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Trials@uspto.

gov Paper: 10
571-272-7822 Entered: September 13, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE


_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD


____________

UNIFIED PATENTS INC.,


Petitioner,

v.

MYMAIL, LTD.,
Patent Owner.
____________

Case IPR2017-00967
Patent 8,275,863 B2
____________

Before KEVIN F. TURNER, WILLIAM M. FINK, and KAMRAN JIVANI,


Administrative Patent Judges.

FINK, Administrative Patent Judge.

DECISION
Institution of Inter Partes Review
35 U.S.C. 314 and 37 C.F.R. 42.108
IPR2017-00967
Patent 8,275,863 B2

Unified Patents Inc. (Petitioner) filed a Petition pursuant to


35 U.S.C. 311319 requesting an inter partes review of claims 1, 2, 4, 5,
10, 11, 1417, 20, and 23 of U.S. Patent No. 8,275,863 B2, issued on
September 25, 2012 (Ex. 1001, the 863 patent). Paper 2. As the original
Petition lacked page numbers, we instructed Petitioner to file a Second
Corrected Petition on September 6, 2017, which we cite herein.1 Paper 9
(Pet.), Paper 8 (authorizing Second Corrected Petition). My Mail, Ltd.
(Patent Owner) filed a Preliminary Response. Paper 6 (Prelim. Resp.).
Applying the standard set forth in 35 U.S.C. 314(a), which requires
demonstration of a reasonable likelihood that Petitioner would prevail with
respect to at least one challenged claim, we grant Petitioners request and
institute an inter partes review of all challenged claims.
I. BACKGROUND
A. Related Proceedings
The parties inform us that the 863 patent is or has been the subject of
numerous lawsuits in district court. Pet. 7; Paper 4, 12.

1
Petitioner indicated that the original Petition did not comply with the word
count limit set forth in 37 C.F.R. 42.24. See Paper 8; Paper 9, 66 (stating
that the word count for the Second Corrected Petition is 14,134 words). Due
to the short time frame, we instructed Petitioner to file the Second Corrected
Petition with no changes except to add page numbers and we indicated that
we would disregard any portion of the Petition in excess of the word count.
Paper 8. Petitioners ground 6, based on Reilly and December, includes the
portion of the Petition that is in excess of the word-limit by 134 words. Pet.
66. In view of our disposition, here with respect to grounds, 46 (see infra
Section II.B.4), we need not consider what, if any, effect our disregarding
the 134 words (see Paper 8) would have had on a decision on the merits with
respect to ground 6.
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In addition, the 863 was the subject of IPR2015-00269 (the 269


IPR), which, according to Petitioner, was instituted and later settled. Pet.
7; Paper 4, 2; Ex. 1021 (269 Institution Decision). Petitioner represents
that the asserted grounds in the Petition are the same as those upon which
trial was instituted in the 269 IPR and the content of the Petition
substantially the same as the petition in that proceeding. Pet. 5.
B. The 863 Patent (Ex. 1001)
The 863 patent relates to methods for modifying the toolbar of an
Internet device. Ex. 1001, 1:1. Specifically, the claims relate to updating
the toolbar of a user Internet device over the Internet. Id. at 29:2863.
Figure 16 is reproduced below:

Figure 16 illustrates a toolbar


According to the 863 patent, information related to updating the toolbar
(also called a button bar), which may be provided as part of a browser, is
obtained from a toolbar/button bar database. Id. at 10:715; 29:3038. The
database stores attributes that define the toolbars buttons, including text,
format, and function. Id. at 10:3850. For example, a button can be
configured to go to the USA Today . . . web site, or launch a script or a
program. Id. at 10:3811:4.
C. Illustrative Claim
Of the challenged claims, claim 1 is independent. Claim 1 is
illustrative of the claims at issue and is reproduced below:

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1. A method of modifying a toolbar, comprising the steps


of:
a user Internet device displaying a toolbar comprising one
or more buttons, the toolbar defined by toolbar data stored in one
or more toolbar-defining databases, the toolbar data comprising
a plurality of attributes, each attribute associated with a button of
the toolbar, wherein for each button of the toolbar, at least one of
the plurality of attributes identifying a function to be performed
when the button is actuated by the user Internet device;
the user Internet device automatically sending a revision
level of the one or more toolbar-defining databases to a
predetermined network address;
a server at the predetermined network address
determining, from the revision level, the user Internet device
should receive the toolbar update data;
the user Internet device receiving toolbar update data from
the Internet;
the user Internet device initiating without user interaction
an operation to update the toolbar data in accordance with the
toolbar update data received;
the user Internet device updating, by the operation, the
toolbar data in accordance with the toolbar update data, thereby
producing updated toolbar data, the updating comprising at least
one of the following steps (a) and (b), each respectively
comprising:
(a) writing at least one new attribute to the original toolbar
data, wherein the writing at least one new attribute to the toolbar
data comprises changing the one or more buttons of the toolbar
by adding a button; and
(b) updating at least one attribute of the toolbar data; and
the user Internet device displaying the toolbar as defined by the
updated toolbar data.
Ex. 1001, 29:2863.

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D. Evidence of Record
Petitioner relies on the following references and declaration (see Pet.
910):
Reference or Declaration Exhibit No.
U.S. Patent No. 5,740,549 (Reilly) Ex. 1003
U.S. Patent No. 5,347,632 (Filepp) Ex. 1004
U.S. Patent No. 5,021,949 (Morten) Ex. 1005
U.S. Patent No. 5,644,737 (Tuniman) Ex. 1006
J.W. Olsen, Big Three On-Line Services Reach Out to the Ex. 1007
Internet, PC Magazine, June 27, 1995 (Olsen)
John December and Neil Randall, The World Wide Web Ex. 1008
Unleashed (2d. ed. 1995) (December)
Declaration of Dr. Benjamin B. Bederson Ex. 1009
E. Asserted Grounds of Unpatentability
Petitioner asserts that the challenged claims are unpatentable on the
following grounds (see Pet. 10):
Claims Challenged Basis Reference(s)
1, 11, 1417, 20, and 23 102(e) Reilly
1, 45, 11, 1417, 20, and 23 102(b) Filepp
1, 2, 45, 11, 1417, 20, and 23 103(a) Filepp and Morten
1, 2, 11, 1417, 20, and 23 103(a) Reilly and Tuniman
2 and 10 103(a) Filepp and Olsen
2 and 10 103(a) Reilly and December

II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
construed according to their broadest reasonable interpretation in light of the
specification of the patent in which they appear. See 37 C.F.R. 42.100(b);
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 214446 (2016).

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1. The Internet, User Internet Device


Claim 1 of the 863 Patent recites a user Internet device displaying a
toolbar, as well as the user Internet device automatically sending a
revision level, receiving toolbar update data from the Internet, and
initiating without user interaction an operation to update the toolbar data
(emphasis added). Petitioner does not argue any specific construction for
the Internet or user Internet device. See Pet. 1116. However, as it did
in the 269 IPR, Patent Owner provides specific arguments and evidence as to
how the term Internet would have been understood at the time of the
invention (Prelim. Resp. 511).
In the 269 IPR, the panel rejected Patent Owners argument that the
term Internet would have been understood to mean the publicly
accessible interconnected network of networks that communicates using the
Internet Protocol. 269 IPR, Paper 7, slip op. 67. The panel determined
based on the evidence before it that, if construed in the present, the terms
meaning may accord with Patent Owners construction, but that would not
have been the case at the time of the invention or in the context of the
specification. Id. at 6. Among other things, the panel observed the
specifications statement that the Internet . . . means interconnected
network of networks, requires neither public accessibility nor use of the
Internet Protocol. Id. (quoting Ex. 1001, 1:4647) (internal quotations
removed).
In this proceeding, Patent Owner has provided additional evidence
and argument in support of its construction. On this more fully developed
record, we agree with Patent Owner. In particular, Patent Owner notes that
the specifications reference to an interconnected network of networks

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cited by the panel in the 269 IPRshould be viewed in the context of the
sentence that precedes it, which describes the Internet linking many of the
worlds business, institutions, and individuals. See Prelim. Resp. 89
(quoting Ex. 1001, 1:4446). As such, Patent Owner is correct that the
specification supports its requirement for public accessibility. Moreover,
Patent Owner also provides evidence from the 1994, 1998, 1999, and 2002
editions of the Microsoft Computer Dictionary that, during the time period
encompassing the invention of the 863 patent,2 the Internet, when
capitalized as it is in the claims, was consistently understood as requiring
both public accessibility and the Internet Protocol. See id. at 9 (citing Ex.
2006, 220 (When capitalized (Internet), the term refers to the collection of
networks and gateways that use the TCP/IP suite of protocols.); Ex. 2011;
Ex. 2013; Ex. 2014).
Patent Owner also provides unrebutted evidence3 that the meaning of
internet is different when not capitalized. Prelim. Resp. 1011 (citing Ex.
2003 50). For example, Patent Owner provides dictionary evidence that
internet has been understood to more broadly refer to all networks that
have a path between them, while the same evidence defines Internet as

2
The application for the 863 patent was filed on October 16, 2003 and
claims the benefit of U.S. Provisional Application No. 60/050,186, filed on
June 19, 1997 and U.S. Application No. 09/100,619, filed on June 19, 1998.
Ex. 1001 at [22], [60], [62].
3
Although we recognize that Petitioner does not ordinarily have an
opportunity to rebut a Patent Owner Preliminary Response prior to the
Institution Decision, in this case Petitioner was aware from the 269 IPR that
Patent Owner was likely to proffer a construction of Internet. See 37
C.F.R. 42.104(b)(3) (requiring Petition to identify . . . [h]ow the challenged
claim is to be construed.)
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requiring TCP/IP. See id. at 11 (citing Ex. 2007, 249), Ex. 2006, 220.
Accordingly, based on this additional evidence, we are persuaded that the
correct understanding of the claim term Internet at the time of the
invention would have included both the public accessibility and Internet
Protocol requirements proposed by Patent Owner.
For the foregoing reasons, we construe the Internet as the publicly
accessible interconnected network of networks that communicate using the
Internet Protocol. Similarly, the claim term user Internet device should
be construed as an apparatus allowing a user to access the publicly
accessible interconnected network of networks that communicate using the
Internet Protocol.
2. Web Browser
Claim 2 of the 863 patent recites the user Internet device as part of a
web browser. Petitioner contends that the Board should construe, as it did
in the 269 IPR, web browser as a software application that enables a user
to find HTML documents (i.e., web pages) and display them to a user. Pet.
15 (citing 269 Institution Decision, 78). Patent Owner does not propose a
construction for the term web browser. We agree that Petitioners
proposed construction accords with the broadest reasonable construction
consistent with the specification. See Ex. 1001, 10:6111:4. Accordingly,
for purposes of this Decision, we construe web browser as a software
application that enables a user to find HTML documents (i.e., web pages)
and display them to a user.
3. Other Terms
Petitioner also proposes constructions for the terms automatically
and name-value pair. Pet. 1315. Patent Owner does not propose

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constructions for these terms. In view of our determination below, we


determine that, at this stage in the proceeding, explicit construction of the
proposed terms is not necessary to resolve the disputed issues before us.
B. Asserted Grounds of Unpatentability
1. Alleged Anticipation of Claims 1, 4, 5, 11, 1417, 20, and 23
by Filepp
Petitioner contends that claims 1, 4, 5, 11, 1417, 20, and 23 are
anticipated by Filepp. Pet. 2940. Filepp relates to an interactive computer
system network that enables a user to display desired information. Ex. 1004,
Abstract. We have reviewed Petitioners assertions and supporting
evidence, and Patent Owners opposing arguments, assertions and evidence,
and we are persuaded that Petitioner has not demonstrated a reasonable
likelihood of prevailing in showing that claims 1, 4, 5, 11, 1417, 20, and 23
are anticipated by Filepp.
The system of Filepp discloses a modifiable toolbar (command bar
290) that provides a user interface that enables the user to execute a variety
of useful commands. Ex. 1004, 5:48-57. The display text and graphics
necessary to create the user interface are formulated from pre-created
objects, including page element objects (PEOs). Id. at 10:30-42, 66-68. The
PEOs can be updated during version checking where the version ID of the
object stored is checked with the delivery system 20, and the delivery system
advises the system whether the version ID matches the current, or whether to
deliver a current object that will replace the stored object shown to be
stale. Id. at 89:1-17. The object is updated without user interaction, thus

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supplying an updated object and an updated toolbar, based on updated


toolbar data. Id.
Patent Owner argues that Filepp cannot anticipate claim 1 because it
does not disclose the recited a user Internet Device or receiving toolbar
update data from the Internet. Prelim. Resp. 4146. We agree. As Patent
Owner points out (id. at 4142), Petitioner appears to assert interactive
computer network 10 of Filepp meets the recited Internet and reception
system or RS 400 to the recited user Internet device. See Pet. 3536
(quoting, e.g., Ex. 1004, 6:1012 (RS 400 includes a means to
communicate with network 10 to retrieve objects.)). However, as Patent
Owner contends (Prelim. Resp. 4344), network 10 does not disclose the
Internet because, by Petitioners own admission, Filepp uses an IBM
proprietary protocol, not Internet Protocol as required by the construction of
Internet discussed above. Pet. 40 (In Filepp, the disclosed network was
based on IBMs System Network Architecture (SNA). By the mid-1990s,
proprietary networks such as SNA were being replaced by IP based
networks and integrated with the Internet.); Ex. 1004, 22:3054.
Accordingly, because RS 400 receives data from a proprietary network using
a protocol other than Internet Protocol, we determine that Petitioner has not
shown sufficiently that Filepp discloses the user Internet device receiving
toolbar update data from the Internet.
Patent Owner further contends that Filepp fails to disclose other
limitations of claim 1. Prelim. Resp. 4652. However, we consider these
arguments below in addressing Petitioners obviousness grounds based on
Filepp. As to anticipation, for the foregoing reasons, we conclude that
Petitioner has not established sufficiently a reasonable likelihood of

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prevailing as to claim 1, as well as claims 4, 5, 11, 1417, 20, and 23, which
depend from claim 1.
2. Alleged Obviousness of Claims 1, 2, 4, 5, 11, 1417, 20, and
23 by Filepp and Morten
Petitioner contends claims 1, 2, 4, 5, 11, 1417, 20, and 23 are
obvious over Filepp and Morten. Pet. 4047. Petitioner relies substantially
on its anticipation analysis of claim 1 based on Filepp (see id. at 3137
(mapping Filepp to claim 1)), and provides additional evidence and
argument that either Filepp and Morton would have rendered the subject
matter of claim 1 obvious as to the Internet-related claim limitations
discussed above. See id. Morten relates to linking an SNA capable host to
another SNA capable host using Internet Protocol. Ex. 1005, Abstract,
7:2141. We have reviewed Petitioners assertions and supporting evidence,
and Patent Owners opposing arguments, assertions and evidence. 4 For the
reasons discussed in more detail below, we are persuaded that Petitioner
demonstrates a reasonable likelihood of prevailing in showing that claims 1,

4
Patent Owner makes a general argument that institution be denied because
Petitioners contentions are based on unexplained quotations from the
references and not well organized, easy-to-follow arguments for each
ground. Prelim. Resp. 1214. However, Petitioner has identified where it
contends the elements of the claims are found. See Pet. 3137, 4047; 37
C.F.R. 104(b)(4) (The petition must specify where each element of the
claim is found in the prior art patents are printed publications relied upon).
We independently review this evidence (whether explicated or not) as well
as Patent Owners arguments in ascertaining whether the reasonable
likelihood standard has been satisfied.
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4, 5, 11, 1417, 20, and 23, but not claim 2, are obvious over Filepp and
Morten.
a. The Internet Limitations
Petitioner contends that, by the mid-1990s, proprietary networks such
as SNA were being replaced by IP-based networks and integrated with the
Internet. Pet. 40; see Ex. 1009 122124. According to Petitioner,
[g]iven the rapidly increasing popularity of the Internet in the mid-1990s, a
[person of ordinary skill in the art] would have had reason to adapt the SNA-
based embodiment of the invention in Filepp to the Internet-bridging
technology disclosed in Morten, creating a toolbar that updated over the
Internet. Pet. 40. The motivation for doing so, Petitioner contends, would
have included providing users with increased performance and
interoperability and the wider array of resources available through the
Internet. Id. at 4041 (citing Ex. 1004, 1:1125).
Patent Owner contends that Petitioner fails to establish how Filepp
and Morton teach the elements of claim 1. Prelim Resp. 5659. In
particular, Patent Owner argues [t]he portions of Morten cited by Petitioner
do not describe devices that themselves communicate over the Internet.
Rather, Morten describes tunneling SNA traffic from two SNA devices over
the Internet. Id. at 57. In support of this position, Patent Owner argues that
the full text of claim 1 of Mortencited by Petitionerclarifies that a first
front end processor coupled to first SNA host, and a second front end
processor coupled to a second SNA host, wherein each processor is used
for tunneling SNA traffic over a packet switched protocol. Id. at 58
(quoting Ex. 1005, claim 1). Thus, according to Patent Owner, the SNA
host of Filepp is not transformed to an Internet host, but instead . . . an SNA

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host remains an SNA host and merely uses the Internet with the help of
another device (a front-end processor). Id. We do not find this argument
persuasive.
First, Petitioner has provided evidence that a person of ordinary skill
in the art would have been motivated to adapt a proprietary network, such as
described in Filepp, to the Internet to access the wider array of resources
that were increasingly available. See Ex. 1009 123124. For purposes of
this Decision, we find this testimony credible because it is supported by
Filepps disclosure, cited by Petitioner, that the reception systems (i.e., RS
400) would be expected to be conventional personal computers and
interconnected with a wide variety of networking technologies including
PSTN and broadcast media. See id. (citing Ex. 1004, 4:14, 6:5556).
Second, even accepting Patent Owners view that the SNA host
described in Filepp merely uses the Internet with the help of another
device (Prelim. Resp. 58), this does not mean a user Internet Device would
have not have been obvious in view of Filepp and Morten. See In re Keller,
642 F.2d 413, 425426 (CCPA 1981) (The test for obviousness is not
whether the . . . claimed invention must be expressly suggested in any one or
all of the references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art).
Although explicitly described as a separate front-end processor (FEP),
Morten describes the IP to SNA bridging functionality as software
developed for an MC68000 based processor. See Ex. 1005, 13:1032. We
determine that incorporating the software-based IP bridging functionality
(i.e., the front end device of claim 1 of Morten) into the SNA host (which
Filepp contemplates as a conventional personal computer or an IBM-

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compatible) to use the Internet would have been among the inferences and
creative steps that a person of ordinary skill in the art would employ. KSR
Intl Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); see Soverain Software
LLC v. New Egg, Inc., 705 F.3d 1333, 134344 (Fed. Cir. 2013) (holding
routine incorporation of Internet technology into existing processes to be
obvious), Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (affirming obviousness judgment where there was no
evidence that the recited combination of elements was uniquely challenging
or difficult for one of ordinary skill in the art).
b. Other Disputed Limitations of Claim 1
Patent Owner contends Petitioner has not shown that Filepp discloses
the recited toolbar data stored in a toolbar defining database wherein the
toolbar data compris[es] a plurality of attributes, each attribute associated
with a button of the toolbar. Wherein for each button of the toolbar, at
least one of the plurality of attributes identif[ies] a function to be performed
when the button is actuated, but, instead, provides only bare citations
without explanation. Prelim. Resp. 46 (emphasis removed). In particular,
Patent Owner contends
Claim element [l.d] explicitly requires that the toolbar
data compris[es] a plurality of attributes, each associated with a
button of the toolbar. Therefore, to establish that Filepp
anticipates claim 1, Petitioner must show that Filepps page
element objects (the alleged toolbar data) comprise display
data (alleged attributes) and that each of the display data items
in the page element objects (the alleged attributes) is
associated with a button of the toolbar. . . . Petitioner does not
provide an explicit disclosure in Filepp for claim element [1.d]
and therefore must rely on inherency to meet this claim element.
Nevertheless, the citation provided by Petitioner demonstrates

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that each item of the display data of a page object element (the
alleged attributes) is not associated with a button of the toolbar.
Prelim. Resp. 48. We disagree.
As an initial matter, in considering the obviousness of the claimed
subject matter, the question is not what Filepp inherently discloses, but what
Filepp and Morten would have taught or suggested to a person of ordinary
skill in the art. See Keller, 642 F.2d at 425426. Thus, even if Patent
Owner is correct that it is not necessary in Filepp to associate each of the
plurality of display data items to a button of the toolbar, and [i]t is also
conceivable that the display data of Filepp (the alleged attributes) could
include a single attribute that defines properties of multiple buttons (Prelim.
Resp. 49), the question before us is whether the cited teachings of Filepp
teach or suggest, A plurality of attributes, each associated with a button of
the toolbar. At this stage of the proceeding, we find that they do.
The alleged toolbar is Filepps command bar 290 having a number
of commands 291298 which the user can execute. Ex. 1004, 9:5357.
Page element objects 504 (i.e., the alleged toolbar data) contain the
display datatext and graphicto be displayed within partitions 250 to 290
and to further provide the associated control data and programs. Id. at
10:6611:1. Page element objects control the functionality within the
screen partition by means of field definition segments 516 and program call
segments 532. Id. at 11:58. At this stage of the proceeding, we find that
these descriptions of the page element object containing the display data as
well as the functionality (e.g. JUMP, etc.), within the screen partition (e.g.,
command bar 290) teach or suggest the recited plurality of attributes, each
associated with a button of the toolbar. See id. at 74:5260 (explaining that
functions can be performed by the command bar and be treated as another
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partition for every page for which an appropriate set of supporting objects
exist).
Patent Owner also contends that Petitioner has not shown that Filepp
discloses a revision level . . . to a predetermined network address, as claim
1 recites. Prelim. Resp. 51. Specifically, Patent Owner argues that the cited
portions of Filepp do not mention a network address much less a
predetermined network address and, moreover, a predetermined network
address is not inherently used because [o]ne can send data without even
specifying a network address using, for example, a broadcast technique.
And such broadcasting was possible using the SNA network disclosed in
Filepp. Id. (citing Ex. 1004, 89:110, 84:6165, 78:3843). We are not
persuaded by this argument.
Once again, the relevant question is whether Filepp and Morten teach
or suggest a predetermined network address, not whether alternatives are
possible. The cited portion of Filepp teaches delivery system 20, on
interactive network 10, having object storage facility 439 (i.e., the toolbar-
defining database), which receives a revision level from RS 400 (i.e., the
user Internet device). Ex. 1004, 2:5165; 6:1012; 89:110; Pet. 34. As
discussed above, at this stage of the proceeding, we find that a person of
ordinary skill in the art would have combined an SNA host (such as delivery
system 20 and RS 400) with an IP front-end processor as discussed in
Morten to use the Internet. Morten also provides for identifying a host by its
32-bit binary IP address (i.e., predetermined network address). See Ex.
1005, 38:2835 (The TCP support package shall provide a name
conversion service . . . [to] convert a long character name for a DDN host or
a dotted decimal name for a DDN host to the 32 bit binary IP address

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required by the other TCP services.). Accordingly, for purposes of this


Decision, we determine that the combination teaches the use of the recited
predetermined network address.
c. Claim 2
Petitioner relies solely on the Filepps abstract and disclosure[s]
above for claim elements 1.ad, 1.jk as teaching the limitation of claim 2,
which recites, toolbar software installed in the user Internet device as part
of a web browser. Pet. 46. As discussed above, we agree with Petitioners
contention that web browser should be construed as a software
application that enables a user to find HTML documents (i.e., web pages)
and display them to a user. See supra II.A.2. Petitioner does not explain
how the relied upon disclosures teach or suggest toolbar software as part of a
web browser. Accordingly, we determine that Petitioner has not shown
sufficiently how the combination of Filepp and Morten teach or suggest the
limitation of claim 2.
d. Claim 4
Patent Owner contends Petitioner has not shown that Filepp discloses
a file containing a plurality of name-value pairs comprising the plurality of
attributes. Prelim. Resp. 52. More specifically, Patent Owner contends
that Petitioners declarant, Dr. Bederson, cites only to the Link verb using
an object ID, although Filepp specifies dozens of other verbs, and never
explains how the LINK verb, or object identifier of claim 10, is associated
with Filepps tool bar. Id. (citing Ex. 1009 119). At this stage of the
proceeding, we do not agree.
As discussed above, page element objects contain the display data as
well as the functionality (e.g. JUMP, etc.), within the screen partition,

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such as command bar 290 (i.e., the claimed toolbar). The Petition cites to
teachings in Filepp that objects have a header that contains an object ID.
Pet. 37 (citing Ex. 1004, 12:2435, Figs. 4a4b, claim 10). According to Dr.
Bederson, [t]hese object IDs provide unique names to each object in the
database. Their value is represented by the sequence of bytes that represent
the object itself. Ex. 1009 119. At this stage of the proceeding, we credit
this testimony (see 37 C.F.R. 42.108(c)), which is consistent with the
description of Figures 4a and 4b. See Ex. 1004, 12:2435. Moreover,
Filepp also describes of updating an object to replace a stale object and
support the desired screen. Ex. 1004, 89:118. As such, the updated object
would update the toolbar data including any graphics and functionality
associated with the toolbar buttons (i.e., attributes). Accordingly, for
purposes of this Decision, we determine that Filepp in combination with
Morten teaches or suggests the requirements of claim 4.
e. Claims 1417 and 20
Patent Owner contends Petitioner relies on the same citation of Filepp
without identifying how these citations anticipate the varied features of
claims 1417 and 20. Prelim. Resp. 5455. As an initial matter, the
question is not whether Filepp anticipates the limitations of claims 1417
and 20, but whether Filepp, in combination with Morten, teaches or suggests
the respective claim limitations. Moreover, given the nature of the claim
limitations at issue (one new attribute to the toolbar data, changing the
one or buttons of the toolbar, updating at least one attribute of the toolbar
data, updating the one or more buttons of the toolbar, and updating an
attribute defining a button caption) (see Ex. 1001, claims 1417, 20), we
are not persuaded that Petitioners reliance on the same portion of Filepp as

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teaching these limitations is necessarily deficient. Rather, as discussed


above, when an object is updated in Filepp, the updated object is supplied
and an updated toolbar is displayed based on updated toolbar data, where the
objects include buttons. Accordingly, for purposes of this Decision, we
determine that Filepp in combination with Morten teaches or suggests the
requirements of claims 1417 and 20.
For the foregoing reasons, we are persuaded that Petitioner
demonstrates a reasonable likelihood of prevailing in showing that claims 1,
4, 5, 11, 1417, 20, and 23, but not claim 2, are obvious over Filepp and
Morten.

3. Alleged Obviousness of Claims 2 and 10 over Filepp,


Morten, and Olsen
Petitioner contends claims 2 and 10, each of which depend from claim
1, are obvious over Filepp and Olson. Pet. 5961. However, in view of our
determination that Petitioner has demonstrated a reasonable likelihood in
prevailing with respect to claim 1 over the combination of Filepp and
Morten, based substantially on its anticipation analysis of claim 1 based on
Filepp (see id. at 3137 (mapping Filepp to claim 1)), with regard to claims
2 and 10, we include Morten in Petitioners analysis based on Filepp and
Olsen.5 Olsen describes Prodigy as the first Internet service to provide a
web browser to access web pages on the Internet. Ex. 1007, 7. 6 We have

5
Thus, we are not persuaded by Patent Owners argument that Olsen does
not cure the deficiency in Filepp with respect to the user Internet device.
Prelim. Resp. 59. As discussed above, however, we determined that
Petitioner demonstrated sufficiently that the combination of Filepp and
Morten teaches or suggests the user Internet device.
6
Page 7 refers to exhibit pagination not magazine pagination.
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reviewed Petitioners assertions and supporting evidence, and Patent Owners


opposing arguments, assertions and evidence, and, for the reasons discussed
in more detail below, we are persuaded that Petitioner demonstrates a
reasonable likelihood of prevailing in showing that claims 2 and 10 are
obvious over Filepp, Morten, and Olsen.
Patent Owner contends, Petitioner does not explain how the
combination of Filepp and Olsen results in a database responsive toolbar
software installed in the user Internet device as part of a web browser, as
recited in claim 2. Prelim. Resp. 59. At this stage of the proceeding, we
disagree.
As Petitioner points out, Filepps system was commercialized as
Prodigy, and the web based functionality of Prodigy, including the
ability to open URLs, is disclosed by Olsen. Pet. 59 (citing Ex. 1007, 7
(describing Prodigys Web browser)). According to Dr. Bederson, a
person of ordinary skill in the art in the mid-1990s would have been
motivated to add the toolbar software disclosed in Filepp with the integrated
web browser (i.e., installed in the user Internet device as part of a web
browser) disclosed in Olsen to access the resources on the Internet and
World Wide Web. Ex. 1009 142. We credit this testimony, which is
consistent with Olsens disclosure that Prodigys interface has buttons that
let you choose among content areas. Ex. 1007, 7.
Patent Owner contends, Petitioner does not explain how choosing
content areas teaches or suggests opening URLs, as claim 10 requires.
The cited portion also discusses that there are a multitude of links to remote
sites, but Petitioner does not contend that these links are URLs or the
claimed opening URLs. Prelim. Resp. 60. At this stage of the

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proceeding, we do not find this argument persuasive, because the issue is


whether the combination teaches or suggests buttons that open URLs. The
cited portion of Olsen associates the buttons with content and then providing
links to remote sites. See Ex. 1007, 7 (stating that Prodigys interface has
buttons that let you choose among content areas. . . . Once at Prodigys Web
site, youre not limited to manually entering sites . . . there are a multitude of
links to remote sites.). Although Olsen does not explicitly state that a
link is a URL, it explains that users are accessing the Web and that
some links on a weather page might . . . take you to the National Weather
Service. Id. For purposes of this Decision, we find that a person of
ordinary skill in the art would have understood these links to remote sites
on the web (that do not have to be manually entered) to teach or suggest
URLs. See Ex. 1009 142143.
For the foregoing reasons, we are persuaded that Petitioner
demonstrates a reasonable likelihood of prevailing in showing that claims 2
and 10 are obvious over Filepp, Morten, and Olsen.

4. Asserted Grounds Based on Reilly


Pursuant to 35 U.S.C. 316(b), rules for inter partes proceedings
were promulgated to take into account the regulation on the economy, the
integrity of the patent system, the efficient administration of the Office, and
the ability of the Office to timely complete proceedings. The promulgated
rules provide that they are to be construed to secure the just, speedy, and
inexpensive resolution of every proceeding. 37 C.F.R. 42.1(b). As a
result, and in determining whether to institute an inter partes review of a
patent, the Board, in its discretion, may deny some or all grounds for

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unpatentability for some or all of the challenged claims. 37 C.F.R.


42.108(b).
We exercise our discretion and decline to institute review based on
any of the other asserted grounds advanced by Petitioner that are not
identified below as being part of the trial. 37 C.F.R. 42.108(a); see also
35 U.S.C. 314(a) (giving the Director discretion on whether to institute
review). Consequently, we decline to institute review based on ground 1
(anticipation of claims 1, 11, 1417, 20, and 23 by Reilly), ground 4
(obviousness of claims 1, 2, 11, 1417, 20, and 23 over Reilly and
Tuniman), and ground 6 (obviousness of claims 2 and 10 over Reilly and
December).
III. SUMMARY
We determine that Petitioner has demonstrated a reasonable likelihood
of prevailing on its challenges to claims 1, 2, 4, 5, 10, 11, 1417, 20, and 23
of the 863 patent as set forth above. At this stage of the proceeding, we
have not made a final determination as to the patentability of any of these
challenged claims or the construction of any claim term.
IV. ORDER
It is, therefore,
ORDERED that, pursuant to 35 U.S.C. 314(a), an inter partes
review of the 863 patent is hereby instituted on the following grounds:
A. Obviousness of claims 1, 4, 5, 11, 1417, 20, and 23 by Filepp and
Morten; and
B. Obviousness of claim 2 and 10 over Filepp, Morten, and Olsen;

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FURTHER ORDERED that pursuant to 35 U.S.C. 314(c) and


37 C.F.R. 42.4, notice is hereby given of the institution of a trial
commencing on the entry date of this decision.

PETITIONER:

Jonathan Stroud
Roshan Suresh Mansinghani
UNIFIED PATENTS INC.
jonathan@unifiedpatents.com
roshan@unifiedpatents.com

PATENT OWNER:

Lori A. Gordon
Daniel S. Block
STERNE KESSLER GOLDSTEIN FOX P.L.L.C
lgordon-PTAB@skgf.com
dblock-PTAB@skgf.com

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