`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`NETFLIX, INC.,
`
`Petitioner
`
`v.
`
`VIDEOLABS, INC.,
`
`Patent Owner
`
`_________________________
`
`IPR2023-00628
`U.S. Patent 7,233,790
`_________________________
`
`
`PATENT OWNER’S RESPONSE
`
`

`

`TABLE OF CONTENTS
`
`Case IPR2023-00628
`Patent No. 7,233,790
`
`Page
`
`I.
`II.
`
`V.
`
`
`INTRODUCTION ........................................................................................... 1
`BACKGROUND ............................................................................................. 2
`A. Overview of the ’790 Patent (EX1001) ................................................ 2
`B.
`The Claims of the ’790 Patent ............................................................... 5
`C. Overview of Mehta (EX1003) ............................................................... 6
`D. Overview of Schläpfer (EX1009) ......................................................... 9
`III. PRIORITY DATE OF THE ’790 PATENT ................................................... 9
`IV. LEVEL OF ORDINARY SKILL .................................................................. 10
`A.
`RELATED MATTERS ....................................................................... 10
`CLAIM CONSTRUCTION .......................................................................... 10
`A.
`Patent Owner’s Claim Construction Analysis .................................... 10
`VI. ASSERTED GROUNDS ............................................................................... 11
`VII. PETITIONER HAS NOT SHOWN THAT ANY CHALLENGED
`CLAIMS ARE UNPATENTABLE .............................................................. 12
`A. Ground 1: Mehta Does Not Anticpate Claims 1-4 And 8-11 ............. 12
`1. Mehta Does Not Disclose a Plurality of Different
`Implementations of At Least One of the Items of Digital
`Content. ..................................................................................... 12
`2. Mehta Does Not Disclose the Product Catalog Including,
`in Association with Each Item of Content, a Reference to
`Each Implementation of Said Item of Content. ........................ 23
`3. Mehta Does Not Disclose That the Selected Portion, As
`Presented to the Subscriber, Provides Only a Single
`Description of Each Item of Digital Content in Said
`
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`Case IPR2023-00628
`Patent No. 7,233,790
`Portion, Regardless of the Number of Implementations of
`Each Said Item. ......................................................................... 29
`4. Mehta Does Not Disclose Selecting an Implementation of
`the Requested Item of Digital Content, Based on Device
`Capabilities of the Wireless Device Used by the
`Subscriber. ................................................................................. 32
`B. Ground 2: Mehta And Schlapfer Do Not Render Obvious Any
`Claim of the ’790 Patent ...................................................................... 35
`1. Mehta and Schlapfer Do Not Suggest or Teach a Plurality
`of Different Implementations of At Least One of the
`Items of Digital Content. ........................................................... 35
`2. Mehta and Schlapfer Do Not Suggest or Teach the
`Product Catalog Including, in Association with Each
`Item of Content, a Reference to Each Implementation of
`Said Item of Content. ................................................................ 35
`3. Mehta and Schlapfer Do Not Suggest or Teach That the
`Selected Portion, As Presented to the Subscriber,
`Provides Only a Single Description of Each Item of
`Digital Content in Said Portion, Regardless of the
`Number of Implementations of Each Said Item. ...................... 36
`4. Mehta and Schlapfer Do Not Suggest or Teach Selecting
`an Implementation of the Requested Item of Digital
`Content, Based on Device Capabilities of the Wireless
`Device Used by the Subscriber. ................................................ 43
`5. Mehta and Schlapfer Do Not Teach or Suggest Each Of
`The Provisioning Models Corresponding To or Based on
`Device Capabilities. .................................................................. 44
`6. Mehta and Schlapfer Do Not Teach or Suggest a
`Corresponding Set of Provisioning Attributes and
`Descriptors. ............................................................................... 50
`VIII. CONCLUSION .............................................................................................. 53
`
`ii
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`

`

`TABLE OF AUTHORITIES
`
`Case IPR2023-00628
`Patent No. 7,233,790
`
` Page(s)
`
`Cases
`Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed.
`Cir. 2018). ........................................................................................................... 37
`Facebook, Inc. v. Uniloc USA, Inc., IPR2017-01523, Paper 7 at 18,
`(December 4, 2017) ............................................................................................ 17
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) .............. 30
`In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986) .................................................. 37
`In-Depth Geophysical, Inc. v. Conocophillips Co., IPR2019-00849, Paper 14
`at 4–13 (PTAB Sept. 6, 2019) ............................................................................ 38
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369
`(Fed. Cir. 2016) ................................................................................................... 30
`K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) ................... 41
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) ......... 11
`ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 865–66 (Fed. Cir. 2010) ............ 39
`Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) ............... 40
`W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) ......... 40
`Statutes
`35 U.S.C. § 312(a)(3) ............................................................................................... 29
`Regulations
`37 C.F.R. § 42.24 ..................................................................................................... 54
`
`
`
`
`
`iii
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`

`

`
`
`
`
`Exhibit
`2001
`
`2002
`2003
`2004
`
`2005
`2006
`2007
`2008
`
`2009
`2010
`2011
`
`2012
`
`2013
`2014
`
`2015
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`2016
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`2017
`
`2018
`2019
`
`2020
`2021
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`Case IPR2023-00628
`Patent No. 7,233,790
`
`PATENT OWNER’S EXHIBIT LIST
`
`Description
`Ex Parte Reexam Request in Reexam Control No.
`90/015,063
`Reexam Order in the ’063 Reexam
`Non-Final Office Action in the ’063 Reexam
`U.S. Patent Application Publication No. 2002/0078178 to
`Senoh
`U.S. Patent No. 6,035339 to Agraharam et al.
`U.S. Patent No. 6,421,726 to Kenner et al.
`U.S. Patent No. 6,345,279 to Li et al.
`Response to the Non-Final Office Action in the ’063
`Reexam
`Final Rejection in the ’063 Reexam
`Response to Final Rejection the ’063 Reexam
`Notice of Intent to Issue Reexam Certificate in ’063
`Reexam
`Amendment After Final or under 37CFR 1.312, initialed by
`the examiner
`’063 Reexam Transactions Docket in Patent Center
`Scheduling Order for Starz Entertainment, LLC v. VL
`Collective IP, LLC, Case 1-21-cv- 01448 (D. Del.)
`Starz’s Second Amended Disclosure of Invalidity
`Contentions in Starz Entertainment, LLC v. VL Collective
`IP, LLC, Case 1-21-cv- 01448 (D. Del.)
`Declaration of Jaime F. Cardenas-Navia in Support of
`Motion For Admission Pro Hac Vice
`Correspondence in Starz Entertainment, LLC v. VL
`Collective IP, LLC, Case 1-21-cv- 01448 (D. Del.)
`Reexam Certificate from the ’063 Reexam
`Hearing Transcript from Intromedic Co. Ltd. v. Given
`Imaging Ltd IPR2015-00579, EX2003 (PTAB Aug. 5,
`2015)
`Expert Declaration of Dr. Michael T. Goodrich
`Deposition Transcript of Mr. Anthony Wechselberger
`
`iv
`
`

`

`Case IPR2023-00628
`Patent No. 7,233,790
`VideoLabs, Inc. (“Patent Owner”) submits this Response to the Petition of
`
`Netflix, Inc. (“Petitioner”) seeking inter partes review (“IPR”) of U.S. Patent No.
`
`7,233,790 (the “’790 patent”). The Response is supported by the declaration of Dr.
`
`Michael T. Goodrich (EX2020). EX2020, ¶¶1-127.
`
`I.
`
`INTRODUCTION
`The Petition fails to show that any of the challenged claims are unpatentable.
`
`The relied-upon references, Mehta and Schläpfer, take an entirely different approach
`
`than the ’790 patent. The ’790 patent enables the creation of a centralized, dynamic
`
`store of content. The ’790 patent makes this possible through a specific, two-layer
`
`hierarchy: there is (1) the content itself and (2) the different versions, or
`
`implementations, of the content (for example, different implementations for
`
`different device capabilities). As an example, a program, such as Microsoft Word,
`
`can be thought of in two ways: (1) a single piece of content, “Microsoft Word” and
`
`(2) multiple implementations of the content, such as the Microsoft Word file for
`
`Windows and or the Microsoft Word file for Macs. The ’790 patent takes advantage
`
`of this discovery by creating a store in which the user is only presented with the
`
`piece of content (e.g., Microsoft Word), not the individual implementations of that
`
`content. Yet, when the user selects their piece of content, the patented invention
`
`ensures that the user only gets the correct implementation, all without the user
`
`knowing.
`
`1
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`Case IPR2023-00628
`Patent No. 7,233,790
`Mehta and Schläpfer take an entirely different approach. Mehta does not
`
`recognize or take advantage of the hierarchical division of content and its
`
`implementations. Instead, Mehta discloses single-version applications that do not
`
`have different implementations for different device requirements. Mehta’s failure
`
`to disclose both “applications” and “implementations” of those applications means
`
`it also fails to disclose the ’790 patent’s mechanisms for managing the relationship
`
`between “application” and “implementations,” such as “references” to each
`
`implementation and only presenting a single description per application. For the
`
`example above, a Mehta store would only have “ Microsoft Word,” without multiple
`
`versions. In sum, Mehta teaches a fundamentally different approach to content
`
`delivery than the ’790 patent.
`
` Schläpfer, which Petitioner relies on for other elements, similarly does not
`
`disclose or suggest the ’790 patent’s innovative approach. Far from anticipating or
`
`rendering obvious the challenged claims of the ’790 patent, Mehta and Schläpfer
`
`teach away from its central innovation.
`
`II. BACKGROUND
`A. Overview of the ’790 Patent (EX1001)
`U.S. Patent No. 7,233,790 was filed June 19, 2003 and issued June 19, 2007.
`
`It lists Rikard M. Kjellberg, Sheng Liang, Tomas G. Lund, William Chan,
`
`Ramakrishna Chinta, and Xinbi Chen as inventors. It claims priority to Provisional
`
`2
`
`

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`Case IPR2023-00628
`Patent No. 7,233,790
`application No. 60/393,024, filed on June 28, 2002; provisional application No.
`
`60/392,383, filed on Jun. 28, 2002; provisional application No. 60/393,041, filed on
`
`Jun. 28, 2002; and provisional application No. 60/392,999, filed on Jun. 28, 2002.
`
`In the early 2000s, around the time of the ’790 patent invention, there was an
`
`explosion of computing devices such as laptops, PDAs, mobile phones, and other
`
`wireless devices that entered the market, each with different capabilities, as well as
`
`a vast increase in the number of content providers offering digital content. EX1001,
`
`1:22-25, 1:40-2:17, 3:45-60. The inventors of the ’790 patent realized that, if content
`
`providers wanted to ensure that content would work properly on a range of devices,
`
`they either had to make separate items of content for each device or they had make
`
`multiple different “implementations” (or versions) of each item of content. Id., 9:49-
`
`62. Additionally, each implementation had to be “provisioned” differently for
`
`different devices, (id., 1:60-2:7), and each piece of content might require different
`
`“packaging,” (id., 1:63-27, 12:65-13:15).
`
`The result was highly fragmented digital storefronts for purchasing content.
`
`See id., 1:50-59 (describing the prior art storefronts). Each store had to provide
`
`content for every device that it wanted to sell its products to. See id., 1:60-63. Unless
`
`customers already knew which content store had appropriate content for their device,
`
`they would have to visit multiple stores to find one that had device-appropriate
`
`content.
`
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`Patent No. 7,233,790
`The ’790 patent addresses these problems with a “download manager,” which
`
`utilizes the distinction between content generally and the various implementations
`
`of that content. Id., 3:63-4:8. For example, Lion King is a piece of content. The
`
`various versions of Lion King (such as an .mp3 file or an .mov file) are the
`
`implementations of Lion King. EX2020, ¶39. As another example, Microsoft Word
`
`is another piece of content, while the versions of Microsoft Word for Windows and
`
`Microsoft Word for Apple Macs are different implementations. Id. The download
`
`manager is a unique innovation that manages the various relationship between the
`
`content, the implementations of that content, the device capabilities suitable for each
`
`implementation, the packaging and provisioning options for each implementation of
`
`content, and the device capabilities suitable for each packaging and provisioning
`
`option. EX1001, 4:9-25.
`
`By storing and maintaining these relationships, the ’790 patent creates a
`
`centralized, scalable store in which the user is only presented with the items of
`
`content, while the store maintains references to each implementation, unbeknownst
`
`to the user. This store allows the users to only have to deal with the item of content
`
`themselves, while ensuring they always receive the correct implementation of that
`
`content. Id., 1:50-2:17, 8:66-9:12. Continuing the first example above, the user can
`
`select the Lion King but will actually be delivered the particular implementation of
`
`the Lion King (e.g., an .mp3 file) that works on their device. In the second example,
`
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`Case IPR2023-00628
`Patent No. 7,233,790
`the user can select “Microsoft Word” and the user will be sent, for example,
`
`Microsoft Word for a Mac (if the user has an Apple Mac). Ultimately, this dynamic
`
`store is made possible by the ’790 patent’s novel multi-layer system which
`
`conceptually divides, on the one hand, the items of content and, on the other hand,
`
`the implementations of that content. EX2020, ¶¶36-40.
`
`B.
`The Claims of the ’790 Patent
`The ’790 patent has four independent claims, claims 1, 2, 8, and 9. EX2020,
`
`¶¶41-42. Claim 2 is an exemplary method that reflects the above-described
`
`invention:
`
`2. A method of providing access to digital content for use on wireless
`
`communication devices, the method comprising:
`
`receiving and storing in a server system a plurality of items of digital
`
`content to be made available for use in wireless communication devices used
`
`by a plurality of wireless services Subscribers, including receiving and storing
`
`a plurality of different implementations of at least one of the items of digital
`
`content, where each implementation of any given item of digital content
`
`corresponds to a different set of device capabilities
`
`operating the server system to maintain a product catalog containing a
`
`description of the items of digital content, wherein the product catalog
`
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`Patent No. 7,233,790
`includes, in association with each item of digital content, a reference to each
`
`implementation of said item of digital content;
`
`receiving a request from a wireless device used by one of the
`
`subscribers;
`
`in response to the request, selecting a portion of the product catalog to
`
`be presented to the subscriber, based on device capabilities of the wireless
`
`device used by the subscriber; and
`
`presenting the selected portion of the product catalog to the subscriber
`
`via a wireless network, such that the selected portion, as presented to the
`
`subscriber, provides only a single description of each item of digital content
`
`in said portion, regardless of the number of implementations of each said item.
`
`EX1001, claim 2.
`
`The dependent claims 3-8 and 10-14 also add additional limitations.
`
`C. Overview of Mehta (EX1003)
`Mehta provides a system for maintaining and provisioning wireless
`
`applications. EX1003, Abstract. In particular, Mehta is directed to addressing the
`
`problem that “[c]ontent providers, who wish to develop applications for such
`
`wireless devices, must do so for each device they wish to support . . . .” Id., ¶0004.
`
`That is, Mehta assumes that in order to make an application work on “each device,”
`
`content providers must “develop” a different application for “each device.” This
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`Case IPR2023-00628
`Patent No. 7,233,790
`stands in stark contrast to the ’790 patent, which uses a two-layer hierarchy to take
`
`advantage of the fact that individual items of content (such as an application) can be
`
`broken into multiple implementations, each of which work with a different device.
`
`Ultimately, Mehta and the ’790 patent fundamentally view the world differently, and
`
`thus propose different solutions. Mehta assumes that you must have a different
`
`application for each device, and so is concerned with how to manage and provision
`
`the resulting huge number of applications. Id., ¶0004. Conversely, the ’790 patent
`
`recognizes that you do not need a new item of content for each device, but can break
`
`up that content into different implements, and so is concerned with managing the
`
`relationship between content and implementation. Thus, in contrast to the ’790
`
`patent, Mehta does not teach or suggest including multiple versions (or,
`
`implementations) of a single application—indeed, Mehta is premised on the idea that
`
`you need an entirely new application for each new device.
`
`At a high level, Mehta provides a Mobile Application System (MAS) that
`
`allows for uploading and downloading mobile applications. See id., ¶0061. Mehta
`
`allows content providers to publish applications. See id., ¶0064. Fig. 2 (reproduced
`
`below) illustrates a mobile device that can operate MAS.
`
`7
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`Patent No. 7,233,790
`
`
`
`Id., Fig. 2
`
`Mehta discloses that the MAS is able to respond to user’s requests either for
`
`an application or for a list of applications. Id., ¶¶0006-0009, 0016, 0067-0070. As
`
`a part of responding to that request, the MAS determines which applications are
`
`“compatib[le] with a requesting subscriber device.” Id., Abstract, ¶0067 (“[T]he
`
`MAS may analyze various profiles, for example a subscriber profile, a device
`
`profile, and an application profile to determine whether the subscriber is authorized
`
`to use the application and whether the application’s needs, as reflected in the
`
`application profile, are met by the device, as reflected in the device profile.”);
`
`¶¶0005, 0073, 0098. In particular, for a request for an application, the MAS will
`
`refuse the request if the application is incompatible. For a request for a list of
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`Patent No. 7,233,790
`applications, the MAS can filter out applications that are not compatible with the
`
`user’s device, leaving a list of only compatible applications. As discussed above,
`
`Mehta does not contemplate the idea of different versions of applications—it only
`
`determines whether or not the single version of the application is compatible.
`
`EX2020, ¶¶43-46.
`
`D. Overview of Schläpfer (EX1009)
`Schlapfer is a white paper that describes JAVA mobile applications. See
`
`EX1009, 3. Schlapfer provides a guide for developing and testing mobile
`
`applications. See id. Schlapfer also describes using the Mobile Information Device
`
`Profile (MIDP) for the J2ME Platform. See id., 7-10. The Petition does not rely on
`
`Schlapfer to teach or suggest multiple implementations of an individual piece of
`
`content, as required by the independent claims of the ’790 patent. EX2020, ¶¶47.
`
`III. PRIORITY DATE OF THE ’790 PATENT
`Petitioner assumes a priority date of June 19, 2003, which is the filing date of
`
`the ’790 patent. Pet., 14-16. Patent Owner reserves all rights to establish its
`
`preferred priority date in this or other proceedings, but does not dispute this assumed
`
`priority date for purposes of its Response. The Petition fails regardless of the priority
`
`date of the ’790 patent. EX2020, ¶48.
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`Case IPR2023-00628
`Patent No. 7,233,790
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`IV. LEVEL OF ORDINARY SKILL
`Petitioner sets forth a level of ordinary skill. Pet., 16. Patent Owner’s expert
`
`proposes a similar level, but regardless this Response establishes that Petitioner’s
`
`arguments fail even under its preferred definition of the level of ordinary skill.
`
`EX2020, ¶¶49-52.
`
`A. RELATED MATTERS
`Patent Owner is asserting the ’790 patent in the following district court
`
`actions:
`
` VideoLabs, Inc. v. Netflix Inc., Case 1:22-cv-00229 (D. Del.)
`
` Starz Entertainment, LLC v. VL Collective IP, LLC, Case 1-21-cv-
`
`01448 (D. Del.)
`
` VideoLabs, Inc. v. Roku, Inc., Case 1:23-cv-01136 (D. Del.)
`
` Unwired Planet, LLC v. Apple, Inc., Case 3:13-cv-04134 (N.D. Cal.)
`
` Unwired Planet, LLC v. Apple Inc., Case 3:12-cv-00505 (D. Nev.)
`
`The ’790 patent was also involved in Ex Parte Reexam Control No.
`
`90/015,063.
`
`V. CLAIM CONSTRUCTION
`A.
`Patent Owner’s Claim Construction Analysis
`Petitioner has not presented a proposed construction for any of the terms. See
`
`Pet., 22-25. Patent Owner submits that no express construction of any term is
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`Patent No. 7,233,790
`required at this stage. For the purposes of the Petition and Patent Owner Preliminary
`
`Response (POPR) Patent Owner applies the plain and ordinary meaning of the claim
`
`terms. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en
`
`banc). Patent Owner does not waive any rights to assert constructions should the
`
`Petition be instituted.
`
`Petitioner acknowledges that the Court in a related case ordered that, for the
`
`“wireless communication devices”/”wireless device,” no construction is necessary
`
`but that the term is not restricted to “personal mobile devices;” construed
`
`“content”/”digital content”/product”/”digital product” to mean to “software and/or
`
`data embodying a file for delivery or purchase;” and construed “implementation” to
`
`mean “one or more binary files (or ‘binaries’), software files, software applications,
`
`and/or executable files representing a product.” Petitioner has not shown that any
`
`claim is unpatentable under either these constructions or the plain and ordinary
`
`meaning of the terms. EX2020, ¶53.
`
`VI. ASSERTED GROUNDS
`The Petitioner asserts the following grounds in the Petition:
`
`Ground
`1
`
`Challenged Claims
`1-4 and 8-11
`
`References
`Basis
`§102 Mehta
`
`
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`11
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`Patent No. 7,233,790
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`2
`
`1-14
`
`§103 Mehta in view of
`
`Schlapfer
`
`VII. PETITIONER HAS NOT SHOWN THAT ANY CHALLENGED
`CLAIMS ARE UNPATENTABLE
`A. Ground 1: Mehta Does Not Anticpate Claims 1-4 And 8-11
`1. Mehta Does Not Disclose a Plurality of Different
`Implementations of At Least One of the Items of Digital
`Content.
`Each claim of the ’790 patent requires “receiving and storing a plurality of
`
`different implementations of at least one of the items of digital content. See EX1001,
`
`Claims (cls.) 1, 2, 8, 9.1 A POSITA would understand Mehta to take a fundamentally
`
`different view of the world than the ’790 patent does: Mehta assumes that there must
`
`be a different application for each set of device requirements; the inventors of the
`
`’790 patent figured out that you could offer a single application (or other item of
`
`content) while storing different implementations of that content for each set of
`
`
`1 Various independent and dependent claims of the ’790 patent recite further
`elements that expound on the “implementations” limitation. See Cl. 2, 9
`(“provides only a single description of each item of digital content in said portion,
`regardless of the number of implementations of each said item”), Cl. 3, 10(“each
`implementation of the plurality of items of digital content has been previously
`associated in the server system with at least one device identity, according to
`corresponding device capabilities supported by the implementation”), 4, 11
`(“downloading the selected implementation of the item of digital content to the
`wireless device used by the subscriber.”). Mehta of course does not disclose these
`additional limitations for the same reason it does not disclose implementations of
`at least one of the items of digital content generally.
`
`12
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`Case IPR2023-00628
`Patent No. 7,233,790
`device requirements. EX2020, ¶54. This fundamental disconnect demonstrates that
`
`Mehta does not disclose “a plurality of different implementations of at least one of
`
`the items of digital content.”
`
`a.
`
`The claims require both a “plurality of items of digital
`content” and “a plurality of different
`implementations of at least one of the items of
`content.”
`The independent claims require both (1) “a plurality of items of digital
`
`content” as well as (2) a plurality of different implementations of at least one of the
`
`items of digital content. Mr. Wechselberger acknowledged this during his
`
`deposition, agreeing that “the claims of the ’790 patent require, one, multiple items
`
`of content, and two, that at least one item of content has multiple different versions.”
`
`Deposition Transcript of Mr. Anthony Wechselberger (EX2021), 60:6-11 (emphasis
`
`added); EX1002, ¶51; EX2020, ¶55.
`
`This division between content on the one hand and different implementations
`
`(or versions) of that content on the other hand is described in the specification.
`
`Figure 6, shown below, “shows the relationship between a product and its
`
`implementations.” EX1001, 3:21-22.
`
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`Case IPR2023-00628
`Patent No. 7,233,790
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`Id., Fig. 6 (annotations added). The product is shown in red, and the
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`implementations are shown in blue. The ’790 patent explains that “[t]he product
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`catalog 54 contains descriptions of all published items of content (products).” Id.,
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`9:37-38. “[T]he catalog 54 includes, for each product entry 56, a reference 58 to at
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`least one implementation 57 of that product.” Id. at 9:38-48. Thus, the items of
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`content (called a “product” in figure 6) and the implementations are separate
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`concepts. The catalogue contains both “descriptions of all published items of
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`content” and “a reference 58 to at least one implementation 57 of that product.”2
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`EX2020, ¶¶56-57.
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`2 While the specification describes an embodiment in which there is “at least one
`implementation 57 of th[e] product,” the claims require “a plurality of different
`implementations.”
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`Case IPR2023-00628
`Patent No. 7,233,790
`Figure 6 demonstrates that the implementations are not merely different
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`products that happen to be similar, but different versions of a single item of content.
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`See, e.g. EX1001, Fig. 5, Fig. 6, 13:22-24 (“At block 1202 the download manager
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`retrieves the content type of the selected implementation (e.g., MIDlet, EXE file,
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`applet, iAppli, etc.).”). Indeed, Mr. Wechselberger appears to agree that
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`implementations are different versions of a single item of content. EX1002, ¶65 (“In
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`view of the ‘790 citations discussed above and as further discussed below, a POSITA
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`would understand that ‘implementations’ of claim 1 would include versions of
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`digital content, where each version corresponds to a different set of device
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`capabilities.”), ¶51 (“Each independent claim of the ’790 patent requires maintaining
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`a product catalog that includes a description of multiple items of content and
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`references to different versions of each item of content . . . .” (emphasis added));
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`EX2021, 60:6-11; EX2020, ¶58.
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`The specification of the ’790 patent repeatedly confirms that the concept of
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`“items of content” is distinct from the concept of implementations. See, e.g.,
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`EX1001, Fig. 8
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`(“Defining a product and submitting one or more
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`implementations.”), 11:50-52 (“at block 801 the download manager 1 receives
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`inputs from a product supplier defining a product and one or more implementations
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`of that product.”), 11:56-59 (“At block 803 the download manager 1 stores the
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`product definition, the implementations, and a list of all of the supported devices and
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`Case IPR2023-00628
`Patent No. 7,233,790
`provisioning protocols.”), 12:59-61 (“When a product is submitted to the download
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`manager 1 by a supplier, the supplier specifies which devices are supported by each
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`implementation of the product.”). Indeed, during prosecution, the examiner allowed
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`the claims explicitly because “[t]he prior art fails to disclose a method and system
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`of accessing content on a wireless communication device, that specifically includes
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`receiving and storing a plurality of different implementations of the items of
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`content.” EX1004, 43 (emphasis in original); Pet., 14; EX2020, ¶59.
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`Based on the claim language, and confirmed by the specification, the claims
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`of the ’790 patent require both “items of digital content” and, separately,
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`“implementations of at least one of the items of content.” EX2020, ¶¶55-60
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`b.
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`Petitioner’s Attempted Mapping Is Inconsistent and
`Contradictory.
`Petitioner maps “[t]he applications received by the MAS” to the claimed
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`“plurality of items of content.” Pet., 27-28, 31; EX1002, ¶64; EX2021, 71:6-8 (“Q.
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`You map the ’790 patent’s plurality of items of content to applications in Mehta,
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`right? A. Yes, that’s what I'm mapping.”); see Decision on Institution (DI), 13.
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`However, Petitioner also maps
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`those same applications
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`to
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`the claimed
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`“implementations” of the items of content as well. Pet., 28-29; EX1002, ¶65-66; see
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`DI, 14; EX2020, ¶61.
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`Case IPR2023-00628
`Patent No. 7,233,790
`Petitioner’s contradictory mapping by itself demonstrates that the Petition has
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`not shown that Mehta discloses this element. Facebook, Inc. v. Uniloc USA, Inc.,
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`IPR2017-01523, Paper 7 at 18, (December 4, 2017) (holding, “Petitioner’s
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`unexplained inconsistent arguments and conflicting theories regarding the identity
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`of the recited “instant voice message” in Zydney within its analysis of independent
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`claims 1 and 40, as well as across their challenged dependent claims, the Petition
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`lacks clarity regarding precisely which element or portion of Zydney Petitioner is
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`alleging discloses, teaches, or suggests the “instant voice message” of the challenged
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`claims.”); see also EX2020, ¶¶61-62. As discussed above, the plain language of the
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`’790 patent claims require both a “plurality of items of digital content” and multiple
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`implementations of at least one item of content. Yet Petitioner maps both the “items
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`of digital content” and the “implementations” to the same “applications.”
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`Petitioner’s inherently contradictory mapping demonstrates the fundamental flaw in
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`the Petition. Id.
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`c. Mehta Does Not Disclose That Applications Have
`Multiple Implementations.
`Mehta does not disclose both “items of digital content” and “implementations
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`of at least one of the items of content.” As discussed above, Petitioner maps both
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`“items of digital content” and the “implementations” to the same thing, Mehta’s
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`“applications.” Petitioner’s double mapping is no accident—it is out of necessity
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`Patent No. 7,233,790
`because Mehta simply does not disclose providing applications with multiple
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`versions for different device types. EX2020, ¶¶63-66.
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`Regardless of whether one considers Mehta’s applications to be the “items of
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`content” or “implementations,” the point is that Mehta does not disclose both “the
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`“items of content” and “implementations”—thus Mehta does not disclose or suggest
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`any “implementations” of “items of content”.” Mehta includes dozens of references
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`to, and descriptions of, “applications,” but never suggests that the applications can
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`have different versions or implementations for different device types. See, e.g.,
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`EX1003, ¶0068 (“These components inter-operate to receive applications from
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`content providers and carrier services, to provision them for delivery to the
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`subscriber devices, such as those shown in FIG. 1, and to process MAS
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`commands.”); EX2020,