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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`MYMAIL, LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-00967
`Patent 8,275,863 B2
`____________
`
`Record of Oral Hearing
`Held: June 22, 2018
`____________
`
`
`
`
`Before KEVIN F. TURNER, KAMRAN JIVANI, and MONICA
`S. ULLAGADDI, Administrative Patent Judges.
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`Case IPR2017-00967
`Patent 8,275,863 B2
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`JONATHAN STROUD, ESQUIRE
`ROSHAN MANSINGHANI, ESQUIRE
`Unified Patents Inc.
`13355 Noel Road
`Suite 1100
`Dallas, Texas 75240
`
`
`ON BEHALF OF PATENT OWNER:
`
`DANIEL S. BLOCK, ESQUIRE
`STEVEN M. PAPPAS, ESQUIRE
`Sterne Kessler Goldstein & Fox
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`
`
`
`
`The above-entitled matter came on for hearing on Friday,
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`June 22, 2018, commencing at 2:00 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`Case IPR2017-00967
`Patent 8,275,863 B2
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`P R O C E E D I N G S
`- - - - -
`JUDGE ULLAGADDI: Good afternoon and welcome
`to the Patent Trial and Appeal Board. We are here today for oral
`arguments in inter partes review matter number IPR2017-00967,
`a case in which Unified Patents is the petitioner and MyMail is
`the patent owner. Your panel for the hearing today includes
`myself, Judge Turner and Judge Jivani. Good afternoon, Judges
`Jivani and Turner, are you able to see and hear us clearly?
`JUDGE JIVANI: Yes, thank you.
`JUDGE TURNER: I can hear you fine.
`JUDGE ULLAGADDI: Thank you. I would like to
`start by getting appearances of counsel. Who do we have on
`behalf of petitioner?
`MR. STROUD: Jonathan Stroud, Your Honor, for
`petitioner. With me is Roshan Mansinghani, also for the
`petitioner.
`JUDGE ULLAGADDI: Thank you. And for patent
`
`owner?
`
`MR. BLOCK: Daniel Block from the law firm of
`Sterne Kessler Goldstein & Fox on behalf of MyMail. With me
`today at counsel table is Steve Pappas, as well as the CEO of
`MyMail, Bob Derby, is here as well.
`JUDGE ULLAGADDI: Thank you. Thank you all for
`joining us. I have got a few administrative details that I would
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`like to go over before we can get started today. Each party is
`going to have 45 minutes. We are going to hear first from
`petitioner. Petitioner, you will present your arguments in chief.
`And patent owner, you'll be permitted to present your arguments.
`Would you like to reserve any time for rebuttal, today?
`MR. STROUD: Yes, Your Honor, 10 minutes for
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`rebuttal.
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`JUDGE ULLAGADDI: Ten minutes reserved for
`rebuttal. One thing I would like to also mention is when you are
`working through your demonstratives, to specifically call out the
`slide number, as Judges Jivani and Turner are not able to see the
`screen over here that you'll be referring to. So let me put that
`time on the clock. When you are ready, you may begin.
`MR. STROUD: Thank you, Your Honors. And may it
`please the Board, my name is Jonathan Stroud on behalf the
`petitioner, Unified Patents. I will be arguing for 15 minutes
`covering claim construction and the procedural aspects of this
`case, and my colleague, Roshan Mansinghani, will spend the
`remainder of the time speaking about the merits of the grounds.
`Today we ask you to adopt your preliminary rulings as
`correct for three main reasons. One, the parties generally agree
`on a construction of toolbar, but the District Court rejected
`MyMail's interpretation of that construction, and we would ask
`you to do so again here today. Two, it was appropriate to respond
`to MyMail's changing claim construction arguments and we did
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`so fully in reply. Three, the toolbars of both the Reilly and Filepp
`references teach toolbars under this new construction.
`We'll also be talking briefly about the term "internet,"
`but I would like to point out that it's not dispositive to the
`majority of the grounds whether the Board agrees with us or not
`on that issue.
`Turning first to slide 4, Your Honors, just to back up
`procedurally, because of SAS Institute, this case is slightly more
`complex than it otherwise would have been. There was an earlier
`IPR by Client Connect that brought all six grounds. It was
`instituted by Judge Turner and the panel on grounds 1, 2 and 6,
`and it preliminarily construed the term "internet" per the
`definition in the specification as an interconnected network of
`networks. Now, we believe that's the correct interpretation, but
`the Board changed its mind in the second institution decision.
`Again, it's not dispositive, and we'll talk about that in a second.
`On grounds 3, 4 and 5, the Board did not substantively
`comment. They simply used their discretion at the time to not
`institute on those grounds. The case then was briefed and settled.
`We filed a virtually identical petition on the same grounds with
`the same expert, and this time around the Board instituted on
`grounds 3 and 5. They changed their position slightly on the term
`"internet" but found that grounds 3 and 5 preliminarily taught that
`and chose under their discretion to not institute on grounds 1, 4
`and 6.
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`This is slide number 5, Your Honors. They did not
`institute on the merits on Filepp, a 102 reference, because they
`found it did not teach the internet under the new preliminary
`construction, it's important to note. So if you turn to slide 6,
`you'll see that after SAS Institute, all six grounds have been
`reinstituted. I highlight ground 4 only because it's the only
`ground that the Board has yet to substantively comment on. On
`all the other grounds at one point or another the Board did
`institute those grounds.
`Moving to slide 8 briefly, I would like to talk briefly
`about the '863 patent. You'll see here Figure 16 the claimed
`embodiment from the specification that is at issue here today is
`this toolbar, Figure 16. This is on slide 8. And the specification
`indicates that a toolbar can also be described in the art as a button
`bar. And basic examples are found in many present day
`computer applications, present day being the date filing, 1997.
`I would like to pass over, then, in the slides the claim
`terms, unless we need them, we'll flip back to them, and jump
`right into claim construction, because I think that's the primary
`issue here today.
`On slide 15, I'd point out and I would just like to make
`this clear for everyone that the parties agree on most of the claim
`construction positions in dispute here. The patent owner believes
`that the Phillips construction should apply. So does the
`petitioner. The patent here expired two days ago. And in light of
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`that, it's prudent now today to apply the Phillips standard, and the
`Board does and should do that. They did so in the denial of
`institution in the IAC Search & Media case, and that's what we've
`argued in our reply and in our supplemental reply in response to
`the new construction of the term "toolbar" that was raised by the
`patent owner here. Given the extended briefing schedule, this
`makes sense and as the parties agree, I'm just going to move on
`unless there are further questions on that point.
`In terms of internet, the parties and the Board still
`disagree slightly. We still maintain that Judge Turner was correct
`in the original institution decision that the specification -- this is
`slide 16. I apologize. The specification was clear. It acted as its
`own lexicographer, and the specification said the internet which
`means interconnected network of networks.
`Now, if you read the '863 patent specification in whole,
`it discusses many different implementations of an e-mail, a client
`of authentication services of all other types of products, but the
`product claimed here was simply an updateable toolbar, right. So
`that's important because the patent owner under Phillips is
`allowed and given the ability to be his own lexicographer at the
`time, and here there's an express definition in the specification.
`Now, I don't want to get hung up on this point because, again, it's
`not dispositive to anything but the Filepp ground that was earlier
`not instituted, but we do believe, for the record, that this was the
`appropriate construction in context. And as Judge Turner noted
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`in the original institution decision, there are a number of other
`places in the specification where the patent owner could have
`chosen to limit it to a certain protocol or could have chosen to
`limit it to a public or a private network and instead used
`generalized language to indicate that all networks, public or
`private, that are connected fall under their definition of the term
`"internet." And we did present evidence in reply to go to that
`point. But again, since it's not dispositive, I don't want to belabor
`it.
`
`JUDGE JIVANI: Counsel, let me pause you for a
`moment. You've indicated a few times that the Client Connect
`decision is Judge Turner's decision. Let me clarify for you that
`that construction is the decision of that full panel and that our DI
`in this case is the decision of this full panel. Not any individual
`judge.
`
`MR. STROUD: I apologize. And I did not mean to
`imply that it was one judge over the other, Your Honors. I simply
`was using that as shorthand, but that is true. I apologize.
`So to that point, Your Honor, in this institution decision,
`the Board specifically said that the reason it was adopting this
`modified construction was because there was unrebutted evidence
`by the patent owner that proved it. We have now presented
`evidence in rebuttal, and that evidence should be considered
`when this panel is moving forward to look at the proper
`construction of that term under the Phillips standard.
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`Turning to slide 17, the primary issue in dispute here
`seems to be the term "toolbar." Now, neither party in either
`earlier IPR or in the POPRs in this case ever sought to construe
`the term "toolbar." They did not seek to construe it in either of
`the institution decisions. As well, the panels did not preliminarily
`construe it. The District Court -- sorry. And MyMail, in the
`District Court, sought a broader construction than was ultimately
`adopted by the District Court Magistrate Judge Payne. That
`construction came down in an order from Magistrate Judge Payne
`a few days prior to the institution decision here. It wasn't
`advocated for by patent owner until the reply -- sorry, until the
`response. And so we are appropriately responding to it here.
`But it's all sort of beside the point, Your Honor, because
`all of the parties seem to agree in briefing and in the slides here
`today that that construction that a button bar that can be
`dynamically changed or updated via a Pinger processor or MOT
`script is the appropriate construction to adopt for the term
`"toolbar." So that's the District Court's construction.
`The panel here in the IAC Search & Media case -- and
`I'm flipping now to slide 18, slightly modified it to include the
`term "generated." So the construction that the parties here are
`advocating for today is a button bar that can be generated,
`dynamically changed or dynamically updated via a Pinger
`process or an MOT script. We think that's the appropriate
`construction. That's in line with the magistrate judge's
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`construction, which was from the order before that case settled.
`And as we noted in our briefing, that requires us to sort of delve
`into what MOT script and Pinger process means. We'll talk about
`that.
`
`But the first thing I want to do, and I think this is our
`primary point today, is just to caution reading into the term "can
`be," the limitation "must be." Both the judge there and the
`specification here support the idea that this is effectively a
`functional limitation. It's saying that there's a toolbar that can be
`updated with these processes or can be generated by these
`processes. But it uses optional and permissive language to do so,
`and it never requires that a Pinger process or a MOT script be
`used. So even if you were to find that the prior art, as we've
`shown, doesn't teach either a Pinger process or a MOT script
`actually doing it, it doesn't matter because the claim itself, the
`scope of the claim is just that it's capable of doing so.
`And that's an important point because as you'll see --
`I'm going to turn briefly to my brother on the other side's slide
`number 8 --
`JUDGE TURNER: Counsel, before you do that, can I
`ask a quick question? Back on slide 18, it seems to be you are
`saying here that both Pinger and MOT are nonce words. That's a
`little bit hard because we are proposing to sort of adopt a claim
`construction coming out of the magistrate judge, which, you
`know, when I do a claim construction, if a later judge said that I
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`have applied nonce words, maybe those would be fighting words.
`Normally you are only going to be using words that are
`appropriate in the claim construction, and you are saying, well,
`these are nonce words; we can kind of disregard those, but maybe
`that's not the intent of this slide.
`MR. STROUD: No, it's not. And thank you for that,
`Your Honor. I don't want to get hung up on the terminology
`nonce. The idea is the specification itself -- and if you'll flip to
`slide 23, the specification itself, as the panel acknowledged,
`indicated that MOT was not an acronym for anything meaningful
`and itself used it as a placeholder for a scripting language, right.
`So I don't want to get hung up on the term "nonce word." My
`point is just that the specification itself isn't crystal clear on what
`those terms mean and does so on purpose because it intended for
`them to be a placeholder, meaning a scripting language or
`something that could apply.
`But even if you disagree and even if you try to read a
`narrow definition into the term "toolbar" of what a MOT script
`must be or a Pinger process must be, again, it doesn't necessarily
`mean that the claim isn't anticipated or obvious because the
`toolbar only needs to be capable of doing any one of those three
`things by one of those two processes. It does not need or require
`it to do so.
`JUDGE ULLAGADDI: Can I interrupt you for a
`second? So the Pinger process, on this slide, it says it's a nonce
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`word. Then, if it was a nonce word, the construction of toolbar
`would be a button bar that can be generated, dynamically changed
`or dynamically updated via a process or a script.
`MR. STROUD: That's not -- so again, if our use of the
`term "nonce word" suggested that it has no limitations, I didn't
`want to suggest that in the briefing. And I do apologize if that's
`the case. What I'm saying is the word as defined in the
`specification represents something that the process is capable of
`doing, basically. So if you look at the specific -- what they call
`the definitional statement that the judge in the -- the magistrate
`judge in the District Court looked at, it defines a Pinger process,
`they call it a definitional statement, in terms of an entity. And
`later it says a method, and there are some other terms on column
`11 of their patent. But all of that is in terms of the capability of
`some other process to do something.
`So my point is just that Pinger process is -- again, it's a
`hook for the functional capability of what the specification
`indicates it can do. And that's what's already been pointed out
`both here in the IAC Search & Media noninstitution decision and
`in the District Court judge's case. So that's what I want to flip to
`quickly.
`JUDGE TURNER: Before you go on, I think maybe
`this is sort of important. If MOT is really just sort of -- if you are
`telling me that's sort of the equivalent of a trademark, it doesn't
`really have any meaning, it's a placeholder, I don't know how we
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`can apply it in a claim construction. That's where I'm having
`trouble. I think Judge Ullagaddi's question about can't this just be
`read as a process or a script is an important question because if
`that's the case, that's different. If you are telling us as a panel that
`MOT doesn't really have any meaning, I don't know how we
`could -- even under your construction you are saying it just has
`that capacity. Well, capacity for what, though? If I can't figure
`out what it means, it doesn't have the capacity to be generated, it's
`still not necessarily more helpful.
`MR. STROUD: Sure, Your Honor. Again, I would go
`back to the fact that the specification is the single biggest guide
`for what the patent owner intended the term to mean. And since
`the patent owner himself said that it wasn't an acronym for
`anything meaningful, we need to look to the functions of the
`script that they disclose in their specification. And they disclose
`multiple types, but effectively it's something that can update these
`toolbars. So it can update the text of the toolbars. And the Pinger
`processes simply send a ping-like message that then updates the
`toolbar data. So the capability that they are taking from the
`system that they have disclosed is just sending the message.
`But again, even if you disagree and even if you want to
`find a very specific definition from either of those two terms, it's
`not the end of the case because the point is "can be" simply
`means that the toolbar has to be capable of being implemented
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`with either of those processes. Not that it goes all the way
`through.
`So on this point, on the optional part I want to flip to
`slide 19. I think that the magistrate judge and Your Honors here
`in the IAC decision were pretty clear on this point, but I just want
`to hammer it home. The "can be" part of the new claim
`construction here, the District Court judge repeatedly said that
`that does not preclude other update processes. And their expert
`agreed with us on that point.
`If you flip to slide 20 of our slides, the defendants
`below argued that it must be or that it was dynamically changed
`or updated via these processes. The judge rejected that and said
`defendant's limitation was not supported.
`If you flip to slide 21, the argument was whether
`updating toolbar data necessarily entailed the use of a Pinger
`process or a MOT script. The judge said it does not.
`And on slide 22, the judge again said the same thing,
`that claims are not implicitly limited to Pinger process or MOT
`script updating.
`So that effectively concludes the end of my part of the
`argument, Your Honors. That's our position on claim
`construction. And if you have any other questions, I'm happy to
`answer them now. But if it makes sense, given time, I would like
`to turn the case over to discuss the merits to my colleague here.
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`JUDGE TURNER: And I have one more question. As
`a panel, we can give you more time if indeed we've given you too
`less. I don't think that's going to be the case, but we can always
`give you more.
`It feels very much, counsel, like you are sort of saying
`adopt this claim construction but don't adopt this claim
`construction. So you are saying it can be generated but that's not
`the only way it has to be. And if it doesn't have to be, why do we
`have all these additional words in the claim construction? So I'm
`struggling with what your position is here. So if it can be
`generated but doesn't have to be generated by those processes,
`why are those processes and scripting, why is it in the claim
`construction, then? I'm having a hard time. It feels very much
`like you are sort of advocating here is the correct claim
`construction, but we don't want to contradict the magistrate judge,
`so we are going to come in through the back door. And explain
`to me why I'm wrong.
`MR. STROUD: Sure, Your Honor. Again, I want to go
`back to the fact that the patent owner's specification is the single
`greatest tool to figure out what they meant, right. So if they had
`said the word "toolbar" and not discussed it in the specification, it
`may have been straightforward. But they did, and they said it
`was a bar that can be done by these processes. So that was their
`choice. They were trying to read a functional limitation into
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`toolbar, that it can be done by one of these two processes. But
`they were careful to use the term "can be" and not "must be".
`It was their choice, again, to read the claim broadly or
`narrowly, and they chose to read it broadly. We are not arguing
`this here today for any reason other than that is the specific
`definition that the patent owner put into their own specification.
`And as the best extrinsic evidence out there under Phillips, that
`should control. Thank you.
`JUDGE TURNER: Thank you.
`MR. MANSINGHANI: Judge Turner, I want to address
`your question directly. I think my colleague explained our
`position, but I wanted to give perhaps a different perspective that
`may answer your question. We do believe that both "can be,"
`"Pinger process" and "MOT script" provide actual limitations, but
`our art meets it. With respect to "can be," what it requires is that
`the system be capable of performing the three actions using the
`two processes because there are systems that wouldn't be able to
`meet that limitation. As an example, a system that only allowed
`for offline updating would not qualify under this construction.
`It's not capable, right. Thankfully the art here, both Reilly and
`Filepp, have completely online updating that very much parallels
`the '863 patent.
`Now to your question on Pinger process and MOT
`script and our use of the term "nonce words," MOT is absolutely
`a placeholder word. The specification specifically says it's
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`placeholder word and doesn't mean anything, but that doesn't
`mean that the whole term doesn't have meaning. A script or
`scripting language is used to differentiate between scripting
`languages and computer languages that require compiling the
`code in order to run. Our expert gave testimony in that in the
`reply declaration. So there is meaning to those terms. All we
`were trying to do is make it clear that just like the specification
`says, MOT does not have a specific meaning. What was meant
`there -- and that's why, frankly, they didn't use it in the claims.
`This was a construction that the District Court judge brought in
`and that the panel adopted in the IAC decision. And we are not
`disagreeing with it, but we want to make sure everyone has the
`correct meaning of it.
`With respect to Pinger process, the word Pinger, both
`experts agree that that word Pinger has no meaning outside of the
`specification of the patent. So when you go into the specification
`of the patent, we find out that Pinger process, what it refers to is
`using ping-like messages to create updates. So again, this
`limitation does have teeth. It's not simply a limitation you would
`throw away. As an example, if a system allowed for updates only
`by the server pushing updates to the client and that's it and that
`the client could not go and check if there was an update, that is
`something that doesn't qualify as a Pinger process. Why?
`Because it doesn't use ping-like messages to check to see if there
`are any updates. Instead it forces the server to just push it down.
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`The reason why much of this is of no moment is
`because both references, primary references we use, Reilly and
`Filepp, teach a Pinger process. So while there may be a little
`confusion here today about exactly what those terms mean, the
`prior art aligns itself with the specification such that I think any
`sort of narrow level of confusion that we may all have about what
`that terms means is of no moment given that the prior art teaches
`it.
`
`I would like to turn to that now, but I wanted to make
`sure that that part is clear because it's critical to the rest part of
`what I'm going to talk about.
`So I would like to turn now to slide 51. Here we
`discuss how Reilly anticipates the claims. And this panel and the
`previous panels that have looked at this patent have never found
`that Reilly does not in its institution decisions. Here in this case
`it was not part of the originally instituted grounds only because
`the panel used its discretion not to institute on it not because they
`found any substantive problem with Reilly.
`Here we have summarized on slide 51 the arguments
`MyMail has raised regarding Reilly. The first is that it doesn't
`meet its new toolbar construction. And I'm going to show you
`that it does. Second, that it doesn't disclose a database and
`plurality of attributes limitations. And it does. Our reply
`describes that, I'll touch on it here briefly, but I think the toolbar
`is more important. And third that Reilly does not disclose the
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`identifying a function limitation. Again, it does. Our reply deals
`with that in detail. I'm going to touch on it here briefly.
`Most importantly, what I want you to notice here is that
`unlike with the Filepp grounds, there is no question that Reilly
`discloses the internet and there is no question that Reilly discloses
`a predetermined network address. So here the issues are much
`narrower, and we feel that, frankly, this is easier for you to find
`that the Reilly grounds render the patent unpatentable -- these
`claims unpatentable.
`So now turning to slide 52, let's look at the toolbar
`limitation. We've had a lot of discussion today about what a
`Pinger process means or what an MOT script means. Our
`contention is that the specification is clear MOT has no specific
`meaning and that what it was intended to do is as a placeholder
`for any scripting language. Reilly explicitly teaches scripting
`using display scripts to render its toolbar. MyMail did not contest
`this in their response. So this is an uncontested matter at this
`point. That alone shows you that Reilly meets even the new
`toolbar construction.
`Importantly, our pointing out of the display scripts was
`in the petition. This is not something we newly came up with in
`the supplemental reply. It was in the petition.
`JUDGE ULLAGADDI: Could you point us to exactly
`where in the petition there is a discussion of the script and the
`Pinger process and the dynamic -- well, could you point us to it?
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`MR. MANSINGHANI: Absolutely I can. It may take
`me a moment. Do you mind if it do it in my 10-minute rebuttal?
`JUDGE ULLAGADDI: That's fine.
`MR. MANSINGHANI: Thank you. So the next piece
`of this, though, is that Reilly does teach a Pinger process as
`properly understood because Reilly, just like the '863 patent, and
`we have the citation here on slide 52, teaches that the client sends
`a message to the server to determine if there are any updates. If
`there are, it makes sure that the revision levels are compared, and
`then the updates get sent down and applied to the client. This is
`exactly what the '863 patent specification discloses regarding a
`Pinger process as it relates to the toolbar.
`Patent owner may come up and show you a very
`specific definition of Pinger process that requires something, for
`example, like authentication. But what patent owner will fail to
`tell you likely is that the specification for the '863 patent is very
`broad. It covers many, many aspects of a user getting online. It
`covers e-mail access. It covers which ISP you use and how do
`you move from one ISP to another. It's not just limited to a
`toolbar because this is one patent in a chain of applications.
`This particular set of claims, though, relates to a
`modifiable toolbar. If you go look at the specification, on
`column 11, at the second half of column 11, they discuss how a
`Pinger process is applied to a toolbar, which is the term at issue
`here today. And when you look at that description, it's exactly
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`what Reilly but also Filepp teaches as well, that ping-like
`messages get sent from the client to the server to check if there's
`any updates. If there are, responses get sent and then applied to
`the client. That's exactly what Reilly teaches.
`Once again, MyMail has no counter argument to this
`technical operation of Reilly. They did not provide in their
`briefing any argument that Reilly did not perform a Pinger
`process. They just complained that it wasn't in the petition
`without admitting that that construction hadn't even come up until
`their patent owner response.
`On slide 53, briefly I want to talk about this issue of the
`data access tables. This is MyMail's argument about whether
`Reilly discloses a toolbar-defining database. They say that
`petitioners surreptitiously pointed to two different data access
`tables, data access table 186 and data access table 136, and they
`also say that the data access tables referred to here on slide 53
`from column 6 of Reilly only applies to what they call a screen
`saver embodiment as opposed to the data viewer embodiment that
`Reilly discusses.
`Both of those points are wrong. First, Reilly teaches
`that there are two data access tables, one at the server and one at
`the client. And the client data access table, the only way it gets
`its information is from the server table. So it was completely
`appropriate for the petition to point to both the table in the server
`and the table in the client because the client's table only reflected
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`the data that was already in the server. That's exactly how Reilly
`works. So we think that that argument misunderstands Reilly.
`Second, their point about the toolbar-defining database
`replying to the screen saver embodiment and the data view
`embodiment again misunderstands Reilly. Their arguments make
`it appear as if we are relying on two mut
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