection of data usually referred to as a database.
`DBMS' are then used in order to access a database. They are not a part
`necessarily of the database itself.
`JUDGE HAAPALA: Ms. Keefe, are you contesting patent owner's
`persistence aspect of the claim construction or just the DBMS aspect?
`MS. KEEFE: So it's an interesting question, Your Honor, because
`the reality is I think that the persistence exists, for example, in all of our
`cited references. But I don't believe that it is appropriate in the definition
`because again, nothing in the specification or the intrinsic record mandates
`that it be persistent or how long that persistence would exist for. So I am
`contesting that it belongs in the construction. However, when we get to
`showing how they relate to the cited references, the cited references do cover
`a persistent database, in other words, one that just exists for a period of time
`so that it can be referred back to.
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`JUDGE HAAPALA: So beyond the specification, we also look to
`understand what one of ordinary skill in the art would understood the term to
`mean. So again, with the aspect of persistence, I understand is not in the
`specification, but are you contesting that one of skill in the art would
`understand a database to have some persistence associated with it?
`MS. KEEFE: No, not necessarily. In terms of the word "censor",
`the debate here revolves around whether or not the definition is a simple
`control of what is said in a group, which is supported absolutely by the
`intrinsic record within the specification itself or patent owner's proposed
`construction which says that to censor means to examine in order to suppress
`or delete anything considered objectionable.
`This is turning to slide 12, the intrinsic record is very clear that
`censorship in the patent is broadly encompassing control of what is said in a
`group. This is essentially definitional language. We see at column 8, lines
`36 through 44 in the beginning sentence, censorship, which broadly
`encompasses control of what is said in a group, is also arbitrated by tokens.
`Censorship can control access to system one by identity of the user.
`One of the arguments that appears throughout patent owner's
`documents is that the censorship has to be based on the data itself. Not on
`the user. But that's directly refuted by the specification which indicates that
`censorship can control access by identity of the user. It's also directly
`contradicted by the language of the claims themselves.
`May I have the ELMO. For example, claims 189 and 465 of --
`that's okay. I can just read it. In the end of claims 189 and 465 of the '657
`patent, the very last limitation says, “If the first user identity is censored
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`IPR2016-01067; Patent 8,407,356 B1, et al.
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`from the sending of data,” that's claim 189, claim 465 recites, “if the first
`user identity is censored from sending the data.” Therefore, it's the user's
`identity that's being blocked. Not necessarily parsing through to see what
`the data is.
`The definition adopted by the Board in the institution decision as
`well as offered by petitioner, therefore, is the correct one.
`JUDGE McKONE: That's not the case in all the claims, though,
`right? I think in some of the dependent claims, for example, claim 6 in the
`1156 matter has wherein the computer system further determines that the
`message is not censored. So here in that case it wouldn't be the user that was
`censored. It would be the message that would be censored, correct?
`MS. KEEFE: I agree with that, Your Honor. In fact, the language
`is broad enough, the message itself is what is censored. But in determining
`how or whether that message is censored, one way of doing so is
`determining whether the user can send that message. And the term censor
`has to be interpreted broadly enough to encompass what the specification
`describes, which is where the censoring is done by user which could include
`if I, for example, were censored from sending a message, the message would
`be censored by virtue of the fact that I was the one attempting to send it. So
`patent owner's presentation of the construction is simply too narrow and
`should be ignored.
`JUDGE McKONE: What about the case in the 1159 matter, we
`have claim language such as wherein determining whether the first user
`identity is censored includes determining that the first user identity is
`censored from sending of the data presenting, for example, video? So that
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`seems to be a little bit more granular than just determining that a first user
`identity is censored.
`MS. KEEFE: Again, Your Honor, I'm not sure that it is. If you
`look at the language of that limitation, what it's saying is in order to
`determine whether or not you are going to censor that video from being sent,
`you look to who the user is who is trying to send it. So the reality is user
`number 1 could be trying to send that video and user 1 is censored or
`blocked. Then that video would not be sent, versus, for example, user 2 who
`is permitted to send videos would be allowed to send that video.
`Similarly, user 2 could be blocked from sending text. They can
`send video only. And so in that case you are still potentially at least using
`the user's identity in order to determine, even particularized content, what
`has to be sent.
`JUDGE McKONE: But it looks from the claim language in that
`case that there's two things determining whether a user identity is censored
`and then getting into the claim language that specifically addresses the
`content that is censored, for example, video or audio or multimedia. If we
`simply read that any censoring of a user is also just a censoring of whatever
`content the user is sending, that would seem to read the additional language
`out of the claims.
`MS. KEEFE: I apologize, Your Honor, I think I'm talking past
`you. I think the definition has to be broad enough to encompass censoring
`by a user or censoring by data within a group. That's why the definition that
`the Board used in its institution decision of control of what is said in a group
`is appropriate. If you use that definition with the claim that you are actually
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`looking at, you then first look to see whether or not the user is controlled in
`order to say what is being said in a group. But then you can also look to the
`content to control what is said in the group. Only the definition proposed by
`petitioner and adopted by the Board in the institution decision covers all of
`the scenarios that are contemplated by all of the claims that are at issue here,
`as opposed to patent owner's proposed construction, which I think would
`read out the possibility of user censorship, censorship based on a user
`instead of examining in order to suppress or delete anything considered
`objectionable as opposed to, for example, a user and the person who might
`be considered objectionable.
`JUDGE McKONE: Now, I'm going to ask you a question that's
`unrelated to this, but I don't know when else I'm going to ask it. I'm looking
`at, we have several different patents that come from the same original
`specification here as filed at the same time, but it looks to me like there's
`different amounts of patent term adjustment and I don't see terminal
`disclaimers in the file history. Are we supposed to evaluate different
`patents, the same claim terms of different patents with the same filing date
`under different standards?
`MS. KEEFE: So for here, Your Honor, there's only one patent that
`has expired. The remaining patents have very long-term extensions which
`appear to mean that they are still alive. It's the final patent, the '657 patent
`which is expired. So for the '657 patent the Board would use the Phillips
`standard in order to render its constructions. For the remaining patents, the
`broadest reasonable construction would apply. Here we are very fortunate in
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`that the Phillips standard overlaps with the broadest reasonable construction
`for the terms that we are discussing in the IPR proceedings here today.
`JUDGE McKONE: So it's your position that it doesn't matter
`which standard we use. The results will be the same under either standard?
`MS. KEEFE: That's correct, Your Honor. For these IPRs, that is
`absolutely correct because the intrinsic record is dictating our definitions of
`censor. And for database, I think the only argument between the parties is
`whether you incorporate further limitations from extrinsic records, which we
`think simply isn't supported by either the claims or the definitions, and so
`broadest reasonable matches up with what the intrinsic record supports there
`as well.
`
`JUDGE McKONE: So if we get through these terms under the
`more restrictive Phillips standard, we shouldn't expect, I guess, an argument
`later on that for the one patent that is not yet expired, we should have used a
`broader standard?
`MS. KEEFE: That's correct, Your Honor.
`JUDGE McKONE: Thank you. Please go back to what you were
`going to talk about.
`MS. KEEFE: I appreciate it. All I was going to do now is turn
`directly to the 1156 case. What we did in hopes of trying to make sure that
`we were addressing the issues that were most relevant to these IPRs across
`all of the patents, we grouped the issues. The 1156 touched on six separate
`arguments. And the arguments were raised essentially in patent owner's
`response, and we took our cue from there. I'll address them first in the 1156.
`Many of them repeat through all of the patents. So as we go through the
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`patents, I'll simply say, as we already said in the 1156, we've dealt with that
`issue. Hopefully that will streamline the way we approach this.
`So the first issue that crosses all of the patents has to do with patent
`owner's argument that the cited art does not reflect use of the Internet. I'm
`now at slide 16 in the presentation. The claims -- not all claims, by the way,
`require the Internet, but many of them do. Many of them in the preamble
`say wherein communication is across an Internet or something along those
`lines.
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`Patent owner's argument seems to be that the Internet was
`absolutely critical to their invention. And Roseman, the primary reference,
`did not recite the Internet. That's absolutely not true. Roseman recites in
`Exhibit 1003, column 1, lines 19 through 23 that the Roseman reference,
`which is basically a way of doing video conferencing, teleconferencing and
`a shared use of documents, the invention allows multiple persons at different
`locations to hold a conference by providing many of the conveniences which
`the participants would have if present together in the same room.
`The specification goes on a few lines later to state when a
`conference is established, the local computers become connected to a host
`computer via commercially available local area networks and wide area
`networks. At the time in 1996 it would have been apparent to one of
`ordinary skill in the art that a wide area network included the Internet. In
`fact, there are arguments that is the Internet is just the widest of area
`networks.
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`JUDGE McKONE: Is it your position that Roseman expressly
`discloses the Internet or that we should find that the Internet would have
`been an obvious example of a wide area network?
`MS. KEEFE: So I believe either is appropriate. Honestly, I
`believe that it does expressly disclose the Internet through its recitation of a
`wide area network.
`JUDGE McKONE: I guess what position did you take in the
`petitions?
`MS. KEEFE: The position that we took in the petitions was that
`including Mr. Lavian's declaration is that, in fact, by referencing wide area
`network, one of ordinary skill in the art would understand that to include the
`Internet. So that is an express recitation. At worst it is an -- it's not inherent,
`but it's obvious to one of ordinary skill in the art who understands what a
`wide area network is.
`What we did, though, in order to make sure that no one argued that
`the wide area network was not enough, we went a step further and we found
`the Vetter reference. The Vetter reference is an article from Ronald J. Vetter
`entitled Video Conferencing on the Internet. Roseman was from 1992.
`The Vetter article, I believe, was 1995, January of 1995. Vetter
`specifically indicates that video conferences are becoming increasingly
`frequent on the Internet and are generating much research interest. It goes
`on to talk about how the real reason is because hardware had been too
`expensive before but now really has appeared to become mainstream and
`therefore, really provides that the Internet is a great place to use as a
`backbone for video conferencing. The last sentence highlighted on slide 17,
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`the price/performance of these hardware devices has finally reached a level
`that makes wide-scale deployment possible, which is perhaps the most
`important factor in the recent growth of video conferencing applications.
`Patent owner seems to take exception with the fact that the use of
`the words "becoming increasingly frequent" or "beginning to support", but
`the reality is this document proves that video conferencing was being used
`on the Internet. One looking at Roseman who saw that Roseman was
`intended to be deployed on a wide area network, one of ordinary skill would
`know that wide area networks include the Internet, would be motivated to
`look to Vetter to understand that video conferencing was, in fact, happening
`on the Internet.
`JUDGE McKONE: But didn't Vetter also show that perhaps it was
`known but there were challenges involved, design trade-offs that would have
`to be considered? Is that at least fair to characterize Vetter in that manner?
`MS. KEEFE: I think it is fair to characterize it in that manner. But
`I think that what Vetter says, if you read it carefully, is that the trade-offs
`had to do with the classroom application of this video conferencing. What
`Vetter did was Vetter also acknowledged that CU-SeeMe from Cornell
`University was a platform that was already supporting video and audio
`conferencing over the Internet. That's at page 004 of Exhibit 1005.
`The article describes that Vetter himself, when using the system in
`a classroom, had experienced some problems with respect to whether or not
`the microphone was placed in an appropriate place or if people started to talk
`too quickly. I don't think that anything in Vetter would discourage anyone
`from using the Internet. Instead, quite the opposite. The article concludes
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`IPR2016-01067; Patent 8,407,356 B1, et al.
`
`
`with the notion that using the Internet for video conferencing is an exciting
`thing that people should continue to look to and continue to use and that the
`hardware will continue to improve to make it even more useful.
`The next slide at 19 just quotes the CU-SeeMe which talks about
`video and audio conferencing support over the Internet. That's an existing
`program that happened to be run principally on Macintosh computers.
`Patent owner's argument against Vetter first was, but it said that it
`had some complications. The problem was the complications had nothing to
`do per se with using the Internet. Instead, Vetter said the Internet already is
`being used for teleconferencing. Roseman said use a wide area network like
`the Internet. Vetter says it's already happening. So patent owner's switch
`instead to an argument that there was a single individual, Metcalfe, who
`published a very short -- it's less than half a page -- article, in which he
`doomsday prophesized that in 1996 the Internet would collapse through a
`number of factors, including the fact that there were a number of ghost links,
`people were not finding what they needed, things of that nature.
`However, that was one individual. One simple -- yes, he was an
`educated individual. He was someone who helped found 3Com. So he
`knew a lot about Ethernet. But by the time that he wrote that article, he was
`acting as a journalist. Not as an engineer or a technologist. And in fact,
`articles that postdate articles from the 1997 time period show that
`Mr. Metcalfe actually was speaking in a sarcastic, tongue-in-cheek way. If
`we look at Exhibit 1021, this is on slide 20, at paragraph 22, in an interview
`with the IEEE, Mr. Metcalfe described that what happened in the article in
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`IPR2016-01067; Patent 8,407,356 B1, et al.
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`December of 1995, he claims, quote, I wrote a largely tongue-in-cheek,
`sarcastic column.
`And the reason that this article is interesting for our purposes is
`that it puts you in mind of what even the author intended those of ordinary
`skill in the art at the time to understand the article to be. He did not intend it
`to be a scholarly article indicating that no one should ever use the Internet
`again. Instead, he thought of it as a tongue-in-cheek, sarcastic column.
`Then if we go back to slide 19, we actually see that that same man actually
`literally ate his words. He took the article that described the destruction of
`the Internet and put them in a blender and actually ate them in order to show
`that that, in fact, had not happened.
`The article with IEEE goes on at slide 21 where Mr. Metcalfe
`admits he's a journalist. Not an engineer. He goes on to say that he was
`acting as a provocateur to stimulate discussion. Not acting as an academic
`describing what would happen.
`I think perhaps the most important thing to take away, though,
`from the argument patent owner is attempting to make is that patent owner
`has not identified even one actual instance or any evidence that anyone
`followed the Metcalfe declaration in order to stop using the Internet or to
`stop developing on the Internet. Therefore, the combination of Roseman
`mentioning WAN, wide area networks, and Vetter specifically detailing that
`teleconferencing and video conferencing was done over the Internet is
`absolutely appropriate. And the Metcalfe article simply has no place here.
`The next argument made seems to be that the token, the
`requirement of tokens which shows up in the claims is not covered by the
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`IPR2016-01067; Patent 8,407,356 B1, et al.
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`keys of Roseman. Most of the claims, if not all, describe the idea of using a
`token that's stored in a database in order to figure out which programs have
`access to or don't have access to other materials. For example, claim 1 of
`the '356 lists a database which serves as a repository of tokens for other
`programs to access.
`Petitioner has mapped the token of the claim on to the keys in the
`Roseman reference. Again, Roseman was meaning to try to put into the
`computer world something that would happen in the real world as you were
`walking down a hall and peeking into conference rooms or being invited into
`conference rooms in order to have a conference between multiple
`participants. One of the ways that Roseman did that was Roseman sent
`invitations which included keys, keys which are blocks of data. And this is
`at slide 22. The key is a block of data at column 6, lines 60 through 61,
`which can be sent in an invitation. The keys can then be used in order to
`enter the rooms.
`Type 1 of the levels of invitation that are specifically described
`indicates an invitation for the invitee only. So the invitation and the token
`included therein, the key included therein are for the use of only one person.
`They cannot be passed to any other person and cannot be copied. That key,
`once stripped from the invitation, is used by the user in order to try to enter a
`conference. The way that the patent describes it is that the user takes the key
`and passes it over the door, essentially drags the key on to the door. If the
`key matches an identity of someone who is allowed access, the door is
`opened and the person can go in. Therefore, the token described in the
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`IPR2016-01067; Patent 8,407,356 B1, et al.
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`claim, which is simply a block of data or information, is used in order to
`access the conference.
`The first argument that patent owner seems to make for token is
`that there's something wrong with the token of Roseman because there are
`occasions when the token may be passed to another person and that that
`somehow means that it is not associated with a person. That's simply not
`true. For example, the level 1 invitation is absolutely limited to the invitee,
`and so it is associated with a user's identity. Even in level 3 in which keys
`may be exchanged with one another, once the key reaches its final person,
`the one who actually uses it to access the door by putting their token on the
`door, that token is then identified with the computer of the person using it
`and affiliation is then made with that user, that user's computer, in order to
`grant them access to the room. And we also mention that in our
`supplemental reply at page 5.
`The next argument is that the tokens are not stored in a database.
`The claim requires the tokens to be in a repository like a database. But
`Roseman specifically calls out that the meeting room, in other words, the
`place that you are trying to enter, knows about each key and its invitation
`level. The only way that a meeting room, which is a program in and of
`itself, would know about a key is if that key had been stored somewhere so
`that it could be compared. Knowledge of a key and its invitation level can
`only happen if that had been stored somewhere in the Roseman system.
`We believe that one of ordinary skill in the art would understand
`that a simple way to store information would include a database, though

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