Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 7
`
`Entered: April 11, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`KALDREN, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-02195
`Patent 6,820,807 B1
`____________
`
`
`
`
`Before MICHAEL R. ZECHER, DAVID C. McKONE, and
`SCOTT E. BAIN, Administrative Patent Judges.
`
`BAIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
` Paper No. 7
`
`Entered: April 11, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`KALDREN, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-02195
`Patent 6,820,807 B1
`____________
`
`
`
`
`Before MICHAEL R. ZECHER, DAVID C. McKONE, and
`SCOTT E. BAIN, Administrative Patent Judges.
`
`BAIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, Unified Patents Inc. (“Petitioner”), filed a Petition
`
`requesting an inter partes review of claims 1–4, 6–18, and 20–24 of U.S.
`
`Patent No. 6,820,807 (Ex. 1001, “the ’807 patent”). Paper 2 (“Pet.”). Patent
`
`Owner, Kaldren, LLC (“Patent Owner”), filed a Preliminary Response.
`
`Paper 6 (“Prelim. Resp.”).
`
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`
`unless the information presented in the Petition and Preliminary Response
`
`meets a “threshold” standard, namely, that such information “shows that
`
`there is a reasonable likelihood that the petitioner would prevail with respect
`
`to at least 1 of the claims challenged in the petition.” Upon review of the
`
`parties’ arguments and evidence in the record, we determine that the
`
`threshold standard has been met. Accordingly, we institute inter partes
`
`review of claims 1–4, 6–18, and 20–24 of the ’807 patent.
`
`II.
`
`BACKGROUND
`
`A. Related Matters
`
`
`
`The ’807 patent has been involved in several district court cases.
`
`Pet. 69–70; Paper 4, 1–2.
`
`B. Overview of the ’807 Patent
`
`The ’807 patent, titled “Variable Formatting of Digital Data into a
`
`Pattern,” issued November 23, 2004, from U.S. Patent Application No.
`
`09/717,840, filed November 21, 2000. Ex. 1001, [21], [22], [45], [54]. The
`
`’807 patent is a division of U.S. Patent Application No. 09/382,173, filed on
`
`August 23, 1999 (now U.S. Patent No. 6,176,427 B1), which is a division of
`
`2
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`U.S. Patent Application No. 08/609,549, filed on March 1, 1996 (now U.S.
`
`Patent No. 6,098,882). Id. at [62].
`
`The ’807 patent relates to formatting digital data into an encoded
`
`pattern, such as a bar code or dot pattern, on a substrate (e.g., paper).
`
`Ex. 1001, [57], 1:28–50, 4:50–58, 9:26–47. The encoded data could
`
`represent, for example, the location of an executable file, image, or word
`
`processing document. Id. at 6:67–7:17, 9:26–45. The encoded data pattern
`
`is subsequently decoded to reconstruct the original data, for example by
`
`using a scanner attached to a computing device. Id. at Fig. 1, 1:28–31,
`
`27:20–39. Decoding may, for example, cause human-readable text to appear
`
`on a computer display together with hyperlinks (Uniform Resource Locator,
`
`or URL) to additional sources of information about the text. Id. at 48:53–62,
`
`49:60–50:12, 50:21–32. The ’807 patent states that the invention enables
`
`“the ability to store far greater amounts of data in a limited space.” Id. at
`
`22:53–55.
`
`An embodiment is shown in Figure 9, reproduced below.
`
`3
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`FIG. 9
`
`
`
`
`
`Figure 9 illustrates an advertisement including human readable text
`
`(describing “Stanley’s Kat Klub”), graphic (a drawing of a cat’s face), and a
`
`datatile “containing digital data relevant to the human readable [text]” and
`
`graphic. Ex. 1001, 22:43–51. According to the readable text in Figure 9, a
`
`user may “SCAN, DECODE, and RUN” the datatile in order to determine
`
`the “location and phone number [of the] nearest” Stanley’s Kat Klub
`
`location. The ’807 patent states that the datatile in Figure 9 alternatively
`
`could “contain . . . the underlying file or files for the printed text and
`
`graphics.” Id. at 23:2–5.
`
`Another embodiment is shown in Figure 11, reproduced below.
`
`4
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`FIG. 11
`
`
`
`Figure 11 depicts datatiles 1101, 1102, and 1103, respectively,
`
`“enlarged for purposes of illustration.” Ex. 1101, 24:55–57. Datatiles “1101
`
`and 1102 are two datatiles that together contain one computer file.” Id. at
`
`24:60–61. Datatile 1103 “contains one whole computer file” which is larger
`
`in size than the one in datatiles 1101 and 1102. Id. at 24:61–64. According
`
`to the ’807 patent, datatiles 1101 and 1102 “were intended to be decoded by
`
`using a fax machine as a scanner,” and datatile 1103 was “intended to be
`
`5
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`decoded by using a flatbed scanner with an optical resolution of no less than
`
`300 dpi scanning 256 levels of gray scale.” Id. at 24:55–59. Figure 11, thus,
`
`illustrates “the ability to convey a base amount of data to all recipients
`
`regardless of their scanners’ capabilities by formatting at least one datatile
`
`using the lowest common denominator while providing significantly more
`
`data [i.e., in datatile 1103] to those with more powerful scanners.” Id. at
`
`25:2–7.
`
`C. Challenged Claims of the ’807 Patent
`
`
`
`Claims 1, 3, 12, and 20 are independent. Claim 1 and its dependent
`
`claim 2 are directed to a “method of accessing data” comprising various
`
`steps. Ex. 1001, 50:63–51:3. Independent claim 3 is directed to a “method
`
`for accessing information.” Id. at 51:7–16. Claims 4 and 6–11 depend
`
`directly or indirectly from claim 3. Independent claim 12 is directed to a
`
`“system for accessing an information resource” comprising a substrate and
`
`(as further discussed below) several means-plus-function elements. Id. at
`
`51:44–53. Claims 13–18 depend directly or indirectly from claim 12.
`
`Independent claim 20 is directed to a “method for retrieving an information
`
`resource.” Id. at 52:15–23. Claims 21–24 depend directly or indirectly from
`
`claim 20.
`
`
`
`Independent claim 1 is illustrative of the challenged claims and is
`
`reproduced below:
`
`1.
`
`A method of accessing data comprising:
`
`producing digital instructions for accessing data,
`
`formatting into a pattern the series of digital data values
`representing said digital instructions for accessing data,
`
`distributing the pattern of formatted digital data,
`
`6
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`decoding the pattern of formatted digital data, and
`
`activating the digital instructions for accessing data,
`whereby the data is accessed.
`
`Ex. 1001, 50:63–51:3.
`
`D. Prior Art References
`
`Petitioner relies upon the prior art references set forth in the tables
`
`below:
`
`Inventor1
`
`Patent / Pub. No. Relevant Dates
`
`Exhibit No.
`
`Laszlo
`
`US 5,331,547
`
`Wellner
`
`US 5,640,193
`
`Hudetz
`
`US 5,978,773
`
`Zdybel
`
`EP 0 459 792 A2
`
`issued July 19, 1994
`filed Jan. 29, 1993
`issued June 17, 1997
`filed Aug. 15, 1994
`issued Nov. 2, 1999,
`filed Oct. 3, 1995
`published Dec. 4, 1991
`filed May 30, 1991
`
`1007
`
`1004
`
`1008
`
`1006
`
`
`
`
`
`Non-Patent Literature
`
`Pierre David Wellner, Interacting with paper on the
`DigitalDesk, UNIVERSITY OF CAMBRIDGE COMPUTER
`LABORATORY, Technical Report Number 330 (ISSN 1476-
`2986) March 1994 (“Technical Report”)
`
`Exhibit No.
`
`10052
`
`
`
`1 For clarity and ease of reference, we only list the first named inventor.
`
`2 Petitioner does not map the Technical Report specifically to any claim
`elements in any of the Grounds of Unpatentability, but cites it in the
`background of the anticipation ground as supporting evidence for what was
`“well known” to a person of a person of ordinary skill in the art. Pet. 12.
`
`7
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`E. Asserted Grounds of Unpatentability
`
`
`
`Petitioner challenges claims 1–4, 6–18, and 20–24 of the ’807 patent
`
`based on the asserted grounds of unpatentability (“grounds”) set forth in the
`
`table below. Pet. 4, 11–67.
`
`Reference(s)
`
`Wellner
`
`Wellner and Hudetz
`
`Basis
`
`Challenged Claims
`
`§ 102(e)
`
`§ 103(a)
`
`1–4, 6–15, 18, and
`20–24
`16, 17, and 21
`
`Wellner and Zdybel
`
`§ 103(a)
`
`2, 13, and 14
`
`Laszlo and Zdybel
`
`§ 103(a)
`
`1–4, 6, 7, 12, 13, 15,
`20, 22, and 23
`
`
`
`III. ANALYSIS
`
`A. Claim Construction
`
`The ’807 patent is expired. Pet. 5; Ex. 1001. Our review of claim
`
`terms of an expired patent is similar to that of a district court’s review. In re
`
`Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). Specifically, we apply the
`
`principle that the words of a claim are given their ordinary and customary
`
`meaning, as understood by a person of ordinary skill in the art at the time of
`
`the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
`
`2005) (en banc). In determining the meaning of a claim limitation, we look
`
`principally to the intrinsic evidence of record, examining the claim language,
`
`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, 415 F.3d at 1312–17).
`
`8
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`Petitioner proposes claim constructions for five elements as discussed
`
`below, and identifies support in the record for each proposed construction.
`
`Pet. 5–11. Patent Owner does not contest Petitioner’s proposed claim
`
`constructions or offer its own proposed constructions. Accordingly, for the
`
`purposes of this Decision, we adopt Petitioner’s constructions as set forth
`
`below.
`
`1. “hyperlinks”
`(claims 2 and 13)
`
`The ’807 patent’s Specification refers to “hyperlinks” only once,
`
`stating that information appears on a computer screen “together with
`
`hyperlinks to further sources of information.” Ex. 1001, 48:53–62.
`
`Petitioner asserts that the “well understood meaning” of hyperlinks is
`
`“displayed data which, when selected, automatically accesses further sources
`
`of information.” Pet. 7 (citing Ex. 1011, Microsoft Computer Dictionary at
`
`240). Patent Owner does not dispute Petitioner’s proposed construction.
`
`Accordingly, on this record, and for the purposes of this Decision, we adopt
`
`Petitioner’s proposed construction because it is consistent with the ordinary
`
`and customary meaning of “hyperlinks,” as understood by one of ordinary
`
`skill in the art in light of the ’807 patent.
`
`2. “program code”
`(claims 3–11, 22, and 23)
`
`Petitioner asserts that “program code” is a “computer file, batch file,
`
`script file, application file, audio file, video file, executable file, visual
`
`image, word processing document, or functional parameter.” Pet. 7–8. In
`
`support of this construction, Petitioner cites the ’807 patent’s Specification’s
`
`disclosure of computer, batch, script, application and other data as
`
`constituting different types of program code. Id. at 7 (citing Ex. 1001, 6:67–
`
`9
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`7:5, 9:26–45, 7:5–21, 11:16–27, 46:9–39, 49:35–50:12). Patent Owner does
`
`not dispute Petitioner’s proposed construction. Accordingly, on this record,
`
`and for the purposes of this Decision, we adopt Petitioner’s proposed
`
`construction because it is consistent with the ordinary and customary
`
`meaning of “program code,” as understood by one of ordinary skill in the art
`
`in light of the ’807 patent.
`
`3. “arbitrarily complex piece of program code”
`(claims 22 and 23)
`
`Petitioner asserts that the ’807 patent’s Specification “provides little
`
`distinction between ‘program code’ and an ‘arbitrarily complex piece of
`
`program code.’” Pet. 8. Petitioner, however, notes that the Specification
`
`discloses “an arbitrarily complicated batch file, script file, application file, or
`
`executable file” can ease use by performing functions for the user, rather
`
`than the user having to know how to perform those functions. Ex. 1001,
`
`6:67–7:22. Petitioner, therefore, proposes that “arbitrarily complex piece of
`
`program code” includes “program code invoking a function.” Pet. 8. Patent
`
`Owner does not dispute Petitioner’s proposed construction. Accordingly, on
`
`this record, and for the purposes of this Decision, we adopt Petitioner’s
`
`proposed construction because it is consistent with the ordinary and
`
`customary meaning of “arbitrarily complex piece of program code,” as
`
`understood by one of ordinary skill in the art in light of the ’807 patent.
`
`10
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`4. “means for extracting the digital data values from
` the substrate”(claim 12)
`
`A claim term that includes the words “means for” is presumptively a
`
`means-plus-function element under 35 U.S.C. § 112 ¶ 6.3 See Williamson v.
`
`Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). Such terms are
`
`construed to cover the corresponding structure, material, or acts described in
`
`the specification and equivalents thereof. 35 U.S.C. § 112 ¶ 6.
`
`For purposes of this Decision, we agree with Petitioner’s assertion
`
`(Pet. 8) that the term “means for extracting the digital data values from the
`
`substrate” is a means-plus-function limitation. The term includes the words
`
`“means for” and Patent Owner, on the current record, presents no challenge
`
`rebutting the presumption. Therefore, we construe this term in accordance
`
`with 35 U.S.C. § 112 ¶ 6.
`
`The function recited by this term is “extracting the digital data values
`
`from the substrate.” Petitioner asserts the corresponding structure is “at least
`
`. . . ‘a scanner and computer configured to perform the steps of scanning and
`
`decoding’ and equivalents thereof.” Pet. 9–10 (citing Ex. 1001, 27:28–29;
`
`see also id. at 9:26–45, 27:20–22, 27:59–64); see also Ex. 1003 (Declaration
`
`of Mark Reboulet (“Reboulet Declaration”)) ¶ 44. Specifically, Petitioner
`
`asserts that the corresponding scanner is a “handheld scanner, a sheet-fed
`
`page scanner, a business card scanner, a drum scanner or another type of
`
`scanner attached to a personal computer.” Pet. 9.
`
`
`
`3 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”), re-
`designated as 35 U.S.C. § 112(f). Pub. L. No. 112-29, 125 Stat. 284, 296
`(2011). Because the ’807 patent has a filing date before the effective date of
`the AIA, we refer to the pre-AIA version of 35 U.S.C. § 112.
`
`11
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`Patent Owner does not dispute or address Petitioner’s proposed
`
`construction. Upon reviewing the Specification, we agree with Petitioner
`
`that the identified structure for performing the function of “extracting the
`
`digital data values from the substrate” is a scanner or computer.
`
`Accordingly, on this record, and for the purposes of this Decision, we adopt
`
`Petitioner’s proposed construction of a “means for extracting the digital data
`
`values from the substrate” as “‘a scanner and computer configured to
`
`perform the steps of scanning and decoding’ and equivalents thereof.”
`
`5. “means for retrieving the information resource identified
` by the digital data” (claim 12)
`
`For the same reasons as discussed in the preceding section, supra, we
`
`agree with Petitioner’s assertion that “means for retrieving the information
`
`resource identified by the digital data” is a means-plus-function limitation,
`
`which we construe in accordance with 35 U.S.C. § 112 ¶ 6.
`
`The function of this term is “retrieving the information resource
`
`identified by the digital data.” Petitioner proposes that the corresponding
`
`structure “would have at least included a computer programmed with an
`
`algorithm that performs the steps of: 1) activating a communication device,
`
`such as a modem, 2) accessing the information resource identified by the
`
`digital data, and 3) presenting that information resource to the user, and
`
`equivalents thereof.” Pet. 10–11 (citing Ex. 1001, 46:9–39, 49:16–23,
`
`49:35–50:32).
`
`Patent Owner does not dispute Petitioner’s proposed construction.
`
`Upon reviewing the Specification, we agree with Petitioner that the
`
`identified structure for performing the function of “retrieving the
`
`information resource identified by the digital data” is a special purpose
`
`12
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`computer. Accordingly, on this record, and for the purposes of this
`
`Decision, we adopt Petitioner’s proposed construction of a “means for
`
`retrieving the information resource identified by the digital data” as “a
`
`computer programmed with an algorithm that performs the steps of: 1)
`
`activating a communication device, such as a modem, 2) accessing the
`
`information resource identified by the digital data, and 3) presenting that
`
`information resource to the user, and equivalents thereof.”
`
`B. Anticipation of Claims 1–4, 6–15, 18, and 20–24 by Wellner
`
`Petitioner asserts four grounds of unpatentability regarding claims 1–
`
`4, 6–18, and 20–24. See supra at 10. Petitioner presents supporting
`
`arguments and evidence regarding each challenged claim, relying in part on
`
`Reboulet Declaration (Ex. 1003), the Technical Report (Ex. 1005), and the
`
`declaration of Scott Bennett, Ph.D. (“Bennett Declaration, Ex. 1013).
`
`Pet. 11–67. Patent Owner disputes Petitioner’s grounds of unpatentability.
`
`Prelim. Resp. 2–49.
`
`We address each ground in turn, beginning with Petitioner’s
`
`contention that claims 1–4, 6–15, 18, and 20–24 are anticipated by Wellner.
`
`Pet. 11–39. Petitioner explains how Wellner discloses the subject matter of
`
`each challenged claim, relying (where applicable) on the undisputed claim
`
`constructions discussed above. Id. Petitioner also relies on the Reboulet
`
`Declaration, the Technical Report, and the Bennett Declaration to support its
`
`positions. Ex. 1003 ¶¶ 32–45; Ex. 10054 at 10; Ex. 1013 ¶¶ 31–33. For the
`
`
`
`4 Exhibit 1005 includes multiple page numbers on each page. We use the
`pagination cited by Petitioner in its Petition, which corresponds to the page
`number appearing in the lower right-hand corner of the exhibit pages.
`
`13
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`reasons set forth herein, at this stage of the proceeding we are persuaded by
`
`Petitioner’s explanations and supporting evidence.
`
`We begin our analysis with a brief overview of the relevant principles
`
`of law and overview of the prior art reference (Wellner) relied upon by
`
`Petitioner. We then address the parties’ contentions.
`
`1. Principles of Law
`
`To anticipate a claim under § 102, a prior art reference “must disclose
`
`every limitation of the claimed invention, either explicitly or inherently.” In
`
`re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). The absence of a single
`
`limitation, even if that limitation would have been obvious from the cited
`
`reference, negates anticipation. Id.
`
`We analyze this asserted ground based on anticipation with the above-
`
`identified principles in mind.
`
`2. Overview of Wellner (Ex. 1004)
`
`Wellner discloses scanning “marks on an object” that cause
`
`multimedia service “commands” to execute. Ex. 1004, [57], 1:23–30, 35–
`
`38. An embodiment is shown in Figure 2, reproduced below.
`
`14
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`
`
`Figure 2 depicts a user hand selecting a movie from a paper catalog,
`
`by using scanner pen 11 to scan identification (ID) marks 10 corresponding
`
`to the movie (titled “Home Alone” in the embodiment of Figure 2), the
`
`electronic object (file) of which is accessible via interface unit (e.g., set-top
`
`box) 15. Ex. 1004, 4:65–5:3. Scanner pen 11 transmits (wirelessly 12 or by
`
`wire 19) information corresponding to ID marks 10 to interface unit 15,
`
`which “communicates with [a] multimedia server to request the movie that
`
`the user has selected” and then play it on television monitor 16. Id. at 5:1–8.
`
`Alternatively, the user may use scanner pen 11 to scan predefined “control
`
`functions” 17, which cause execution of various functions (such as start,
`
`stop, or pause certain content) by interface unit 15 and television monitor 16.
`
`Id. at 5:17–24.
`
`
`
`Wellner further discloses that the ID marks may, for example, be “bar
`
`codes, alphanumeric characters, or Xerox glyphs” on the “surface of an
`
`object,” such as “paper, plastic, or other material.” Id. at 2:22–27. Wellner
`
`also discloses that the marks may accompany photos or “advertisement”
`
`15
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`such as in a “newspaper, magazine, or catalog,” in “books and pamphlets,”
`
`or in “text books” for distance learning. Id. at 2:29–41.
`
`3. Claim 1
`
`a. “producing digital instructions for accessing data [and]
`formatting into a pattern the series of digital data values
`representing said digital instructions for accessing data”
`
`Petitioner contends Wellner discloses the foregoing steps of claim 1 in
`
`its description of encoding and formatting information into bar codes or
`
`Xerox glyphs, for accessing electronic objects. Pet. 14–15. Specifically,
`
`Petitioner asserts Wellner discloses a “unique identifier code for electronic
`
`objects [such as files corresponding to movies or games] on [an] ITV
`
`network.” Pet. 14; Ex. 1004, 4:26–64. Petitioner explains that Wellner
`
`discloses that the identifier codes are encoded (formatted) in “marks”
`
`(pattern) that represent the unique identifier codes, and may be scanned (e.g.,
`
`by a scanner pen) to access the electronic object (data). Pet. 14–15;
`
`Ex. 1004, 1:47–51, 4:26–64; see also Ex. 1003 ¶ 34; Ex. 1004, Fig. 2
`
`(reproduced supra, Sect. III.B.2).
`
`Patent Owner responds that Wellner discloses neither “digital
`
`instructions,” nor “formatting” such instructions into a pattern. Prelim.
`
`Resp. 4–5. Patent Owner, however, does not explain its contentions or
`
`address the disclosures of Wellner relied upon by Petitioner. Patent Owner,
`
`for example, does not offer sufficient or credible evidence explaining how
`
`the “marks” or bar codes in Wellner differ from the recited “pattern.”
`
`Ex. 1004, 2:23–26, 4:58–60. Moreover, as Petitioner asserts, Wellner states
`
`that, after scanning a bar code, the scanner pen sends “information” to the
`
`interface (set top box) requesting the movie the user has selected, and the
`
`movie then is played on the television monitor. Ex. 1004, 5:1–7; see also
`
`16
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`Ex. 1004, Fig. 2. Thus, we are persuaded, on this record, by Petitioner’s
`
`contentions that Wellner discloses digital instructions for accessing data
`
`(e.g., a movie file) and formatting those instructions into patterns
`
`representing the instructions. Similarly, we are persuaded, on this record,
`
`that Wellner’s description of an “advertisement” accompanied by a “printed
`
`bar code” to “retrieve the associated multimedia document,” discloses the
`
`recited formatting into a pattern. Ex. 1004, 2:29–33.
`
`Hence, on this record and for purposes of this Decision, we are
`
`persuaded Petitioner has demonstrated sufficiently that Wellner discloses
`
`“producing digital instructions for accessing data” and “formatting into a
`
`pattern the series of digital data values representing said digital instructions
`
`for accessing data,” as recited in claim 1.
`
`b. “distributing the pattern of formatted digital data”
`
`Petitioner contends Wellner discloses “distributing” the pattern of
`
`formatted digital data in its description of advertisements in newspapers,
`
`magazines, or catalogs, wherein the advertisements include bar codes or
`
`glyphs for accessing further information about the product or service being
`
`advertised. Pet. 15 (citing Ex. 1004, Fig. 2, 2:28–42). A person of ordinary
`
`skill would understand, according to Petitioners, that the advertisements in
`
`Wellner have been distributed by direct mail or similar “distribution”
`
`channels, just as the ’807 patent (Ex. 1001, 44:59–45:5) discloses mail
`
`distribution of advertisements. Pet. 15–16 (citing Ex. 1004, 2:28–42, 6:9–
`
`46; Ex. 1003 ¶ 35).
`
`Patent Owner responds that no “formatted digital data” is distributed
`
`in Wellner, because Wellner does not disclose formatting of digital data.
`
`Prelim. Resp. 6–7. This response, however, is redundant to the argument
`
`17
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`regarding the claim limitations discussed above, and not persuasive for the
`
`same reasons. Patent Owner further contends (Prelim. Resp. 6–7) that
`
`Wellner fails to disclose “distributing” anything, but as Petitioner asserts,
`
`Wellner describes a wide variety of print and multimedia “advertisements”
`
`“received” by (and therefore distributed to) a user. Pet. 15; Ex. 1004, 6:9–
`
`45.
`
`Hence, on this record and for purposes of this Decision, we are
`
`persuaded Petitioner has demonstrated sufficiently that Wellner discloses
`
`“distributing the pattern of formatted digital data,” as recited in claim 1.
`
`c. “decoding the pattern of formatted digital data”
`
`Petitioner contends Wellner discloses “decoding” the pattern in Figure
`
`2 and its accompanying description. Pet. 16 (citing Ex. 1004, Fig. 2, 1:36–
`
`39, 2:30–35, 3:21–23, 4:58–64, 5:37–48; see also id. at 2:47–65). Patent
`
`Owner responds that “Wellner contains no actual disclosure of decoding
`
`taking place,” but rather that Wellner only discloses “interpreting” the
`
`scanned mark. Prelim. Resp. 7–8 (emphasis omitted).
`
`Patent Owner, however, does not offer sufficient or credible evidence
`
`explaining how “interpreting” the mark (which itself represents information)
`
`would be distinct from “decoding” it. See Standard Havens Prods., Inc. v.
`
`Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991) (an anticipating
`
`reference “need not duplicate word for word what is in the claims.”).
`
`Instead, Petitioner’s evidence shows that “interpreting” is the same as the
`
`claimed “decoding.” As Petitioner contends, Wellner illustrates and
`
`describes a user selecting a film from a paper catalog, by “scan[ning] the
`
`identification (ID) marks next to the description of the film with the scanner
`
`pen,” after which the pen “transmits scanned information from the paper to
`
`18
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`the interface unit.” Pet. 16–17 (citing Ex. 1004, 4:65–5:3, 5:37–44);
`
`Ex. 1004, Fig. 2 (reproduced supra, Section III.B.2). We are persuaded by
`
`Petitioner’s argument that these steps, along with “interpreting” the scanned
`
`information to determine its content, constitute decoding the pattern of
`
`formatted digital data (i.e., the mark or bar code). Moreover, as Petitioner
`
`argues (Pet. 17), Wellner also discloses that “[o]ptionally, the scanner pen []
`
`may include a controller/interpreter which decodes the unprocessed output
`
`from [the] scanning head.” Ex. 1004, 2:51–53.
`
`Hence, on this record and for purposes of this Decision, we are
`
`persuaded Petitioner has demonstrated sufficiently that Wellner discloses
`
`“decoding the pattern of formatted digital data,” as recited in claim 1.
`
`d. “activating the digital instructions for accessing
`data, whereby the data is accessed.”
`
`Similar to the foregoing limitations, Petitioner contends the
`
`“activating” step is disclosed in Wellner’s description of scanning a bar code
`
`in a catalog, communicating to a set top box (interface) the instructions
`
`resulting from the scan, and the instructions causing the interface to play a
`
`selected movie on a television monitor. Pet. 17–18 (citing Ex. 1004, 1:33–
`
`51, 4:26–45, 4:58–64, 5:49–66, 6:10–16). Patent Owner responds that
`
`Wellner fails to disclose “decoding” and “digital instructions.” Prelim.
`
`Resp. 8–9. These arguments, however, are redundant to the arguments
`
`regarding the preceding limitations, which we found unpersuasive on this
`
`record. See supra. Patent Owner further contends (id. at 9) that Petitioner
`
`“injects its own conclusions” into the disclosures of Wellner, but does not
`
`identify any such conclusions wrongly drawn or injected.
`
`19
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`Hence, on this record and for purposes of this Decision, we are
`
`persuaded Petitioner has demonstrated sufficiently that Wellner discloses
`
`“activating the digital instructions for accessing data, whereby the data is
`
`accessed,” as recited in claim 1.
`
`e. Summary – Claim 1
`
`On this record and for purposes of this Decision, we are persuaded
`
`that Petitioner has demonstrated sufficiently that Wellner discloses every
`
`limitation of claim 1, and, thus, has demonstrated a reasonable likelihood of
`
`prevailing in its challenge to claim 1 under 35 U.S.C. § 102(e) as anticipated
`
`by Wellner.
`
`4. Claim 2
`
`Dependent claim 2 recites the method of claim 1 wherein the digital
`
`instructions for accessing data “consists of hyperlinks to information
`
`extraneous to said formatted digital data.” Ex. 1001, 51:4–6. Petitioner
`
`argues Wellner discloses that the encoded marks may work in a way similar
`
`to “Internet Universal Resource Locator[s] (URL[s]),” and may be “invisibly
`
`linked to on-screen buttons” which enable display of information related to
`
`the electronic object. Pet. 18–19 (citing Ex. 1001, 4:26–45, claims 3, 24, 25;
`
`Ex. 1003 ¶¶ 36–37). Petitioner argues (Pet. at 19) a person of ordinary skill
`
`in the art would have understood this disclosure as hyperlinks (i.e., displayed
`
`data), which, when selected, automatically accesses further sources of
`
`information. See supra Section III.A.1 (claim construction); Ex. 1003
`
`¶¶ 36–37.
`
`Patent Owner, in response, acknowledges Wellner discloses a URL
`
`but argues a URL “is not the same thing as a ‘hyperlink.’” Prelim. Resp.
`
`10–11. Patent Owner explains that a URL is an “address that specifies a
`
`20
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`location” on the Internet, whereas a hyperlink is “an element in an electronic
`
`document that links to another place.” Id. at 11.5 As Petitioner contends,
`
`however, Wellner also discloses on-screen buttons invisibly “linked” to
`
`electronic objects (i.e., sources of information). Ex. 1004, 4:26–45. Hence,
`
`on this record and for purposes of this Decision, we are persuaded Petitioner
`
`has demonstrated sufficiently that Wellner discloses digital instructions for
`
`accessing data that “consists of hyperlinks to information extraneous to said
`
`formatted digital data,” as recited in claim 2.
`
`5. Claims 8 and 24
`
`Dependent claim 8 recites “launching an application program on the
`
`computer; and loading the first program code within the application
`
`program.” Ex. 1001, 51:34–36 (emphasis added). Petitioner argues Wellner
`
`discloses retrieving a first program code such as a movie for presentation on
`
`a “computer,” wherein the movie may be in the form of a moving picture
`
`experts group or an MPEG data stream that must be decompressed by
`
`interface 15 before it can be displayed or played on the television or
`
`receiver. Pet. 28 (citing Ex. 1004, Figs. 1–3, 2:28–42, 3:40–45, 5:12–65).
`
`Petitioner contends a person of ordinary skill in the art would have
`
`understood this disclosure as utilizing an “application program” for
`
`decompressing the file and playing the video stream, and would have
`
`understood that the application program necessarily would “launch” and the
`
`
`
`5 At this stage in the proceeding, Patent Owner did not expressly challenge
`or rebut Petitioner’s proposed claim construction of the term “hyperlink,”
`see supra Section III.A.1, and identifies no differences between Petitioner’s
`construction and the definition used in Patent Owner’s argument regarding
`claim 2.
`
`21
`
`
`
`IPR2017-02195
`Patent 6,820,807 B1
`
`
`video stream “load” in order to decompress and play the video. Pet. 28–29
`
`(citing Ex. 1003 ¶ 42). Petitioner argues the same passages in Wellner also
`
`disclose “loading the retrieved information resource by an application
`
`program,” as recited in claim 24. Pet. 39; Ex. 1001, 52:32–33. On this
`
`record, we find Petitioner’s evidence and explanations persuasive.
`
`Patent Owner responds that Petitioner has not “specifically
`
`identifie[d]” an “application program” in Wellner. Prelim. Resp. 17–18, 27–
`
`28. Patent Owner argues that, without support for this limitation in Wellner
`
`itself, Petitioner’s reliance on the Reboulet Declaration (Ex. 1003) is
`
`insufficient to demonstrate that Wellner discloses the recited “application
`
`program.” Id. at 17.
`
`In the context of anticipation, however, we consider Wellner “together
`
`with the knowledge of one of ordinary skill in the pertinent art.” In re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d
`
`559, 562 (CCPA 1978)). The “dispositive question regard
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
