Trials@uspto.gov
`571-272-7822
`
`Paper 33
`Entered: April 6, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE, INC.,
`Petitioner,
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.,
`Patent Owner.
`____________
`
`Case IPR2014-00031
`Case IPR2014-00033
`Patent 6,771,290 B1
`____________
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`I. INTRODUCTION
`We have jurisdiction to hear these inter partes reviews under
`35 U.S.C. § 6(c). This Final Written Decision is issued pursuant to
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein,
`
`Twitter-Google Exhibit 1065
`
`
`571-272-7822
`
`Paper 33
`Entered: April 6, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE, INC.,
`Petitioner,
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.,
`Patent Owner.
`____________
`
`Case IPR2014-00031
`Case IPR2014-00033
`Patent 6,771,290 B1
`____________
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`I. INTRODUCTION
`We have jurisdiction to hear these inter partes reviews under
`35 U.S.C. § 6(c). This Final Written Decision is issued pursuant to
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein,
`
`Twitter-Google Exhibit 1065
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`IPR2014-00031
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`Patent 6,771,290 B1
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`Petitioner has shown by a preponderance of the evidence that claims 2 and 3
`of U.S. Patent No. 6,771,290 B1 are unpatentable.
`
`A. Procedural History
`Petitioner, Google, Inc., filed two Petitions1 for inter partes review of
`claims 2 and 3 of U.S. Patent No. 6,771,290 B1 (31 Ex. 1001, “the
`’290 patent”).2 31 Paper 1 (“31 Pet.”); 33 Paper 1 (“33 Pet.”). Patent
`Owner, B.E. Technology, L.L.C., did not file a Preliminary Response to
`either Petition. On April 9, 2014, pursuant to 35 U.S.C. § 314, we instituted
`inter partes reviews for claims 2 and 3 of the ’290 patent on the grounds of
`anticipation by Kikinis3 under 35 U.S.C. § 102(b) and obviousness over
`Foley4 under 35 U.S.C. § 103(a). 31 Paper 9; 33 Paper 9.
`In each proceeding, subsequent to institution, Patent Owner filed a
`Patent Owner Response (31 Paper 23, “31 PO Resp.”; 33 Paper 23,
`“33 PO Resp.”), and Petitioner filed a Reply to the Patent Owner Response
`(31 Paper 25, “31 Reply”; 33 Paper 25, “33 Reply”). On December 11,
`2014, we held a consolidated hearing for five inter partes reviews involving
`
`
`1 Citations may be preceded by “31” to designate IPR2014-00031 or “33” to
`designate IPR2014-00033.
`2 In IPR2014-00033, the ’290 patent also is entered in the record as Exhibit
`1001.
`3 PCT International Publication Number WO 97/09682, published Mar. 13,
`1997 (31 Ex. 1002) (“Kikinis”).
`4 U.S. Patent No. 5,706,502, issued Jan. 6, 1998 (33 Ex. 1002) (“Foley”).
`2
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`the ’290 patent.5 A transcript of the oral hearing is included in the record.
`31 Paper 32 (“31 Tr.”); 33 Paper 32 (“33 Tr.”).
`
`B. Related Proceedings
`The parties indicate that the ’290 patent is at issue in B.E. Technology,
`L.L.C. v. Google, Inc., No. 2:12-cv-02830 (W.D. Tenn.), and numerous
`other district court cases filed by Patent Owner against other defendants.
`31 Pet. 1; 31 Paper 4, 1–3 (Patent Owner’s Mandatory Notices). As noted,
`the ’290 patent is the subject of three other inter partes reviews: IPR2014-
`00029, IPR2014-00040, and IPR2014-00044.
`
`C. The ’290 Patent
`The ’290 patent describes a system that provides remote storage of
`user-specific files and resources that can be accessed over a network, such as
`the Internet. 31 Ex. 1001, 5:43–50, 12:45–50. The disclosed system
`includes client computers, each running a client software application that
`provides access via a network to an advertising and data management
`(ADM) server. Id. at 11:42–49. The server includes a user database that
`stores a user profile and a user library for each user. Id. at 12:45–13:12.
`The user profile is accessed by the client software application using a unique
`identifier for the user via a login. Id. at 12:52–56. The user profile may
`contain user-specific customized settings for the operating system used by
`the client computer. Id. at 12:56–58. Additionally, the user profile may
`
`5 Sony Mobile Commc’ns (USA) Inc. v. B.E. Tech., L.L.C., Case IPR2014-
`00029; Google Inc. v. B.E. Tech., L.L.C., Case IPR2014-00031; Google Inc.
`v. B.E. Tech., L.L.C., Case IPR2014-00033; Microsoft Corp. v. B.E. Tech.,
`L.L.C., Case IPR2014-00040; Samsung Elecs. Am., Inc. v. B.E. Tech.,
`L.L.C., Case IPR2014-00044.
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`contain “bookmarks, shortcuts, and other such links to files and information
`resources accessible via” the network. Id. at 12:67–13:3. The user library
`“enables the user to store files (documents, executable programs, email
`messages, audio clips, video clip, or other files) that can then be accessed
`from any client computer.” Id. at 13:4–7. By storing user profiles and user
`libraries on the server, users “can have world-wide access to their
`preferences, addresses, bookmarks, email, and files without having to
`physically transport them from one place to another.” Id. at 13:9–12.
`The ’290 patent further describes a user interface on a client
`computer, provided by a graphical user interface (GUI) module. Id. at
`13:41–43. The user interface comprises an application window with
`selectable items such as icons. Id. at 13:43–53. As shown in Figure 5b, the
`application window may include “icons that represent various files and links
`to information resources.” Id. at 15:48–53.
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`Figure 5b of the ’290 patent is reproduced below:
`
`
`Figure 5b illustrates an application window with icons
`representing files and links to information resources.
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`The application window in Figure 5b includes a library icon, which,
`when selected, provides a display as shown in Figure 5c, reproduced below.
`
`Figure 5c illustrates an application window
`displaying files in a user library.
`
`
`
`The display in Figure 5c provides a list of all files contained in a user
`library. Id. at 15:55–56. From this window, “the user can access any of the
`files contained in his or her user library.” Id. at 15:56–57.
`
`D. Claims
`Petitioner challenges claims 2 and 3 of the ’290 patent, which read:
`
`2.
`A computer-readable memory for use by a client
`computer in conjunction with a server that is accessible by the
`client computer via a network, the server storing a user profile
`and user library for each of a number of different users, with the
`user library containing one or more files and the user profile
`containing at least one user link that provides a[] link to one of
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`the files in the user library, the computer-readable memory
`comprising:
`
`a non-volatile data storage device;
`
`a program stored on said non-volatile data storage device
`in a computer-readable format;
`
`said program being operable upon execution to display a
`graphical user interface comprising an application window
`having a number of user-selectable items displayed therein,
`wherein each of said items has associated with it a link to an
`information resource accessible via the network and wherein
`said program is operable upon execution and in response to
`selection by a user of one of said items to access the associated
`information resource over the network;
`
`said program being operable upon execution to receive
`from [the] server one of the user profiles and to display a user-
`selectable item for user links contained within the user profile,
`said program further being operable in response to selection by
`a user of one of the user links to access the file associated with
`the selected user link from the user library associated with the
`received user profile.
`
`A computer-readable memory as defined in claim
`3.
`
`2, wherein said program is operable upon execution and in
`response to selection by a user of one of said items to access the
`associated information resource over the network using a
`browser.
`Id. at 39:1–40:16.
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
`Patent Owner contends the Board’s adoption of the “broadest reasonable
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`construction” standard exceeded the Office’s rulemaking authority and
`requests that we construe the claims in this case in a manner consistent with
`claim construction that would be applied in the district court. 31 PO Resp.
`25–27; 33 PO Resp. 26–28. Recently, however, the United States Court of
`Appeals for the Federal Circuit held that “Congress implicitly adopted the
`broadest reasonable interpretation standard in enacting the [America Invents
`Act].” In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1281 (Fed. Cir.
`2015). The court further held that even if the broadest reasonable
`interpretation standard were not incorporated into the inter partes statutory
`provisions, the Office properly adopted the standard by regulation under the
`rulemaking authority provided by 35 U.S.C. § 316. Id. at 1282.
`Accordingly, we construe the claims in this proceeding using the broadest
`reasonable construction standard.
`Consistent with the broadest reasonable construction standard, claim
`terms are presumed to have their ordinary and customary meaning, as
`understood by a person of ordinary skill in the art, in the context of the entire
`patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007). An inventor may provide a meaning for a term that is different
`from its ordinary meaning by defining the term in the specification with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`
`1. Claim Terms Defined in the ’290 Patent
`The ’290 patent recites explicit definitions for many terms. In the
`table below, we construe claim terms relevant to our decision in accordance
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`with the definitions provided in the ’290 patent, which are set forth in the
`written description with reasonable clarity, deliberateness, and precision.
`
`Claim Term
`
`data set
`
`file
`
`information resource
`
`link
`
`non-volatile data storage
`device
`
`Construction
`“A group of data items; for example, links,
`keywords, or entries in an address book.”
`31 Ex. 1001, 4:18–19.
`“Any digital item, including information,
`documents,
`applications,
`audio/video
`components, and the like, that is stored in
`memory and
`is accessible via a file
`allocation
`table or other pointing or
`indexing structure.” 31 Ex. 1001, 4:25–28.
`“A source of information stored on a
`server or other computer that is accessible
`to other computers over a network.”
`31 Ex. 1001, 4:33–35.
`“A data item that identifies the location or
`address of a program or
`information
`resource.” 31 Ex. 1001, 4:39–40.6
`“A memory device that retains computer-
`readable data or programming code in the
`absence of externally-supplied power,
`including such things as a hard disk or a
`floppy disk, a compact disk read-only
`memory (CDROM), digital versatile disk
`[(]DVD), magneto-optical disk, and so
`forth.” 31 Ex. 1001, 4:46–51.
`
`
`6 The ’290 patent further provides: “A URL [i.e., a uniform resource
`locator] is a link, as is a path and filename of an information resource.”
`31 Ex. 1001, 4:40–41. We consider these to be examples of a “link,” not
`part of the definition, and, therefore, not part of our construction of the claim
`term.
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`Claim Term
`
`profile
`
`program component
`
`program module
`
`program
`
`Construction
`“User-specific information relating to an
`individual
`using
`a
`computer.”
`31 Ex. 1001, 4:52–53.
`“A set of instructions stored in a file in
`computer-readable
`format, whether as
`object code or source code, and whether
`written in a compiled language, in byte
`code (such as JavaTM), or in a scripting or
`other interpreted language.” 31 Ex. 1001,
`4:54–58.
`program
`related
`“One
`or more
`components.” 31 Ex. 1001, 4:60–61.
`“One or more related program modules.”
`31 Ex. 1001, 4:62.
`
`2. User library
`Claim 2 recites a “server storing a . . . user library for each of a
`number of different users, with the user library containing one or more
`files.” 31 Ex. 1001, 39:3–5 (emphasis added). Claim 2 further provides that
`files in the user library are accessed via user links in a user profile.
`Id. at 39:6–7, 40:8–11. Although the ’290 patent does not provide an
`explicit definition of “user library,” it provides the following description:
`“[T]he User Database 46 of ADM server 22 can include a user library that
`enables the user to store files (documents, executable programs, email
`messages, audio clips, video clips, or other files) that can then be accessed
`from any client computer 40.” Id. at 13:3–7 (emphasis added). The written
`description of the ’290 patent further explains that a user library is “used to
`store [a user’s] individual files and resources that the user wishes to be able
`to access from anywhere on the network.” Id. at 5:56–58.
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`An ordinary meaning of “library” in the context of electronic
`document storage is a “collection of software or data files,”7 and, thus, a
`“user library” is a “collection of a user’s software or data files.” In view of
`this ordinary meaning and the claims and written description of the
`’290 patent, the broadest reasonable construction of “user library” consistent
`with its use in the ’290 patent is “a collection of an individual’s stored files.”
`
`B. Asserted Ground of Anticipation by Kikinis
`Petitioner contends that claims 2 and 3 are unpatentable under
`35 U.S.C. § 102(b) as anticipated by Kikinis, relying on declaration
`testimony of Mr. Stephen Gray. 31 Pet. 14–30 (citing 31 Ex. 1004). Patent
`Owner responds, relying on declaration testimony of Dr. Cory Plock. 31 PO
`Resp. 8–25 (citing 31 Ex. 2001). Having considered the parties’ contentions
`and supporting evidence, we determine that Petitioner has demonstrated by a
`preponderance of the evidence that claims 2 and 3 are anticipated by Kikinis.
`
`1. Summary of Kikinis
`Kikinis describes a document management system that provides for
`remote storage and retrieval of electronic documents. 31 Ex. 1002, Abstract,
`1:7–9. Figure 2, reproduced below, illustrates Kikinis’s electronic document
`system.
`
`
`7 See MICROSOFT COMPUTER DICTIONARY 309 (5th ed. 2002).
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`As shown in Figure 2, Kikinis discloses user station 53 with a web browser
`that allows a user to access, via the Internet, servers provided by a remote
`Internet service provider (ISP), labeled “User’s Provider” in the figure.
`Id. at 6:11–14, 6:24–26. In the embodiment shown in Figure 2, the remote
`ISP includes web server 67 and a set of electronic document servers 69, all
`of which have access to the Internet. Id. at 6:24–27.
`Each electronic document server 69 runs software that supports a
`specific application. Id. at 6:27–29. As shown in Figure 2, examples
`include e-mail program 79, fax program 81, voice-mail program 85, and
`other programs 87, which provide access to other electronic documents.
`Id. at 6:29–31. Web server 67 stores a set of databases 71, each of which is
`associated with a different user. Id. at 6:32–35. Each database set 71
`includes home page 73 that is individualized to a specific user and provides
`links to various lower-order databases maintained by electronic document
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`server 69 for each user, such as e-mail database 89, fax database 91, voice-
`mail database 93, and other electronic documents in database 95. Id. at
`6:35–7:4. A user may be required to provide a password and user name to
`gain access to home page 73 of an electronic document database. Id. at
`8:21–24.
`A user who wishes to access electronic documents stored on an
`electronic document server invokes the web browser at a user station. Id. at
`7:17–29. Figure 3 of Kikinis, reproduced below, illustrates a series of web
`browser windows for accessing electronic documents.
`
`
`As shown in Figure 3, a user enters a URL for his home page in
`field 113. Id. at 7:29–31. Home page 73 is retrieved from the remote server
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`and displayed as a graphical user interface to data and other web
`destinations, with on-screen links to the user’s electronic documents stored
`on the electronic document server. Id. at 7:31–8:1. For example, as shown
`in Figure 3, home page 73 provides links to the user’s voice-mail
`(button 117), e-mail (button 118), faxes (button 120), and other electronic
`documents (button 122). Id. at 8:2–13. A user also may use home page 73
`to link to other databases, “such as a personal multi-lingual dictionary
`featuring pronunciation, a spelling checker, or a thesaurus; or indeed, almost
`any other sort of digital data or control routines.” Id. at 8:14–18.
`
`2. Claims 2 and 3
`Independent claim 2 of the ’290 patent is directed to a computer-
`readable memory for use by a client computer in conjunction with a server
`that is accessible by the client via a network and stores a user profile and a
`user library containing one or more files. 31 Ex. 1001, 39:1–5. The
`computer-readable memory on the client includes a “program stored on [a]
`non-volatile data storage device.” Id. at 39:10–11. The program is, among
`other things, “operable upon execution to receive from [the] server one of
`the user profiles and to display a user-selectable item for user links
`contained within the user profile,” and “operable in response to selection by
`a user of one of the user links to access the file associated with the selected
`user link from the user library associated with the received user profile.” Id.
`at 40:3–11. Claim 3 depends from claim 2 and specifies that the program
`uses a browser. Id. at 40:13–17.
`Petitioner provides detailed analysis and claim charts showing where
`Kikinis describes each limitation of claims 2 and 3. 31 Pet. 15–30. In
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`particular, Petitioner asserts that Kikinis discloses the recited “program” (a
`web browser on a user station), “user library” (user-specific databases, such
`as an e-mail database, a fax database, a voice-mail database, and an
`electronic document database, all of which contain user-specific files), and
`“user profile” (home page) with links to the user’s files. Id. at 16–21 (citing
`31 Ex. 1004 ¶¶ 119–25). Patent Owner argues that Kikinis fails to describe
`(a) a program stored on a non-volatile data storage device that performs the
`functions recited in the claim, (b) a file associated with a selected user link,
`and (c) a user profile. 31 PO Resp. 8–24. Patent Owner contends that
`Kikinis does not anticipate claim 3 for the same reasons provided for claim
`2. Id. at 25.
`Having considered the parties’ contentions and supporting evidence,
`we determine that Petitioner has demonstrated by a preponderance of the
`evidence that Kikinis anticipates claims 2 and 3 of the ’290 patent. For the
`reasons discussed below, we are not persuaded by Patent Owner’s
`contentions.
`
`a. Program stored on a non-volatile data storage device
`Patent Owner contends that Kikinis does not disclose a program
`stored on a client that performs the functions of a “program” as recited in
`claim 2. 31 PO Resp. 8–16. Specifically, Patent Owner argues that Kikinis
`discloses a system that provides indirect access to electronic documents
`because it requires programs remotely stored on a server to access remotely
`stored electronic documents. Id. at 9. For example, each electronic
`document server shown in Figure 2 of Kikinis runs software that supports a
`specific application, such as an e-mail program or a voice-mail program.
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`Id. at 9–10 (citing 31 Ex. 1002, 6:27–31). Patent Owner further submits that
`Kikinis’s web browser, although stored on a non-volatile data storage device
`on a client, does not perform the claimed functions of a “program” because
`it cannot access electronic documents by itself without additional software
`programs stored on a remote server. Id. at 14–16 (citing 31 Ex. 2001 ¶ 21).
`In other words, Patent Owner essentially contends that the client program
`recited in claim 2 must provide direct access to a file stored in a user library
`on the server, without the assistance of any program on the server. See
`31 PO Resp. 9; see also 31 Ex. 2004, 24:3–24 (Dr. Plock testifying that
`Kikinis’s browser cannot correspond to the claimed “program” because it
`must use a server-side program to access databases, and thus “cannot
`directly access” the databases).
`We are not persuaded by Patent Owner’s argument, which improperly
`reads “direct” access into the claim. Claim 2 simply requires the program to
`“access the file,” without precluding the involvement of software on the
`server to facilitate that access. The broadest reasonable interpretation of
`“access,” as used in the claim without any modifiers, encompasses the type
`of file access performed by the browser in the Kikinis system. Moreover,
`Patent Owner’s own expert admits that in any client-server system, such as
`the system described and claimed in the ’290 patent, software on a server
`necessarily is required for the server to respond to a request from a client
`program, such as a browser. See 31 Ex. 2005, 53:14–19, 54:13–18. Thus,
`we find that Kikinis’s web browser is a program stored on a client that is
`operable to perform the functions of the “program” recited in claim 2,
`including accessing a file on the server.
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`b. File associated with a selected user link
`Patent Owner contends that Kikinis does not disclose “selection by a
`user of one of the user links to access the file associated with the selected
`user link from the user library,” as recited in claim 2. 31 PO Resp. 16–22.
`According to Patent Owner, Kikinis describes links to software programs
`and databases, but not links to specific files. Id. at 18. As part of its
`argument, Patent Owner submits that the ’290 patent describes a “one-click”
`system that provides a “direct link” from an item in the user profile to a
`specific file in the user library. Id. (citing 31 Ex. 1001, 15:12–13 (“The user
`has the ability to subscribe the channel by making a direct link to a
`file . . . .”)).
`As an initial matter, the plain language of claim 2 does not require
`“one-click” access or a “direct link” to files. Although the ’290 patent
`describes direct links to files, it also describes other means for accessing
`files. See, e.g., 31 Ex. 1001, 15:12–15 (“The user has the ability to subscribe
`the channel by making a direct link to a file, or by combining various files
`under some category, or by providing a drop down list to a subscribed
`channel.” (emphases added)); id. at 15:53–57 (“[A] library icon . . . , when
`selected, provides a display as shown in FIG. 5c which contains a list of all
`of the files contained in the user library. From here, the user can access any
`of the files contained in his or her user library . . . .” (emphasis added)).
`Patent Owner does not present persuasive evidence or argument for
`importing a “one-click” limitation into claim 2.
`Turning to Kikinis, we find that, contrary to Patent Owner’s
`arguments, Kikinis discloses the selection of a user link to access the file
`associated with the selected user link from the user library. Kikinis
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`specifically states that its home page, which corresponds to the claimed user
`profile, has “on-screen links to electronic documents reserved for the home
`page ‘owner’, such as e-mail and faxes.” 31 Ex. 1002, 7:35–8:1. Patent
`Owner’s expert, Dr. Plock, agrees that this passage from Kikinis discloses
`links to electronic documents. 31 Ex. 2005, 66:6–20. Thus, Kikinis clearly
`discloses links on a user’s home page to individual, electronic documents,
`which are “files” as that term is defined in the ’290 patent. See supra II.A.1.
`In addition, it is undisputed that Kikinis discloses a home page with
`links to databases. See, e.g., 31 Pet. 17; 31 PO Resp. 20. As described in
`Kikinis, in connection with Figure 2, web server 67 stores a set of databases
`71, each of which “belongs to (or is assigned to or is associated with) a
`different client.” 31 Ex. 1002, 6:32–35. Each database set 71 includes home
`page 73 that is individualized to a specific user and provides links to various
`lower-order databases maintained by electronic document server 69 for each
`user, such as e-mail database 89, fax database 91, voice-mail database 93,
`and database 95 containing other electronic documents. Id. at 6:35–7:4; see
`id. at Fig. 2 (showing client-specific databases 89, 91, 93, and 95).
`Patent Owner agrees that Kikinis describes links to databases, but
`argues that databases are not files. 31 PO Resp. 17–18, 20; 31 Ex. 2001
`¶¶ 24–25. The ’290 patent, however, defines “file” as “[a]ny digital item,
`including information, documents, applications, audio/video components,
`and the like, that is stored in memory and is accessible via a file allocation
`table or other pointing or indexing structure.” 31 Ex. 1001, 4:25–28; see
`supra II.A.1. At his deposition, Patent Owner’s expert, Dr. Plock, admitted
`that the databases for e-mail, fax, voice-mail, and other electronic documents
`in Kikinis meet the requirements of a file, as that term is used in the
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`’290 patent. See 31 Ex. 2005, 59:21–63:20. Specifically, Dr. Plock agreed
`that the databases are stored in digital form, id. at 63:15–20, are stored in
`memory, id. at 59:21–23, 62:21–24, and can be accessed using a pointing or
`indexing structure, id. at 59:24–60:1, 60:9–11, 62:25–63:7. Dr. Plock
`further agreed that a user accesses the databases in Kikinis via links on the
`home page, which corresponds to the claimed user profile. Id. at 71:19–
`72:8. The databases disclosed in Kikinis, therefore, are files associated with
`selected user links, as recited in claim 2.
`Patent Owner and its expert contend that Kikinis’s lower-order
`databases (e-mail database 89, fax database 91, voice-mail database 93, and
`database 95 for other electronic documents) do not comprise a “user
`library,” as required by claim 2, because the databases contain e-mails,
`voice-mails, and faxes for multiple users. See 31 Tr. 32:11–25; 31 Ex. 2004,
`36:3–14; 31 Ex. 2005, 56:20–57:1. This argument, however, is inconsistent
`with the disclosures in Kikinis, including the client-specific databases shown
`in Figure 2. See 31 Ex. 1002, 8:30–31 (describing electronic document
`databases as belonging to a user). Kikinis, therefore, discloses a user library
`(i.e., a collection of databases stored for a user) containing one or more files
`(i.e., databases 89, 91, 93, and 95), which may be selected by a user link in a
`user profile (i.e., home page).
`Thus, Kikinis discloses selection of a link to access a file associated
`with the selected link from a user library in at least two ways—via a link to
`an electronic document stored in a user’s database of electronic documents,
`which corresponds to the recited “user library,” and via a link to one of the
`user’s databases, e.g., the user’s e-mail database, which is a “file” as that
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`term is defined in the ’290 patent and which, together with other databases,
`comprise a “user library.”
`
`c. User profile
`Patent Owner contends that the home page disclosed in Kikinis is not
`a “user profile” as recited in claim 2 because Kikinis contains no mention of
`any “user-specific information relating to an individual using a computer”
`found within the home page. 31 PO Resp. 23. Kikinis, however, describes a
`home page as “a graphical interface unique to an individual user” that
`“functions in part as a table of contents.” 31 Ex. 1002, 2:3–5. Further,
`Kikinis specifically indicates the home page has “indicia identifying the
`home page owner” and is “individualized to a specific client.” Id. at 3:3–4,
`6:34–35. Patent Owner’s argument fails to account for these express
`disclosures of “user-specific information” in Kikinis.
`
`C. Asserted Ground of Obviousness over Foley
`Petitioner contends that claims 2 and 3 are unpatentable under
`35 U.S.C. § 103(a) for obviousness over Foley, relying on declaration
`testimony of Mr. Gray.8 33 Pet. 13–43 (citing 33 Ex. 1003). Patent Owner
`responds, relying on declaration testimony of Dr. Plock. 33 PO Resp. 8–26
`(citing 33 Ex. 2001). Having considered the parties’ contentions and
`
`
`8 Patent Owner argues that the testimony submitted by Petitioner from
`Mr. Gray is not in the form of an affidavit and, therefore, does not comply
`with 37 C.F.R. § 42.53. 33 PO Resp. 26. Patent Owner, however, did not
`serve objections to this testimony within ten days of the institution of trial
`and did not file a motion to exclude this testimony. See 33 Tr. 52:6–17.
`Accordingly, Patent Owner has withdrawn the objection to Mr. Gray’s
`testimony. Id. at 52:18–53:3.
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`supporting evidence, we determine that Petitioner has demonstrated by a
`preponderance of the evidence that claims 2 and 3 would have been obvious
`over Foley.
`
`1. Summary of Foley
`Foley describes a software development and file management system
`that enables users to create and work with portfolios of software projects that
`are distributed over a set of networked computers connected to the Internet.
`33 Ex. 1002, 1:5–8, 2:46–49. The system includes a software application
`called the Java Workshop (JWS) program stored in memory on a first
`computer of the set of networked computers. Id. at 3:63–66, 4:28–31. The
`JWS program allows a user to organize various projects, including
`executable programs (Java applets and standalone executable programs) and
`non-executable files (image files and Java class libraries), into collections
`called portfolios. Id. at 3:66–4:3. In particular, the JWS program has an
`integrated browser that allows a user to create and work with portfolios that
`are remote from the user’s computer and local network, in addition to
`portfolios that are local. Id. at 4:3–8. A user can create and name a new
`portfolio, and add or import projects to the portfolio. Id. at 7:66–8:10. The
`creator of a portfolio can keep it private or publish it on the Internet to be
`accessed by others. Id. at 8:11–13.
`In a preferred embodiment, “a portfolio file represents one portfolio
`and includes respective references to members of a set of project files.”
`Id. at 2:55–57. Figure 5 of Foley, reproduced below, illustrates the structure
`of a portfolio file and its constituent projects. Id. at 7:29–46.
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`As shown in Figure 5, portfolio file 160A1 contains references 162A1j to
`constituent projects. Id. at 7:29–40. For example, reference 162A1a
`(“Project1 URL/Name/home/Applet.prj”) provides a reference, or link, to
`project file 170A1 (“Applet.prj”), and reference 162A1b (“Project1
`URL/Name/home/Standalone.prj”) provides a link to project file 170A2
`(“Standalone.prj”). Id. Each reference to a project file can be a file name
`when the project file is local to the user’s computer (e.g., Machine A in
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`Figure 5) or a Web page URL when the project file is stored on a remote
`computer. Id. at 2:57–60, 7:35–40.
`Figure 6 of Foley, reproduced below, depicts the graphical user
`interface of the JWS program on a user’s computer with portfolio files and
`projects displayed. Id. at 12:63–13:25.
`
`
`As shown in Figure 6, Machine C is a remote computer that stores
`Portfolio 2 and its project files P2a, P2b, and P2c. Id. at 13:13–14. The
`user’s computer obtains portfolio file and project information from
`Machine C over the Internet and displays the links to project files P2a, P2b,
`and P2c. Id. at
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