UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`HYPERMEDIA NAVIGATION LLC,
`Patent Owner.
`
`IPR2018-01519
`U.S. Patent No.: 9,772,814
`Issued: September 26, 2017
`Application No.: 14/728,576
`Filed: June 2, 2015
`Title: SYSTEM AND METHOD FOR CREATING AND
`NAVIGATING A LINEAR HYPERMEDIA RESOURCE PROGRAM
` _________________
`
`PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,772,814
`
`
`

`

`TABLE OF CONTENTS
`
`IPR2018-01519
`Patent 9,772,814
`
`Page(s)
`
`LIST OF EXHIBITS ................................................................................................. iv
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ............................................ vi
`
`1.
`
`2.
`
`3.
`
`Real Party-In-Interest ................................................................. vi
`
`Related Matters .......................................................................... vi
`
`Lead And Back-Up Counsel, And Service Information .......... vii
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. GROUNDS FOR STANDING PER SECTION 42.104(A) ............................ 3
`
`III.
`
`IDENTIFICATION OF CHALLENGE .......................................................... 3
`
`IV. THE ’814 PATENT ......................................................................................... 5
`
`A.
`
`Prosecution History ............................................................................... 5
`
`B.
`
`The Challenged Claims ......................................................................... 6
`
`V.
`
`LEVEL OF SKILL IN THE ART ................................................................... 7
`
`VI. CLAIM CONSTRUCTION ............................................................................ 7
`
`A.
`
`Proposed Constructions ......................................................................... 8
`
`VII. GROUND 1: CLAIMS 14-18 AND 20
`OBVIOUS OVER GUIDED PATHS ........................................................... 11
`
`A. Guided Paths ........................................................................................ 11
`
`B.
`
`C.
`
`Claim 14 .............................................................................................. 15
`
`Claim 15 .............................................................................................. 24
`
`D.
`
`Claim 16 .............................................................................................. 25
`
`E.
`
`Claim 18 .............................................................................................. 28
`
`Page i
`
`

`

`IPR2018-01519
`Patent 9,772,814
`
`F.
`
`Claim 20 .............................................................................................. 30
`
`VIII. GROUND 2: CLAIMS 14-18
`OBVIOUS OVER GUIDED PATHS AND FOOTSTEPS ........................... 40
`
`IX. GROUND 3: CLAIMS 14-18 AND 20
`OBVIOUS OVER RICHARDSON .............................................................. 44
`
`A.
`
`Richardson ........................................................................................... 44
`
`B.
`
`Claim 14 .............................................................................................. 46
`
`C.
`
`Claim 15 .............................................................................................. 55
`
`D.
`
`Claim 16 .............................................................................................. 58
`
`E.
`
`F.
`
`Claim 17 .............................................................................................. 60
`
`Claim 18 .............................................................................................. 61
`
`G.
`
`Claim 20 .............................................................................................. 65
`
`X. GROUND 4: CLAIM 16
`OBVIOUS OVER RICHARDSON AND GUIDED PATHS ....................... 77
`
`A.
`
`Claim 16 .............................................................................................. 77
`
`XI. CONCLUSION .............................................................................................. 80
`
`CERTIFICATE OF COMPLIANCE ....................................................................... 82
`
`
`
`
`
`Page ii
`
`

`

`TABLE OF AUTHORITIES
`
`IPR2018-01519
`Patent 9,772,814
`
`Page(s)
`
`Cases
`
`Becton, Dickinson and Co. v. B Braun Melsungen AG,
`IPR2017-01586, Paper 8 (Dec. 15, 2017) .............................................................. 5
`
`GoPro, Inc. v. Contour IP Holding LLC,
`Case Nos. 2017-1894, -1936 (Fed. Cir. Jul. 27, 2018) .........................................14
`
`In re Curry,
`84 USPQ2d 1272 (BPAI 2005) (“Informative Opinion”) (aff’d by Fed. Cir.
`Appeal No. 2006-1003, June 12, 2006) .................................................................. 9
`
`In re Epstein,
`32 F.3d 1559 (Fed. Cir. 1994) ....................................................................... 17, 48
`
`In re Fox,
`471 F.2d 1405 (CCPA 1973) ................................................................... 17, 48, 80
`
`Microsoft Corp. v. Parallel Networks,
`IPR2015-00486, 2015 WL 4760578 (July 15, 2015) ............................................. 4
`
`Statutes
`
`35 U.S.C. § 102 ................................................................................................ passim
`
`35 U.S.C. § 103 ....................................................................................................3, 25
`
`Regulations
`
`37 C.F.R. § 42.10 ................................................................................................... viii
`
`37 C.F.R. § 42.15 ....................................................................................................... 3
`
`
`
`
`
`
`
`
`
`Page iii
`
`

`

`IPR2018-01519
`Patent 9,772,814
`
`LIST OF EXHIBITS
`
`No.
`
`Description
`
`1001
`
`U.S. Patent No. 7,424,523 (“’523 patent”)
`
`1002
`
`U.S. Patent No. 9,083,672 (“’672 patent”)
`
`1003
`
`U.S. Patent No. 9,772,814 (“’814 patent”)
`
`1004
`
`Shipman et al., Using Networked Information to Create
`Educational Guided Paths, Int’l Journal Educ. Telecomms. 3(4),
`383-400 (1997) (“Guided Paths”)
`
`1005
`
`U.S. Patent No. 5,809,247 (“Richardson”)
`
`1006
`
`Nicol et al., Footsteps: Trail-blazing the Web, Computer
`Networks and ISDN Systems 27, 879-885 (1995) (“Footsteps”)
`
`1007
`
`U.S. Patent No. 7,155,451 (“Torres”)
`
`1008
`
`U.S. Patent Application No. 08/922,063 (“’063 Application”)
`
`1009
`
`1010
`
`1011
`
`Furuta et al., Hypertext Paths and the World-Wide Web:
`Experiences with Walden’s Paths, Association for Computing
`Machinery – Hypertext 97 (July 1997) (“Hypertext Paths”)
`
`Shipman et al., Generating Web-Based Presentations in Spatial
`Hypertext, Association for Computing Machinery – Intelligent
`User Interfaces (January 1997) (“Web-Based Presentations”)
`
`Plaintiff Hypermedia Navigations LLC’s P.L.R. 4-2 Claim
`Construction & Extrinsic Evidence, Case No. 4:18-cv-00670-
`HSG (N.D. Cal.) (July 20, 2018)
`
`Page iv
`
`

`

`IPR2018-01519
`Patent 9,772,814
`
`No.
`
`Description
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`Microsoft Proposed Preliminary Claim Constructions, Case No.
`4:18-cv-00670-HSG (N.D. Cal.) (July 20, 2018)
`
`John, et al., HTML & CGI UNLEASHED, Sams.net Publishing
`(1995) (“HTML&CGI”)
`
`Declaration of Professor Loren Terveen, signed and dated August
`10, 2018 (“Terveen”)
`
`Declaration of Professor Frank Shipman, signed and dated August
`7, 2018 (“Shipman”)
`
`Declaration of Dr. James Mullins, signed and dated August 9,
`2018 and attachments 1A-1F and attachments 2A-2E (“Mullins”)
`
`1017
`
`File History of U.S. Patent No. 6,145,000
`
`1018
`
`File History of U.S. Patent No. 7,424,523
`
`1019
`
`File History of U.S. Patent No. 9,083,672
`
`1020
`
`File History of U.S. Patent No. 9,772,814
`
`1021
`
`Exhibit J to Plaintiff’s Disclosure of Asserted Claims and
`Infringement Contentions, Case No. 4:18-cv-00670-HSG (N.D.
`Cal.), served May 1, 2018
`
`1022
`
`File History of U.S. Patent No. 7,478,144 (excerpts)
`
`1023
`
`Declaration of Christopher Butler, signed and dated August 9,
`2018 and Exhibit A (“Butler”)
`
`
`
`
`
`Page v
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`

`

`IPR2018-01519
`Patent 9,772,814
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`1.
`
`Real Party-In-Interest
`
`Microsoft Corporation is the sole real party-in-interest.
`
`2.
`
`Related Matters
`
`Concurrent with this petition challenging U.S. Patent No. 9,772,814
`
`(“’814 patent” or “’814”, Ex. 1003), Petitioner is also filing petitions for inter partes
`
`review challenging claims of related U.S. Patent Nos. 7,424,523 and 9,083,672, as
`
`IPR2018-01537 and IPR2018-01518, respectively. Petitioners understand that these
`
`three IPRs may be assigned to the same panel, given that (i) the challenged patents
`
`not only are related but all have the same title, (ii) there are no material differences
`
`across the written description and figures of the challenged patents, and (iii) there is
`
`overlap of claim elements across the challenged patents. Accordingly, for ease of
`
`reference, Petitioners use the same exhibits and exhibit numbers for these three
`
`petitions to the extent possible.
`
`The ’814 Patent (Ex. 1003) is asserted in the following litigations:
`
`Hypermedia Navigation LLC v. Microsoft Corporation, 4-18-cv-00670 (N.D. Cal);
`
`Hypermedia Navigation LLC v. Facebook, Inc., 4-17-cv-05383 (N.D. Cal.).
`
`The following patents claim priority to the ’814 patent or its alleged priority
`
`application: U.S. Pat. Nos. 9,990,174; 9,864,575; 9,083,672; 8,250,173; 8,250,170,
`
`Page vi
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`

`

`IPR2018-01519
`Patent 9,772,814
`
`7,769,830, 7,478,144; 7,539,738; 7,424,523; 7,383,324; 7,383,323; 7,216,155;
`
`6,779,026; 6,330,596; and 6,145,000.
`
`A petition for IPR of related U.S. Pat. No. 7,769,830 was filed on June 22,
`
`2018 as Unified Patents Inc. v. Hypermedia Navigation LLC, PTAB-IPR2018-
`
`01286.
`
`3.
`
`Lead And Back-Up Counsel, And Service Information
`
`Lead Counsel
`
`Back-up Counsel
`
`Andrew M. Mason, Reg. No. 64,034
`andrew.mason@klarquist.com
`
`Todd M. Siegel, Reg. No. 73,232
`todd.siegel@klarquist.com
`
`Derrick W. Toddy, Reg. No. 74,591
`derrick.toddy@klarquist.com
`
`Garth A. Winn, Reg. No. 33,220
`garth.winn@klarquist.com
`
`John D. Vandenberg, Reg. No. 31,312
`john.vandenberg@klarquist.com
`KLARQUIST SPARKMAN, LLP
`121 SW Salmon Street, Suite 1600
`Portland, Oregon, 97204
`503-595-5300 (phone)
`503-595-5301 (fax)
`
`Petitioner consents to service via email at the above email addresses.
`
`Pursuant to 37 C.F.R. § 42.10(b), concurrently filed with this Petition is a
`
`Power of Attorney executed by Petitioner and appointing the above counsel.
`
`
`
`
`Page vii
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`

`

`IPR2018-01519
`Patent 9,772,814
`
`I.
`
`INTRODUCTION
`
`Microsoft Corporation (“Petitioner”) respectfully requests inter partes review
`
`(“IPR”) of claims 14-18 and 20 of the ’814 patent (Ex. 1003), allegedly owned by
`
`Hypermedia Navigation LLC (“Patent Owner”).
`
`The ’814 patent identifies a problem well known to anyone who has browsed
`
`the Web or virtually any other collection of vast amount of information: an
`
`“increasingly unorganized, virtually unlimited number of choices that are available”
`
`(’814, 1:64-65) compounded by “the amount of useless, undesirable material that
`
`appears on the Web” (’814, 2:5-6). The patent purports to solve this problem with
`
`what it calls a “linear program” (’814, Abstract). This “linear program” contains
`
`Web and other elements but, unlike the unorganized Web, it purportedly is akin to
`
`“television shows, movies, radio programs, and concerts which all proceed linearly
`
`from a beginning to an end.” (’814, 1:59-61.) The patent also identifies ways in
`
`which a user can navigate through this linear program, such as pressing a “forward”
`
`or “back” button to move to the next or previous element. (’814, 3:47-51 and 4:40-
`
`45.)
`
`Both this problem and the purported solution were old by the time of the
`
`alleged ’814 invention. For example, Footsteps (Ex. 1006) in 1995 described the
`
`“conflict” presented by “the possibilities for open-ended exploration presented by
`
`the Web,” which resulted in “[n]ovice users often feel[ing] lost in the information
`
`Petition for Inter Partes Review of USP 9,772,814
`
`Page 1
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`

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`IPR2018-01519
`Patent 9,772,814
`
`spaces, unsure of where they are.” (Footsteps, 880.) It then laid out a solution just
`
`like that described in the ’814 patent: “a guided tour system for the Web, called
`
`Footsteps,” that allowed authors to “set a pre-defined path for users to navigate.”
`
`(Id.) This tour system included forward and back arrows for navigation (id., 882 and
`
`Fig. 2) and an index that “allow[ed] users to examine the overall structure of the
`
`tour” and jump directly to specific pages on the tour” (id., 881 and Fig. 4). Footsteps
`
`also noted earlier “guided tours” or “trails,” which were “employed to aid novice
`
`users navigate [sic] through information spaces.” (Id., 880.)
`
`Primary reference Guided Paths (Ex. 1004) itself references Footsteps, and
`
`also provides a description of its own “linear path” or “guided path” system. Primary
`
`reference Richardson (Ex. 1005) describes a linear Web tour that contains both Web
`
`pages and corresponding audio and video “media complements.” In fact, Footsteps,
`
`Guided Paths, and Richardson describe linear path / tour systems in much more
`
`detail than the ’814 patent itself.
`
`The challenged claims present nothing not already found in these and other
`
`prior art references. For the reasons set forth below, claims 14-18 and 20 are
`
`unpatentable and should be cancelled.
`
`Petition for Inter Partes Review of USP 9,772,814
`
`Page 2
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`

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`IPR2018-01519
`Patent 9,772,814
`
`II. GROUNDS FOR STANDING PER SECTION 42.104(A)
`
`Petitioner certifies that the ’814 patent is available for IPR and that Petitioner
`
`is not barred or estopped from requesting an IPR challenging the patent claims on
`
`the grounds identified in this petition.
`
`Per 37 C.F.R. § 42.15(a), at time of filing electronic payment of $30,500 is
`
`being made from deposit account no. 02-4550, to which any fee adjustments may be
`
`debited/credited.
`
`III.
`
`IDENTIFICATION OF CHALLENGE
`
`This petition relies on two primary references (Guided Paths and Richardson)
`
`in presenting the following statutory grounds of unpatentability:
`
`
`
`Reference(s)
`
`Basis
`
`Claims
`
`Ground 1 Guided Paths (Ex. 1004)
`
`103
`
`14-18, 20
`
`Ground 2 Guided Paths and Footsteps
`(Ex. 1006)
`
`103
`
`14-18
`
`Ground 3 Richardson (Ex. 1005)
`
`103
`
`14-18, 20
`
`Ground 4 Richardson in view of
`Guided Paths
`
`103
`
`16
`
`For each ground, in Sections VII-X below, the petition demonstrates at least
`
`a reasonable likelihood that each Challenged Claim is unpatentable.
`
`Petition for Inter Partes Review of USP 9,772,814
`
`Page 3
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`

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`IPR2018-01519
`Patent 9,772,814
`
`The two primary references present different issues. Guided Paths is non-
`
`patent prior art under Section 102(a), and discloses one type of linear tour system
`
`that includes a path authoring tool. Richardson, on the other hand, is a U.S. patent
`
`that qualifies as prior art under Sections 102(a) and 102(e), and discloses a different
`
`type of linear tour that includes Web pages and “media complements.” (Infra
`
`Sections VII.A, IX.A.)
`
`Neither the prior art disclosures nor arguments presented herein, nor
`
`substantially similar disclosures nor arguments, have been previously considered by
`
`the Office. Patent Owner submitted Guided Paths, and listed it on an IDS, during
`
`prosecution of related U.S. Pat. No. 9,990,174 (“’174 patent”). Patent Owner listed
`
`Richardson on IDSs presented to
`
`the Office during prosecution of
`
`the
`
`challenged ’814 patent, the ’174 patent, and related U.S. Pat. Nos. 9,083,672 and
`
`9,864,575. But no rejections ever issued based on Guided Paths or Richardson, and
`
`nothing in the record indicates that particular consideration was given to these
`
`references, much less that the Examiner ever considered the specific disclosures
`
`cited in this Petition. Microsoft Corp. v. Parallel Networks, IPR2015-00486, 2015
`
`WL 4760578, at *8 (July 15, 2015) (rejecting argument that institution be denied
`
`under Section 325(d), because, though listed on an IDS, “the references were not
`
`applied against the claims and there is no evidence that the Examiner considered the
`
`particular disclosures cited by … the Petition”); Cf. Becton, Dickinson and Co. v. B
`
`Petition for Inter Partes Review of USP 9,772,814
`
`Page 4
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`

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`IPR2018-01519
`Patent 9,772,814
`
`Braun Melsungen AG, IPR2017-01586, Paper 8 at 23 (Dec. 15, 2017) (designated
`
`“informative”) (denying institution under Section 325(d) while noting “[t]his is not
`
`a case where the prior art was simply listed in an IDS during prosecution”).
`
`IV. THE ’814 PATENT
`
`The ’814 Patent issued September 26, 2017, from an application filed June 2,
`
`2015; it alleges indirect priority through a string of applications to Application No.
`
`09/167,514, filed October 6, 1998, now U.S. Patent No. 6,145,000.
`
`A.
`
`Prosecution History
`
`The prosecution leading to the ’814 patent involved only a single Office action
`
`that raised only non-statutory double-patenting rejections over the claims of related
`
`U.S. Pat. No. 9,083,672. (Ex. 1020, 64-69.) All claims were allowed after applicants
`
`filed a terminal disclaimer. (Id., 51.)
`
`For the entire family of related patents/applications, only two prior art-based
`
`rejections were ever issued. The first occurred during prosecution of the parent ’000
`
`patent. (Ex. 1017, 92-106.) In response, then-applicants amended the claims to
`
`overcome claim objections and argued that the cited prior art did not “teach or
`
`suggest a linear Web program that comprises selected hypermedia resources that are
`
`associated by a series of exclusive forward links,” as recited by those claims. (Id.,
`
`117-118.) As to other independent claims, then-applicants argued that the prior art
`
`did not teach “a Web program having a linear linked sequence of program elements,
`
`Petition for Inter Partes Review of USP 9,772,814
`
`Page 5
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`IPR2018-01519
`Patent 9,772,814
`
`where the program elements are media elements of various hypermedia resources.”
`
`(Id., 119-120.) The examiner then allowed all claims, without noting any reasons for
`
`allowance. (Id., 129-131.) The second such rejection occurred during prosecution
`
`of related U.S. Patent No. 7,478,144, and resulted in the applicants canceling all
`
`rejected claims. (Ex. 1022, 5-7, 13.)
`
`B.
`
`The Challenged Claims
`
`Of the challenged claims, all are method claims. Independent claim 14 is
`
`exemplary. Claims 15-18 depend from claim 14. Independent claim 20 recites
`
`elements similar to those found in claim 14 but, unlike claim 14, does not recite
`
`“video elements.” Claim 14 recites:
`
`14. A method of presenting a linear program of video elements,
`
`the linear program including a first video element, a second video
`
`element and a third video element, the method comprising:
`
`sending data for displaying a plurality of indicators in a
`
`map area of a display screen, each of the plurality of indicators
`
`representing a corresponding one of the first video element, the
`
`second video element or the third video element, wherein the
`
`plurality of indicators includes at least one of: text, icons or
`
`graphical depictions;
`
`sending data for displaying a forward link indicator
`
`corresponding to a next program element of the linear program
`
`of video elements;
`
`Petition for Inter Partes Review of USP 9,772,814
`
`Page 6
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`IPR2018-01519
`Patent 9,772,814
`
`selecting, by a server, the next program element of the
`
`linear program of video elements in response to a user selection
`
`of the forward link indicator; and
`
`sending data for displaying the selected next program
`
`element in a viewing area of the display screen;
`
`wherein the first video element, the second video element
`
`and the third video element are stored on the server.
`
`V. LEVEL OF SKILL IN THE ART
`
`A person of ordinary skill in the art (POSITA) in 1998 would have had a
`
`bachelor’s degree in computer science, computer engineering, and/or electrical
`
`engineering and at least 2 years of experience in Web page design, Web search, and
`
`Web navigation, including practical experience developing computer programs
`
`using languages such as C, Java, or Perl. The POSITA would have been familiar
`
`with the technology in Web search engines, including those for various media such
`
`as images and videos, and also in guided Web tour systems, such as found in Guided
`
`Paths (Ex. 1004), Footsteps (Ex. 1006), Hypertext Paths (Ex. 1009), and Web-Based
`
`Presentations (Ex. 1010). (Terveen, ¶¶ 29-33 and 24-28.)
`
`VI. CLAIM CONSTRUCTION
`
`The ’814 patent expires October 6, 2018, because it contains a “specific
`
`reference” to the alleged priority application filed twenty years before that date.
`
`Accordingly, the claims should be construed under Phillips.
`
`Petition for Inter Partes Review of USP 9,772,814
`
`Page 7
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`IPR2018-01519
`Patent 9,772,814
`
`A.
`
`Proposed Constructions
`
`Under Phillips, Petitioner proposes the following constructions. Each is
`
`pertinent because the prior art discloses the elements of the proposed constructions.
`
`Petitioner also notes that the parties have exchanged preliminary constructions in
`
`related district court litigation. (Exs. 1011, 1012.) These exchanged constructions
`
`are only preliminary and at this stage of the IPR proceedings do not appear to bear
`
`on the issues presented by this petition because the below prior art mappings satisfy
`
`the claims under either preliminary proposed construction.
`
`“video element” (claim 14) amounts to only printed matter that does not
`
`change the operation or function of the invention and, thus, is not entitled to
`
`patentable weight. Ex parte Nehls, Appeal No. 2007-1823, (BPAI 2008) (explaining
`
`that “information” that does not change the operation of a computer implemented
`
`method is not entitled to patentable weight). The phrase “video element” never
`
`appears in the written description or figures of the ’814 patent. Moreover, nothing
`
`in the patent suggests that the alleged invention recited in the challenged claims
`
`would perform differently depending on whether it was providing paths of video
`
`elements or other types of elements. (Terveen, ¶ 38.) The term “video” merely
`
`describes the category of information provided and does not alter the general linear
`
`program of the alleged invention. (Id.) Accordingly, for the prior art analysis, “video
`
`element” provides no distinguishing feature. In re Curry, 84 USPQ2d 1272 (BPAI
`
`Petition for Inter Partes Review of USP 9,772,814
`
`Page 8
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`

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`IPR2018-01519
`Patent 9,772,814
`
`2005) (“Informative Opinion”) (aff’d by Fed. Cir. Appeal No. 2006-1003, June 12,
`
`2006) (“Common situations involving nonfunctional descriptive material are: … a
`
`process that differs from the prior art only with respect to nonfunctional descriptive
`
`material that cannot alter how the process steps are to be performed to achieve the
`
`utility of the invention.”)
`
`If found to have patentable weight, then “video element” should be construed
`
`to encompass video content associated with a program element. Claim 14 itself
`
`reflects that the recited video element is associated with the program element, as that
`
`claim recites selecting and sending data for displaying the program element (not the
`
`video element). Thus, the natural reading is that each video element is associated
`
`with a program element and is displayed when the program element is displayed.
`
`This too is supported by the specification, which contemplates that selection and
`
`display of program elements will result in, e.g., rendering of associated video clips.
`
`(’814 patent, 4:17-19 (“[E]ach media element making up a program element may
`
`contain textual, visual, audio and tactile information.”), 3:38-40 (“media elements
`
`22 can include the additional pages of the website along with other media that may
`
`include audio and video clips.”); see also Terveen, ¶ 39.)
`
`“program element” (claims 14, 17) should be construed to encompass one
`
`or more media element(s), either in the form of a universal resource locator (URL)
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`corresponding to the media element(s) or the entire content of the media element(s).
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`(E.g.,
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`’814, 3:66–4:3
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`(“Each program element 25 maybe
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`[sic] a media
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`element 22 from a hypermedia resource 20. In one embodiment, the program
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`element 25 maybe [sic] the universal resource locator (URL) for each selected media
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`element 24. In an alternative embodiment, each program element 25 may be the
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`entire content of a base media element 24.”); id., 4:17-23, 4:31-35; see also Terveen,
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`¶ 40.) The program elements of a linear program represent the sequence of media
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`elements to be displayed. (Id., 5:19-22 (explaining how “the user can traverse all of
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`the program elements of the linear hypermedia resource program including all of
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`the base media elements and any desired media elements of each hypermedia
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`resource”) (emphasis added); id., Fig. 3 (number 23, 25) and 3:58-64.)
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`“media element” (claim 20) should be construed to encompass both “a Web
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`page, as well as content that may be found on a Web page, such as audio or video
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`content.” (E.g., ’814 patent, 3:35-40, 4:17-19, 7:31-32; Ex. 1017, 115; see also
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`Terveen, ¶ 35.)
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` “network node” (claim 20) should be construed as “a server, memory
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`device, personal computer, or similar device that is capable of storing, processing,
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`and exchanging data with other information nodes.” (E.g., ’814 patent, 3:20-25,
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`Abstract; see also Terveen, ¶ 36.)
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`“subscriber station” (claim 20) should be construed as “a personal computer
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`or other device capable of communicating with the remote information node and
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`presenting information received from the remote information node.” (E.g., ’814
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`patent, 3:25-29; see also Terveen, ¶ 37.)
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`VII. GROUND 1: CLAIMS 14-18 AND 20
`OBVIOUS OVER GUIDED PATHS
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`As explained below, claims 14–18 and 20 are obvious over Guided Paths.
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`A. Guided Paths
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`Guided Paths (Ex. 1004) published in 1997, and is prior art under at least
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`Section 102(a). It addressed the same problems later-identified by the ’814 patent,
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`namely, the “large, heterogeneous collections of information [found] on the
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`Internet,” which often lack structure and organization, and “include links to
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`‘irrelevant’ material.” (Guided Paths, 385.) And much like the ’814 patent later
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`purported to do, Guided Paths describes software that creates linear Web “paths”
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`that “add[] structure to the information space to promote comprehension and
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`accessibility of [Web] material.” (Guided Paths, 386.) These “linear paths” are made
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`up of “existing Web pages from different servers around the world” (id., 392) and
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`the “[i]mages, sounds, and digital video clips” found on such Web pages (id., 393).
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`To accomplish this goal, Guided Paths discloses a “path server” and a “path
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`authoring tool.” (Guided Paths, 386-87.) “The path server stores information specific
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`to the path” (Guided Paths, 386), “caches documents as they are retrieved from the
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`Internet” (Guided Paths, 391), and communicates path page information to a user
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`(“Student”) for rendering (i.e., display) by the user’s Web browser. The path
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`authoring tool facilitates the “creation of paths” and “sends completed paths to the
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`path server.” (Id.) Guided Paths Figure 1 provides an overview of this prior art
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`system:
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`
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`Guided Paths Figure 3 illustrates how each path page contains a Web page,
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`including any “[i]mages, sounds, and digital video clips” (Guided Paths, 393), along
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`with “path controls,” including “forward and back arrows” that allowed back-and-
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`forth traversal along the path, as well as “a row of numbers that both situate the
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`student within the path and permit direct access to locations on the path”:
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`Back Arrow
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`
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`Forward Arrow
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`
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`
`
`
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`Numbers for direct access to path locations
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`
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`
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`
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`(Guided Paths, Figure 3 (red annotations added); see also id. 387 (“Once a page is
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`retrieved, the path server adds path controls …, then returns the resulting page to the
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`Web browser.”), 389 (describing path controls), 388 and Fig. 5.)
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`Skilled artisans exercising reasonable diligence could have located Guided
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`Paths at least as early as December 31, 1997, thus establishing it as publicly available
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`by that date. See GoPro, Inc. v. Contour IP Holding LLC, Case Nos. 2017-1894, -
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`1936, slip op. at 2 (Fed. Cir. Jul. 27, 2018). Guided Paths published in 1997, as
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`confirmed by testimony from its primary author Frank Shipman. (Shipman, ¶¶ 4-5;
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`see also Guided Paths, Table of Contents page (showing that the academic journal
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`containing Guided Paths bears a 1997 publication date, a 1997 copyright date, a
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`statement that the journal “is published quarterly,” and providing information for
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`ordering copies of the journal).) Additionally, Professor Shipman’s webpage
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`informed skilled artisans of the article at least as early as October 1997. (Shipman,
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`¶ 6; Butler, ¶¶ 2-6 and Ex. A.) Finally, the date stamp on the copy of Guided Paths
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`submitted as Attachment 1A to Exhibit 1016 confirms its public availability at
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`University libraries by January 8, 1998. (See also Mullins Decl., ¶¶ 30-38.)
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`
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`As described below, Guided Paths discloses every limitation of the challenged
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`claims, including a user “clicking his or her way from beginning to end” (Guided
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`Paths, 393) with the forward/back arrows, and using numbered boxes “direct[ly]
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`access … locations on the path.” (E.g., Guided Paths, 389.)
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`
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`The following red-annotated Figure 1 illustrates in part the correspondence
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`between the Guided Paths system and the claim elements:
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`REMOTE INFORMATION NODE
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`Patent 9,772,814
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`ON DISPLAY
`DEVICE AT USER
`LOCATION
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`INFORMATION
`CONTAINED ON
`WWW, I.E.,
`WEBSITE
`
`
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`B. Claim 14
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`[14.1] A method of presenting a linear program of video elements, the linear
`program including a first video element, a second video element and a third
`video element, the method comprising:
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`If the preamble is limiting, then Guided Paths discloses it. Guided Paths
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`discloses using “standard Web browsers” to present “guided paths” or “linear paths,”
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`which are “ordered lists of [Web] pages.” (Guided Paths, Abstract; see also id., 392
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`(“[E]xisting Web pages from different servers around the world are structured as
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`simple linear paths.”); id., 395 (discussing “progress along the path that is shown at
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`the top of the constructed page in Figure 5”); id., 388 (contemplating a student
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`“viewing a path” and discussing “traversing to [a path page]”); id., 389 (describing,
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`after the student has requested a path page, “send[ing the] path page to the student’s
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`Web browser, … which renders the [path page]”); id., 391 (“[I]t is natural to assume
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`that the pages on the path are apt to be viewed later, especially if a student has begun
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`traversing that path.”); Terveen, ¶ 71.)
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`These linear paths are linear programs at least because they include a selected
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`group of media elements (the Web pages and content thereof) (e.g., Guided Paths,
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`395 (describing “selecting specific pages for inclusion in the path”)), associated by
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`a series of exclusive forward/backward links (infra discussion of element 14.3). (See
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`also Terveen, ¶ 71.) As reflected by the numbered rows corresponding to the linear
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`paths shown in Figure 3 (ten elements) and Figure 5 (eleven elements), Guided Paths
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`discloses linear programs with at least three elements.
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`To the extent the “video” aspect of the claims is found entitled to patentable
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`weight (supra Section VI.A), Guided Paths also discloses that these path elements
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`can be video elements. (Guided Paths, 393 (“digital video clips”); id., 384 (“digital
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`video segments”); Terveen, ¶ 71.)
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`If Guided Paths were found not to explicitly disclose a linear path “including
`
`a first video element, a second video element and a thir