Trials@uspto.gov
`571-272-7822
`
`Paper No. 63
`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 IPR2016-011551
`Patent 8,694,657 B1
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`1 Case IPR2017-00622 has been joined with this proceeding.
`
`
`571-272-7822
`
`Paper No. 63
`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 IPR2016-011551
`Patent 8,694,657 B1
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`1 Case IPR2017-00622 has been joined with this proceeding.
`
`
`
`IPR2016-01155
`Patent 8,694,657 B1
`
`
`A. Background
`
`I. INTRODUCTION
`
`Microsoft Corporation filed a Petition (Paper 1, “Pet.”) to institute an
`
`inter partes review of claims 1, 2, 18, 27, 35, 43, 51, 65, 79, 93, 100, 108,
`
`114, 126, 138, 150, 156, 168, 170, 172, 176, 178, 180, 182–90, 202, 208,
`
`214, 220, 226, 238, 250, 262, 268, 274, 280, 292, 304, 316, 322, 328, 334,
`
`336, 340, 342, 344, 346, 348, 350, 352–54, 362, 366, 370, 374, 378, 386,
`
`394, 402, 406, 410, 414, 422, 430, 438, 442, 450, 452, 454, 456, 458, 460,
`
`462, 464–66, 476, 481, 486, 491, 496, 505, 515, 525, 530, 535, 545, 555,
`
`565, 570, 580, 582, 584, 586, 588, 590, 592, 594, 596–98, 606, 607, 615–17,
`
`619, 621, 622, 624–26, 628, 630, 632–34, 636, 638, 640–42, 644, 646, and
`
`648–71 of U.S. Patent No. 8,694,657 B1 (Ex. 1001, “the ’657 patent”).
`
`Windy City Innovations LLC (“Patent Owner”) filed a Preliminary
`
`Response (Paper 9, “Prelim. Resp.”).
`
`Pursuant to 35 U.S.C. § 314, in our Institution Decision (Paper 12,
`
`“Dec.”), we instituted this proceeding as to each of these challenged claims.
`
`Patent Owner filed a Patent Owner’s Response (Paper 27, “PO
`
`Resp.”), and Petitioner filed a Reply to the Patent Owner’s Response
`
`(Paper 44, “Reply”).
`
`Between the PO Response and the Reply, Facebook, Inc.
`
`(“Petitioner”) filed a Petition (IPR2017-00622, Paper 2, “Joinder Pet.”) for
`
`inter partes review of claims 189 and 465 of the ’657 patent in IPR2017-
`
`00622 along with a Motion for Joinder with this proceeding (IPR2017-0622,
`
`Paper 3). Before we ruled on the Motion for Joinder, Microsoft and Patent
`
`Owner settled and moved to terminate this proceeding. Paper 29. We
`
`granted the Motion to Terminate as to Microsoft, but not as to Patent Owner.
`
`2
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`
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`IPR2016-01155
`Patent 8,694,657 B1
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`Paper 31. Subsequently, we instituted an inter partes review of claims 189
`
`and 465 in IPR2017-0622, granted Petitioner’s motion for joinder, and
`
`dismissed all challenged claims except for 189 and 465. Paper 32 (“Joinder
`
`Dec.”). We then denied the Motion to Terminate as to Patent Owner.
`
`Paper 33. We also denied a Request for Rehearing of our decision denying
`
`the Motion to Terminate. Paper 53.
`
`Petitioner relies on the Declarations of Christopher M. Schmandt
`
`(Ex. 1003, “Schmandt Decl.”; Ex. 1100, “Schmandt Reply Decl.”). Patent
`
`Owner relies on the Declaration of Jaime G. Carbonell, Ph.D. (Ex. 2006,
`
`“Carbonell Decl.”).
`
`An oral argument was held on October 19, 2017 (Paper 62, “Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a final
`
`written decision under 35 U.S.C. § 318(a) as to the patentability of claims
`
`189 and 465. Based on the record before us, Petitioner has proved, by a
`
`preponderance of the evidence, that claims 189 and 465 of the ’657 patent
`
`are unpatentable.
`
`
`
`B. Related Matters
`
`The parties indicate that the ’657 patent has been asserted in Windy
`
`City Innovations, LLC v. Microsoft Corp., Civ. A. No. 15-cv-00103-GM
`
`(W.D.N.C.) (transferred to 16-cv-1729 (N.D. Cal.)), and Windy City
`
`Innovations, LLC v. Facebook, Inc., Civ. A. No. 15-cv-00102-GM
`
`(W.D.N.C.) (transferred to 16-cv-1730 (N.D. Cal.)). Pet. 3; Paper 7, 1. The
`
`’657 patent also is the subject of an inter partes review petition in IPR2016-
`
`01159. Pet. 3; Paper 7, 1. Related U.S. Patent Nos. 8,458,245, 8,407,356,
`
`and 8,473,552 are subject to additional inter partes reviews. Pet. 3.
`
`3
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`
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`IPR2016-01155
`Patent 8,694,657 B1
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`
`C. Asserted Prior Art References
`
`Petitioner relies on the following prior art:
`
`U.S. Patent No. 5,941,947, issued Aug. 24, 1999, filed Aug. 18, 1995
`
`(Ex. 1012, “Brown”); and
`
`Donath & Robertson, The Sociable Web (Ex. 1019, “Sociable Web”).2
`
`
`
`
`
`D. The Instituted Ground
`
`We instituted a trial on the ground of unpatentability of claims 189
`
`and 465 as obvious, under 35 U.S.C. § 103(a), over Brown and Sociable
`
`Web. Dec. 36–37; Joinder Dec. 17–18.
`
`
`
`E. The ’657 Patent
`
`The ’657 patent describes an Internet “chat room.” According to the
`
`’657 patent, it was known to link computers together to form chat rooms in
`
`which users communicated by text, graphics, and multimedia, giving the
`
`example of “America On Line.” Ex. 1001, 1:33–37. The ’657 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 because “[t]he 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
`
`
`2 Petitioner also submitted Exhibit 1030, which Petitioner contends is a
`version of Sociable Web archived by the Internet Archive at
`https://web.archive.org/web/19980111061831/http:/judith.www.media.mit.
`edu/SocialWeb/SociableWeb.html. Pet. 18.
`
`4
`
`
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`IPR2016-01155
`Patent 8,694,657 B1
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`the platform that would be encountered on the Internet.” Id. at 1:38–44,
`
`1:50–52.
`
`Figure 1, reproduced below, illustrates an embodiment of the
`
`invention:
`
`
`
`Figure 1 is a block diagram showing the components and data flow of a
`
`computerized human communication arbitrating and distributing system.
`
`Id. at 4:36–40. The system includes controller computer 3 in
`
`communication with several participator computers 5 (e.g., IBM-compatible
`
`personal computers) over connection 13 (e.g., an Internet connection or a
`
`World Wide Web connection). Id. at 4:41–60.
`
`5
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`
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`IPR2016-01155
`Patent 8,694,657 B1
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`Controller computer 3 runs under the control of controller software 2,
`
`and the software arbitrates, in accordance with predefined rules (including
`
`user identities), which participator computers 5 can interact in a group
`
`through the controller computer, and directs real-time data to the members
`
`of the group. Id. at 4:61–67. The software uses “identity tokens,” or pieces
`
`of information associated with user identity, in the arbitration. Id. at 7:49–
`
`52. The tokens are stored in a memory in a control computer database along
`
`with personal information about the users. Id. at 7:52–57.
`
`The arbitration can be used to control a user’s ability to join or leave a
`
`group of participator computers, to moderate communications involving the
`
`group, and to see other users in the group. Id. at 7:62–8:6. Arbitration using
`
`tokens also can be used to perform censorship:
`
`Censorship, which broadly encompasses control of what
`is said in a group, is also arbitrated by means of the tokens.
`Censorship can control of access [sic] to system 1 by identity of
`the user, which is associated with the user’s tokens. By checking
`the tokens, a user’s access can be controlled per group, as well
`as in giving group priority, moderation privileges, etc.
`
`Censorship also can use the tokens for real time control of
`data (ascii, text, video, audio) from and to users, as well as
`control over multimedia URLs—quantity, type, and subject.
`
`Id. at 8:11–19.
`
`According to the specification, “[t]he present invention comprehends
`
`communicating all electrically communicable multimedia information as
`
`Message 8, by such means as pointers, for example, URLs. URLs can point
`
`to pre-stored audio and video communications, which the Controller
`
`Computer 3 can fetch and communicate to the Participator Computers 5.”
`
`Id. at 5:11–16.
`
`6
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`
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`IPR2016-01155
`Patent 8,694,657 B1
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`
`Claims 189 and 465, reproduced below, are the only claims
`
`challenged in this proceeding:
`
`189. A method of communicating via an Internet
`network by using a 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 a plurality of participator computers which are otherwise
`independent of each other, the method including:
`
`affording some of the information to a first of the
`participator computers via the Internet network,
`responsive to an authenticated first user identity;
`
`affording some of the information to a second of the
`participator computers via the Internet network,
`responsive to an authenticated second user identity;
`and
`
`determining whether the first user identity and the second
`user identity are able to form a group to send and to
`receive real-time communications; and
`
`determining whether the first user identity is individually
`censored from sending data in the communications,
`the data presenting at least one of a pointer, video,
`audio, a graphic, and multimedia by determining
`whether a respective at least one parameter
`corresponding to the first user identity has been
`determined by an other of the user identities; and
`
`if the user identities are able to form the group, forming
`the
`group
`and
`facilitating
`sending
`the
`communications that are not censored from the first
`participator computer to the second participator
`computer, wherein the sending is in real time and
`via the Internet network, and wherein, for the
`communications which are received and which
`present an Internet URL, facilitating handling the
`Internet URL via the computer system so as to find
`content specified by
`the Internet URL and
`
`7
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`IPR2016-01155
`Patent 8,694,657 B1
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`presenting the content at an output device of the
`second participator computer, and
`
`if the first user identity is censored from the sending of the
`data, not allowing sending the data that is censored
`from the first participator computer to the second
`participator computer.
`
`465. An Internet network communications system, the
`system including:
`
`a 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 a plurality of participator
`computers which are otherwise independent of each
`other, the computer system in communication with
`a first of the participator computers responsive to a
`first authenticated user identity and with a second of
`the participator computers responsive to a second
`authenticated user identity, wherein the computer
`system
`
`determines whether the first user identity and the second
`of the user identity are able to form a group to send
`and to receive real-time communications; and
`
`determines whether the first user identity, is individually
`censored from sending data in the communications,
`the data presenting at least one of a pointer, video,
`audio, a graphic, and multimedia by determining
`whether a respective at least one parameter
`corresponding to the first user identity has been
`determined by an other of the user identities; and
`
`if the user identities are determined to be able to form the
`group, forms the group and facilitates sending the
`communications that are not censored from the first
`participator computer to the second participator
`computer, wherein the sending is in real time and
`via the Internet network, and wherein the computer
`system facilitates, for the communications which
`
`8
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`IPR2016-01155
`Patent 8,694,657 B1
`
`
`are received and which present an Internet URL,
`handling the Internet URL via the computer system
`so as to find content specified by the Internet URL
`and facilitates presenting the content at an output
`device of the second participator computer; and
`
`if the first user identity is censored from sending the data,
`does not facilitate sending the data that is censored
`from the first participator computer to the second
`participator computer.
`
`
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`We interpret claims of 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). Nevertheless, the ’657 patent is expired.
`
`“[T]he Board’s review of the claims of an expired patent is similar to that of
`
`a district court’s review.” In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir.
`
`2012) (internal citations omitted). District courts construe claims in
`
`accordance with their ordinary and customary meanings, as would be
`
`understood by a person of ordinary skill in the art, in the context of the
`
`specification. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
`
`(en banc).
`
`
`
`9
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`IPR2016-01155
`Patent 8,694,657 B1
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`1. Constructions in the Institution Decision
`
`In the Institution Decision, we preliminarily construed the following
`
`terms (Dec. 8–15; Joinder Dec. 10):
`
`Claim Term
`
`Preliminary Construction
`
`“token”
`
`“piece of information associated with user
`identity”
`
`“censor”
`
`“control what is said in a group”
`
`“the first user identity
`is individually
`censored from sending
`data in the
`communications”3
`
`refers to control of data sent by the first user
`identity, individually, and is not limited to data
`suppressed based on the content of those data or
`by a moderator
`
`“pointer”
`
`“a link or reference to a file, data, or service”
`
`“a pointer-triggered
`message on demand”4
`
`“a message, where the content of the message is
`specified by a pointer and found on demand of
`the operator of the participator software”
`
`
`
`Patent Owner adopts our construction of “token” (which Petitioner
`
`initially proposed), PO Resp. 11, and challenges our construction of
`
`“censor,” id. at 15–16. Petitioner accepts our construction of “censor” and
`
`presents arguments in favor of that construction. Reply 5–6. We maintain
`
`
`3 The Institution Decision (at 12–16) construed the term “the first user
`identity is individually censored from receiving data in the
`communications,” recited in claim 1, no longer challenged. The Joinder
`Decision (at 10) construed the similar term “the first user identity is
`individually censored from sending data in the communications,” recited in
`claim 189.
`
`4 Neither of the currently challenged claims recites “a pointer-triggered
`message on demand.”
`
`10
`
`
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`IPR2016-01155
`Patent 8,694,657 B1
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`our construction of “token” on the complete record. We address the
`
`construction of “censor,” below, as well as the construction of the related
`
`term “the first user identity is individually censored from sending data in the
`
`communications.” Neither party challenges our construction of “pointer”
`
`and we maintain that construction on the complete record. 5 Patent Owner
`
`also proposes construing “database.” PO Resp. 11–15. We agree with
`
`Petitioner (Reply 1–2), however, that Patent Owner does not argue that the
`
`construction of “database” affects any disputed issue in this proceeding.
`
`Thus, it is not necessary to expressly construe “database” to resolve the
`
`parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`
`795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`
`controversy, and only to the extent necessary to resolve the controversy.”).
`
`
`
`2. “censor” / “the first user identity is individually censored
`from sending data in the communications”
`
`Claim 189 recites “determining whether the first user identity is
`
`individually censored from sending data in the communications.” Claim 465
`
`includes a similar recitation. As noted above, we preliminarily construed
`
`“censor” to mean “control what is said in a group” and explained that “the
`
`first user identity is individually censored from receiving data in the
`
`communications” refers to control of data received by the first user identity,
`
`individually, and is not limited to data suppressed based on the content of
`
`those data or by a moderator. Dec. 14–15. In the Joinder Decision (at 10),
`
`
`5 Although this decision analyzes the claims under the Phillips standard, in
`related proceedings, we reach substantially the same constructions of these
`claim terms under the broadest reasonable interpretation.
`
`11
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`IPR2016-01155
`Patent 8,694,657 B1
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`we made clear that, for the same reasons as given in the Institution Decision
`
`for claim 1, “the first user identity is individually censored from sending
`
`data in the communications,” as recited in claim 189, refers to control of
`
`data sent by the first user identity, individually, and is not limited to data
`
`suppressed based on the content of those data or by a moderator.
`
`We based our construction on the description of that term in the
`
`specification. Id. at 13–14. Specifically, the specification describes
`
`censorship as follows:
`
`Censorship, which broadly encompasses control of what
`is said in a group, is also arbitrated by means of the tokens.
`Censorship can control of access to system 1 by identity of the
`user, which is associated with the user’s tokens. By checking the
`tokens, a user’s access can be controlled per group, as well as in
`giving group priority, moderation privileges, etc.
`
`Censorship also can use the tokens for real time control of
`data (ascii, text, video, audio) from and to users, as well as
`control over multimedia URLs—quantity, type, and subject.
`
`Ex. 1001, 8:10–19 (emphasis added). Here, the specification describes
`
`“censorship” as “broadly encompass[ing] control of what is said in a group”
`
`and includes an example in which an action is taken on a user, rather than
`
`the data itself.
`
`Patent Owner “proposes that censorship be construed as ‘examine in
`
`order to suppress or delete anything considered objectionable.’” PO Resp.
`
`16. According to Patent Owner, “[i]n order to control what is said in a
`
`group, it is necessary to first know what is said (or proposed to be said).”
`
`Id. at 15. Patent Owner argues that this is consistent with the meaning given
`
`to “censor” and “censorship” in dictionaries, including “to examine in order
`
`to suppress or delete anything considered objectionable” (Webster’s
`
`12
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`IPR2016-01155
`Patent 8,694,657 B1
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`Collegiate Dictionary (Ex. 2002)) and “[t]he action of preventing material
`
`that a party considers objectionable from circulating within a system of
`
`communication over which that party has some power” (Microsoft Press
`
`Computer Dictionary (Ex. 2003)).
`
`We are not persuaded by Patent Owner’s arguments, which essentially
`
`track those presented in the Preliminary Response (at 7–9). The claim
`
`language itself does not support a construction of “censor” limited to
`
`analysis of the content of data and suppression based on that content. Claim
`
`189 recites “determining whether the first user identity is individually
`
`censored from sending data in the communications.” The claim language
`
`focuses on censoring a user identity and does not specify that such censoring
`
`is based on the content of the data. As explained above, the specification
`
`describes censorship as an action taken on a user, rather than the data itself.
`
`As explained in the Institution Decision (at 14), extrinsic evidence such as
`
`dictionary definitions “may be used only to help the court come to the proper
`
`understanding of the claims; it may not be used to vary or contradict the
`
`claim language.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584
`
`(Fed. Cir. 1996); accord Phillips v. AWH Corp., 415 F.3d 1303, 1317
`
`(Fed. Cir. 2005) (en banc) (“[W]hile extrinsic evidence can shed useful light
`
`on the relevant art, we have explained that it is less significant than the
`
`intrinsic record in determining the legally operative meaning of claim
`
`language.” (internal citations and quotation marks omitted)).
`
`On the complete record, in accordance with the specification’s
`
`definition, “censor” means “control what is said in a group.” In the context
`
`of claim 189, for example, “determining whether the first user identity is
`
`individually censored from sending data in the communications” refers to
`
`13
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`IPR2016-01155
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`control of data received by first user identity, individually, and is not limited
`
`to data suppressed based on the content of those data or by a moderator. We
`
`apply the same definition of “censor” in interpreting similar language in
`
`claim 465.
`
`
`
`B. Asserted Grounds of Unpatentability
`
`A claim is unpatentable under 35 U.S.C. § 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.” We resolve the question of obviousness on the basis of
`
`underlying factual determinations, including: (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.6 See Graham v. John Deere
`
`Co., 383 U.S. 1, 17–18 (1966).
`
`In an obviousness analysis, some reason must be shown as to why a
`
`person of ordinary skill would have combined or modified the prior art to
`
`achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512
`
`F.3d 1363, 1374 (Fed. Cir. 2008). A reason to combine or modify the prior
`
`art may be found explicitly or implicitly in market forces; design incentives;
`
`the “interrelated teachings of multiple patents”; “any need or problem
`
`known in the field of endeavor at the time of invention and addressed by the
`
`
`6 The record does not include arguments or evidence regarding objective
`indicia of nonobviousness.
`
`14
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`IPR2016-01155
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`patent”; and the background knowledge, creativity, and common sense of
`
`the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587
`
`F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc.,
`
`550 U.S. 398, 418–21 (2007)).
`
`
`
`1. Level of Ordinary Skill
`
`Relying on Mr. Schmandt’s testimony, Petitioner contends that a
`
`person of ordinary skill in the art “would have been a person with a Bachelor
`
`of Science degree in Computer Science, or equivalent, with at least two
`
`years’ experience designing and programming distributed multimedia
`
`computer systems, including experience with teleconferencing and on-line
`
`chat systems, such as on-line bulletin boards.” Pet. 5 (citing Ex. 1003
`
`¶ 140); Joinder Pet. 6. Patent Owner does not contest this statement in its
`
`Response. On the complete record, we adopt Petitioner’s statement of the
`
`level of ordinary skill.
`
`
`
`2. Scope and Content of the Prior Art
`
`Petitioner contends that claims 189 and 465 would have been obvious
`
`over Brown, alone or in combination with Sociable Web. Specifically,
`
`Petitioner cites Sociable Web for teachings of “via an Internet network”
`
`(Pet. 19–20; Joinder Pet. 19–20), “a pointer” (Pet. 28–29; Joinder Pet. 30–
`
`31), and “an Internet URL” (Pet. 31; Joinder Pet. 33–34) to the extent we
`
`find that those claim limitations are not taught in Brown.
`
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`IPR2016-01155
`Patent 8,694,657 B1
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`a. Overview of Brown
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`Brown describes a system and method for controlling user access to
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`content objects, such as bulletin board systems (“BBS”) and chat
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`conferences, in a computer network. Ex. 1012, 2:20–39. User access rights
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`are stored in a database, which is implemented as a relational database on
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`one or more security servers connected to application servers by a local area
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`network (“LAN”). Id. at 2:59–66. Access rights data are stored in
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`association with multiple “tokens,” which identify categories or groupings of
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`content objects. Id. at 2:66–3:7. Service applications running on application
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`servers query the access rights database to obtain access rights lists of
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`specific users. Id. at 3:26–29. A user’s access rights can be categorized in
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`the form of a privilege level (e.g., “viewer,” “user,” “host,” “sysop,” and
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`“supersysop”), which translate into specific sets of access capabilities by the
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`service applications. Id. at 3:46–62.
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`Figure 1, reproduced below, illustrates an example:
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`IPR2016-01155
`Patent 8,694,657 B1
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`Figure 1 is a block diagram of the general architecture of an on-line services
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`network. Id. at 5:26–28, 6:62–63. On-line services network 100 includes
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`IPR2016-01155
`Patent 8,694,657 B1
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`multiple client computers 102 connected to host data center 104 by wide
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`area network (“WAN”) 106 provided by one or more telecommunications
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`providers. Id. at 6:62–7:1. WAN lines 108 of WAN network 106 can
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`include Transmission Control Protocol/Internet Protocol (“TCP/IP”) lines.
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`Id. at 7:4–6. Host data center 104 includes application servers 120 arranged
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`into service groups corresponding to on-line services (e.g., CHAT group 130
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`and BBS group 132) and connected over LAN 122. Id. at 7:9–11, 7:18–24.
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`Multiple security servers 150, each maintaining relational database 152, are
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`connected to LAN 122. Id. at 7:48–53.
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`Relational database 152 is organized as a set of two or more
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`interrelated tables that contain the access rights data for all users of on-line
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`services network 100. Id. at 7:53–56. Tokens also can correspond to
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`content categories, or groups. Id. at 20:1–3. In one example, “[t]he content
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`category ‘Family and Friends for Brown Family’ may similarly be formed to
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`allow private correspondence between a small group of subscribers (e.g.,
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`Brown family members plus designated friends), and may contain, for
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`example, Chat and BBS objects which have been designated for this
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`purpose.” Id. at 20:19–24, 7:53–56. Brown describes the following
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`example of assigning such access rights:
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`To provide a specific example, suppose that a system
`administrator wants to create a Chat room to allow members of
`a certain organization to carry on an interactive conversation. To
`create such a Chat room, the system administrator initially
`creates a Chat room node, specifying a unique security token for
`the Chat room. The system administrator then updates the group-
`member table 602 so as to create a new group that consists of the
`accounts of the members of the organization. (If the group is
`small, the system administrator may forego creating a new user
`group, and may alternatively generate one user-specific row in
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`IPR2016-01155
`Patent 8,694,657 B1
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`the
`table 606 for each member of
`the account-token
`organization.) Finally, the system administrator adds a row to
`the group-token table 604, specifying (1) the group ID of the
`newly-created user group, (2) the security token of the Chat
`room, and (3) an appropriate access rights value.
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`Id. at 31:5–21.
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`Brown describes its chat service as “an interactive communications
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`service which allows users to have real time conversations with other users
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`on specific topics. Chat conversations or ‘conferences’ are organized as
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`‘Chat rooms’ which may be entered or exited by end users to join or leave
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`the corresponding conferences.” Id. at 9:45–50. According to Brown,
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`“[p]articipants in a Chat conference can type in textual messages which will
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`be displayed on the monitors of other participants. Voice and/or video
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`capabilities may additionally be provided.” Id. at 9:52–55.
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`When a user navigates to a chat room, the Chat service calls an
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`application program interface to determine the rights of the user with respect
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`to the Chat room. Id. at 15:66–16:4. Chat servers 120 can generate such
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`calls as a user moves from Chat object to Chat object within the Chat
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`service. Id. at 27:28–30. The general privilege levels of the access rights
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`are transformed into specific access capabilities for the on-line service.
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`Id. at 17:25–28. “For example, the Chat service may give moderator-type
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`access capabilities to users that have the privilege level of ‘host.’” Id. at
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`17:28–30; see also id. at 17:57–60.
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`IPR2016-01155
`Patent 8,694,657 B1
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`b. Sociable Web
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`(1) Prior art status of Sociable Web
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`Sociable Web is a paper, archived by the Internet Archive, that
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`Petitioner argues was presented to conference goers along with a live
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`presentation at The Second International WWW Conference ’94 in Chicago
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`in late October 1994. Pet. 18. Petitioner contends that Exhibit 1030 is the
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`Internet Archive version of Sociable Web. Id. In support of the assertion
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`that Sociable Web was presented at the 1994 conference in Chicago,
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`Petitioner cites to conference proceedings referring to the title of the paper
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`and presenters (Ex. 1021, ix)7, and a declaration of one of the authors, Judith
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`Donath (Ex. 1031). Dr. Donath testifies that she presented the paper
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`(Ex. 1019) at the 1994 conference and made the paper available on the
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`conference’s website by the time of the conference. Ex. 1031 ¶ 7.
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`Dr. Donath also testifies that the paper was available on her MIT web page
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`at that time. Id. ¶ 9.
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`Patent Owner argues that Petitioner has not shown that Sociable Web
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`is prior art. Specifically, Patent Owner argues that Sociable Web “is a web
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`resource which, on its face, lists a date from the Web Archive in 1998––well
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`after the priority date of the ’657 Patent.” PO Resp. 8. Patent Owner further
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`argues that Dr. Donath does not have copies or backups of Sociable Web
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`bearing a date prior to 1998. Id. According to Patent Owner, Dr. Donath
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`testified in deposition that there was a time when the images on her web
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`page were not working. Id. (citing Ex. 2009, 14:22–15:2). Patent Owner
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`7 Petitioner cites to Exhibit 1015, which is not in the record. This appears to
`be a typographical error, and we assume that Petitioner intended to cite to
`Exhibit 1021, which is the document to which Petitioner refers.
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`also asserts that Dr. Donath was paid by Microsoft and, accordingly, we
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`should give little to no weight to her testimony. Id. at 9 (citing Ex. 2009,
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`10:19–21, 11:3–8).
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`According to the Federal Circuit, “[b]ecause there are many ways in
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`which a reference may be disseminated to the interested public, ‘public
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`accessibility’ has been called the touchstone in determining whether a
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`reference constitutes a ‘printed publication’” under Section 102. Kyocera
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`Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)
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`(quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is
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`publicly accessible “upon a satisfactory showing that such document has
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`been disseminated or otherwise made available to the extent that persons
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`interested and ordinarily skilled in the subject matter or art exercising
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`reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc.,
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`511 F.3d 1186, 1194 (Fed. Cir. 2008). We assess public accessibility on a
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`case-by-case basis. See Kyocera, 545 F.3d at 1350.
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`In instances of references cataloged in libraries, for example,
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`“competent evidence of the general library practice may be relied upon to
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`establish an approximate time when a thesis became accessible.” In re Hall,
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`781 F.2d at 899. On the other hand, “a printed publication need not be
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`easily searchable after publication if it was sufficiently disseminated at the
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`time of its publication.” Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358,
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`1365 (Fed. Cir. 2014). In Suffolk, the Federal Circuit concluded that a
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`posting to an internet newsgroup was sufficiently disseminated to those of
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`ordinary skill in the art to be considered publicly accessible, after noting that
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`the posting “elicited at least six responses over the week following its
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`publication” and that “[m]any more people may have viewed the post
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`IPR2016-01155
`Patent
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