Trials@uspto.gov
`571-272-7822
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`Paper 30
`Entered: August 23, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RPX CORPORATION AND VIMEO, INC.,
`Petitioner,
`
`v.
`
`LINK ENGINE TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00886
`Patent 7,480,694 B2
`____________
`
`Before RAMA G. ELLURU, SCOTT A. DANIELS, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`571-272-7822
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`
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`
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`
`
`Paper 30
`Entered: August 23, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RPX CORPORATION AND VIMEO, INC.,
`Petitioner,
`
`v.
`
`LINK ENGINE TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00886
`Patent 7,480,694 B2
`____________
`
`Before RAMA G. ELLURU, SCOTT A. DANIELS, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`IPR2017-00886
`Patent 7,480,694 B2
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`I.
`
`INTRODUCTION
`
`A. Background
`RPX Corporation and VIMEO, Inc. (“Petitioner”) filed a Petition to
`institute an inter partes review of claims 1–33 of U.S. Patent No. 7,480,694
`B2 (“the ’694 patent”). Paper 3 (“Pet.”). Link Engine Technologies LLC
`(“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
`We instituted trial for claims 1–33 of the ’694 patent on all grounds of
`unpatentability alleged in the Petition. Paper 13 (“Decision to Institute” or
`“Inst. Dec.”).
`After institution of trial, Patent Owner filed a Patent Owner Response
`and a Contingent Motion to Amend seeking to replace claims 1–33 with
`substitute claims 34–51. Paper 15 (“PO Resp.”), Paper 16 (“Mot. to
`Amend”). Petitioner filed a Reply and an Opposition to the Contingent
`Motion to Amend. Papers 17 (“Reply”), 18 (“Opp. to Mot. to Amend”).
`Subsequently, Patent Owner filed a Reply to the Opposition. Paper 19 (“PO
`Reply to Opp.”). By an order on March 28, 2018 (Paper 20), we granted
`Petitioner a Sur-Reply to the Reply to the Opposition. Paper 23 (“Pet. Sur-
`Reply to Opp.”).
`Petitioner relies on the declarations of Phillip Greenspun, Ph.D. Ex.
`1010, Ex. 1035. Patent Owner did not submit testimony from a declarant in
`support of its positions.
` A hearing for IPR2017-00886 was held on May 8, 2018. The
`transcript of the consolidated hearing has been entered into the record.
`Paper 29 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This final written
`decision is issued pursuant to 35 U.S.C. § 318(a). Based on the record
`before us, Petitioner has shown by a preponderance of the evidence that
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`claims 1–33 of the ’694 patent are unpatentable. We further deny Patent
`Owner’s Motion to Amend as to substitute claims 34–51.
`B. Additional Proceedings
`Petitioner states that the ’694 patent is asserted against VIMEO Inc. in
`Case No. 0:2-16-cv-01070 in the United States District Court, Eastern
`District of Texas. Pet. 1.
`C. The ’694 Patent
`The ’694 patent (Ex. 1001), titled “Web Playlist System, Method, and
`Computer Program,” relates generally to a computer program that displays a
`sequence of web pages, i.e. a playlist, to a viewer and provides a control
`panel that allows the user to control the display. Ex. 1001, 1:52–57, 5:20–
`21. Stating that its program is more functional than “a simple static list of
`addresses or URLs such as, for example, Internet Explorer ‘Favorites,’” the
`’694 patent describes “a computer program that performs all the usual
`functions of a browser but with additional functionality . . . allowing a user
`to access web-sites and selectively capture a sequence of HTML pages or
`URLs for later playback and editing.” Id. at 1:41–42, 4:52–5:2.
`By way of example, the ’694 patent explains that the computer
`program could be implemented by an internet browser retrieving a plurality
`of network addresses, e.g. uniform resource locators (“URLs”), from a
`computer memory and displaying the addresses in a panel in a browser
`window. Id. at 5:6–21, Fig. 3. Figure 3 of the ’694 patent is reproduced
`below.
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`Figure 3 of the ’694 patent, above, depicts browser window 304 including a
`display of the “GoogleNews” web page identified in a playlist of network
`addresses 302 and shown darkened in the panel on the left-hand side of the
`browser window.
`In one embodiment of the invention, the ’694 patent describes that the
`internet browser “comprises a playlist engine that is configured to retrieve
`successive network addresses 302 from the sequence and to display in the
`browser window 304 web pages corresponding to the network addresses.”
`Id. at 5:39–42. The ’694 patent states that “[i]n one preferred form, the
`playlist engine is implemented as a software program or series of software
`functions.” Id. at 5:42–44.
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`Browser window 304 may also include a control panel as shown in
`annotated Figure 4 from the ’694 patent, reproduced in part below and
`enlarged for ease of viewing.
`
`
`
`Partial Figure 4 of the ’694 patent, above with annotations added by the
`Board, illustrates a control panel, a portion of which is highlighted in yellow
`(no reference number), including for example, play button 402 and stop
`button 404. See id. at 6:3–18. Also illustrated is “duration” box 422, which
`conveys to the viewer a default time, “30 sec,” for the web page to be
`displayed. Id. at 7:30–37.
`D. Illustrative Claim
`Of the challenged claims, claims 1, 7, 13, 20, and 28 are independent.
`Each of dependent claims 2–6, 8–12, and 14–19 depend directly or indirectly
`from respective independent claims 1, 7, and 13. Claims 21–27 depend
`directly or indirectly from claim 20, and dependent claims 29–33 depend
`directly from independent claim 28. Claim 1 illustrates the claimed subject
`matter and is reproduced below:
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`1. A computer device executing an Internet browser comprising:
`at least one browser window configured to display to a user at
`least one web page identified by one of a plurality of network
`addresses in computer memory, said network addresses
`representing a sequence;
`a playlist engine configured to retrieve user selected network
`address(es) from the sequence, and further configured to
`display, in the browser window, web pages corresponding to
`the user selected network addresses; and
`a control panel configured to enable a user to select for display
`in the browser window(s) at least one of the web pages
`corresponding to the user selected network address(es), the
`control panel having a play mode control which when selected
`by the user causes the playlist engine to retrieve successive
`addresses from the sequence in the absence of user selection
`and
`to display
`in
`the browser window web pages
`corresponding to the retrieved successive addresses, the web
`pages each displayed for one or more predefined durations;
`wherein the network addresses are associated with one or more
`duration values, the predefined duration for each web page
`specified by the associated duration value; and
`further comprising a timer configured to display, for at least one
`of the displayed web pages, the time remaining for the playlist
`engine to display the web page.
`Ex. 1001, 15:55–16:13 (emphasis added). We emphasize the “playlist
`engine” limitation as the parties’ arguments center mainly on this claim
`element. As noted by Petitioner’s Declarant, Dr. Greenspun, there is
`significant overlap and similarity across the independent claims. See
`Ex. 1010 ¶ 172. For example, instead of “[a] computer device,” and “a
`playlist engine,” independent claim 13 recites “[a]computer readable storage
`medium comprising a data file for use with an Internet browser . . . the data
`file comprising . . . computer program code operable to generate a playlist
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`engine.” Id. at 17:17–25. Notably, as Patent Owner points out, only
`claim 1 and its respective dependent claims 2–6, “require an Internet
`browser that includes a ‘playlist engine.’” PO Resp. 3 n.1. Patent Owner
`does not substantively address Petitioner’s challenges to claims 7–33. See
`id.
`
`E. The Asserted Grounds of Unpatentability
`Petitioner contends that the challenged claims are unpatentable on the
`following specific grounds.
`References
`Quimby1 and Quimby CD2
`Quimby and Lenz3
`Quimby and Maddalozzo4
`Quimby and Barrett5
`Quimby, Barrett and Lenz
`Quimby, Barrett and Maddalozzo
`Lenz
`Lenz and Maddalozzo
`Lenz and Barrett
`Lenz, Barrett and Maddalozzo
`
`
`Basis Claims Challenged
`§ 103 1–4, 7–10, 13–17, 20–31
`§ 103 5, 11, 18, 32
`§ 103 6, 12, 19, 33
`§ 103 1–4, 7–10, 13–17, 20–31
`§ 103 5, 11, 18, 32
`§ 103 6, 12, 19, 33
`§ 103 1–5, 7–11, 13–18, 20–32
`§ 103 6, 12, 19, 33
`§ 103 1–5, 7–11, 13–18, 20–32
`§ 103 6, 12, 19, 33
`
`CLAIM CONSTRUCTION
`
`II.
`A. Legal standard
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`
`
`1 Ex. 1005, U.S. Patent Appl’n. Pub. 2002/0199002 Al (Dec. 26, 2002).
`2 Ex. 1006, CD including program code, submitted with Quimby Pub.
`2002/0199002 Al.
`3 Ex. 1007, WO 98/20434 A3 (May 14, 1998).
`4 Ex. 1008, U.S. Patent No. 6,460,060 B1 (Oct. 1, 2002).
`5 Ex. 1009, Dan Barrett, ESSENTIAL JAVASCRIPTTM FOR WEB
`PROFESSIONALS, Second Ed., Prentice Hall, 2003.
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`“Under a broadest reasonable interpretation, words of the claim must
`be given their plain meaning, unless such meaning is inconsistent with the
`specification and prosecution history.” Trivascular, Inc. v. Samuels, 812
`F.3d 1056, 1062 (Fed. Cir. 2016). If the specification “reveal[s] a special
`definition given to a claim term by the patentee that differs from the
`meaning it would otherwise possess[,] . . . the inventor’s lexicography
`governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en
`banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
`(Fed. Cir. 2002)). We apply this standard to the claims of the ’694 patent.
`B. Playlist engine
`We determined in our Decision on Institution that “a ‘playlist engine’
`is ‘a software program or series of software programs’ undertaking the
`respective functions described in the claims as would have been understood
`by one of ordinary skill read in the context of the claims.” Inst. Dec. 7–9
`(citing Ex. 1001, 4:52–55, 5:43–44).
`Petitioner states that it largely agrees with this construction but points
`out that the ’694 patent describes that “the playlist engine” is implemented
`“as a software program or series of software functions,” as opposed to
`“programs.” Pet. Reply 6 (citing Ex. 1001, 5:43–45). Petitioner
`acknowledges that this “may be a distinction without a difference” but
`requests us to consider this point in light of the difference “between
`JavaScript files (often referred to as applications or programs) and the
`JavaScript functions contained within such files.” Id. (citing Ex. 1035 ¶¶ 8–
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`10). This slight change in our determination appears reasonable as it does
`not alter substantively our understanding of “playlist engine,” and it is
`consistent with the express disclosure of the ’694 patent. Moreover, Patent
`Owner agreed during oral argument that it did not object to this change in
`our construction.6 See Tr. 32:16–22.
`Therefore, we determine that a “playlist engine” as claimed, is “a
`software program or series of software functions undertaking the respective
`functions described in the claims as would have been understood by one of
`ordinary skill read in the context of the claims.”
`C. Whether claim 1 requires the internet browser to include the
`playlist engine
`Patent Owner argues that claim 1 requires the playlist engine to be
`part of, i.e. included in, the internet browser based on the preamble’s reciting
`“[a] comput[er] device executing an Internet browser comprising . . . a
`playlist engine.” PO Resp. 7–9; Tr. 21. Patent Owner asserts also that,
`because an “[i]nternet browser is a client-side program,” the playlist engine,
`as part of the browser, must similarly be a client-side program. PO Resp. 7.
`Petitioner disagrees, arguing on one hand that “the playlist engine
`recited in the body of the claim is comprised within the ‘computing device,’
`which is the subject of the claim.” Pet. Reply 2. On the other hand,
`Petitioner maintains that regardless of the claim construction, the asserted
`prior art teaches “executing an Internet browser that includes a software
`program or series of software functions.” Id. at 8.
`
`
`6 Patent Owner maintained its argument during the oral hearing that the
`preamble of at least independent claim 1 requires “that the playlist engine is
`a component of an internet browser.” Tr. 32:24–33:2.
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`We acknowledge some grammatical ambiguity in claim 1 as to
`whether the “playlist engine” is included in a “computer device” or an
`“Internet browser.” Patent Owner, however, provides the more reasonable
`understanding of the claim language from the perspective of a person of
`ordinary skill in the art because a reader would naturally expect, in a subject-
`verb-object grammar construct, the subject closest to the verb to be the
`subject to which the verb pertains. In claim 1, “comprising” immediately
`follows “an Internet browser.” Ex. 1001, 15:55–56. See William Strunk, Jr.
`& E.B. White, The Elements of Style 28 (4th ed. 2000) (“The position of the
`words in a sentence is the principal means of showing their relationship.”).
`This is consistent with our preliminary determination in the Decision on
`Institution. See Inst. Dec. 17 (“[B]y use of the term ‘comprising’ a
`reasonable understanding of the claim language and the relationship of these
`elements is that the claimed Internet Browser includes inter alia ‘a playlist
`engine’ that performs particular functions . . . .”).
`In addition to “a playlist engine,” claim 1 also recites “at least one
`browser window,” which is a window of the aforementioned “an Internet
`browser.” Ex. 1001, 15:55–57. The structure of the claim, therefore,
`suggests that the limitations following the word “comprising” pertain to the
`“Internet browser.”
`We determine, therefore, that claim 1 is most naturally understood to
`encompass “an Internet browser comprising a playlist engine” and that the
`playlist engine is “a software program or series of software functions
`undertaking the respective functions described in the claims as would have
`been understood by one of ordinary skill read in the context of the claims.”
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`In any event, and considering our analysis below, we note that our
`Decision would reach the same result even if we accepted Petitioner’s
`construction that the “playlist engine” was more broadly encompassed
`within “[a] computer device.”
`
`III. ANALYSIS
`A. The law of obviousness
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`between the subject matter sought to be patented 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: (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. See Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; Translogic,
`504 F.3d at 1262. A prima facie case of obviousness is established when the
`prior art itself would appear to have suggested the claimed subject matter to
`a person of ordinary skill in the art. In re Rinehart, 531 F.2d 1048, 1051
`(CCPA 1976).
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`B. Level of ordinary skill in the art
`Petitioner contends, and Patent Owner does not dispute, that a person
`of ordinary skill in the art “would have had a bachelor’s degree in computer
`science, or equivalent work experience, and at least two years of experience
`as a web developer, including using HTML, cascading style sheets, and
`JavaScript.” Pet. 9–10. Further, the applied prior art reflects the appropriate
`level of skill at the time of the claimed invention. See Okajima v. Bourdeau,
`261 F.3d 1350, 1355 (Fed. Cir. 2001). As Petitioner’s asserted level of skill
`is commensurate with that informed by our review of the prior art in this
`proceeding, we accept Petitioner’s asserted level of ordinary skill in the art.
`C. Claims 1–4, 7–10, 13–17, and 20–31— Obviousness over
`Quimby and Quimby CD
`Petitioner asserts that claims 1–4, 7–10, 13–17, and 20–31 would have
`been obvious over Quimby and Quimby CD. Pet. 12–22. As explained
`below, Petitioner has shown, by a preponderance of the evidence, that claims
`1–4, 7–10, 13–17, and 20–31 are unpatentable as obvious in view of Quimby
`and Quimby CD.
`
`1. Quimby and Quimby CD
`Quimby discloses a customizable website access system including a
`software program having a composer portion and a performing portion.
`Ex. 1005, Abst. Quimby explains that the composer portion is used by a
`website developer to create the performing portion for a viewer, including a
`slide show of web pages:
`The composing portion of the software program is used to create
`a presentation. The presentation includes a list of URLs for
`display, a desired sequence of display of the URLs, and a
`duration of display of the URLs.
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`Id. Perhaps more relevant to our analysis, is the performing portion of
`Quimby’s software that displays the presentation to a user:
`The performing portion of the software program operates to load
`and display the presentation to a user of the web in an automatic
`slide show presentation.
`Id. Quimby explains also that a user can control and modify the slide show
`presentation because
`[t]he performing portion of the software program also preferably
`provides a control panel whereby a web user can not only pause
`or stop the presentation but can also change the sequence and/or
`duration of display of each of the URLs of the presentation.
`Id. ¶ 8.
`Figure 1 of Quimby, illustrating diagrammatically Quimby’s web site
`access system, is reproduced below.
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`Figure 1 of Quimby, above, illustrates diagrammatically customizable web
`site access system 10 (no reference number), including composer 12,
`presentation 20, and performer 14 implemented on host server 16. Ex. 1005
`¶ 22. Figure 1 illustrates also a communication relationship between
`User 24 and Performer 14. Quimby explains that “[t]he performer 14 is that
`portion of the software of system 10 that a user/visitor 24 to the web utilizes
`to access and view the customized presentation 20.” Id. ¶ 23.
`An example of what a user of Quimby’s system would see, displayed
`on a computer, is shown generally in Figure 4, reproduced below. See id. ¶
`30.
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`Quimby’s Figure 4, above, depicts website display area 52 below system-
`interactive user area 54, which includes pause button 62, site-forward button
`64, site-backward button 66, and time remaining field 58 providing an
`“indication of how much longer the current web site will be displayed.” Id.
`¶¶ 32–33. Figure 4 of Quimby depicts a system-interactive user area 54 that
`appears as a “control panel” allowing the user to control the presentation.
`Id. ¶¶ 30, 32.
`Quimby incorporates by reference Quimby CD, explaining that the
`CD submitted with the patent application is “[a] compact disc containing
`codes and information describing a preferred embodiment of the present
`invention.” Id. ¶ 2. Quimby states that “[t]he compact disc contains the
`following files and/or programs:”
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`Id. The list reproduced above, from Quimby, is a partial list of computer
`files or programs, including the file jsperfomrer.asp, their size in Bytes, and
`date of creation, as contained on Quimby CD.7
`2. Claims 1–4
`Claim 1
`Petitioner argues that Quimby discloses a “website access system”
`including a computer and web browser for retrieving website URLs for
`display to a user. Pet. 12–13 (citing Ex. 1005 ¶¶ 7, 21, 23, 37, 40; Ex. 1006,
`1:13–23; Ex. 1010 ¶¶ 67–70, 80–81). Petitioner contends that Quimby’s
`website access system displays a web site, or web page, in a browser
`window from “a list of URLs” and implements “a desired sequence of
`display of the URLs, and a duration of display of the URLs.” Pet. 12, 16
`(citing Ex. 1005 ¶ 7; Ex. 1006 ¶ 40).
`Additionally, Petitioner contends that Quimby teaches the claimed
`“playlist engine,” which displays the sequence of URLs as a slide show of
`web pages to the user. Pet. 17. Petitioner argues that Quimby’s
`“‘performing portion’ software ‘operates to load and automatically display
`the presentation to a user of the web according to the URL list’ and
`‘sequence of display.’” Id. (citing Ex. 1005 ¶¶ 7, 40). Petitioner asserts that
`the server-side jsperformer.asp “generates the Generated File” and sends the
`Generated File, as an HTML/JavaScript file, to the client-side browser for
`processing to retrieve and display the presentation to the user. Id. (citing Ex.
`1010 ¶¶ 70, 82–84, 108).
`
`
`7 Unless otherwise set out in this Decision, we refer to Quimby and Quimby
`CD, generally as “Quimby.”
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` Petitioner asserts further that a “control panel” and “play mode” for
`controlling the slide show as it is displayed to a user are also taught by the
`“performer” software where Quimby states that
`[t]he performing portion of the software program also preferably
`provides a control panel whereby a web user can not only pause
`or stop the presentation but can also change the sequence and/or
`duration of display of each of the URLs of the presentation.
`Pet. 19–20 (quoting Ex. 1005 ¶ 8).
`Petitioner argues that the claimed “duration values” and “timer”
`display are both discussed and shown expressly in Figures 3 and 4 of
`Quimby. Id. at 21–23. Figure 4 as shown above, Petitioner argues,
`illustrates in Quimby’s control panel “time remaining field 58” as a display
`of remaining time for a web page to be shown to a viewer. Pet. 21 (citing
`Ex. 1005 ¶ 32 and Fig. 8). Also, Figure 3 is relied upon by Petitioner to
`show that Quimby teaches that a desired, i.e. predefined, time duration value
`can be entered for each listed URL to be displayed to a user for the
`predefined time during the slide show. Id. at 24 (citing Ex. 1005 ¶31).
`In response, Patent Owner makes two main arguments, first, that
`“[t]he Petition fails to meet the requirements of 35 U.S.C. § 312 and 37
`C.F.R. § 42.104 because Petitioner fails to specify where the claimed
`‘playlist engine’ of the ’694 Patent is found” in Quimby. PO Resp. 1–2.
`Second, Patent Owner argues that Petitioner has failed to prove that either
`Quimby, or Lenz, discloses the claimed “playlist engine.” Id. at 3–12. We
`point out that Patent Owner does not make any substantive arguments for
`other claim limitations apart from the “playlist engine.” We address Patent
`Owner’s arguments in turn, below.
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`Whether the Petition Specifies where each Element of the Claim is
`found in Quimby under 37 C.F.R. § 42.104
`We agree with Patent Owner’s general assertion that under 35 U.S.C.
`§ 312 and 37 C.F.R. § 42.104 “a petition for inter partes review ‘must
`specify where each element of the claim is found in the prior art patents or
`printed publications relied upon.’” PO Resp. 1 (citing 37 C.F.R. §
`42.104(b)(4)). The Office Patent Trial Practice Guide explains that “[a]
`complete petition for IPR requires that . . . the petitioner identify the claims
`being challenged and the specific basis for the challenge.” Office Trial
`Practice Guide, 77 Fed. Reg. 48763–64.
`Our review indicates that the Petition does include the necessary
`specificity such that a reasonable reading of the Petition identifies specific
`software functions of Quimby that correspond to the “playlist engine” as a
`basis for the challenge to the claims. The Petition expressly states that the
`“performing portion” of the Quimby software initiates the software functions
`described in Quimby that meet the limitations of the “playlist engine” in
`claim 1. Pet. 17. For example, the Petition alleges that “Quimby’s
`performer or ‘performing portion’ software ‘operates to load and
`automatically display the presentation to a user of the web according to the
`URL list’ and ‘sequence of display.’” Id. (citing Ex. 1005 ¶ 7). Moreover,
`the Petition identifies “jsperformer.asp,” as shown, above, in the partial list
`of files from Quimby CD. Id. at 14 (citing Ex. 1010 ¶ 70). The Petition
`explains that “jsperformer.asp generates an HTML/JavaScript file that is
`downloaded and processed by the user’s browser.” Id. Petitioner’s position
`is clear that software functions within the client browser process the
`HTML/JavaScript file that is generated by jsperformer.asp and, therefore,
`teach the claimed “playlist engine.” See id. at 14–18 (discussing Quimby’s
`
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`“playlist engine” functionality, the Petition states that “the Generated File is
`sent from the server to the client, where the client browser processes the
`Generated File to cause the client browser to display the selected slide
`show.”).
`We do not agree with Patent Owner’s assertion that the Petition lacks
`specificity because it identifies “three different alternatives from Quimby –
`client browser; performing portion; or output of two lines of JavaScript code
`in jsperformer.asp” as the “playlist engine.” PO Resp. 2. The Petition
`explains how the server-side “performer” is invoked by a user to run a
`presentation of web pages on the client-side computer where
`Quimby discloses a source code embodiment in which the
`server-based “performer,” embodied in the code jsperformer.asp,
`generates an HTML/JavaScript file that is downloaded and
`processed by the user’s browser.
`Pet. 14 (citing Ex. 1006, 1:1–9:459; Ex. 1010 ¶ 70). The three “alternatives”
`noted by Patent Owner are not disparate elements individually asserted to be
`the “playlist engine,” but, according to Petitioner, they are coordinated
`functions of Quimby’s computer program that are initiated by invoking
`jsperformer.asp.:
` [s]pecifically, when a user initiates a presentation, e.g., by
`activating the “performer.asp” link in the index.html file, the
`server runs the program “jsperformer.asp.” In response,
`jsperformer.asp generates and sends to the user’s browser an
`HTML/JavaScript file (a.k.a.
`the “Generated File”)
`that
`configures the browser to perform all of the steps of Claim 1.
`Id. (citing Ex. 1010 ¶¶ 70, 84–90; Ex. 1006). Keeping in mind our claim
`construction—that a “playlist engine” is “a software program or series of
`software functions undertaking the respective functions described in the
`claims”—it is reasonable to understand from the Petition that it is Quimby’s
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`orchestrated software functions, initiated by jsperformer.asp, that generate
`an HTML/JavaScript file for configuring the internet browser on a client-
`side machine to display the presentation. In other words, contrary to Patent
`Owner’s position, Petitioner has not relied upon a variety of disparate single
`elements, e.g. only jsperformer.asp, only the browser, or a related function,
`of Quimby as teaching the “playlist engine,” but has asserted that it is a
`composite of Quimby’s described software programs and functions,
`including browser software and functions, which together are asserted to
`embody all the features of the claimed “playlist engine.” See Section II.B.
`Therefore, we are persuaded on the record before us as a whole that
`Petitioner has properly described where each element of the claimed
`invention is found in the prior art in accordance with 37 C.F.R.
`§ 42.104(b)(4).
`Whether Quimby discloses the claimed “playlist engine”
`Patent Owner argues that there are “at least three reasons” that the
`Petition fails to prove that Quimby discloses the claimed “playlist engine.”
`PO Resp. 7. First, Patent Owner contends that Quimby’s “performing
`portion” is stored on a server and therefore is not included in, or part of, the
`“[i]nternet browser” as required by claim 1. Id. at 7–8. We disagree for
`reasons similar to that explained above—that is, it is not simply Quimby’s
`server-side file “jsperformer.asp” that is relied upon by Petitioner to teach
`the “playlist engine,” but also the generated HTML/JavaScript file, which is
`sent to, and processed by, the client-side internet browser to display a
`presentation. See Pet. 14–17.
`We agree with Patent Owner’s position that jsperformer.asp is a
`server-side program, a fact that is corroborated by Dr. Greenspun. See Ex.
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`1010 ¶ 70 (Dr. Greenspun explains that “[t]he file /jsperformer.asp runs on
`the server.”). Petitioner and Dr. Greenspun contend, however, that this
`assertion does not tell the whole story. See id. (Dr. Greenspun explains also
`that the server “generates output to be sent to the browser. The output is an
`HTML/JavaScript file . . . .”). According to Dr. Greenspun, Quimby
`discloses “a playlist engine because the internet browser executes the
`JavaScript program in order to carry out the playlist engine functionality.”
`Ex. 1035 ¶ 5. Dr. Greenspun explains that, upon reading Quimby a person
`of ordinary skill in the art “would understand that a browser request (on the
`client) triggers jsperformer.asp (on the server) to generate an
`HTML/JavaScript file that is returned to the client for processing by the
`client browser.” Ex. 1010 ¶ 70. Thus, software functions within the client
`browser process the HTML/JavaScript file generated by jsperformer.asp to
`produce the viewable slideshow. Dr. Greenspun’s testimony provides the
`following illustration, and description, of Quimby’s source code
`embodiment:
`
`The above illustration sets forth the following steps:
`1) The client web browser, e.g., following a user click, requests
`jsperformer.asp;
`
`
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`2) The server evaluates jsperformer.asp, which generates an
`HTML/JavaScript file corresponding to the requested slide show
`(the “Generated File”);
`3) The server returns the Generated File to the client;
`4) The client web browser processes the Generated File, i.e.,
`renders the HTML and interprets the JavaScript contained in the
`file. The result is the user experience of a slide show.
`Id. We understand Dr. Greenspun’s testimony, as he clarified in his second
`declaration, to be that “a standard browser running a JavaScript program is
`precisely what Quimby discloses.” Ex. 1035 ¶ 6.
`With Quimby’s teaching in mind, and referring to the ’694 patent and
`the claim language at issue, Dr. Greenspun states further that “a [person of
`ordinary skill in the art] would have understood ‘executing an Internet
`browser comprising … a playlist engine’ to encompass a standard web
`browser program that is running, or executing, a JavaScript program.” Id. ¶
`5.
`
`Patent Owner’s explanations that Quimby’s software and related
`functions are separate and distinct elements and its efforts to cast doubt on
`Dr. Greenspun’s testimony are unpersuasive. For one thing, the attorney
`argument in Patent Owner’s response provides no objective evidence
`rebutting Dr. Greenspun’s testimony. It is well settled that argument of
`counsel cannot take the place of evidence lacking in the record. Estee
`Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed
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