Trials@uspto.gov
`571-272-7822
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`
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`Paper: 36
`Entered: September 11, 2018
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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
`____________
`
`
`Before KEVIN F. TURNER, KAMRAN JIVANI, and
`MONICA S. ULLAGADDI Administrative Patent Judges.
`
`ULLAGADDI, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`IPR2017-00967
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`I. INTRODUCTION
`
`A. Background
`Unified Patents Inc. (“Petitioner”) filed a Petition pursuant to
`35 U.S.C. §§ 311–319 requesting an inter partes review of claims 1, 2, 4, 5,
`10, 11, 14–17, 20, and 23 of U.S. Patent No. 8,275,863 B2, issued on
`September 25, 2012 (Ex. 1001, “the ’863 patent”). Paper 2. As the original
`Petition lacked page numbers, we instructed Petitioner to file a Second
`Corrected Petition on September 6, 2017, which we cite herein.1 Paper 9
`(“Pet.”), Paper 8 (authorizing Second Corrected Petition). My Mail, Ltd.
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`On September 13, 2017, we entered a Decision on Institution (“Inst.
`Dec.” Paper 10) instituting an inter partes review as to all of the challenged
`claims. Specifically, we instituted review as to claims 1, 2, 4, 5, 10, 11, 14–
`17, 20, and 23 over Filepp and Morten and claims 2 and 10 over Filepp,
`Morten, and Olsen.2 Inst. Dec. 22. We did not institute review as to
`
`
`1 Petitioner indicated that the original Petition did not comply with the word
`count limit set forth in 37 C.F.R. § 42.24. See Paper 8; see Paper 9, 66
`(stating that the word count for the Second Corrected Petition is 14,134
`words). Due to the short time frame, we instructed Petitioner to file the
`Second Corrected Petition, which we refer to herein as “Petition” or “Pet.,”
`with no changes except to add page numbers, and we indicated that we
`would disregard any portion of the Petition in excess of the word count.
`Paper 8. Petitioner’s ground 6, based on Reilly and December, includes the
`portion of the Petition that is in excess of the word limit by 134 words. Pet.
`66. In view of our disposition, we need not consider what, if any, effect our
`disregarding the 134 words (see Paper 8) would have had on a decision on
`the merits with respect to ground 6.
`2 In our Decision on Institution, we instituted review with respect to claims 2
`and 10 over Filepp, Morten, and Olsen, instead of Filepp and Olsen as
`
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`challenges based on Filepp alone, Reilly alone, or Reilly in combination
`with other references.
`After institution of trial, Patent Owner filed a Patent Owner Response
`(“PO Resp.” Paper 16), to which Petitioner filed a Reply (“Reply” Paper 20).
`On May 1, 2018, a conference call was held among Judges Jivani,
`Turner, and Ullagaddi and counsel for the parties. During the call, we gave
`the parties an opportunity to discuss the impact of the Supreme Court’s
`holding in SAS Institute Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S. Apr.
`24, 2018) with respect to the instant proceeding. Following the call, we
`entered an Order (Paper 27) which modified the Decision on Institution to
`include review of all grounds of unpatentability of the challenged claims as
`presented in the Petition. In that Order, we authorized additional briefing to
`address the modification to the Decision on Institution.
`Petitioner filed a Supplemental Reply (“Supp. Reply” Paper 32) and
`Patent Owner filed a Supplemental Response (“Supp. Resp.” Paper 30).
`Patent Owner also filed a Motion to Strike (“Motion” or “Mot.” Paper 29),
`to which Petitioner responded with an Opposition to Motion to Strike
`(“Opposition” or “Opp.” Paper 31).
`A hearing for IPR2017-00967 was held on June 22, 2018. The
`transcript of the hearing has been entered into the record. Paper 35 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This final written decision
`is issued pursuant to 35 U.S.C. § 318(a).
`
`
`originally set forth by Petitioner. Inst. Dec. 19. In view of our Order
`following SAS, we revert to Petitioner’s original challenge to claims 2 and
`10 over Filepp and Olsen. Paper 27, 5.
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`Based on the complete record now before us, we conclude Petitioner
`has not shown, by a preponderance of the evidence, that any of challenged
`claims 1, 2, 4, 5, 10, 11, 14–17, 20, and 23 of the ’863 patent are
`unpatentable.
`B. Related Proceedings
`The parties inform us that the ’863 patent is or has been the subject of
`
`numerous lawsuits in district court. Pet. 7; Paper 4, 1–2.
`In addition, the ’863 patent was the subject of IPR2015-00269 (the
`“’269 IPR”), which, according to Petitioner, “was instituted and later
`settled.” Pet. 7; Paper 4, 2; Ex. 1021 (“’269 Institution Decision”).
`Petitioner represents that the asserted grounds in the Petition are the same as
`those upon which trial was instituted in the ’269 IPR and that the content of
`the Petition is substantially the same as the petition in that proceeding. Pet.
`5.
`
`The ’863 patent was also the subject of the IPR2018-00118
`proceeding (“’118 IPR”) in which we denied institution. See ’118 IPR,
`Paper 5, 1–2 (discussing related litigations). A child of the ’863 patent, U.S.
`Patent No. 9,021,070 (the “’070 patent”), was the subject of the IPR2018-
`00117 proceeding (“’117 IPR”) in which we also denied institution. See
`’117 IPR, Paper 5, 1–2 (discussing related litigations).
`C. The ’863 Patent
`The ’863 patent relates to methods for modifying the toolbar of an
`Internet device. Ex. 1001, 1:1. Specifically, the claims relate to updating
`the toolbar of a user Internet device over the Internet. Id. at 29:28–63.
`Figure 16 is reproduced below:
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`Figure 16 illustrates a toolbar.
`According to the ’863 patent, information related to updating the toolbar
`(also called a “button bar”), which may be provided as part of a browser, is
`obtained from button bar database 208. Id. at 10:7–15. Button bar database
`208 stores “attributes” that define the toolbar’s buttons, including text,
`format, and function. Id. at 10:38–50 (alternately referring to button bar
`database with reference number 210). For example, a button can be
`configured to “go to the USA Today . . . web site,” or launch a script or a
`program. Id. at 10:38–11:4. The ’863 patent discloses, “the Toolbar of the
`present invention has some unique properties as it can by dynamically
`changed or updated via a Pinger process or a MOT script.” Id. at 10:15–17.
`The ’863 patent discloses that
`[A] Pinger process comprises an entity that acts transparently as
`a services coordinator to provide and/or administer the
`following:
`1. Heartbeat service to help maintain network
`connectivity with a client.
`2. Authentication services that securely authenticate client
`access to email, commerce, and other public and private
`network servers and services.
`3. Update services that can perform client software,
`database, and maintenance services during periods of
`inactivity.
`The Pinger entity, as suggested above, has, as one of its
`functions, the responsibility of providing database updates to
`the client user.
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`Id. at 10:19–32. With respect to the MOT script, the ’863 patent discloses
`that “it can be a ‘mime type’ definition part of an E-mail message, an HTTP
`web document download and so forth, which transparently automates the
`Toolbar update.” Id. at 10:32–35.
`D. Illustrative Claim
`Of the challenged claims, claim 1 is independent. Claim 1 is
`illustrative of the claims at issue and is reproduced below:
`1. A method of modifying a toolbar, comprising the steps
`
`of:
`
`a user Internet device displaying a toolbar comprising
`one or more buttons, the toolbar defined by toolbar data stored
`in one or more toolbar-defining databases, the toolbar data
`comprising a plurality of attributes, each attribute associated
`with a button of the toolbar, wherein for each button of the
`toolbar, at least one of the plurality of attributes identifying a
`function to be performed when the button is actuated by the
`user Internet device;
`the user Internet device automatically sending a revision
`level of the one or more toolbar-defining databases to a
`predetermined network address;
`a server at the predetermined network address
`determining, from the revision level, the user Internet device
`should receive the toolbar update data;
`the user Internet device receiving toolbar update data from
`the Internet;
`the user Internet device initiating without user interaction
`an operation to update the toolbar data in accordance with the
`toolbar update data received;
`the user Internet device updating, by the operation, the
`toolbar data in accordance with the toolbar update data, thereby
`producing updated toolbar data, the updating comprising at least
`one of the following steps (a) and (b), each respectively
`comprising:
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`(a) writing at least one new attribute to the original toolbar
`data, wherein the writing at least one new attribute to the toolbar
`data comprises changing the one or more buttons of the toolbar
`by adding a button; and
`(b) updating at least one attribute of the toolbar data; and
`the user Internet device displaying the toolbar as defined by the
`updated toolbar data.
`Ex. 1001, 29:28–63.
`E. Evidence of Record
`Petitioner relies on the following references (see Pet. 9–10):
`Reference or Declaration
`Exhibit No.
`U.S. Patent No. 5,740,549 (“Reilly”)
`Ex. 1003
`U.S. Patent No. 5,347,632 (“Filepp”)
`Ex. 1004
`U.S. Patent No. 5,021,949 (“Morten”)
`Ex. 1005
`U.S. Patent No. 5,644,737 (“Tuniman”)
`Ex. 1006
`J.W. Olsen, Big Three On-Line Services Reach Out to the
`Ex. 1007
`Internet, PC Magazine, June 27, 1995 (“Olsen”)
`John December and Neil Randall, The World Wide Web
`Unleashed (2d. ed. 1995) (“December”)
`
`Ex. 1008
`
`Petitioner supports its challenges with the Declarations of Dr.
`Benjamin B. Bederson (Exs. 1009, 1022).
`Patent Owner supports its Patent Owner Response and Supplemental
`Response with the Declarations of Dr. Arthur M. Keller (Exs. 2003, 2017).
`
`F. Instituted Grounds of Unpatentability
`We instituted review on the following grounds for challenge (see
`Pet. 10, 46; Inst. Dec. 22; Paper 27, 5):
`Claims Challenged
`1, 11, 14–17, 20, and 23
`1, 4, 5, 11, 14–17, 20, and 23
`1, 2, 4, 5, 11, 14–17, 20, and 23
`1, 2, 11, 14–17, 20, and 23
`
`Reference(s)
`Basis
`§ 102(e) Reilly
`§ 102(b) Filepp
`§ 103(a) Filepp and Morten
`§ 103(a) Reilly and Tuniman
`
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`Claims Challenged
`2 and 10
`2 and 10
`
`
`
`
`
`Reference(s)
`Basis
`§ 103(a) Filepp and Olsen3
`§ 103(a) Reilly and December
`
`II. DISCUSSION
`
`A. Claim Construction
`Patent Owner asserts that the ’863 patent expires before issuance of a
`Final Written Decision. Paper 30, 2. For claims of an expired patent, the
`Board’s claim interpretation is similar to that of a district court. See In re
`Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). Neither Patent Owner nor
`Petitioner object to construing the terms under a district court style
`construction. Paper 32, 5; Paper 30, 2–3; Tr. 6:21–7:6. “In determining the
`meaning of the disputed claim limitation, we look principally to the intrinsic
`evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`(citing Phillips v. AWH Corp., 415 F.3d 1303, 1312‒17 (Fed. Cir. 2005) (en
`banc)). The words of a claim generally are given their ordinary and
`customary meaning, and that is the meaning the terms would have had to a
`person of ordinary skill at the time of the invention, in the context of the
`entire patent, including the specification. See Phillips, 415 F.3d at 1312–13.
`In a related litigation, the district court found that “toolbar” was
`defined in the specification as having “unique properties.” Ex. 2018, 14
`(quoting ’070 patent, 10:16–26)). In particular, the district court explained
`that the specification required “‘the toolbar of the present invention’ [to have
`
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`3 See footnote 2.
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`the] ability to be updated via a Pinger Process or a MOT script” and is
`described in each embodiment of the ’070 patent, which shares a
`specification in common with the ’863 patent, in conjunction with the ability
`to be updated by a Pinger process or a MOT script and thus, is definitional.
`Ex. 2018, 14. In addition to this disclosure (see Ex. 1001, 10:15–29), with
`respect to the only toolbar depicted in the ’863 patent in Figure 16, the ’863
`patent discloses that the toolbar can be generated using MOT script language
`in combination with data retrieved from the databases. Ex. 1001, 26:55–58,
`26:58–60, 11:5–13 (disclosing how the toolbar is built automatically
`according to MOT script specifications and button bar database 208
`information).
`We agree with the district court that each embodiment disclosing a
`toolbar in the ’863 patent is accompanied by a disclosure indicating that the
`toolbar is generated or updated via a Pinger process or a MOT script.
`Moreover, while not dispositive in our determination, nearly every
`disclosure of the Pinger process and the MOT script is accompanied by a
`disclosure of how updating the databases, including button bar database 208,
`is part of its responsibilities. The ’863 patent defines a Pinger process as:
`[A]n entity that acts transparently as a services coordinator to
`provide and/or administer the following:
`1. Heartbeat service to help maintain network
`connectivity with a client.
`2. Authentication services that securely authenticate client
`access to email, commerce, and other public and private
`network servers and services.
`3. Update services that can perform client software,
`database, and maintenance services during periods of
`inactivity.
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`The Pinger entity, as suggested above, has, as one of its
`functions, the responsibility of providing database updates to
`the client user.
`Ex. 1001, 10:17–32 (emphases added), 11:57–60 (disclosing the functions of
`the Pinger process as including read, write, and update capabilities for any of
`the databases, including button bar database 208), and 12:33–47 (disclosing
`how a Pinger process allows the download of database updates to user
`(computer) 110). Petitioner argues that the claimed “‘Pinger process’ would
`be satisfied by a process that sends messages to obtain, ascertain, or request
`information.” Reply 6; see Supp. Reply 6. Because we determine the
`disclosure in the ’863 patent to be definitional, we do not agree, as addressed
`in further detail in Sections II.D and II.E.
`The ’863 patent discloses the MOT script as “a ‘mime type’ definition
`part of an E-mail message, an HTTP web document download . . . which
`transparently automates the Toolbar update,” and as “defin[ing] how to
`build a button bar using the button bar database [208] and its database
`entries.” Ex. 1001, 10:32–35, 11:5–13 (emphases added).
`Because the ’863 patent discloses that a toolbar is necessarily
`generated and updated based on button bar database 208 and updates thereto,
`we determine that the disclosed toolbar is generated or updated via a Pinger
`process or MOT script. As such, we further determine that the ’863 patent
`defines “toolbar” as a button bar that can be generated, dynamically
`changed, or dynamically updated via a Pinger process or a MOT script. This
`construction is consistent with our determinations in the ’117 IPR and the
`’118 IPR. See ’117 IPR, Paper 12, 12–13 (construing “toolbar” in the ’070
`patent); see ’118 IPR, Paper 12, 12–13 (construing “toolbar” in the ’863
`patent).
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`For the foregoing reasons, we determine that “toolbar” should be
`construed as “a button bar that can be generated, dynamically changed, or
`dynamically updated via a Pinger process or a MOT script.” Although our
`construction differs from the district court’s construction in the addition of
`“generating,” the absence of the term “generating” does not change our
`conclusion that Petitioner fails to demonstrate, by a preponderance of the
`evidence, unpatentability of any of the challenged claims.
`B. Principles of Law
`“A claim is anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described, in a single prior
`art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
`F.2d 628, 631 (Fed. Cir. 1987).
`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 based on 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, when in evidence, (4) objective evidence of
`nonobviousness, i.e., secondary considerations. See Graham v. John Deere
`Co. of Kansas City, 383 U.S. 1, 17–18 (1966).
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
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`Cir. 2016) (citing 35 U.S.C. § 312(a)(3)) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”). This burden never shifts to Patent
`Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d
`1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc.,
`545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in
`inter partes review). Furthermore, Petitioner cannot satisfy its burden of
`proving obviousness by employing “mere conclusory statements.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`Thus, to prevail in an inter partes review, Petitioner must explain how
`the prior art anticipates the challenged claims and how the proposed
`combinations of prior art would have rendered the challenged claims
`unpatentable. We analyze the challenges presented in the Petition in
`accordance with the above-stated principles.
`C. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`resolving the level of ordinary skill in the art lies in the necessity of
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu-
`Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
`Petitioner asserts that “[a] Person of Ordinary Skill In The Art
`(‘POSITA’) would generally have had either (i) a Bachelors' degree in
`Computer Science or a similar field, and three or four years of work
`experience in software application design or related fields, or (ii) a Masters'
`degree in Computer Science or a similar field and two or three years of work
`
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`experience in software application design or related fields.” Pet. 11 (citing
`Ex. 1009 ¶¶ 63–66)
`Patent Owner asserts that “a person of ordinary skill in the art
`(‘POSITA’) would have a Bachelor’s degree in Computer Science or an
`equivalent field as well as at least three years of academic or industry
`experience in distributed systems and software application design for
`graphical user interfaces. PO Resp. 4 (citing Ex. 2017 ¶ 29).
`Based on our review of the ’863 patent, the types of problems and
`solutions described in the ’863 patent and cited prior art, the testimony of
`Petitioner’s and Patent Owner’s declarants, and the arguments and evidence
`adduced at trial, we agree with and apply Petitioner’s definition of a person
`of ordinary skill in the art at the time of the claimed invention. We note,
`however, that our analysis would not change under either definition.
`D. Asserted Grounds of Unpatentability Based on Reilly
`1. Overview of Reilly
`Reilly discloses data viewer 208, with center section 248 that displays
`news stories, which are selected using category buttons 250 and/or
`subcategory buttons 252. Ex. 1003, 13:38–48, Fig. 10. The category to
`which each news story is assigned is represented in one or more Data Access
`Tables 136. Id. at 4:48–49. Also with respect to the categories, Data Access
`Tables 186 are disclosed as being “used to access news stories,
`advertisements and display scripts associated with each of the categories of
`news items that are to be displayed on the subscriber’s workstation.” Id. at
`6:57–61. Reilly further discloses user profile 194 that includes category and
`subcategory preferences information 216, along with timestamps 217a–217c,
`which indicate the time of the last update to the subscriber computer’s
`
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`locally stored set of news stories and administrative files. Id. at 7:45–9. A
`default connection schedule calls for the subscriber’s computer to initiate a
`connection to the information server to receive updates. Id. at 8:19–24.
`Reilly discloses that
`
`Based on the time of day and the information in the
`transmitted user profile, the application server determines
`(A) what type of update is to be performed (i.e., a news item
`update or an administrative update), and (B) what new
`information needs to be downloaded to the client computer
`and what items in the client computer's local information
`database should be deleted. The application server 272 then
`makes calls to one or more data servers 274 to collect all the
`information that needs to be sent to the client computer and
`then sends those items to the client computer, along with
`instructions on what items, if any, should be deleted from the
`client computer's local information database.
`Id. at 14:62–15:6. The client computer thereafter loads the information and
`makes changes as needed, including updating Data Access Tables 186. Id.
`at 15:7–14.
`
`2. Petitioner’s Contentions
`In its Petition, Petitioner specifically points to category buttons 250
`shown in Figure 10 of Reilly as teaching the claimed “toolbar” recited in the
`sole independent claim, claim 1. See Pet. 19–20. In its Supplemental Reply,
`Petitioner assets that “Reilly discloses a toolbar (250) generated by scripts
`that is automatically periodically updated.” Supp. Reply 9 (citing Pet. 16–
`28; Ex. 1003, 13:38–48, Fig. 10). Petitioner further asserts that “[t]he
`toolbar information is stored in Data Access Tables 186, and updates thereto
`are directed to both software modules and the content of the toolbar (e.g.,
`categories, sub-categories, and news items).” Id. at 10 (citing Ex. 1003,
`
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`4:42–49, 6:57–61, 15:8–15; Pet. 17–18, 20–21, 25–26; Ex. 1021, 9–11).
`Specifically, Petitioner points to Reilly’s disclosure of display scripts as
`teaching that the toolbar can be generated via either a MOT script or a
`Pinger process. Id. at 10–11 (citing Pet. 16; Ex. 1003, 6:57–61).
`Petitioner also asserts that “Data Access Tables 186 provide data used
`to define how the toolbar (data viewer in Reilly) is displayed,” as “[i]t
`contains detailed scripting instructions for such actions.” Id. at 11 (citing
`Ex. 1003, 9:65–11:35) (emphasis added); see id. at 10–11 (citing Pet. 16; Ex.
`1003, 6:57–61). During oral argument, Petitioner did not appear to address
`the category buttons 250 with respect to its initial position that this element
`of Reilly discloses the claimed “toolbar,” but rather focused its remarks on
`Reilly’s data viewer and using display scripts to render news stories within
`the data viewer. See e.g., Tr. 19:15–16, 22:10–22.
`3. Patent Owner’s Contentions
`First, Patent Owner argues “Petitioner merely points to ‘category
`buttons 250’ of Reilly, but Petitioner makes no attempt to show that Reilly’s
`alleged toolbar ‘can be dynamically changed or updated via a Pinger process
`or a MOT script.’” Supp. Resp. 12 (citing Pet. 19–20), 13 (arguing
`“Petitioner has thus not addressed how . . . Reilly’s ‘category buttons 250’
`constituted the recited ‘toolbar’ under the proper district court claim
`construction standard”). Specifically, Patent Owner argues that, with respect
`to the display scripts,
`
`[T]hose are the scripts that would modify the movement of images
`across the screen during a screen saver. That’s what it is. It’s
`nothing to do with modifying a toolbar. And if it were to qualify
`as an MOT script, what petitioner would need to show is that you
`could use a display script in Reilly to actually modify the toolbar.
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`They can’t show that because nowhere in Reilly does it ever say
`the display scripts can be used for that.
`Tr. 36:6–13 (emphases added).
`Second, Patent Owner further argues that the updating software
`“doesn’t involve an interpretive programming language . . . [s]o to the extent
`there’s anything called a script in Reilly . . . the display script in Reilly is
`that script and has nothing to do with updating the toolbar.” Id. at 38:18–
`39:2; see id. at 38:3–11.
`Third, Patent Owner takes the position that the ’863 patent
`specification defines Pinger process as including a heartbeat service, an
`authentication service and an update service. Id. at 29:9–20. Patent Owner
`argues that “Petitioner chose not to address how Reilly’s alleged toolbar can
`be updated by such a process.” Supp. Resp. 12; see Tr. 37:10–18.
`4. Analysis
`Petitioner’s position that Reilly’s data viewer constitutes the “toolbar”
`was not advanced in its Petition. See generally Pet. As set forth above,
`Petitioner cited Reilly’s category buttons 250 as teaching the “toolbar.” See
`id. at 19–20. As Petitioner notes in the Petition, “[t]he category list can be
`updated by the personnel operating the information server, typically to add
`and delete special new categories associated with major news events such as
`a famous trial or event which generates many news stories.” Id. at 20–21
`(quoting Ex. 1003, 4:42–49). Petitioner further asserts that Reilly discloses,
`“the list of predefined categories is automatically updated based on changed
`information on the information server.” See Pet. 26 (quoting Ex. 1003, cl.
`
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`7). Petitioner supports its position with the First Declaration of Dr.
`Bederson, who testifies that
`Since the list of predefined categories in Reilly can be
`automatically changed based on the information in the
`information server, the toolbar is completely dynamic. New
`buttons can be added, existing buttons can be removed, and
`existing buttons can be changed. Thus, any attribute can be
`added, removed, or changed.
`Ex. 1009 ¶ 99. Although Petitioner shows that Reilly discloses that the
`categories can be automatically updated, Petitioner does not persuade us that
`the ordinarily skilled artisan would have understood that category buttons
`250 could have been updated by a MOT script or a Pinger process for the
`reasons discussed below.
`
`MOT Script4
`Reilly discloses that application server 272 determines whether a
`news item update or an administrative update is to be performed. Ex. 1003,
`14:63–65. Application server 272 further collects “all the information that
`needs to be sent to the client computer and sends those items . . . along with
`instructions on what items, if any, should be deleted from the client
`computer’s local information database.” Id. at 15:1–6. Even assuming,
`arguendo, that application server 272 updates the list of predefined
`categories on the information server, Petitioner does not establish that
`category buttons 250 could be updated by a script. Conversely, although
`
`
`4 During oral argument, there was some discussion of whether “MOT” was a
`nonce word. We do not determine whether “MOT” is a nonce word as such,
`a determination is not necessary to reach our conclusion that Petitioner has
`not demonstrated unpatentability of any of the challenged claims.
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`Reilly discloses display scripts, these scripts are disclosed with respect to
`displaying news stories and advertisements in center section 248 of data
`viewer 208. Ex. 1003, 5:25–34, 13:38–39. Petitioner does not establish that
`Reilly’s display scripts could be used to generate, update, or change
`category buttons 250, the predefined categories, or the category list,
`dynamically or otherwise. See generally Pet.
`Accordingly, Petitioner does not persuade us that Reilly discloses
`(inherently, implicitly, or expressly), teaches, or suggests that the categories
`corresponding to category buttons 250 could be generated, dynamically
`changed, or dynamically updated by a MOT script.
`Pinger Process
`As discussed above in Section II.A, the ’863 patent specification
`defines “Pinger process.” Supra § II.A (quoting Ex. 1001, 10:17–32).
`Although Petitioner states that it agrees the disclosure in the ’863 patent
`specification is definitional (see Tr. 46:4–9), Petitioner apparently takes the
`position that the capabilities of the Pinger process depend on whether it is
`being used in conjunction with an updateable toolbar, e-mail services, or
`services provided by Internet service providers (see id. at 46:9–47:10).
`We do not agree that the definition of Pinger process, and specifically,
`its capabilities, varies based on the embodiment in which the Pinger process
`is discussed. See id. at 46:9–47:10. Rather, as set forth above, the ’863
`patent specification defines a Pinger process as administering or providing
`the following services: a heartbeat service, an authentication service, and an
`update service. Ex. 1001, 10:17–32. To the extent that each of these
`services is not discussed in every embodiment, we determine that the
`capabilities of the Pinger process do not change based on the situation in
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`which it is being used, but rather that the Pinger process retains its
`capabilities even though it may not deploy each capability concurrently or in
`every situation.
`Petitioner contends that “a ‘Pinger process’ would be satisfied by
`processes that send messages to obtain, ascertain, or request information.”
`Supp. Reply 6. Petitioner contends that Reilly discloses “ping-like
`messages” and updating a toolbar based on the same. Tr. 46:19–47:1.
`However, Petitioner does not identify a “Pinger process” in Reilly because it
`does not identify an entity capable of performing a heartbeat service, an
`authentication service, and an update service as disclosed in the ’863 patent.
`See generally Pet. We disagree with Petitioner’s interpretation of the district
`court’s claim construction analysis as requiring “neither the Pinger process
`nor the MOT script . . . in order to meet the construction.” Reply 4 (citing
`Ex. 2018, 23–24 (claim construction order issued in relation to the ’070
`patent)). Rather, the district court stated that
`[T]he “toolbar” of the claimed invention necessarily “can be
`dynamically changed or updated via a Pinger process or a MOT
`script.” ’070 Patent 10:16–26 (emphasis added). But the toolbar,
`or the toolbar data, is not defined such that it must be updated via
`a Pinger process or a MOT script. The Court declines to interpret
`can be in the definitional statement of the “present invention” as
`“must be.”
`Ex. 201