Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 52
`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 IPR2016-011591
`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 No. IPR2017-00659 has been joined with this proceeding.
`
`

`

`IPR2016-01159
`Patent 8,694,657 B1
`
`
`A. Background
`
`I. INTRODUCTION
`
`Facebook, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to
`
`institute an inter partes review of claims 189, 334, 342, 348, 465, 580, 584,
`
`and 592 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 6, “Prelim. Resp.”).
`
`Pursuant to 35 U.S.C. § 314, in our Institution Decision (Paper 7,
`
`“Dec.”), we instituted this proceeding as to claims 189, 334, 342, 348, 465,
`
`580, 584, and 592.
`
`Patent Owner filed a Patent Owner’s Response (Paper 22, “PO
`
`Resp.”), and Petitioner filed a Reply to the Patent Owner’s Response
`
`(Paper 31, “Reply”).
`
`Petitioner relies on the Declarations of Tal Lavian, Ph.D. (Ex. 1002,
`
`“Lavian Decl.”; Ex. 1021, “2nd Lavian Decl.”). Patent Owner relies on the
`
`Declaration of Jaime G. Carbonell, Ph.D. (Ex. 2005, “Carbonell Decl.”).
`
`On January 12, 2017, Petitioner filed a petition seeking inter partes
`
`review of claims 203, 209, 215, 221, 477, 482, 487, and 492 of the ’657
`
`patent and sought to join that proceeding to this proceeding. IPR2017-
`
`00659, Paper 2 (“the ’659 Pet.”), Paper 3 (Mot. for Joinder). We instituted a
`
`trial in that proceeding for all challenged claims and joined it to this
`
`proceeding. Paper 34 (the “’659 Dec.”). Petitioner relies on the Declaration
`
`of Dr. Lavian in the ’659 proceeding (IPR2017-00659, Ex. 1002 (“Lavian
`
`’659 Decl.”)).
`
`As to the additional claims challenged in the ’659 Petition, Patent
`
`Owner filed a Supplemental Patent Owner’s Response (Paper 45, “Supp. PO
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`IPR2016-01159
`Patent 8,694,657 B1
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`Resp.”) and Petitioner filed a Supplemental Reply (Paper 46, “Supp.
`
`Reply”).
`
`An oral argument was held on October 19, 2017 (Paper 51, “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, 203, 209, 215, 221, 334, 342, 348, 465, 477, 482, 487, 492, 580, 584,
`
`and 592. Based on the record before us, Petitioner has proved, by a
`
`preponderance of the evidence, that claims 189, 334, 342, 348, 465, 477,
`
`482, 487, 492, 580, 584, and 592 are unpatentable, but has not proved that
`
`claims 203, 209, 215, and 221 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. 1; Paper 4, 1. The
`
`’657 patent is the subject of an inter partes review petition in IPR2016-
`
`01155. Paper 4, 1. IPR2017-00622, also challenging the ’657 patent, has
`
`been joined to IPR2016-01155. The ’657 patent also was the subject of
`
`IPR2017-00606 and IPR2017-00656, which Microsoft Corp. filed and
`
`sought to join with IPR2016-01155 and this proceeding, respectively, prior
`
`to settling with Patent Owner. Patents related to the ’657 patent are subjects
`
`of additional inter partes review petitions.
`
`
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`IPR2016-01159
`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. 6,608,636 B1, issued Aug. 19, 2003, filed May 13,
`
`1992 (Ex. 1003, “Roseman”);
`
`Published European Pat. App. No. 0 621 532 A1, published Oct. 26,
`
`1994 (Ex. 1004, “Rissanen”);
`
`Ronald J. Vetter, Videoconferencing on the Internet, IEEE COMPUTER
`
`SOCIETY 77–79 (Jan. 1995) (Ex. 1005, “Vetter”);
`
`MARY ANN PIKE ET AL., USING MOSAIC (1994) (Ex. 1006, “Pike”);
`
`and
`
`TOM LICHTY, THE OFFICIAL AMERICA ONLINE FOR MACINTOSH
`
`MEMBERSHIP KIT & TOUR GUIDE (2nd ed. 1994) (Ex. 1007,
`
`“Lichty”).
`
`
`
`
`
`D. The Instituted Ground
`
`We instituted a trial on the ground of unpatentability of claims 189,
`
`203, 209, 215, 221, 334, 342, 348, 465, 477, 482, 487, 492, 580, 584, and
`
`592 as obvious, under 35 U.S.C. § 103(a), over Roseman, Rissanen, Vetter,
`
`Pike, and Lichty. Dec. 36; ’659 Dec. 15.
`
`
`
`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
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`IPR2016-01159
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`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
`
`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.
`
`
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`5
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`IPR2016-01159
`Patent 8,694,657 B1
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`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.
`
`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
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`Patent 8,694,657 B1
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`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.
`
`Claims 189 and 465, reproduced below, are the only independent
`
`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
`
`7
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`IPR2016-01159
`Patent 8,694,657 B1
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`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
`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
`
`8
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`IPR2016-01159
`Patent 8,694,657 B1
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`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
`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) (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).
`
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`1. Constructions in the Institution Decision
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`In the Institution Decision, we preliminarily construed the following
`
`terms (Dec. 7–13):
`
`Claim Term
`
`Preliminary Construction
`
`“token”
`
`“database”
`
`“censor”
`
`“piece of information associated with user
`identity”
`
`“a collection of logically related data”
`
`“control what is said in a group”
`
`“the first user identity
`is individually
`censored from sending
`data”
`
`refers to control of data sent by the at least one
`of the user identities, individually, and is not
`limited to data suppressed based on the content
`of those data or by a moderator
`
`
`
`Patent Owner adopts our construction of “token” (which Petitioner
`
`initially proposed) PO Resp. 7–8, and challenges our construction of
`
`“database,” id. at 8–12. Petitioner accepts our construction of “database”
`
`and presents arguments in favor of it. Reply 3–7. The parties do not address
`
`further our constructions of “censor” and “the first user identity is
`
`individually censored from sending data.” We maintain our constructions of
`
`“token,” “censor,” and “the first user identity is individually censored from
`
`sending data” on the complete record. We address the construction of
`
`“database,” below.2
`
`
`
`
`2 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.
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`2. “database”
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`In the Petition, relying on Dr. Lavian’s testimony, Petitioner argues
`
`that “[a] person of ordinary skill in the art would have understood the
`
`claimed ‘database’ to simply refer to a stored collection of tokens. The ’657
`
`patent does not require that the database be any particular type, such as
`
`relational.” Pet. 18 (citing Ex. 1002 ¶ 50). Dr. Lavian, in turn, relies on the
`
`specification’s description of tokens being “stored in memory in a control
`
`computer database, along with personal information about the user, such as
`
`the user’s age.” Ex. 1002 ¶ 50 (citing Ex. 1001, 7:52–54).
`
`Patent Owner urges a construction that is narrower in two regards:
`
`(1) Patent Owner contends that a database is a collection of logically-related
`
`data “which is stored with persistence”; and (2) Patent Owner contends that
`
`a database includes “associated tools for interacting with the data such as a
`
`DBMS.” PO Resp. 12.
`
`Patent Owner’s primary argument in favor of construing “database” to
`
`require these limitations is that it filed, in a related application before the
`
`Patent Office, an information disclosure statement (IDS) that supports its
`
`construction. Id. at 9–10 (citing Ex. 2008). The IDS was submitted to the
`
`Patent Office in pending application 14/246,965 on January 1, 2017, after
`
`Petitioner filed the Petition and shortly after we instituted this proceeding
`
`and preliminarily rejected Patent Owner’s claim construction arguments. In
`
`the IDS, Patent Owner argued, inter alia, that “attention is respectfully
`
`drawn to the defendants’ contentions3 of invalidity in view of the database
`
`
`3 This appears to be a reference to invalidity contentions filed in a related
`district court proceeding.
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`and ‘other programs’ limitations that are common to all claims” and that
`
`“[b]ecause the database affords information to other programs and
`
`computers, it must store the data, such as the tokens, with persistence, such
`
`that tools can interact with the data such as a DBMS when providing the
`
`data to the participator computers of the authenticated users.” Ex. 2008, 2.
`
`Patent Owner argues that we must accept its construction pursuant to
`
`Verizon Services Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1306
`
`(Fed. Cir. 2007), which held that, in some circumstances, a statement made
`
`by a patentee in the prosecution history of a related application can operate
`
`as a disclaimer, even if the disclaimer occurred after the patent-in-suit had
`
`issued. PO Resp. 9–10.
`
`Although we doubt that the Federal Circuit intended that an IDS in a
`
`related application should be a vehicle for overturning a disadvantageous
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`claim construction in an adversarial proceeding,4 we need not reach that
`
`issue. As the Federal Circuit also held, “[t]o operate as a disclaimer, the
`
`statement in the prosecution history must be clear and unambiguous, and
`
`constitute a clear disavowal of claim scope.” Verizon, 503 F.3d at 1306.
`
`That is not the case here. The statements in Patent Owner’s IDS are not in
`
`response to any rejection by the Examiner, do not accompany any
`
`amendments, and are not directed to any particular claims, other than a
`
`general statement that the statements apply to “all claims.”5 Ex. 2008, 2.
`
`Although Patent Owner argues that the IDS “supports the construction
`
`that a database is limited” in the manner that it argues, Patent Owner does
`
`
`4 See Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1270 (Fed.
`Cir. 1986) (“A citation may be made at ‘any time’ either during prosecution
`or, as here, after the patent has issued. If made during prosecution, it is clear
`that the statements may be considered for claim interpretation purposes, just
`as any other document submitted during prosecution. If submitted after
`issuance, the answer, again, is it may be considered. To say that it may be
`considered is not to say what weight statements in the Citation are to be
`accorded. For example, a Citation filed during litigation might very well
`contain merely self-serving statements which likely would be accorded no
`more weight than testimony of an interested witness or argument of counsel.
`Issues of evidentiary weight are resolved on the circumstances of each
`case.”); Phillips, 415 F.3d at 1317 (“Like the specification, the prosecution
`history provides evidence of how the PTO and the inventor understood the
`patent. . . . Yet because the prosecution history represents an ongoing
`negotiation between the PTO and the applicant, rather than the final product
`of that negotiation, it often lacks the clarity of the specification and thus is
`less useful for claim construction purposes.” (emphasis added)).
`
`5 Adding to the ambiguity, it is not clear whether the IDS’s reference to “all
`claims” refers to the claims in the pending application or the claims
`discussed in the defendants’ contentions of invalidity to which the sentence
`is directed.
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`not contend that the IDS constitutes a disclaimer of any subject matter. PO
`
`Resp. 9. We find that the IDS does not contain a “‘clear and unmistakable’
`
`disclaimer that would have been evident to one skilled in the art.”
`
`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1064 (Fed. Cir. 2016).
`
`Therefore, we are not persuaded that we should apply prosecution history
`
`disclaimer to limit the scope of the term “database.”
`
`Patent Owner also cites to the testimony of Dr. Carbonell that “[t]wo
`
`hallmarks of a database are (1) persistence of the data, and (2) interactivity
`
`with the data via a database management system (DBMS).” Id. at 10
`
`(quoting Ex. 2005 ¶ 33). As Petitioner points out (Reply 1–2),
`
`Dr. Carbonell’s testimony on this point appears to be a copy of the testimony
`
`of Dr. Bajaj, who submitted a declaration in support of Patent Owner’s
`
`Preliminary Response (compare Ex. 2005 ¶ 33, with Ex. 2001 ¶ 20),
`
`although Dr. Carbonell testified that he was unaware of Dr. Bajaj’s
`
`declaration (Ex. 1016, 132:2–12). In any case, as Petitioner points out,
`
`Dr. Carbonell marshals the same evidence that did not persuade us at the
`
`institution stage without adding any additional evidence or even
`
`acknowledging our concerns with Dr. Bajaj’s evidence. Reply 2 n.1.
`
`In particular, Patent Owner and Dr. Carbonell cite to the Macmillan
`
`Encyclopedia of Computers (Ex. 2004). PO Resp. 10–11; Carbonell Decl.
`
`¶ 33. In the portion included in Exhibit 2004, The Macmillan Encyclopedia
`
`states that “[a] database system is a collection of related records stored in a
`
`manner that makes the storage and retrieval of the data very efficient. The
`
`four well-known data models for databases are the hierarchical, network,
`
`relational, and object-oriented models.” Ex. 2004, 230. This definition does
`
`not require persistence and Patent Owner does not explain why persistence
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`should be inferred from this definition. Moreover, as we observed in the
`
`Institution Decision, the Macmillan definition is consistent with the
`
`definition of “database” given by the IEEE Dictionary of Standards Terms.
`
`See IEEE 100 THE AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS
`
`268 (7th ed. 2000) (“database (DB) . . . A collection of logically related
`
`data stored together in one or more computerized files.”) (Ex. 3001). This
`
`definition also does not require persistence. Although this dictionary was
`
`published several years after the filing date of the ’657 patent, Dr. Lavian
`
`testifies that the plain and ordinary meaning of “database” did not change
`
`during this time. Ex. 1021 ¶ 11. In support of this testimony, Dr. Lavian
`
`cites to a 1991 textbook, which defines “database” as “a collection of
`
`interrelated data,” yet another definition that does not require “persistence.”
`
`See Ex. 1017, 5. Moreover, we observe that Patent Owner provides no
`
`boundaries for “stored with persistence” to meaningfully limit the term. For
`
`example, all data accessed and stored by a program while the program is
`
`executing has some level of “persistence.”
`
`As to a DBMS, Macmillan explains:
`
`A database management system (DBMS) is a software package.
`Its main functions are (1) to provide the facility to set up the
`database, (2) to retrieve and store source data (actual data in the
`database), (3) to retrieve and store the data about the structure of
`the database (data dictionary), (4) to provide the facilities to
`enforce security rules, (5) to back up the database, and (6) to
`control
`the concurrent
`transactions so
`that one user’s
`environment is protected from others.
`
`Ex. 2004, 231. Patent Owner characterizes the DBMS as “another criteria of
`
`a database” that provides interactive querying capability not present in
`
`“[s]tandard storage” in temporary or permanent memory. PO Resp. 10–11.
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`Dr. Carbonell repeats Patent Owner’s arguments without citation to evidence
`
`and in testimony that largely copies that of Dr. Bajaj. Ex. 2005 ¶¶ 33–36;
`
`see also Ex. 2001 ¶¶ 20–23. Nevertheless, we read Macmillan to describe a
`
`DBMS as software that works with a database, rather than a part of a
`
`database or a component that necessarily accompanies a database.
`
`Dr. Carbonell’s testimony, which does not identify its bases, adds little to
`
`Macmillan. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not
`
`disclose the underlying facts or data on which the opinion is based is entitled
`
`to little or no weight.”).
`
`Patent Owner also argues that the disclosure of the ’657 patent
`
`imposes “persistence” and DBMS limitations on the claimed database
`
`because it describes the database as storing security information such as
`
`tokens for other programs to access. PO Resp. 12. Patent Owner does not
`
`provide a citation to the ’657 patent in support of its argument.
`
`Nevertheless, Patent Owner argues, again without citation, that “[o]ne of
`
`ordinary skill in the art would have expected that this type of security feature
`
`would persist in a location other than in program memory so that other user
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`programs could access the information.” Id. Finally, Patent Owner argues
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`that the ’657 patent describes tokens stored in hierarchies, which, according
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`to Patent Owner, “are typical of database storage organization, and natural
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`schema when storing and managing access to diverse information.” Id.
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`None of these arguments supports reading persistence or a DBMS into the
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`term “database.” We note also that the other claim language, “serves as a
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`repository of tokens for other programs to access,” is a requirement we
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`evaluate separately and do not read into the term “database.”
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`As noted in the Institution Decision (at 10), the specification describes
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`a database consistently with the Macmillan and IEEE definitions, explaining
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`that tokens are “pieces of information associated with user identity,” that
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`tokens are “stored in memory in a control computer database, along with
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`personal information about the user,” and that “[i]n the database, the storage
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`of tokens can be by user, group, and content.” Ex. 1001, 7:52–58. The
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`specification does not require a DBMS (or similar software) or impose a
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`persistence requirement.
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`On the complete record, we maintain our construction of database,
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`namely, “a collection of logically related data.” This is the construction
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`most consistent with both the intrinsic evidence and dictionary definitions.
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`However, we note that Petitioner contends, and we find, that the prior art
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`shows a database with persistence and associated tools for interacting with
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`the stored data, as explained below.
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`B. Asserted Grounds of Unpatentability
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`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
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`between the claimed subject matter and the prior art are “such that the
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`subject matter as a whole would have been obvious at the time the invention
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`was made to a person having ordinary skill in the art to which said subject
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`matter pertains.” We resolve the question of obviousness on the basis of
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`underlying factual determinations, including: (1) the scope and content of
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`the prior art; (2) any differences between the claimed subject matter and the
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`prior art; (3) the level of skill in the art; and (4) objective evidence of
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`nonobviousness, i.e., secondary considerations.6 See Graham v. John Deere
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`Co., 383 U.S. 1, 17–18 (1966).
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`In an obviousness analysis, some reason must be shown as to why a
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`person of ordinary skill would have combined or modified the prior art to
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`achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512
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`F.3d 1363, 1374 (Fed. Cir. 2008). A reason to combine or modify the prior
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`art may be found explicitly or implicitly in market forces; design incentives;
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`the “interrelated teachings of multiple patents”; “any need or problem
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`known in the field of endeavor at the time of invention and addressed by the
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`patent”; and the background knowledge, creativity, and common sense of
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`the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587
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`F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc.,
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`550 U.S. 398, 418–21 (2007)).
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`1. Level of Ordinary Skill
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`Neither party proposes a level of ordinary skill in the art.
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`Nevertheless, both parties’ experts testify to similar levels of skill.
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`Specifically, Dr. Lavian testifies that a skilled artisan “would possess at least
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`a bachelor’s degree in electrical engineering or computer science (or
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`equivalent degree or experience) with practical experience or coursework in
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`the design or development of systems for network-based communication
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`between computer systems.” Ex. 1002 ¶ 13. For his part, Dr. Carbonell
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`testifies that a skilled artisan “would have had a bachelor’s degree in
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`6 The record does not include arguments or evidence regarding objective
`indicia of nonobviousness.
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`computer science (or a related field) and at least one year of work experience
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`in programming in computer communication methods” and notes that his
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`“opinions herein would not change even if the person having ordinary skill
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`in the art were to be found to have the level of skill proposed by Dr.
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`Lavian.” Ex. 2005 ¶ 18. We adopt Dr. Lavian’s proposal, as it is consistent
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`with the level of skill reflected in the prior art of record. Nevertheless, we
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`discern no material difference between his proposal and that of Dr.
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`Carbonell. Thus, our findings and conclusions would be the same under
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`either proposal.
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`2. Scope and Content of the Prior Art
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`Petitioner contends that the challenged claims would have been
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`obvious over Roseman, alone or in combination with Rissanen, Vetter, Pike,
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`and Lichty. Pet. 5–6; ’659 Pet. 9–10.
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`a. Overview of Roseman
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`Roseman describes a system for multimedia conferencing, in which
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`parties are linked by both video and audio media. Ex. 1003, Abstract. In
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`Roseman, a conference is represented visually as a common virtual
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`conference table, in which each participant can place a document onto the
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`table electronically, manipulate and write on the document, write on a virtual
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`notepad, and move a pointer to draw other users’ attention. Id. at 2:38–45,
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`7:55–8:37. Participants can see the events as they occur. Id. at 2:46–47.
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`Figure 9, reproduced below, illustrates an example conference room:
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`Figure 9 is a picture of a video screen that is generated by a host computer
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`and distributed to all participants in a conference. Id. at 2:16–18.
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`The parties operate their own local computers (which include video
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`cameras and speaker-type telephones) and, when a conference is established,
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`connect to a host computer via commercially available local area networks
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`(“LANs”) and wide area networks (“WANs”). Id. at 1:34–41. In the
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`conference, the host computer generates a common video screen (e.g.,
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`Figure 9, reproduced above) displayed at each of the local computers, and
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`the parties send information, such as drawings, to be displayed on the
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`common screen. Id. at 1:42–46. The telephones and video cameras allow
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`the parties to see and speak with each other. Id. at 1:47–49.
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`Roseman includes a pseudo code appendix that details how its
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`features are implemented. Id. at 12:66–13:2. According to the pseudo code,
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`a participant interacts with the conference table, for example, by dragging an
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`icon onto the table, which causes a data file to be transmitted to the host.
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`Id. at 14:53–55. The host then transmits the icon to the table of each
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`participant. Id. at 14:56–57. If another participant activates the icon, the
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`host sends the open file to the tables of all participants. Id. at 14:58–61. If
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`the participant drags the icon from the table to his own screen and activates
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`the icon on his screen, the data file is presented to the participant. Id. at
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`14:62–66.
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`Roseman describes additional features, such as a party’s ability to
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`“whisper” to another party without being heard by others in the conference
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`room, and the ability to “pass notes” by dragging a note to the picture of
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`another party, while the other parties are unaware of the note. Id. at 9:16–
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`31. Each room may also have “doors” to committee rooms or child-rooms.
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`A child-room is created in the same way as a parent room and is dependent
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`upon the parent room for access an