Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 59
`
`Entered: December 6, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-011411
`Patent 8,458,245 B1
`____________
`
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`1 The Board joined IPR2017-00655 with IPR2016-01141.
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 59
`
`Entered: December 6, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-011411
`Patent 8,458,245 B1
`____________
`
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`1 The Board joined IPR2017-00655 with IPR2016-01141.
`
`
`
`
`
`
`IPR2016-01141
`Patent 8,458,245 B1
`
`
`I. INTRODUCTION
`
`Microsoft Corp. filed a Petition (Paper 1) to institute an inter partes
`
`review of claims 1–58 U.S. Patent No. 8,458,245 B1 (Ex. 1001, “the ’245
`
`patent”). The Board instituted this proceeding as to challenged claims 1–40.
`
`Paper 8 (“1st Inst. Dec.”).
`
`In IPR2017-00655, Facebook, Inc. (“Petitioner”) filed a Petition
`
`(IPR2017-00655, Paper 8, “Pet.”) to institute an inter partes review of
`
`claims 1–15, 17 and 18 of the ’245 patent.2 Windy City Innovations, LLC
`
`(“Patent Owner”) filed a Preliminary Response (IPR2017-00655, Paper 7).
`
`Joining Facebook to the instant proceeding as a party (see note 2),
`
`pursuant to 35 U.S.C. § 314, in our Second Institution Decision (Paper 28,
`
`“2nd Inst. Dec.”), we instituted this proceeding as to claims 1–15, 17, and 18
`
`(the “challenged claims”).3 We also dismissed claims 16 and 19–40 from
`
`this proceeding (the claims challenged by Microsoft, but not by Petitioner).
`
`2nd Inst. Dec. 9–10.
`
`
`
`
`
`2 Petitioner Facebook filed the Petition and a motion for joinder in
`Facebook, Inc. v. Windy City Innovs., LLC, Case IPR2016-00655 (Papers 2
`and 3, with that proceeding now terminated due to joinder with the instant
`proceeding).
`3 The Board terminated Microsoft Corp. as a party based on a settlement
`agreement with Patent Owner. See Papers 25–27. In the Second Institution
`Decision (Paper 28), the Board determined the two Petitions presented
`“materially the same arguments based on the same evidence” with the only
`exception being that Facebook challenged a subset of claims 1–58 that
`Microsoft challenged. See 2nd Inst. Dec. 7.
`
`2
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`IPR2016-01141
`Patent 8,458,245 B1
`
`
`Prior to the Second Institution Decision, Patent Owner filed a Patent
`
`Owner’s Response (Paper 23, “PO Resp.”), and after the Second Institution
`
`Decision, Petitioner filed a Reply (Paper 40, “Pet. Reply”).
`
`Petitioner relies on two declarations of Christopher M. Schmandt:
`
`Ex. 1003 (“Schmandt Declaration”); Ex. 1100 (“Schmandt Reply
`
`Declaration”). Patent Owner relies on the Declaration of Jaime Carbonell,
`
`Ph.D.: Ex. 2005 (“Carbonell Declaration”). An Oral Hearing occurred on
`
`October 19, 2017 (Paper 58, “Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision issues under 35 U.S.C. § 318(a). Based on the record before us,
`
`Petitioner has demonstrated, by a preponderance of the evidence, that the
`
`challenged claims, claims 1–15, 17, and 18 of the ’245 patent, are
`
`unpatentable.
`
`A. Related Cases
`
`The parties identify the following district court cases as related to this
`
`proceeding: Windy City Innovations, LLC v. Microsoft Corp., 4:16-cv-
`
`01729-YGR (N.D. Cal.); Windy City Innovations, LLC v. Facebook, Inc.,
`
`4:16-cv-01730-YGR (N.D. Cal.). Pet. 3–4. The instant inter partes review
`
`relates to several other inter partes reviews challenging three other patents
`
`and the ’245 patent that each have a common underlying original
`
`application: Terminated IPR2017-00624 joined with IPR2016-01067
`
`(Patent 8,407,356 B1); terminated IPR2017-00622 joined with IPR2016-
`
`01155 (Patent 8,694,657 B1); terminated IPR2017-00709 joined with
`
`IPR2016-01156 (Patent 8,458,245 B1); IPR2016-01157 (Patent 8,407,356
`
`B1); IPR2016-01158 (Patent 8,473,552 B1); and terminated IPR2017-00659
`
`joined with IPR2016-01159 (Patent 8,694,657 B15).
`
`3
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`
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`IPR2016-01141
`Patent 8,458,245 B1
`
`
`B. The ’245 Patent
`
`The ’245 patent describes connecting users with participator
`
`computers to an Internet “chat room” via a controller computer. See
`
`Ex. 1001, 2:25–27, 9:18–28, Fig. 1, Fig. 7 (showing “Login to Chat”
`
`button). According to the ’245 patent, known prior art systems linked
`
`computers together to form chat rooms in which users communicated by
`
`text, graphics, and multimedia, for example, via a system provided by the
`
`Internet service provider “America On Line.” Ex. 1001, 1:40–46. The ’245
`
`patent acknowledges that chat rooms have been implemented on the Internet,
`
`albeit with “limited chat capability,” but contends that the complex chat
`
`room communications capable with Internet service providers had not been
`
`developed on the Internet “at least in part because Internet was structured for
`
`one-way communications analogous to electronic mail, rather than for real
`
`time group chat room communications” and because “there is no particular
`
`control over the platform that would be encountered on the Internet.” Id. at
`
`1:54–56, 1:60–62. During the Oral Hearing, Patent Owner explained that a
`
`key distinction over prior art chat systems on the Internet involved providing
`
`security by using tokens, as known Internet chat systems were “closed” and
`
`did not require security. See Tr. 49:2–6 (“And so what Dr. Marks invented
`
`here, what he saw as a problem was security concerns over the Internet and
`
`doing the types of things you might want to do in a closed system like
`
`America Online or like potentially some BBS systems and to add those
`
`features to an Internet-capable system.”).
`
`To implement the chat room communications, “participator
`
`computers” operate in conjunction with a “controller computer” to “handle
`
`multiplexing operations for communications involving groups of some of the
`
`4
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`IPR2016-01141
`Patent 8,458,245 B1
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`participator computers.” Ex. 1001, 1:23–30. Figure 1 of the ’245 patent,
`
`reproduced below, depicts an embodiment of such a system.
`
`
`
`Figure 1 depicts computerized arbitrating and distributing system 1, which
`
`includes controller computer 3 and a plurality of participator computers 5.
`
`Id. at 4:67–5:6. Controller software 2 controls the operation of controller
`
`computer 3, and each participator computers 5 operates under the control of
`
`participator software 4. Id. at 5:21–29. Controller computer 3 and
`
`participator computers 5 connect via connection 13 (e.g., an Internet
`
`connection). Id. at 5:17–20. A user of one participator computer 5 may
`
`send multimedia information message 8 to controller computer 3, which
`
`arbitrates which participator computers 5 receive the message. Id. at 5:28–
`
`37. All multimedia information may be transmitted as pointers, such as
`
`URLs (Uniform Resource Locators), pointing to pre-stored audio and video
`
`communications that controller computer 3 can fetch to communicate to
`
`participator computers 5. Id. at 5:38–43.
`
`5
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`IPR2016-01141
`Patent 8,458,245 B1
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`
`
`Figure 2, reproduced below, represents an overview of the
`
`communications described in the ’245 patent.
`
`
`
`Blocks 10, 12, 14, 16, and 18 in Figure 2 illustrate operations under
`
`controller software 2, and Blocks 20, 22, 24, 26, and 30 illustrate operations
`
`under participator software 4. Id. at 5:45–54, 5:58–6:2. For example, Block
`
`14 represents the handling of a private message. Id. at 5:50–51.
`
`Block 10 and Block 20 illustrate software multiplexing and
`
`demultiplexing of messages by message type on the controller computer and
`
`a participator computer, respectively. Id.
`
`The Specification further describes logging in to begin a chat session:
`
`Turning now to an illustration of using the invention, the session
`starts with verifying the user’s identity (at FIG. 7). The
`login/password screen is shown, and the user enters his/her
`assigned login/password combination and clicks the “Login To
`Chat” button. If the password was entered correctly, a
`confirmation box appears on the screen.
`
`Ex. 1001, 9:16–21. Figure 7 follows:
`
`6
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`IPR2016-01141
`Patent 8,458,245 B1
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`
`
`
`Figure 7 of the ’245 patent, reproduced above, illustrates an aspect of
`
`the invention as including a menu at a user’s computer for entering login and
`
`password information of a user. See Ex. 1001, 9:16–21. Such information,
`
`stored in a database, represents a token that controls access to the system.
`
`See id. at 8:6–58, 11:4–14.
`
`Figure 28, reproduced below, is similar to Figure 7, but represents an
`
`“alternate embodiment using a text-based interface” (id. at 11:14–16):
`
`
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`7
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`IPR2016-01141
`Patent 8,458,245 B1
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`Figure 28 reveals a login interface using a Telnet feature (as indicated at the
`
`top of the figure). “The user must now enter his/her login and password to
`
`identify themselves.” Id. at 11:18–19. Figure 27 represents a “Property
`
`Editor” interface that allows “a user with sufficient permissions (tokens)” to
`
`
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`“change any of the tokens.” Id. at 11:12–13.
`
`C. Challenged Claims
`
`Independent challenged claims 1 and 7 recite similar subject matter.
`
`Each of the remaining challenged claims depends directly or indirectly from
`
`claims 1 or 7. Illustrative claim 1 follows:
`
`A computer apparatus distributing a communication over an
`1.
`Internet network, the apparatus including:
`
`to communicate
`a controller computer system adapted
`responsive
`to a
`respective authenticated user
`identity
`
`8
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`IPR2016-01141
`Patent 8,458,245 B1
`
`
`corresponding respectively to each of a plurality of participator
`computers,
`
`each said participator computer communicatively connected to
`said
`Internet network, each said participator computer
`programmed to enable the communication, the communication
`including at least one of a pre-stored sound, video, graphic, and
`multimedia,
`
`the controller computer system including a controller computer
`and a database which serves as a repository of tokens for other
`programs to access, thereby affording information to each of the
`participator computers which are otherwise independent of each
`other;
`
`wherein one said authenticated user identity is used to
`communicate a pointer-triggered private message from a first of
`said participator computers to said controller computer and from
`said controller computer to a second of said participator
`computers that invokes said pointer-triggered private message to
`fetch and receive the communication from a computer other than
`said first or said second said participator computers in real time
`over the Internet network
`
`such that the second of said participator computers internally
`determines whether or not the second of the participator
`computers can present the communication, if it is determined that
`the second of the participator computers can not present the
`communication then obtaining an agent with an ability to present
`the
`communication,
`and
`otherwise
`presenting
`the
`communication independent of the first of the independent
`participator computers and the computer.
`
`
`
`9
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`IPR2016-01141
`Patent 8,458,245 B1
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`D. Asserted Grounds of Unpatentability
`
`The Board instituted on the ground that claims 1–15, 17, and 18
`
`would have been obvious over under 35 U.S.C. § 103(a) based on the
`
`combined teachings of Major BBS4
`
` and Higley.5 2nd Inst. Dec. 2, 7, 10.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`We interpret claim terms in an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`
`136 S. Ct. 2131, 2144–45 (2016). In applying a broadest reasonable
`
`construction, claim terms generally carry their ordinary and customary
`
`meaning, as would be understood by one of ordinary skill in the art in the
`
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007).
`
`In the First Institution Decision, we preliminarily construed “token,”
`
`“censored,” and “pointer/pointer-triggered message on demand.” 1st Inst.
`
`Dec. 7–10. In the institution decision in related IPR2016-01158, Paper 7, 7–
`
`15, which involves a common ancestor application to the ’245 patent, we
`
`construed those or similar terms in the same fashion, and other terms, as
`
`follows:
`
`
`
`4 GALACTICOMM, INC., THE MAJOR BBS VERSION 6.2 SYSTEM OPERATIONS
`MANUAL (1994) (Ex. 1012, “Major BBS”).
`5 U.S. Patent No. 5,790,793, filed Apr. 4, 1995, issued Aug. 4, 1998
`(Ex. 1010, “Higley”).
`
`10
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`IPR2016-01141
`Patent 8,458,245 B1
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`
`Claim Term
`
`Construction
`
`“token”
`
`“database”
`
`“censor”
`
`“piece of information associated with user
`identity”
`
`“a collection of logically related data”
`
`“control what is said in a group”
`
`“a pointer-triggered
`message on demand”
`
`“a message, where the content of the message is
`specified by a pointer and found on demand of
`the operator of the participator software”
`
`“pointer”
`
`“a link or reference to a file, data, or service”
`
`Patent Owner presents different constructions of “database” and
`
`“censor.” See PO Resp. 7–12 (treating censor, censorship, and censored, in
`
`materially the same manner). Petitioner accepts all of our constructions and
`
`presents arguments supporting our constructions of “database” and “censor.”
`
`See Pet. Reply 1–7.
`
`We maintain our constructions of each term. In the final written
`
`decision in IPR2016-01158, we address the parties’ arguments regarding the
`
`construction of “database” (as claims 1 and 7 challenged here recite) and
`
`“censor” (challenged claims 6 and 8 here recite “censored”). See IPR2016-
`
`01158, Paper 47, Section II.A. Patent Owner presents materially the same
`
`evidence and arguments here that the Board addresses in IPR2016-01158,
`
`Paper 47, Section II.A. See PO Resp. 7–12 (citing Ex. 1001; Ex. 2002;
`
`Ex. 2003; Ex. 2004; Ex. 2005; Ex. 2007). We adopt and incorporate by
`
`reference the analysis in IPR2016-01158, Paper 47, Section II.A.
`
`Notwithstanding the parties’ different positions on the construction of
`
`“database” and “censor,” Patent Owner’s Response does not present a clear
`
`argument that turns on the construction as it relates to Petitioner’s
`
`obviousness challenges.
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`11
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`IPR2016-01141
`Patent 8,458,245 B1
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`No other terms require express construction for purposes of this Final
`
`Written Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`
`795, 803 (Fed. Cir. 1999) (holding that terms need only be construed to the
`
`extent necessary to resolve the controversy at issue).
`
`B. Alleged Unpatentability Under § 103(a)
`
`A claim is unpatentable under § 103(a) if the differences between the
`
`claimed subject matter and the prior art are “such that the subject matter as a
`
`whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which said subject matter pertains.”
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`
`obviousness is resolved on the basis of underlying factual determinations,
`
`including the following factors: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`
`i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–
`
`18 (1966).
`
`1. Overview of Major BBS
`
`The Major BBS Manual, a system operations manual, describes
`
`Galacticomm Inc.’s “The Major BBS” or “Major BBS” software for a
`
`bulletin board system (“BBS”). See Ex. 1012, 1–3. According to Robert
`
`Stein, a former employee of Galacticomm and the author of the Major BBS
`
`Manual, Galacticomm distributed the Major BBS Manual to customers
`
`(typically a “Sysop” who manages the BBS) who purchased the Major BBS
`
`software. Ex. 1011 ¶¶ 9, 11–12, 14–15. According further to Mr. Stein,
`
`[c]ustomers of The Major BBS bought the software to set up and
`manage their own bulletin board. The bulletin board owner was
`known as the “Sysop” for that particular bulletin board. The
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`12
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`IPR2016-01141
`Patent 8,458,245 B1
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`Sysop would need the System Operation’s Manual to install and
`operate The Major BBS.
`
`Id. ¶ 9.
`
`The Major BBS Manual describes the software system as supporting a
`
`multi-user BBS for users simultaneously communicating over modems,
`
`serial connections, local area network (“LAN”) circuits, and X.25 packet-
`
`switching networks. Ex. 1012, 2.
`
`A bulletin board system is a centralized service that users
`with computers and modems dial up over telephone lines. A user
`can download information, answer questionnaires, and exchange
`messages or files with other users.
`A BBS is usually a computer hooked up to a bunch of
`modems and telephone lines. Typically, the user’s side is one
`computer and one modem on a phone line.
`
`Id. at 1.
`
`To join the Major BBS, a user calls into the BBS (controlled by the
`
`Sysop), signs up, answers questions, and picks a User-ID and password.
`
`Id. at 4, 293. Users can connect, for example, using a computer, a modem,
`
`and terminal emulation software. Id. at 293. The Sysop assigns all users a
`
`key of a certain level that defines features available to the user. Id. at 107.
`
`The keys open locks such as “NORMAL,” which gives “[a]ccess to most
`
`standard features.” Id. at 107–08. At the formation of the BBS, the system
`
`grants a SYSOP key to the Sysop, which gives “[s]weeping powers across
`
`all BBS services.” Id. at 108. The Sysop can assign multiple users the same
`
`key by class (a “class keyring”), thereby granting a class of users the same
`
`access privileges and restrictions (e.g., NORMAL or MODERATE (allows
`
`those users to moderate teleconferences)). Id.
`
`After obtaining a User-ID and password (which the users chooses),
`
`the user can log on to the system. Id. at 301–02. Different users register
`
`13
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`different language preferences. Id. at 300 (for example, German). Once
`
`logged in, the user can participate in various electronic Forums.
`
`Forums are for gathering people and information. . . . In a Forum,
`lots of people write messages and lots of people read or search
`or scan messages. You can direct a message to all users or to a
`specific user. You can search for messages in many ways:
`chronologically, by topic, by conversation threads, by message
`content, by lists of keywords, or by the unique message number.
`
`Id. at 324. In a Forum, users post public messages that many users can read.
`
`Id. at 304. A user optionally can attach and upload a file to a Forum
`
`message, which another user reading the message can download. Id. at 306.
`
`The system can assign different access levels to different users for accessing
`
`Forums, including “Read” access, in which a “user can read Forum
`
`messages, but not download files attached to the messages”; “Write” access,
`
`in which a “user can write Forum messages, but not upload files”; and
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`“Forum-Op” access, in which a user “can approve uploads, maintain
`
`bulletins, and set the access levels of other users.” Id. at 139.
`
`Each Forum can have its own Teleconference channel, in which the
`
`topic of the channel is the topic of the Forum. Id. at 246, 315, 339.
`
`According to the Major BBS Manual, “[t]eleconferencing simply allows
`
`several users to converse with one another over their terminals. When you
`
`type something, that message goes out to all the other users in the same
`
`Teleconference channel, telling them what you typed.” Id. at 315. The
`
`Major BBS Manual states “[t]eleconference channels have nothing to do
`
`with the communication channels that you use for your session on the BBS.
`
`Teleconference channels are just a method of keeping track of who is talking
`
`to whom.” Id. In other words, a “channel” specifies a group of people
`
`sending messages on a Forum or during a chat. See id.
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`Users can view a list of the services provided by a particular BBS in
`
`the form of menus in a tree structure. Id. at 59–60. Menus can be presented
`
`using RIPscrip, enabling some presentation of graphics in the menus. Id. at
`
`64, 92. The system can present different menus depending on the key
`
`assigned or communication channel assigned to the user. Id. at 107.
`
`2. Overview of Higley
`
`Higley discloses a “method and system for sending and receiving
`
`Uniform Resource Locators (URLs) in electronic mail over the Internet.”
`
`Ex. 1010, Abstract. URLs are addresses that enable an Internet browser,
`
`such as Mosaic, to access HTML (Hypertext Markup Language) documents
`
`and other resources on the Internet. Id. at 1:30–43. HTML “provides for a
`
`mingling of text, graphics, video, sound and hypertext links.” Id. at 1:24–
`
`30. Mosaic, one example of “Multimedia Internet Browsers,” can access
`
`such content. Id. at 1:37–43.
`
`According to Higley, URLs were often incorporated into e-mail
`
`messages, but users were required to manually type them into a separate
`
`browser program to access the linked information. Id. at 1:47–53. Higley
`
`describes a solution whereby a URL contained in a message is recognized
`
`(e.g., via HTML) and “the information of the URL is looked up, retrieved
`
`over the Internet or other network, and displayed by the receiver’s
`
`multimedia browser.” Id. at 5:1–53, Fig. 4. This can be accomplished
`
`responsive to a user’s “click” on the URL, or automatically without user
`
`input. Id. According to Higley, prior art “passive” browsers “access or
`
`‘pull’ data from the Internet by use of various network addressing schemes.”
`
`Id. at 1:56–58. “[T]hey do not ‘push’ data that is on the Internet to users,
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`15
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`nor do the [prior art] browsers . . . allow for the receiving of such pushed
`
`data.” Id. at 1:60–63.
`
`
`
`3. Petitioner’s Obviousness Showing of Claim 1
`
`Petitioner asserts that claim 1 would have been obvious based on the
`
`combined teachings the Major BBS Manual and Higley. The Petition sets
`
`forth detailed contentions and identifies specific evidence to support this
`
`asserted ground of unpatentability. Pet. 17–39.
`
`Claim 1 recites “a controller computer system,” including a
`
`“controller computer” adapted to communicate with “each of a plurality of
`
`participator computers,” with “each said participator computer
`
`communicatively connected to said Internet network.” Claim 1 also recites
`
`“distributing a communication over an Internet network.” As Petitioner
`
`contends, Major BBS describes BBS software installed on an IBM
`
`computer, which then communicates with users who access the BBS over
`
`modem connections with their computers. See id. at 17, 21; Ex. 1012, 1–11,
`
`23–45.
`
`With respect to the “Internet network” limitations, the Petition relies
`
`on combining the Major BBS Manual with Higley. Pet. 17–21. As
`
`Petitioner shows, Higley describes computers accessing information over the
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`Internet via URLs included in e-mail and other types of messages. See id. at
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`19–20; Ex. 1010, 1:27–36, 3:1–5, 3:9–20, 5:1–53; Ex. 1003 ¶ 130. Higley
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`explains one advantage of using URLs over the Internet: “[T]he received
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`document is not necessarily an actual copy of the information from the URL
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`but is the address of the location of the desired information,” which enables
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`content to be “updated so that the person looking up the URL will always
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`have access to the latest information.” Ex. 1010, 3:21–28. Petitioner points
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`out that using URLs on the Internet allows users to transfer multimedia.
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`Pet. 20 (citing Ex. 1010, 1:27–36; Ex. 1010 ¶ 130). Higley discloses that its
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`method provides for efficient transfer of information on the Internet using
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`URLs. Ex. 1010, 3:1–5. Petitioner’s declarant, Mr. Schmandt, testifies that
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`a person of ordinary skill would have been motivated to combine the
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`distribution of multimedia content over the Internet to Internet-connected
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`computers, as taught in Higley, with the BBS software of Major BBS, based
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`on the benefits Higley touts, including the efficient transfer and viewing of
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`the latest multimedia information. See Ex. 1003 ¶¶ 130–33.
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`Further, according to Mr. Schmandt, a person of ordinary skill would
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`have considered connecting the Major BBS Manual’s functionality to the
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`Internet would have been “no more than the arrangement of old elements
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`with each performing the same function it had been known to perform and
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`yielding no more than one would expect from such an arrangement, i.e., the
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`ability of Major BBS users to exchange information over the Internet.”
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`Id. ¶ 128. Mr. Schmandt also testifies that an ordinary artisan would have
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`been motivated to combine Higley with the Major BBS Manual to “reach the
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`large number of computer users who were connected to the Internet,”
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`consistent with references in the Major BBS Manual for “worldwide access”
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`and “universal access around the world.” Id. ¶ 129 (quoting Ex. 1012, 7).
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`Claim 1 recites “a respective authenticated user identity corresponding
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`respectively to each of a plurality of participator computers,” and “a
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`database which serves as a repository of tokens for other programs to
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`access.” Petitioner contends Major BBS teaches these limitations. Pet. 22–
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`23, 27–28 (citations omitted). The Major BBS Manual describes a “User
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`Account Database,” which includes, for example, the UserID, real name,
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`password, and other personal information for users of The Major BBS. Id.
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`at 28; Ex. 1012, 107–37, 381–82; Ex. 1003 ¶¶ 163–64, 167–68. The Major
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`BBS Manual discloses that each user has a User-ID and password, stored in
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`the User Account Database. Pet. 28; Ex. 1012, 4, 381–82. The User
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`Account Database also includes keyrings. Pet. 28 (citing Ex. 1012, 384; Ex.
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`1003 ¶ 167); Ex. 1012, 381–82 (showing user information for “Diane
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`Staten,” including “Current Class (Keyring)”).
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`After a user logs in (thereby accessing token information), Major BBS
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`provides access to services such as teleconferences and forums, including
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`through control of access by the keyrings. See Ex. 1012 at 301–02, 381–82.
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`A “token,” as construed above, is “a piece of information associated with
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`user identity.” Mr. Schmandt also testifies, inter alia, that Major BBS’s
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`discussion of users accessing user information teaches “other programs”
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`accessing the tokens. See Ex. 1003 ¶¶ 173–76.
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`According to Petitioner, “other programs” includes the Sysop
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`(systems operator) software of the controller computer, other software
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`utilized by users to access account information, Telnet, a communication
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`protocol, and other terminal emulation software employed with Telnet. See
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`Pet. 30–31 (citing Ex. 1003 ¶¶ 172–74, 176–77; Ex. 1012, 232, 369–70,
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`373–377); Ex. 1012, 4, 97–98, 121–22, 230, 369–77); Ex. 1003 ¶¶ 163–78.
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`Mr. Schmandt describes “many instances of telnet application programs on
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`various operating systems,” whereby Telnet and other terminal emulation
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`software allows any authorized user to connect to Major BBS. See Ex. 1003
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`¶ 176, ¶¶ 173–76. The Petitioner also refers to remote access by the Sysop.
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`Pet. 31 (citing Ex. 1012, 230; Ex. 1003 ¶ 177). As examples of participator
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`computers accessing database tokens, the Petition cites the Major BBS
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`Manual’s disclosure of various menus that allow users to access, search, and
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`edit their user account information and that of other users. Id. at 30–31
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`(citing Ex. 2012, 232, 369–70, 373–77).
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`Claim 1 recites “distributing a communication over an Internet
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`network,” and “the communication including at least one of a pre-stored
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`sound, video, graphic, and multimedia.” In addition, claim 1 recites a
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`“pointer-triggered private message” sent from a first to a second participator
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`computer (via the controller computer), and that the second computer
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`“invokes said pointer-triggered private message to fetch and receive the
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`communication . . . in real time over the Internet network,” with the
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`communication being fetched and received from a computer other than
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`either of the two recited participator computers.
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`Thus, claim 1 recites a “communication”—which includes “at least
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`one of a pre-stored sound, video, graphic, and multimedia”—and a “pointer-
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`triggered private message,” which causes the “communication” to be fetched
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`and received by the computer that “invokes” the message. Further, the
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`“communication” is not fetched from either the participator computer that
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`sent the message or the participator computer that received the message, and
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`the “communication” (but not necessarily the private message) is received
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`“in real time over the Internet network.”
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`Petitioner identifies the teleconference feature of Major BBS as
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`teaching the sending of private messages from one user to another via the
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`BBS computer, including chat and whisper messages. See Pet. 34–35 (citing
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`Ex. 1003 ¶¶ 140–46, 184–86; Ex. 1012, 316). As Petitioner contends, Major
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`BBS describes a “WHISPER TO” command that sends “a private message
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`to just one other user,” and a “CHAT” command that “allows two users to
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`enter chat mode where they can converse directly with one another.”
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`Ex. 1012, 316, 318.
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`Addressing the “pointer-triggered” private message, Petitioner relies
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`on Higley for its discussion of messages including URLs. Id. at 34–36.
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`Specifically, Higley describes a “‘URL’ type” message that “is essentially a
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`pointer to another location or address on the Internet.” Ex. 1010, 5:27–30.
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`Upon receiving such a message, “the URL contained in the message would
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`automatically be looked up on the Internet and displayed.” Id. at 5:30–34.
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`Higley also describes an “‘HTML’ type” message containing a URL that a
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`user can “‘click’ . . . so that the information of the URL is looked up,
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`retrieved over the Internet or other network, and displayed by the receiver’s
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`multimedia browser.” Id. at 5:42–51.
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`The Petition identifies both Major BBS and Higley as teaching that
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`the recited “communication” includes “at least one of a pre-stored sound,
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`video, graphic, and multimedia.” Pet. 25–27. With respect to the Major
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`BBS Manual, Petitioner identifies teachings regarding file transfers, graphics
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`for a RIPaint program, and graphics menus. Id. at 25. Higley describes
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`content on the Internet available via URLs as “files or formatted data using
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`[HTML],” which “provides for a mingling of text, graphics, video, sound
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`and hypertext links.” Pet. 26–27 (citing Ex. 1010, 1:27–30; Ex. 1003
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`¶¶ 130–32).
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`Petitioner asserts that a person of ordinary skill would be motivated to
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`combine these teachings of Higley and the Major BBS Manual because
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`doing so would “release the client computers from the computational load of
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`providing the URL content” themselves. Pet. 35–36 (citing Ex. 1003 ¶ 189).
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`In addition, Petitioner asserts that multimedia “was a key aspect of web
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`pages and the Internet and was well known to one of ordinary skill.” Pet. 26
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`(citing Ex. 1003 ¶ 157; Ex. 1035, 2:44–47, 2:22–28).
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`Petitioner shows persuasively that the combination of Major BBS and
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`Higley would have rendered obvious the “communication” and “private
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`message” limitations of claim 1. Specifically, Petitioner persuasively shows
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`that the asserted art teaches sending a private message containing a URL via
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`a BBS (i.e., the controller computer), whereby the receiving user’s computer
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`invokes the URL to fetch multimedia content (i.e., the communication) from
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`another location via the Internet in real time (e.g., automatically).
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`Claim 1 recites that the participator computer receiving the pointer-
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`triggered private message “internally determines” whether it can present the
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`communication. If the computer determines it cannot present the
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`communication, it obtains “an agent with an ability to present the
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`communication.” Otherwise (i.e., if the computer determines it can present
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`the communicat
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