Flectere LLC

Patent Trials and Appeals Board

May 25, 2021

IPR2020-00400 (P.T.A.B. May. 25, 2021)

Trials@uspto.gov Paper 17
571-272-7822 Date: May 25, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FEDEX CORPORATION,
Petitioner,

v.

FLECTERE LLC,
Patent Owner.
____________

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Before JOHN A. HUDALLA, AMBER L. HAGY, and
STEPHEN E. BELISLE, Administrative Patent Judges.

HUDALLA, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

Petitioner, FedEx Corporation (“Petitioner”), filed a Petition
(Paper 1, “Pet.”) requesting an inter partes review of claims 1–24 of U.S.
Patent No. 6,401,094 B1 (Ex. 1001, “the ’094 patent”). Patent Owner,
Flectere LLC (“Patent Owner”), waived the filing of a Preliminary
Response. Paper 7. We determined that the information presented in the
Petition established that there was a reasonable likelihood that Petitioner
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would prevail with respect to at least one of the challenged claims. Pursuant
to 35 U.S.C. § 314, we instituted this proceeding on July 9, 2020, as to all
challenged claims and all grounds of unpatentability. Paper 8 (“Dec. on
Inst.”).
During the course of trial, Patent Owner filed a Patent Owner
Response (Paper 10, “PO Resp.”), and Petitioner filed a Reply to the Patent
Owner Response (Paper 13, “Pet. Reply”). Patent Owner did not file a
sur-reply. No oral hearing was held. See Paper 16.
Petitioner filed Declarations of Benjamin B. Bederson, Ph.D., with its
Petition (Ex. 1003) and its Reply (Ex. 1021).
We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
Written Decision under 35 U.S.C. § 318(a) as to the patentability of
claims 1–24 of the ’094 patent. For the reasons discussed below, Petitioner
has demonstrated by a preponderance of the evidence that claims 1–24 of the
’094 patent are unpatentable.

I. BACKGROUND
A. Real Parties-in-Interest
Petitioner identifies FedEx Corporation as the real party-in-interest.
Pet. 77; Paper 6, 1; Paper 12, 1. Patent Owner identifies Flectere LLC as the
real party-in-interest. Paper 5, 2.

B. Related Proceedings
Petitioner identifies the following terminated proceedings related to
the ’094 patent (Pet. 77; Paper 6, 1; Paper 12, 1):
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Flectere LLC v. Costco Wholescale Corp., No. 2:19-cv-00017 (E.D.
Tex. filed Jan. 18, 2019);
Flectere LLC v. FedEx Corp., No. 2:19-cv-00018 (E.D. Tex. filed
Jan. 18, 2019);
Flectere LLC v. United Parcel Serv., Inc., No. 2:19-cv-00020 (E.D.
Tex. filed Jan. 18, 2019);
Flectere LLC v. Academy, Ltd., No. 2:18-cv-00227 (E.D. Tex. filed
May 24, 2018);
Flectere LLC v. Sears Brands, LLC, No. 2:18-cv-00228 (E.D. Tex.
filed May 24, 2018);
Flectere LLC v. Staples, Inc., No. 2:18-cv-00229 (E.D. Tex. filed
May 24, 2018); and
Flectere LLC v. Office Depot, Inc., No. 2:18-cv-00230 (E.D. Tex.
filed May 24, 2018).
We also note that Petitioner has challenged other patents owned by
Patent Owner in IPR2020-00402 and IPR2020-00403. We previously issued
a Final Written Decision in IPR2020-00403. We issue a Final Written
Decision in IPR2020-00402 concurrently herewith.

C. The ’094 patent
The ’094 patent is titled “System and Method for Presenting
Information in Accordance with User Preference” and generally relates to a
system and method for presenting information in Hypertext Markup
Language (“HTML”) or other customized documents according to a user’s
personality traits. Ex. 1001, code (54), 1:7–9. The system dynamically
formats information for each user in accordance with that user’s personality
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traits rather than storing it in a static HTML document. Id. at 2:17–19.
Figure 1 of the ’094 patent, reproduced below, is illustrative.

Figure 1 illustrates a block diagram showing an overview of a system
organized into three layers.
Id. at 2:50–52. As illustrated in Figure 1, system 1 is organized as three
layers: client layer 100, application layer 200 (alternatively known as a
middle layer), and data layer 300. Id. at 3:14–17. Client layer 100 submits a
request to the application layer 200, which in turn sends a request and passes
the appropriate parameters into the store procedures on data layer 300. Id. at
3:17–20. Data layer 300 processes those parameters and returns the
requested information to application layer 200. Id. at 3:20–22. Application
layer 200 formats the information on the fly in accordance with a business
object and passes the formatted information to client layer 100, which
creates a front end for the user. Id. at 3:22–25.
Figure 2 of the ’094 patent, reproduced below, illustrates system 1 of
Figure 1 in greater detail.
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Figure 2 illustrates a block diagram showing the three layers of the system of
Figure 1 in greater detail.
Ex. 1001, 2:53–54. Client layer 100 is implemented on a user’s desktop
computer or other workstation 102 running Web browser 104, 106. Id. at
3:52–55. Browser 104 or 106 handles dynamic HTML (“DHTML”) pages
or scripts 108. Id. at 3:59–60. Application layer 200 is implemented on a
server and is based on Microsoft Transaction Server (“MTS”) 202, Internet
Information Server (“IIS”) 204, Active Server Pages (“ASP”) 206,
behavioral business objects 208, and Active Data Objects (“ADO”) 210. Id.
at 3:61–66. Behavioral business objects 208 allows the formatting of the
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information in accordance with the user’s personality type. Id. at 4:2–4.
Data layer 300 is implemented on a database server including database 302,
which is accessible through the MTS 202. Id. at 4:6–8.
Figure 3 of the ’094 patent, reproduced below, is a schematic diagram
showing the interaction between different users in system 1 of Figure 1.

Figure 3 illustrates the interaction of users with system 1.
Ex. 1001, 2:55–56, 4:13–14. Figure 3 depicts four personality types,
amiable user U1, expressive user U2, analytical user U3, and driver user U4,
though system 1 can be scaled to any number of types of user. Id. at 4:14–
20. Characteristics of the various personality types associated with users
U1–U4 may be based on assertiveness and responsiveness or other measures
of personality, such as the Myers-Briggs type indicator. Id. at 6:45–49; see
also id. at 6:50–7:54 (listing characteristics of the four personality types
used in the exemplary embodiment shown in Figure 3). Users U1–U4
access database 302 via behavioral business objects 208 in application
layer 200. Id. at 4:20–25.
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Figure 6 of the ’094 patent, reproduced below, depicts a home page
displayed by the system of Figure 1.

Figure 6 illustrates a home page accessed by users of system 1.
Ex. 1001, 3:1–2, 7:66–67. Home page 600 includes slider bars 602, 604 that
allow a user to select the form in which subsequent pages are to be
displayed. Id. at 7:66–83. In particular, first slider bar 602 allows the user
to select from among amiable, expressive, analytical, and driver personality
types, and second slider bar 604 allows the user to select four levels of
graphics. Id. at 8:3–6. The user may confirm selections made with slider
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bars 602, 604 by clicking the “Accept Characteristics” button 606. Id. at
8:6–7. Home page 600 also includes “Change Behavior” link 608, which
the user may click at any time on any page to change characteristics. Id. at
8:7–9.
The ’094 patent issued from an application that was filed May 27,
1999. Ex. 1001, code (22). As discussed below, Petitioner’s asserted
references qualify as prior art relative to the May 27, 1999, filing date of the
application that led to the ’094 patent.

D. Illustrative Claim
Of the challenged claims, claims 1 and 13 are independent. Claims 2–
12 depend directly or indirectly from claim 1, and claims 14–24 depend
directly or indirectly from claim 13. Claim 1 is illustrative of the challenged
claims:
1. A system for presenting information to a user on a
workstation operated by the user in accordance with a
preference specified by the user through the workstation, the
system comprising:
a database server for storing the information; and
an application server, in communication with the
database server and the workstation, for receiving from the
workstation a request for the information and an indication of
the preference which has been specified by the user through the
workstation, retrieving the information from the database
server, dynamically formatting the information in accordance
with the preference to form custom-formatted information and
sending the custom-formatted information to the workstation.
Ex. 1001, 8:44–57.
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E. Prior Art
Petitioner relies on the following prior art:
U.S. Patent No. 6,632,248 B1, filed Dec. 6, 1996, issued
Oct. 14, 2003 (Ex. 1005, “Isaac”);
U.S. Patent No. 6,446,076 B1, filed Nov. 19, 1998, issued
Sept. 3, 2002 (Ex. 1006, “Burkey”); and
U.S. Patent No. 6,016,484, filed Apr. 26, 1996, issued
Jan. 18, 2000 (Ex. 1007, “Williams”).

F. The Instituted Grounds
We instituted inter partes review of claims 1–24 of the ’094 patent on
the following grounds (Dec. on Inst. 27), which are all the grounds presented
in the Petition (Pet. 5):
Claims Challenged 35 U.S.C. § References
1–24 103(a)1 Isaac, Burkey
8, 14–17, 20 103(a) Isaac, Burkey, Williams

II. ANALYSIS
A. Legal Standards
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter
pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the
’094 patent was filed before March 16, 2013 (the effective date of the
relevant amendment), the pre-AIA version of § 103 applies.
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The question of obviousness is resolved on the basis of underlying factual
determinations, including (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of skill in the art; and (4) where in evidence, so-called secondary
considerations.2 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
We also recognize that prior art references must be “considered together
with the knowledge of one of ordinary skill in the pertinent art.” In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571
F.2d 559, 562 (CCPA 1978)).

B. Level of Ordinary Skill in the Art
Citing testimony from Dr. Bederson, Petitioner contends that a person
of ordinary skill in the art in the field of the ’094 patent would have had at
least a Bachelor’s degree in electrical engineering or computer science, and
would have had approximately one year of relevant experience in the field of
web design and development. Pet. 5–6 (citing Ex. 1003 ¶¶ 39–41).
Petitioner further contends that less work experience may be compensated
by a higher level of education, such as a Master’s degree, and vice versa. Id.
at 6 (citing Ex. 1003 ¶¶ 39–41). In our Decision on Institution, we adopted
Petitioner’s articulation of the level of ordinary skill in the art. Dec. on
Inst. 6–7. After institution, neither party put forth arguments related to the
level of ordinary skill. We discern no reason to change the level of ordinary
skill in the art and again adopt Petitioner’s articulation in this Final Written
Decision.

2 The record does not contain any evidence of secondary considerations of
nonobviousness.
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C. Claim Interpretation
In an inter partes review, we construe each claim “in accordance with
the ordinary and customary meaning of such claim as understood by one of
ordinary skill in the art and the prosecution history pertaining to the patent.”
37 C.F.R. § 42.100(b) (2019). Accordingly, our claim construction standard
is the same as that of a district court. See id. Under the standard applied by
district courts, claim terms are generally given their plain and ordinary
meaning as would have been understood by a person of ordinary skill in the
art at the time of the invention and in the context of the entire patent
disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
(en banc). “There are only two exceptions to this general rule: 1) when a
patentee sets out a definition and acts as his own lexicographer, or 2) when
the patentee disavows the full scope of a claim term either in the
specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am.
LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
Petitioner contends that we should apply the plain and ordinary
meaning to all terms of the ’094 patent. Pet. 6. This includes the term
“personality type” recited in claim 11. Id.; Pet. Reply 3. Patent Owner
provides comments regarding the construction of “personality type,” but
Patent Owner does not put forth any specific construction for this term.
See PO Resp. 8–12. We now consider Patent Owner’s comments regarding
“personality type.”
Patent Owner contends “[t]he inventors of the challenged patent
describe what this claimed personality type is over a dozen times throughout
Claim 11 and the Specification.” PO Resp. 8–9 (citing Ex. 1001, code (57),
4:2–5:19, 6:44–8:10, 9:34–41, 10:46–54). In particular, Patent Owner notes
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the Figure 3 embodiment with amiable user, expressive user, analytical user,
and driver user as personality types. Id. at 9 (citing Ex. 1001, Fig. 3). Patent
Owner further notes “the invention can be scaled to any number of types of
user” beyond these four exemplary personality types. Id. at 10 (citing
Ex. 1001, 4:19–20). Patent Owner also contends the ’094 patent
“illustrate[s] personality types of users based on assertiveness,
responsiveness and ‘other measures of personality, such as the Myers-Briggs
type indicator.’” Id. (quoting Ex. 1001, 6:44–48). In particular, Patent
Owner notes that Figure 6 includes a slider a user can manipulate “by sliding
between four personality types.” Id. at 10–11 (citing Ex. 1001, Fig. 6).
Patent Owner further notes the resulting exemplary displays depicted in
Figures 7–9. Id. at 11–12 (citing Ex. 1001, Figs. 7–9).
Petitioner argues that amiable user, expressive user, analytical user,
and driver user personality types in Figure 3 of the ’094 patent are just
examples of personality types that do not limit the claims. Pet. Reply 3–6.
Specifically, Petitioner highlights the Specification’s express statement
about personality types that “the invention can be scaled to any number of
types of user.” Id. at 3 (quoting Ex. 1001, 4:14–20) (emphasis omitted).
Petitioner also highlights another statement in the Specification that “other
measures of personality, such as the Myers-Briggs type indicator, could be
used.” Id. at 4 (quoting Ex. 1001, 6:45–49) (emphases omitted). Petitioner
further cites the slider bar in the embodiment of Figure 6, which ostensibly
could be used to “select personalities between the four express types”
described in Figure 3. Id. at 5 (citing Ex. 1001, 7:55–8:10, Fig. 6).
We agree with Petitioner that the personality types described in the
Specification of the ’094 patent are non-limiting examples. Patent Owner’s
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comments merely reflect exemplary embodiments of the ’094 patent, but
these exemplary embodiments do not limit the scope of the term “personality
type.” In particular, the Specification of the ’094 patent contemplates
personality types for “any number of types of user” and personality types
based on “other measures of personality.” Ex. 1001, 4:14–20, 6:45–49.
These express statements suggest a broad scope for the term “personality
type.” We further note that slider bar 602 in Figure 6 of the ’094 patent
suggests a user may select among infinite numbers of personality types. See
id. at 7:66–8:10 (“[P]ersonality type . . . can be selected with [the] slider
bar[] for an infinite number of display formats.”). Thus, we decline to limit
the term “personality type” based on certain examples in the Specification of
the ’094 patent.
Patent Owner also contends “personality type” was “defined during
prosecution of the ‘094 patent.” PO Resp. 13. In particular, Patent Owner
makes certain arguments about U.S. Patent No. 5,793,964 (“Rogers”), a
reference that was used to reject claims during prosecution.3 Id. at 13–14.
Petitioner argues that Patent Owner does not identify the purported
definition of “personality type” in the prosecution history. Pet. Reply 1.
Petitioner argues Patent Owner’s arguments regarding Rogers are
“undeveloped and irrelevant” and do not narrow the meaning of “personality
type.” Id. at 14–15. Petitioner also asserts that the patentee’s arguments
during prosecution merely reflect examples of “personality types” from the

3 Patent Owner also purports to draw parallels between Rogers and Burkey
(see PO Resp. 14 (“Like Rogers, Burkey does not teach . . .”)), but Patent
Owner’s arguments regarding Burkey effectively relate to the merits of
Burkey’s combination with Isaac as applied to claim 11. We treat those
arguments below. See infra § II.D.13.
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Specification without limiting the term. Id. at 6–8 (citing Ex. 1002, 139–
40). Petitioner further cites the patent examiner’s statements that “[t]here is
no support in the Specification for a technical definition of personality type”
and that “any set of user preferences determines a personality type.” Id. at
6–7 (quoting Ex. 1002, 134) (emphasis omitted).
We agree with Petitioner (see Pet. Reply 1) that Patent Owner offers
no supporting evidence that “personality type” was defined during
prosecution of the ’094 patent. Moreover, Patent Owner’s arguments about
what is disclosed in Rogers (see PO Resp. 13–14) do not limit the proper
construction of “personality type” in the ’094 patent. We further agree with
Petitioner (Pet. Reply 6–8) that the patentee’s arguments during prosecution,
as here, merely reflect exemplary embodiments that do not define or limit
the term “personality type.” The patent examiner reflected this sentiment
with his comment that “any set of user preferences determines a personality
type.” Ex. 1002, 134 (emphasis omitted).
For these reasons, we apply the plain and ordinary meaning of the
term “personality type” consistent with the Specification. Furthermore, we
apply the same standard to all other terms and determine that no terms
require explicit construction. See, e.g., Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need
only construe terms ‘that are in controversy, and only to the extent necessary
to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).

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D. Obviousness Ground Based on Isaac and Burkey
Petitioner contends the subject matter of claims 1–24 would have been
obvious over the combination of Isaac and Burkey. Pet. 12–16, 20–77;
Pet. Reply 11–26. Patent Owner disputes Petitioner’s contentions only as to
claim 11. PO Resp. 13–18.

1. Isaac
Isaac is a U.S. patent titled “Customization of Network Documents by
Accessing Customization Information on a Server Computer Using Unique
User Identifiers.” Ex. 1005, code (54) (as modified by Certificate of
Correction). Isaac is directed to automatically providing selected or
customized information to a user who accesses a document at a site on a
computer network, such as the Internet or an intranet. Id. at 1:9–13. Isaac
describes a user navigating to a network address (e.g., Uniform Resource
Locator) associated with a customizable HTML document and being offered
the ability to customize the HTML document. Id. at 2:16–19. A server
returns an HTML customization document to the user. Id. at 2:24–25. The
HTML customization document is an HTML form that includes topical
groupings of customization options relating to, for example, favorite links,
news, sports, financial matters, entertainment, science and technology, life,
weather, etc. that a user selects with graphical check boxes, buttons, etc. Id.
at 2:25–30. Figure 2 of Isaac, reproduced below, is illustrative.
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Figure 2 illustrates a block diagram of a computer system connected to a
remote computer network (e.g., the Internet) for locally browsing electronic
documents residing at a remote computer site.
Id. at 3:14–17. As illustrated in Figure 2, browsing environment 50 includes
computer 204 where a client runs a browser for unified browsing of
electronic documents and other documents from secondary storage 42 and

4 Isaac describes reference number 20 variously as “computer system 20,”
“computer 20,” and “client 20.” See, e.g., Ex. 1005, 3:31–32, 4:35, 5:19.
We further note that in Isaac’s description of Figure 1, “computer
system 20” is said to include “computer 22.” Id. at 3:31–32.
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remote computer network 52. Id. at 4:34–38. Document 60 resides at
remote computer 58 connected to computer network 52. Id. at 4:56–61. The
illustrated browser displays the document in window 68 of the computer’s
display 30, where the illustrated window comprises frame 70, document
display area 72, and user interface controls 74. Id. at 5:9–15.
Figure 4 of Isaac, reproduced below, is illustrative of an HTML
customization document.

Figure 4 illustrates an HTML customization document as it appears when
rendered on the display of a user’s computer.
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Ex. 1005, 3:20–22. As illustrated in Figure 4, HTML customization
document 92 includes a set of selections used to customize a HTML
document displayed to a user. Id. at 7:45–49.
Figure 5 of Isaac, reproduced below, is illustrative of a delivery
method of a customized HTML document.

Figure 5 illustrates a flow diagram of a customized HTML document
delivery method.
Ex. 1005, 3:24–25. Isaac describes process block 114, which indicates that a
user navigates client 20 to the network address (e.g., Uniform Resource
Locator) of customizable HTML document at site 58. Id. at 7:50–52. The
browser on user client 20 has customization persistent client state
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information. Id. at 7:52–54. Process block 116 indicates that the browser on
user client 20 passes the customization persistent client state information to
server 58. Id. at 7:55–58. Process block 118 indicates that server 58
correlates the customization persistent client state information with the
customization options stored at server 58. Id. at 7:59–62. Process block 120
indicates that server 58 returns to user client 20 customized HTML
document 112 formed in accordance with customized options stored at
server 58. Id. at 8:9–11.
Figure 6 of Isaac, reproduced below, is illustrative of a customized
HTML document.
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Figure 6 illustrates a customized HTML document.
Ex. 1005, 3:26–27. As illustrated in Figure 6, customized HTML
document 112 is delivered to user client 20. Id. at 7:43–45.
Petitioner contends that Isaac qualifies as prior art under 35 U.S.C.
§ 102(e) based on its filing date. Pet. 5. Patent Owner does not contest the
prior-art status of Isaac.
We have no evidence of an invention date other than the filing date of
the application that led to the challenged claims. Thus, we determine that
Isaac qualifies as prior art under 35 U.S.C. § 102(e) because Isaac’s filing
date of December 6, 1996, is before the May 27, 1999, filing date of the
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application that led to the ’094 patent. Ex. 1001, code (22); Ex. 1005,
code (22).

2. Burkey
Burkey is a U.S. patent titled “Voice Interactive Web-Based Agent
System Responsive to a User Location for Prioritizing and Formatting
Information.” Ex. 1006, code (54). Burkey is directed to an interactive
web-based agent system that responds to a particular user with information
pertinent to the user’s requirements. Id. at 1:13–16. Burkey describes an
“Egocentric Interface,” which is a user interface that utilizes a user’s
personal information stored in a central profile database to customize the
interface. Id. at 29:7–11.
Figure 10B of Burkey, reproduced below, is illustrative of a method
for creating a user interface with customized content.
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Figure 10B illustrates a flowchart depicting the logic associated with
creating a customized content web page.
Ex. 1006, 2:45–48. Figure 10B illustrates a flowchart providing logic
utilized to create a web page within the Egocentric Interface. Id. at 30:7–8.
At step 1001, the client (i.e., web browser) makes a request to the server
(i.e., web server) for a particular web page. Id. at 30:15–16. At step 1002,
the web server gets the layout and content preferences for a particular user,
with a request to a database keyed off a unique user identity stored in the
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client (i.e., web browser) and user profile database 1003. Id. at 30:18–22.
At step 1004, the web server then retrieves the content for the page that has
been requested from content database 1005. Id. at 30:22–24. At step 1006,
the relevant user-centric content is retrieved. Id. at 30:24–26. At step 1007,
the content that is returned is formatted into a web page according to the
layout preferences defined in the user profile. Id. at 30:30–32. At
step 1008, the web page is then returned to the client and displayed to the
user. Id. at 30:32–33.
Burkey’s disclosed system allows a user to create a number of
different personas that aggregate profile information into sets that are useful
in different contexts. Ex. 1006, 30:52–54. For example, a user may create
personas for work, primary home, and cabin home. See id. at 30:54–67,
31:8–28. Each persona acts as a container for profile information. See id. at
31:29–48.
Petitioner contends that Burkey qualifies as prior art under 35 U.S.C.
§ 102(e) based on its filing date. Pet. 5. Patent Owner does not contest the
prior-art status of Burkey.
We have no evidence of an invention date other than the filing date of
the application that led to the challenged claims. Thus, we determine that
Burkey qualifies as prior art under 35 U.S.C. § 102(e) because Burkey’s
filing date of November 19, 1998, is before the May 27, 1999, filing date of
the application that led to the ’094 patent. Ex. 1001, code (22); Ex. 1006,
code (22).

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3. Claim 1
a. Preamble
The preamble of claim 1 recites “[a] system for presenting
information to a user on a workstation operated by the user in accordance
with a preference specified by the user through the workstation.” Ex. 1001,
8:44–47. Petitioner cites Isaac’s disclosure of a system including
computer 20 (i.e., a “workstation”) having a browser that displays HTML
documents (i.e., “present[s] information to a user”) on the computer’s
display 30. Pet. 21 (citing Ex. 1005, 5:9–15, Fig. 2). Petitioner further cites
Isaac’s disclosure that HTML documents are presented “in accordance with
a preference specified by the user through the workstation” because
server 58 returns to computer 20 a customization document (e.g., a form)
that allows the user to select customization options (i.e., “preference
specified by the user”), wherein the specified customization options are used
to customize an HTML document returned to computer 20 and displayed on
display 30. Id. at 20–22 (citing Ex. 1005, 1:9–13, 2:16–19, 2:25–30, 2:35–
37, 2:49–56, 4:34–39, 6:26–27, Fig. 2).
Patent Owner does not dispute Petitioner’s analysis of the preamble of
claim 1. Neither party addresses whether the preamble is limiting. We are
persuaded that Isaac teaches a system with computer 20 (“a workstation”)
that presents HTML documents (“information”) on display 30. See, e.g.,
Ex. 1005, 5:9–15, Fig. 2. Isaac also teaches that a user returns customization
options (“preference specified by the user”) for customizing the display of
HTML documents. See, e.g., id. at 2:16–19, 2:25–30, 2:35–37, 2:49–56.
Because Petitioner has shown that Isaac teaches the preamble, we need not
determine whether the preamble is limiting. See Nidec, 868 F.3d at 1017.
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b. “a database server for storing the information”
Claim 1 further recites “a database server for storing the information.”
Ex. 1001, 8:48. Petitioner cites Isaac’s disclosure of server 58 pulling
“information”—e.g., news stories—out of a database. Pet. 23 (citing
Ex. 1005, 8:11–17). Petitioner argues that a skilled artisan would have
understood Isaac’s disclosure of a database to refer to a “database server,”
because the database is described as containing information. Id. (citing
Ex. 1003 ¶ 65). Petitioner further argues that Burkey confirms it would have
been obvious to store the information in a database server. Id. (citing
Ex. 1003 ¶ 66). According to Petitioner, both Isaac and Burkey disclose
systems that retrieve user preferences from a stored profile when a user
requests a web page, and Burkey explicitly discloses that such preferences
are stored in a server, namely content database 1005. Id. (citing Ex. 1005,
8:9–17; Ex. 1006, 30:7–33).
Petitioner contends that the “database server” limitation would have
been obvious regardless of whether the database in Isaac is disclosed as
being in the same physical machine, i.e., server 58, as Isaac’s “application
server” (see infra § II.D.3.c), or in a separate physical machine from the
application server. Pet. 23–24. Citing various contemporaneous references,
Petitioner contends that it was “known that implementing a database server
(1) as a separate computer or (2) as a separate software program running on
a computer along with other server software were two interchangeable
options.” Id. (citing Ex. 1003 ¶ 67); see also id. (citing Ex. 1012, 1:43–50
(Wesinger online directory patent); Ex. 1013, 7:32–35 (Popp internet
transaction management patent); Ex. 1014, 11:20–23 (Curry wireless
internet gateway patent)). Petitioner argues that this understanding
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regarding software servers also is consistent with the ’094 patent, which
provides “numerous examples of software implemented servers.” Id. at 25
(citing Ex. 1001, 3:61–4:12, 4:6–12, Fig. 2); see also id. (citing Ex. 1001,
3:39–41, 3:33–37; Ex. 1003 ¶ 69).
Patent Owner does not dispute Petitioner’s analysis of the “database
server” limitation. We are persuaded that Isaac teaches storing news stories
in a database. See, e.g., Ex. 1005, 8:11–17. Burkey also teaches retrieving
web page content from content database 1005. See, e.g., Ex. 1006, 30:7–33.
Thus, based on Petitioner’s analysis, we are persuaded that the combination
of Isaac and Burkey teaches “a database server for storing the information,”
as recited in claim 1.

c. “an application server, in communication with the
database server and workstation”
Claim 1 further recites “an application server, in communication with
the database server and workstation.” Ex. 1001, 8:49–50. For the recited
“application server,” Petitioner relies on Isaac’s disclosure of server 58,
which executes application programs and returns customized HTML
documents to computer 20. Pet. 26 (citing Ex. 1003 ¶¶ 70–72; Ex. 1005,
8:9–12). Petitioner argues Isaac’s server 58 is in communication with the
workstation, i.e., computer 20. Id. Furthermore, based on Isaac’s teaching
of the server pulling appropriate news stories out of a database, Petitioner
contends an ordinarily skilled artisan would have understood that the
application server must be in communication with the database in order to
“pull” information from it. Id. at 27 (citing Ex. 1005, 8:15–17; Ex. 1003
¶ 72). Petitioner additionally argues that Burkey describes retrieving content
(i.e., information) from content database 1005, and to retrieve such content,
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the web server (i.e., application server) would need to be in communication
with database 1005. Id. (citing Ex. 1006, 30:7–33; Ex. 1003 ¶ 72).
Patent Owner does not dispute Petitioner’s analysis of the “application
server” limitation. We are persuaded Isaac teaches that server 58 (“an
application server”) is in communication with computer 20 (the
“workstation”). See, e.g., Ex. 1005, 8:9–12. We also are persuaded that an
ordinarily skilled artisan would have known that server 58 is in
communication with the database (“the database server”) when it pulls news
stories from it. See, e.g., Ex. 1003 ¶ 72; Ex. 1005, 8:15–17. Burkey also
teaches a web server (“an application server”) in communication with
content database 1005 (“the database server”). See, e.g., Ex. 1006, 30:7–33.
Thus, based on Petitioner’s analysis, we are persuaded that the combination
of Isaac and Burkey teaches “an application server, in communication with
the database server and workstation,” as recited in claim 1.

d. an application server “for receiving from the workstation
a request for the information and an indication of the
preference which has been specified by the user through
the workstation”
Claim 1 further recites “an application server . . . for receiving from
the workstation a request for the information and an indication of the
preference which has been specified by the user through the workstation.”
Ex. 1001, 8:49–53. For the recited “receiving . . . a request for the
information,” Petitioner cites Isaac’s teaching of server 58 (“an application
server”) receiving a user request from computer 20 (“the workstation”) for
an HTML document from a network address. Pet. 28 (citing Ex. 1005,
6:50–51). Petitioner asserts “the information” includes news articles, which
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are returned to computer 20 as part of a customized HTML document sent in
response to a user request from computer 20. Id. (citing Ex. 1003 ¶ 74;
Ex. 1005, 8:9–10).
Petitioner further notes that Isaac’s computer 20 sends server 58 an
HTML customization document as shown in Figure 4 of Isaac. Pet. 28–30
(citing Ex. 1003 ¶ 75–77; Ex. 1005, 2:35–40, 2:42–47, 2:49–60). Regarding
the recited “receiving . . . an indication of the preference,” Petitioner cites
Isaac’s teaching of the user designating customization options in the HTML
customization document at computer 20 and then returning the
customization document to server 58, where it is received. Id. at 22, 28–29
(citing Ex. 1003 ¶ 75; Ex. 1005, 2:25–30, 2:35–37).
Patent Owner does not dispute Petitioner’s analysis of the “application
server . . . for receiving” limitation. We are persuaded that Isaac teaches that
server 58 receives a user request for an HTML document (“the information”)
from computer 20 (“the workstation”). See, e.g., Ex. 1005, 6:50–51. Isaac
also teaches that server 58 receives from computer 20 preference indications
specified by a user in an HTML customization document. See, e.g.,
Ex. 1005, 2:25–30, 2:35–40, 2:42–47, 2:49–60, Fig. 4. Thus, based on
Petitioner’s analysis, we are persuaded that Isaac teaches “an application
server . . . for receiving,” as recited in claim 1.

e. an application server for “retrieving the information from
the database server”
Claim 1 further recites “an application server . . . for . . . retrieving the
information from the database server.” Ex. 1001, 8:49–50, 8:53–54.
Petitioner cites Isaac’s disclosure of server 58 (“an application server”)
pulling appropriate news stories (“the information”) out of a database.
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Pet. 23, 27, 31 (citing Ex. 1003 ¶¶ 78–80; Ex. 1005, 8:11–17). Petitioner
argues further that Burkey confirms it would have been obvious to store in
the database not only news stories, but also other content or information
used to create the web page requested by the user. Id. at 31–32 (citing
Ex. 1003 ¶¶ 79–80; Ex. 1006, 30:7–33).
Patent Owner does not dispute Petitioner’s analysis of the “application
server . . . for . . . retrieving” limitation. We are persuaded that Isaac teaches
retrieving news stories (“the information”) from a database. See, e.g.,
Ex. 1005, 8:11–17. Thus, based on Petitioner’s analysis, we are persuaded
that Isaac teaches “an application server . . . for . . . retrieving,” as recited in
claim 1.

f. an application server for “dynamically formatting the
information in accordance with the preference to form
custom-formatted information”
Claim 1 further recites “an application server . . . for . . . dynamically
formatting the information in accordance with the preference to form
custom-formatted information.” Ex. 1001, 8:49–50, 8:54–56. Petitioner
cites Isaac’s teaching of “returning a ‘customized HTML document formed
in accordance with the customized options stored at the server.’” Pet. 33
(quoting Ex. 1005, 2:53–57). Petitioner contends that an ordinarily skilled
artisan would have known that forming an HTML document based on
customized options is “an example of the claimed ‘dynamically formatting
the information’ because the document is ‘formed’ based on those options.”
Id. (citing Ex. 1003 ¶ 81). Petitioner further cites Isaac’s teaching of
“changing the colors, shapes, and textures of the displayed information in
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accordance with the user preferences.” Id. at 34–35 (quoting Ex. 1005,
8:16–18).
Patent Owner does not dispute Petitioner’s analysis of the “application
server . . . for . . . dynamically formatting” limitation. We are persuaded that
Isaac teaches formatting HTML documents, including changing the colors,
shapes, and textures of displayed information, based on a user’s
customization options. See, e.g., Ex. 1005, 2:53–57, 8:16–18. Thus, based
on Petitioner’s analysis, we are persuaded that Isaac teaches “an application
server . . . for . . . dynamically formatting,” as recited in claim 1.

g. an application server for “sending the custom-formatted
information to the workstation”
Claim 1 further recites “an application server . . . for . . . sending the
custom-formatted information to the workstation.” Ex. 1001, 8:49–50,
8:56–57. Petitioner cites Isaac’s teaching of server 58 returning customized
HTML documents to client 20 after they are formed by server 58. Pet. 37
(citing Ex. 1005, 2:53–57, 8:9–20).
Patent Owner does not dispute Petitioner’s analysis of the “application
server . . . for . . . sending” limitation. We are persuaded that Isaac’s
server 58 (“an application server”) returns to client 20 (“the workstation”)
HTML documents that are formatted based on a user’s customization
options. See, e.g., Ex. 1005, 2:53–57, 8:9–20. Thus, based on Petitioner’s
analysis, we are persuaded that Isaac teaches “an application server . . . for
. . . sending,” as recited in claim 1.

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h. Conclusion Regarding Preamble and Claim Limitations
On the entire trial record, Petitioner has established that the
combination of Isaac and Burkey teaches all limitations of claim 1.

i. Reasons for the Combination
Petitioner contends that an ordinarily skilled artisan would have found
it obvious to combine Isaac and Burkey in order to “implement a content
database, layouts, and personas (as taught in Burkey) in a system providing
customized web pages based on user preferences, as taught in Isaac.”
Pet. 12 (citing Ex. 1003 ¶¶ 49–53). Petitioner notes common teachings in
Isaac and Burkey of systems for providing customized web pages to users.
Id. (citing Ex. 1005, code (57); Ex. 1006, 30:7–33). In particular, Petitioner
details Isaac’s disclosure of providing customized web pages to users in
accordance with customization options stored at server 58 and pulling
requested information from a database. Id. (citing Ex. 1005, 8:9–17).
Nevertheless, Petitioner acknowledges that Isaac does not detail the structure
or form of the database. Id. To remedy this shortcoming, Petitioner argues
that Burkey expressly discloses content database 1005 that stores
content 1004 used by a web server to form HTML web pages. Id. at 12–13
(citing Ex. 1006, 30:21–24). Petitioner also notes that Burkey uses the
content database for web content that is custom-formatted according to user
preferences. Id. at 13 (citing Ex. 1006, 30:7–33). Thus, in view of Isaac’s
teachings of pulling content from a database to form HTML documents,
Petitioner contends that an ordinarily skilled artisan would have been
motivated and found it obvious to look to known ways of storing content
used for HTML documents, such as those disclosed in Burkey. Id. (citing
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Ex. 1003 ¶ 51). Petitioner further contends an ordinarily skilled artisan
would have expected predicable results based on the “well-known use of
database servers.” Id.
Petitioner also contends it would have been obvious to implement
Burkey’s layout preferences in Isaac. Pet. 13–14 (citing Ex. 1003 ¶ 52;
Ex. 1006, 30:7–33). Petitioner notes Isaac’s teaching that “customization
information can be virtually arbitrary.” Id. at 14 (quoting Ex. 1005, 8:4–5).
According to Petitioner, an ordinarily skilled artisan “would have readily
recognized Burkey’s layout options as simply another example of a user
preference among the ‘virtually arbitrary’ possibilities for providing
customization options to users, as disclosed in Isaac.” Id. (citing Ex. 1003
¶ 52). Therefore, Petitioner contends an ordinarily skilled artisan would
have found it obvious to implement Burkey’s layout preferences—in
addition to the other formatting preferences already disclosed in Isaac—to
provide the user with greater formatting choices/options. Id. Petitioner
further contends adding Burkey’s layout preferences would have involved
combining known prior art elements according to known methods, thus
yielding the predictable result of providing the user with increased
formatting choices/options. Id.
Petitioner additionally argues that it would have been obvious to
implement Burkey’s teaching of different user personas, for example a
“work” persona and “home” persona, in Isaac. Pet. 14–15 (citing Ex. 1003
¶ 53; Ex. 1006, 31:29–49). According to Petitioner, doing so would have
allowed users to tailor their experiences to particular contexts, such as one
set of settings for home use and another set of settings for a more business-
like work environment. Id. at 15 (citing Ex. 1003 ¶ 53). Petitioner also
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argues that adding Burkey’s user personas to Isaac would have predictably
resulted in more user customization. Id.
Patent Owner does not dispute Petitioner’s rationale for the
combination of Isaac and Burkey. We are persuaded by Petitioner’s
rationale, which is based on the unrebutted testimony of Dr. Bederson.
See, e.g., Ex. 1003 ¶¶ 49–53. In particular, Petitioner establishes that an
ordinarily skilled artisan would have implemented Burkey’s content
database 1005 (Ex. 1006, 30:7–33) in Isaac given that (1) Burkey’s content
database stores web content that is custom-formatted according to user
preferences; and (2) Isaac does not detail the structure of the database from
which its system pulls customized web pages. Ex. 1003 ¶¶ 50–51.
Petitioner further establishes that an ordinarily skilled artisan would have
implemented Burkey’s layout preferences (Ex. 1006, 30:7–33) and user
personas (id. at 31:29–49) in Isaac for additional user customization.
Ex. 1003 ¶¶ 52–53. We also are persuaded that an ordinarily skilled artisan
would have expected success in implementing these database enhancements
in the well-known field of database servers. Id. ¶¶ 51–53.
Based on the entire trial record, we are persuaded that an ordinarily
skilled artisan would have had reasons to combine Isaac and Burkey.

j. Conclusion Regarding Claim 1
Petitioner has persuasively shown that the combination of Isaac and
Burkey teaches all limitations of claim 1. Petitioner also has put forth
persuasive reasons for combining these references and has established that
an ordinarily skilled artisan would have had a reasonable expectation of
success in making the combination. On the entire trial record, we determine
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Petitioner has shown, by a preponderance of the evidence, that the subject
matter of claim 1 would have been obvious over the combination of Isaac
and Burkey.

4. Claim 2
Claim 2 depends from claim 1 and recites that “the application server
presents to the user a home page providing links to a plurality of preferences
to allow the user to specify the preference from among the plurality of
preferences.” Ex. 1001, 8:58–61. For the recited “home page,” Petitioner
cites Isaac’s Figure 4 (reproduced above), which depicts a “simplified
HTML customization document as it would appear when rendered on the
display of the user’s computer.” Pet. 37–38 (citing Ex. 1005, 3:21–22,
Fig. 4). Petitioner notes that Isaac’s server “returns” the HTML
customization document to the user. Id. at 37 (citing Ex. 1005, 2:24–25).
Petitioner further notes that Isaac’s HTML customization document includes
a plurality of customization options from which a user may choose;
Petitioner contends that an ordinarily skilled artisan would have known to
expand these options based on Isaac’s teaching that options may be
“virtually arbitrary” and Burkey’s teachings of additional options discussed
above. Id. at 38–40 (citing Ex. 1003 ¶¶ 88, 90; Ex. 1005, 5:51–57, 5:61–62,
8:4–5, 8:16–17, Fig. 4); see also supra § II.D.3.i (detailing the combination
of Isaac with Burkey).
Patent Owner does not dispute Petitioner’s analysis of the limitation in
claim 2. We are persuaded that Isaac’s HTML customization document in
Figure 4, which allows a user to specify preferences, teaches the recited
“home page” that the server presents to a user. See, e.g., Ex. 1005, 2:24–25,
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3:21–22, 5:51–57, 5:61–62, 8:4–5, 8:16–17, Fig. 4. Thus, we determine
Petitioner has shown by a preponderance of the evidence that the subject
matter of claim 2 would have been obvious over the combination of Isaac
and Burkey.

5. Claim 3
Claim 3 depends from claim 2 and recites that “the application server
stores the preference in at least one file and retrieves the preference when the
user makes an additional request for information.” Ex. 1001, 8:62–65.
Petitioner cites Isaac’s teachings of storing “customization persistent client
state information,” including a unique identifier for the user, in the form of a
cookie on the user’s workstation. Pet. 41–42 (citing Ex. 1005, 2:38–47,
6:36–38). Petitioner further cites Isaac’s teaching of the client sending the
cookie to the server, whereupon the server correlates the “customization
persistent client state information” with stored customization options in
order to return a customized HTML document to the user. Id. at 42 (citing
Ex. 1005, 2:49–60). Based on testimony from Dr. Bederson, Petitioner
contends that an ordinarily skilled artisan would have known that storing
preference information directly within the cookie was a known alternative to
merely storing a unique identifier. Id. at 41–43 (citing Ex. 1003 ¶¶ 97–99).
Petitioner contends that this alternative was known to be preferable because
it obviated the need for a database of preference information at the server
and for correlation routines at the server to retrieve preference information
associated with a user’s unique identifier. Id. at 42 (citing Ex. 1003 ¶ 98).
Thus, in Petitioner’s proposed system, “the server would store the preference
information itself in the cookie (instead of a unique identifier), and the
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server would receive the preference information (rather than the unique
identifier) when the user makes an additional request by ‘navigat[ing] back
to the network address associated with the customizable HTML document.’”
Id. at 43 (quoting Ex. 1005, 2:49–53) (citing Ex. 1003 ¶ 99) (alteration by
Petitioner).
Patent Owner does not dispute Petitioner’s analysis of the limitation in
claim 3. We are persuaded that Isaac teaches “customization options stored
at [the] server.” Ex. 1005, 2:53–57. Isaac’s server correlates cookie
information from a user’s computer with these stored customization options
in order to return a customized HTML document with each request for
information associated with a network address. Id. at 2:49–57. We also are
persuaded that, based on Isaac’s teachings and the benefits of offloading the
storage of preference information from the server, an ordinarily skilled
artisan would have known to store customization information in the cookie
itself for storage on the client. See Ex. 1003 ¶¶ 97–99. Thus, we determine
that Petitioner has shown by a preponderance of the evidence that the subject
matter of claim 3 would have been obvious over the combination of Isaac
and Burkey.

6. Claim 4
Claim 4 depends from claim 3 and recites that “the at least one file
comprises a cookie left on the workstation.” Ex. 1001, 8:66–67. Similar to
its analysis for claim 3 above, Petitioner cites Isaac’s teaching of storing
customization persistent client state information, i.e., a cookie, at user
client 20. Pet. 43–44 (citing Ex. 1005, 2:38–47, 6:36–38). Patent Owner
does not dispute Petitioner’s analysis of the limitation in claim 4. We are
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persuaded that Isaac teaches storing cookies with customization information
on client 20 (“the workstation”). See, e.g., Ex. 1005, 2:38–47, 6:36–38.
Thus, we determine Petitioner has shown by a preponderance of the
evidence that the subject matter of claim 4 would have been obvious over
the combination of Isaac and Burkey.

7. Claim 5
Claim 5 depends from claim 4 and recites
when the user accesses the application server and the
application server receives the cookie, the application server
retrieves the preference in accordance with the cookie and
forms the custom-formatted information in accordance with the
preference thus retrieved; and
when the user accesses the application server and the
application server does not receive the cookie, the application
server presents to the user the home page providing the links to
the plurality of preferences.
Ex. 1001, 9:1–10. For the first part of claim 5 regarding the application
server receiving the cookie, Petitioner cites Isaac’s Figure 5 flowchart,
“which outlines the steps taken by the server when a user with customization
persistent client state information navigates to a customizable network
address.” Pet. 44–45 (citing Ex. 1003 ¶¶ 101–103; Ex. 1005, Fig. 5). In
particular, Petitioner cites Isaac’s teaching of a “user navigat[ing] client 20
to the network address . . . of customizable HTML document at site 58,”
whereupon the “browser on the user client 20 passes the customization
persistent client state information to server 58 as a result of accessing the
network address.” Id. at 45 (quoting Ex. 1005, 7:50–58) (second alteration
by Petitioner). Petitioner notes its proposed modification of Isaac to store
preferences in the cookie itself rather than in a database, as discussed above.
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Id. at 45–46 (citing Ex. 1003 ¶ 102; Ex. 1005, 7:59–62); see also supra
§ II.D.5. Based on this modification, Petitioner contends “the application
server would retrieve the preference information from the cookie, which
would be an example of retrieving the preference in accordance with the
cookie.” Pet. 46 (citing Ex. 1003 ¶ 102). Petitioner further contends that
Isaac teaches forming a customized HTML document based on the retrieved
preference. Id. (citing Ex. 1003 ¶ 103; Ex. 1005, 8:9–19).
For the second part of claim 5 regarding the application server not
receiving the cookie, Petitioner cites Isaac’s teaching of returning a default
HTML document when a user has not previously set up customizations.
Pet. 46 (citing Ex. 1005, 5:33–47, Fig. 4). In such a case, a user “is offered
the ability to customize the HTML document.” Id. at 46–47 (quoting
Ex. 1005, 2:19–24) (citing Ex. 1005, claims 1, 5) (emphasis omitted).
Petitioner contends an ordinarily skilled artisan “would have understood this
disclosure to be an example of the claimed feature because the server does
not receive the cookie if the user has not previously customized the HTML
document.” Id. at 47 (citing Ex. 1003 ¶ 105).
Patent Owner does not dispute Petitioner’s analysis of the limitations
in claim 5. We are persuaded that, in light of Isaac’s teachings, an ordinarily
skilled artisan would have known to retrieve customization information
stored in a cookie from a user computer. See, e.g., Ex. 1003 ¶ 102;
Ex. 1005, Fig. 5. Isaac also teaches creating customized HTML documents
based on customization information. See, e.g., Ex. 1005, 8:9–19. Isaac
additionally teaches offering the ability to customize HTML documents
when a user has not previously set customization options. See, e.g., id. at
2:19–24. This teaching corresponds to the case where there is no
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customization cookie. See, e.g., Ex. 1003 ¶ 105. Thus, we determine
Petitioner has shown by a preponderance of the evidence that the subject
matter of claim 5 would have been obvious over the combination of Isaac
and Burkey.

8. Claim 6
Claim 6 depends from claim 1 and recites that “the custom-formatted
information comprises a link to be clicked by the user to change the
preference.” Ex. 1001, 9:11–13. Petitioner cites Isaac’s teaching that the
“customized HTML document includes a link by which the user can
navigate to an HTML customization document.” Pet. 47 (quoting Ex. 1005,
5:39–43). Petitioner also cites Isaac’s Figure 4 and its teaching that the
customization document “is an HTML form that includes topical groupings
of customization options.” Id. at 47–48 (quoting Ex. 1005, 5:50–56) (citing
Ex. 1005, Fig. 4).
Patent Owner does not dispute Petitioner’s analysis of the limitation in
claim 6. We are persuaded that Isaac’s customized HTML document
includes a link to an HTML customization document, where a user may
change various options. See, e.g., Ex. 1005, 5:39–43, 5:50–56, Fig. 4. Thus,
we determine Petitioner has shown by a preponderance of the evidence that
the subject matter of claim 6 would have been obvious over the combination
of Isaac and Burkey.

9. Claim 7
Claim 7 depends from claim 6 and recites that “when the user changes
the preference, the application server re-formats the custom-formatted
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information and subsequent information in accordance with the preference
changed by the user.” Ex. 1001, 9:14–17. Petitioner cites Isaac’s teaching
that the browser on the user’s computer passes a cookie to the server
“[w]henever the user navigates back to the network address associated with
the customizable HTML document.” Pet. 48 (quoting Ex. 1005, 2:49–52)
(alteration by Petitioner). According to Petitioner, the server then “returns to
the user client a customized HTML document formed in accordance with the
customized options stored at the server,” including, for example,
“information on . . . selected topics[] obtained from other sites.” Id. at 48–
49 (quoting Ex. 1005, 2:53–60). Petitioner contends an ordinarily skilled
artisan “would have understood this to be an example of ‘re-format[ing] the
custom-formatted information’ because the server ‘forms’ the customized
HTML document each time it is sent to the user.” Id. at 48 (citing Ex. 1003
¶ 107).
Patent Owner does not dispute Petitioner’s analysis of the limitation in
claim 7. We are persuaded that an ordinarily skilled artisan would have
understood Isaac to teach customization of HTML documents based on the
most recent preferences associated with the cookie, and, as such, the
information presented would be reformatted accordingly. See, e.g., Ex. 1003
¶ 107; Ex. 1005, 2:49–57. Thus, we determine Petitioner has shown by a
preponderance of the evidence that the subject matter of claim 7 would have
been obvious over the combination of Isaac and Burkey.

10. Claim 8
Claim 8 depends from claim 6 and recites that “when the user clicks
the link to change the preference and specifies a changed preference, the
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application server immediately formats the information in accordance with
the changed preference so that the user sees the information formatted in
accordance with the changed preference immediately.” Ex. 1001, 9:18–23.
Petitioner contends that this limitation would have been obvious in light of
Isaac’s teachings. Pet. 49 (citing Ex. 1003 ¶¶ 108–109). In particular,
Petitioner cites the user’s selection of options and subsequent actuation of
the “ACCEPT” button using Isaac’s Figure 4 HTML customization
document. See id. at 49–51 (citing Ex. 1005, 5:51–57, Fig. 4); see also Pet.
Reply 20. Petitioner explains its position as follows:
[W]hen the user (1) navigates to the customization document of
Fig. 4 by clicking a link on the customized document . . . (i.e.,
the user clicks the link to change the preference, as claimed)
and (2) selects preferences and actuates the accept button (i.e.,
the claimed “and specifies a changed preference”), the server
returns the selected customization options to the server as
customization information (user preferences).
Pet. 50–51 (citing Ex. 1003 ¶ 109; Ex. 1005, 5:40–62); see also
Pet. Reply 20–21. According to Petitioner, an ordinarily skilled artisan
would have understood this sequence to result in “immediate reformatting of
the customized HTML page.” Pet. 51 (citing Ex. 1003 ¶ 109); see also
Pet. Reply 21–26 (citing Ex. 1021 ¶¶ 13–21) (explaining Dr. Bederson’s
further testimony about the same in response to comments in our Decision
on Institution).
Patent Owner does not dispute Petitioner’s analysis of the limitation in
claim 8. Based on, inter alia, Dr. Bederson’s unrebutted testimony, we are
persuaded that an ordinarily skilled artisan would have known that
specifying and accepting changes in Isaac’s HTML customization document
(e.g., Isaac’s Figure 4) would have resulted in immediate changes to the
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appearance of a customized HTML document. See, e.g., Ex. 1003 ¶ 109;
Ex. 1005, 5:40–62, Fig. 4; Ex. 1021 ¶¶ 13–21. Thus, we determine
Petitioner has shown by a preponderance of the evidence that the subject
matter of claim 8 would have been obvious over the combination of Isaac
and Burkey.

11. Claim 9
Claim 9 depends from claim 1 and recites “the custom-formatted
information is formatted as dynamic HTML; and the application server runs
dynamic HTML server software and behavioral business objects for
receiving the information from the database server and controlling the
dynamic HTML server software to format the information as the dynamic
HTML.” Ex. 1001, 9:24–32. Regarding the use of “dynamic HTML” and
the server running “dynamic HTML server software,” Petitioner cites Isaac’s
teaching of forming customized HTML documents according to user
preferences. Pet. 54–55 (citing Ex. 1005, 8:9–20). Petitioner contends that
an ordinarily skilled artisan “would have understood this to be an example of
formatting information as ‘dynamic HTML’ because the server dynamically
formats or forms the HTML based on user preferences.” Id. at 54 (citing
Ex. 1003 ¶ 115). Petitioner likewise contends this teaches using “dynamic
HTML server software (e.g., server software capable of dynamically
formatting HTML), receiving the information from the database server, and
controlling the software to format information as the dynamic HTML.” Id.
at 55 (citing Ex. 1003 ¶ 116).
Regarding the recited “behavioral business objects for receiving the
information,” Petitioner contends the use of objects would have been
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obvious in light of Burkey’s teachings of using object oriented programming
techniques. Pet. 55–56 (citing Ex. 1006, 3:53–57, 3:64–4:11, 4:64–67, 5:1–
18, 5:28–36, 5:61–6:10, 6:12–8:45). Petitioner asserts that, in light of these
teachings, an ordinarily skilled artisan “would have found it obvious to
implement (or try implementing) Isaac’s system in an object-oriented
manner.” Id. at 56 (citing Ex. 1003 ¶ 117). Petitioner further asserts that
“[i]mplementing Isaac in an object-oriented manner would have resulted in
creating an ‘object’ for performing each of Isaac’s functions, which would
have been an example of the claimed ‘behavioral business objects.’” Id. at
57 (citing Ex. 1003 ¶ 119).
Patent Owner does not dispute Petitioner’s analysis of the limitations
in claim 9. We are persuaded that an ordinarily skilled artisan would have
known Isaac’s HTML customization scheme to be a type of “dynamic
HTML” using “dynamic HTML server software” based on Isaac’s teaching
of forming customized HTML documents according to user preferences.
See, e.g., Ex. 1003 ¶¶ 115–116; Ex. 1005, 8:9–20. We are further persuaded
that an ordinarily skilled artisan would have known to implement Isaac’s
system using “behavioral business objects for receiving the information,”
i.e., object-oriented programming techniques, based on Burkey’s teachings.
See, e.g., Ex. 1003 ¶¶ 117–120; Ex. 1006, 3:53–57, 3:64–4:10, 4:64–67,
5:1–18, 5:28–36, 5:61–6:10, 6:12–8:45. Thus, we determine Petitioner has
shown by a preponderance of the evidence that the subject matter of claim 9
would have been obvious over the combination of Isaac and Burkey.

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12. Claim 10
Claim 10 depends from claim 1 and recites “the user accesses the
database server only though the application server.” Ex. 1001, 9:33–34.
Petitioner cites Isaac’s teaching of providing web pages from a database via
server 58, and Petitioner notes that Isaac discloses no other way of accessing
the database. Pet. 58 (citing Ex. 1003 ¶ 121; Ex. 1005, 8:11–17, Fig. 2).
Petitioner also cites Burkey’s teaching of a web server retrieving web page
content from a content database. Id. (citing Ex. 1006, 30:7–33). Petitioner
contends an ordinarily skilled artisan would have been motivated to provide
access to the database only through the application server to ensure the user
receives customized web pages (in accordance with Isaac) and to obtain the
benefits of increased security and reliability. Id. at 58–59 (citing, inter alia,
Ex. 1003 ¶¶ 122–123; Ex. 1005, 2:49–60).
Patent Owner does not dispute Petitioner’s analysis of the limitations
in claim 9. Isaac and Burkey both teach accessing databases via a server.
See, e.g., Ex. 1005, 8:11–17, Fig. 2; Ex. 1006, 30:7–33. Further, based on
Dr. Bederson’s unrebutted testimony, we are persuaded that an ordinarily
skilled artisan would have had reasons to provide access to the database only
through the application server. See, e.g., Ex. 1003 ¶¶ 122–123. Thus, we
determine Petitioner has shown by a preponderance of the evidence that the
subject matter of claim 10 would have been obvious over the combination of
Isaac and Burkey.

13. Claim 11
Claim 11 depends from claim 1 and recites
the preference comprises a selection of a personality type from
among a plurality of personality types; and
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the application server runs business objects representing the
plurality of personality types and dynamically formats the
information under control of the business objects in accordance
with the personality type selected in the preference.
Ex. 1001, 9:35–42. For the recited “preference” comprising “a personality
type from among a plurality of personality types,” Petitioner cites Isaac’s
teaching of dynamically formatting information based on user preferences
by returning a customized HTML document formed in accordance with
those preferences. Pet. 60 (citing Ex. 1003 ¶ 124); see also id. at 33 (citing,
inter alia, Ex. 1005, 2:53–57). Although Petitioner acknowledges Isaac
does not expressly characterize differing user preferences as examples of
“personality types,” Petitioner contends an ordinarily skilled artisan “would
have recognized that varying user preferences are examples of varying
personality types.”5 Id. (citing Ex. 1002, 134; Ex. 1003 ¶ 124).
Petitioner additionally cites Burkey’s teaching of “different personas
that aggregate profile information into sets that are useful in different
contexts” including, for example, home and work personas. Pet. 60 (quoting
Ex. 1006, 30:51–54) (citing Ex. 1006, 30:54–31:28) (emphasis omitted).
According to Petitioner, each of Burkey’s personas “acts as a container for

5 In its Reply, Petitioner characterizes this argument as independent of its
citations to Burkey discussed below and sufficient on its own to establish
obviousness. Pet. Reply 11–12. Yet the Petition does not clearly set forth
its contentions based on Isaac as an independent argument. See Pet. 60
(stating “Isaac and Burkey render this feature obvious” (emphasis added)
and “[a]dditionally” citing Burkey’s teachings), 61 (proposing a combination
of Isaac and Burkey). Nor will we assume that Petitioner adopts
Dr. Bederson’s testimony to that effect. See Ex. 1003 ¶ 124.
Notwithstanding, we find below that the combination of Isaac and Burkey
teaches the added limitations of claim 11.
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structures called profiles, which contain user personal profile information.”
Id. (citing Ex. 1006, 31:29–49). Petitioner further cites Burkey’s teaching
that web pages are formatted “according to the layout preferences defined in
the user profile.” Id. at 61 (citing Ex. 1006, 30:30–32). Petitioner contends
it would have been obvious “to include multiple ‘personas’ to allow users to
have finer control over their formatting preferences.” Id. (citing Ex. 1003
¶ 126). Petitioner further contends it would have been obvious to include
Burkey’s personas in Isaac because both references “describe the ability to
set and save user preferences regarding both the selection of content . . . and
the formatting of content.” Id. (citing Ex. 1003 ¶ 126, Ex. 1005, 5:51–57,
8:4–5, 8:16–18; Ex. 1006, 30:27–32).
For “business objects representing the plurality of personality types,”
Petitioner cites the same analysis regarding objects that it relies on for
claim 9. Pet. 61–62 (citing Ex. 1003 ¶ 127); see also supra § II.D.11.
Petitioner contends that, in light of Burkey’s teachings on object-oriented
programming, it would have been obvious to implement the combined
Isaac–Burkey system in an object-oriented manner. Id. at 62 (citing
Ex. 1003 ¶ 127; Ex. 1006, 3:64–4:10).
Patent Owner disputes Petitioner’s analysis for claim 11.
PO Resp. 13–18. Specifically, Patent Owner argues that Burkey “does not
disclose dynamically formatting the information in accordance with the
personality type.” Id. at 14; see also id. at 16–17 (same argument). Patent
Owner characterizes Burkey as “merely disclos[ing] the user customizing a
layout or choosing a layout template.” Id. at 16–17. Patent Owner contends
there is no evidence that Burkey’s layout templates are based on a user-
selected personality type or are selected based on a user’s personality type
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input.” Id. at 17. Patent Owner further contends that an ordinarily skilled
artisan
would not have recognized [Burkey’s] personalization layouts
and template layouts as being dynamically formatted in
accordance with the layout defined by a database in the
’094 patent. Doing so would add additional steps other than
merely allowing users to tailor their experiences to particular
contexts, e.g., with one set of settings for home use and one set
for a more business-like work environment.
Id. at 17–18.
In reply, Petitioner contends that Burkey’s personas are user profiles
that contain information “stored in a central database [and used] to
customize [an] interface” in the same way that personality types are used in
the ’094 patent. Pet. Reply 12 (quoting Ex. 1006, 29:6–17) (citing Ex. 1001,
4:60–5:5, 5:6–55; Ex. 1006, 30:30–32) (alterations by Petitioner). Petitioner
explains that Burkey’s “persona is a selectable user type or preference stored
in a user profile” and “[t]he information in the user profile influences the
formatting of internet content presented to the user.” Id. at 13–14 (citing
Ex. 1006, 30:30–32, 31:29–47). As such, Petitioner contends Burkey’s
personas teach claim 11’s “selection of a personality type” because “a
‘persona’ is within the scope of ‘selection of a personality type,’ and both
operate in the same way to allow a user to establish preferences in a user
profile that modify how content is displayed to the user.” Id. at 14 (citing,
inter alia, Ex. 1006, 30:30–33). Petitioner further notes that its contentions
regarding Burkey’s personas are supported by the unrebutted testimony of
Dr. Bederson. Id. (citing Ex. 1003 ¶ 126; Pet. 61).
Petitioner also provides evidence from dictionaries contemporaneous
to the ’094 patent showing that “personality” is defined as “characteristics of
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a person,” whereas “persona” is defined as “a projection of personality.”
Pet. Reply 9–11 (citing Ex. 1017, 1362–63; Ex. 1018, 1351; Ex. 1019,
1219–20). Petitioner contends the personality type selected by the user in
claim 11 “is the persona the user chooses via the system,” so “Burkey’s
‘persona’ is encompassed within the ‘selection of a personality type.’” Id. at
11; see also id. at 12–13 (citing Ex. 1006, code (57), 29:6–17, 30:7–33,
30:52–54, 31:29–49).
We are persuaded by Petitioner’s contentions. Isaac and Burkey both
teach dynamically formatting web page information in accordance with a
user’s preferences. See, e.g., Ex. 1005, 2:53–57; Ex. 1006, 30:30–32,
31:29–49. Burkey further teaches personas, such as home and work
personas, “that aggregate profile information into sets that are useful in
different contexts,” wherein the profile information sets are used for
formatting. See, e.g., Ex. 1006, 30:30–32, 30:51–31:28. We are persuaded
by Dr. Bederson’s testimony that an ordinarily skilled artisan would have
understood Burkey’s personas to be examples of the claimed “personality
type” and that the artisan would have known to include multiple personas to
provide users finer control over their formatting preferences. Ex. 1003
¶ 126. We also note Petitioner’s evidence that a “persona” is “a projection
of personality.” See Ex. 1017, 1362–63; Ex. 1018, 1351; Ex. 1019, 1219–
20. Thus, we find Petitioner’s contentions to be consistent with the plain
and ordinary meaning of “personality type” in light of the Specification.
See, e.g., Ex. 1001, 4:60–5:5 (“Each user 430 has a user role 432 which, in
this illustrative example, is one of the four personality types of FIG. 3. The
database 400 defines a profile 434 for each user . . . . [T]he user 430 is
identified as having a user role 432 corresponding to one of the four
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personality types U1–U4.”), 6:16–44 (describing how web pages are
formatted according to personality type); see also supra § II.C (applying
plain and ordinary meaning to “personality type”).
Furthermore, to the extent that Petitioner’s contentions conflict with
Patent Owner’s arguments, we credit Petitioner’s contentions, which are
backed by the testimony of Dr. Bederson and evidence from
contemporaneous dictionaries. See Ex. 1003 ¶¶ 124–126; Ex. 1017, 1362–
63; Ex. 1018, 1351; Ex. 1019, 1219–20. In particular, we do not credit
Patent Owner’s arguments (PO Resp. 17–18) about what an ordinarily
skilled artisan would have understood about Burkey’s personas because they
represent unsupported attorney arguments. We also do not agree with Patent
Owner’s arguments (id. at 14, 16–17) about Burkey failing to teach dynamic
formatting of information based on personality type. To the contrary,
Burkey teaches user-created “personas that aggregate profile information
into sets that are useful in different contexts” and the formatting of web
pages “according to the layout preferences defined in the user profile.”
Ex. 1006, 30:30–32, 30:52–55. Therefore, we are persuaded that Burkey
teaches “selection of a personality type from among a plurality of
personality types” and “dynamically format[ting] the information. . . in
accordance with the personality type,” as recited in claim 11.
For the “business objects” limitations in claim 11, we are persuaded
that Burkey teaches these limitations for the same reasons discussed above
with respect to claim 9. See supra § II.D.11. In particular, we are persuaded
that Burkey teaches object-oriented programming techniques that an
ordinarily skilled artisan would have been implemented in the combined
Isaac–Burkey system. See, e.g., Ex. 1003 ¶ 127; Ex. 1006, 3:64–4:10.
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Thus, we determine Petitioner has shown by a preponderance of the
evidence that the subject matter of claim 11 would have been obvious over
the combination of Isaac and Burkey.

14. Claim 12
Claim 12 depends from claim 1 and recites “the custom-formatted
information comprises HTML code which varies in accordance with the
preference specified by the user.” Ex. 1001, 9:43–45. Petitioner cites
Isaac’s teachings of forming customized HTML documents in accordance
with user preferences. Pet. 62 (citing Ex. 1005, 8:9–14). Petitioner further
contends that an ordinarily skilled artisan would have known HTML
documents to include HTML code, e.g., tags. Id. at 62–63 (citing Ex. 1003
¶ 128; Ex. 1005, 1:28–34). Petitioner additionally contends that, in light of
the customization teachings of Isaac and Burkey, an ordinarily skilled artisan
would have known that the HTML code/tags in customized HTML
documents vary with user preferences. Id. at 63–64 (citing Ex. 1003 ¶ 129;
Ex. 1005, 1:30–31, 8:4–5, 8:9–11, 8:16–17; Ex. 1006, 30:30–33).
Patent Owner does not dispute Petitioner’s analysis of the limitation in
claim 12. We are persuaded that Isaac teaches customization of HTML
documents based on user preferences. See, e.g., Ex. 1005, 8:9–14.
Petitioner also puts forth Dr. Bederson’s unrebutted testimony that, in light
of Isaac’s and Burkey’s teachings, an ordinarily skilled artisan would have
known that an HTML document includes HTML code that is changed as the
HTML document is customized based on user preferences. See, e.g.,
Ex. 1003 ¶¶ 128–129; Ex. 1005, 1:28–34, 8:4–5, 8:9–11, 8:16–17; Ex. 1006,
30:30–33. Thus, we determine Petitioner has shown by a preponderance of
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the evidence that the subject matter of claim 12 would have been obvious
over the combination of Isaac and Burkey.

15. Claim 13
Independent claim 13 is a method claim with nearly identical
limitations to those of claim 1. Claim 13 recites:
13. A method for presenting information to a user on a
workstation operated by the user in accordance with a
preference specified by the user through the workstation, the
method comprising:
(a) storing the information;
(b) permitting the user to specify the preference through the
workstation and receiving from the workstation a request for
the information and an indication of the preference which has
been specified by the user through the workstation;
(c) retrieving the information from a database server;
(d) dynamically formatting the information in accordance with
the preference to form custom-formatted information; and
(e) sending the custom-formatted information to the
workstation.
Ex. 1001, 9:46–10:2. Petitioner relies on essentially the same analysis from
claim 1. See Pet. 64–66. Patent Owner does not dispute Petitioner’s
analysis for claim 13.
We have compared claims 1 and 13 in conjunction with Petitioner’s
obviousness contentions as set forth for claim 1, and we are persuaded that
the combination of Isaac and Burkey teaches all limitations of claim 13 for
the same reasons discussed above with respect to claim 1. See supra
§ II.D.3.a–h. Also based on the same reasons discussed above, we find that
Petitioner has put forth persuasive reasons for combining Isaac and Burkey
and has established that an ordinarily skilled artisan would have had a
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reasonable expectation of success in making the combination. See supra
§ II.D.3.i. On the entire trial record, we determine Petitioner has shown, by
a preponderance of the evidence, that the subject matter of claim 13 would
have been obvious over the combination of Isaac and Burkey.

16. Claim 14
Claim 14 depends from claim 13 and further recites that step (b) of
claim 13 comprises:
(i) presenting to the user a home page providing links to a
plurality of preferences to allow the user to specify the
preference from among the plurality of preferences; and
(ii) receiving the indication of the preference when the user
selects a corresponding one of the links.
Ex. 1001, 10:3–9. For part (i) of claim 14, Petitioner relies on the same
analysis regarding presenting a “home page” that it put forth for claim 2.
Pet. 66; see supra § II.4. For part (ii) of claim 14, Petitioner cites Isaac’s
teaching of a user returning customization options to server 58. Pet. 67
(citing Ex. 1005, 5:62–65). Petitioner contends that an ordinarily skilled
artisan “would have understood from this disclosure that the server receives
the customization when the user selects the options or preferences on the
customization document and clicks the accept button.” Id. (citing Ex. 1003
¶ 139).
Patent Owner does not dispute Petitioner’s analysis of the limitations
in claim 14. We are persuaded that Isaac teaches part (i) of claim 14 for the
same reasons discussed above. See supra § II.4. We also are persuaded that
Isaac teaches receipt of customization options at server 58. See, e.g.,
Ex. 1005, 5:62–65. Thus, we determine Petitioner has shown by a
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preponderance of the evidence that the subject matter of claim 14 would
have been obvious over the combination of Isaac and Burkey.

17. Claim 15
Claim 15 depends from claim 14 and further recites that step (b) of
claim 13 comprises “(iii) storing the preference in at least one file; and
(iv) retrieving the preference when the user makes an additional request for
information.” Ex. 1001, 10:10–15. Petitioner relies on the same analysis
from claim 3. See Pet. 70–71. Patent Owner does not dispute Petitioner’s
analysis for claim 15.
We have compared claims 3 and 15 in conjunction with Petitioner’s
obviousness contentions as set forth for claim 3, and we are persuaded that
the combination of Isaac and Burkey teaches the limitations of claim 15 for
the same reasons discussed above with respect to claim 3. See supra
§ II.D.5. Thus, we determine Petitioner has shown by a preponderance of
the evidence that the subject matter of claim 15 would have been obvious
over the combination of Isaac and Burkey.

18. Claim 16
Claim 16 depends from claim 15 and further recites that “the at least
one file comprises a cookie left on the workstation.” Ex. 1001, 10:16–17.
Petitioner relies on the same analysis from claim 4. See Pet. 71. Patent
Owner does not dispute Petitioner’s analysis for claim 16.
We have compared claims 4 and 16 in conjunction with Petitioner’s
obviousness contentions as set forth for claim 4, and we are persuaded that
the combination of Isaac and Burkey teaches the limitation of claim 16 for
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the same reasons discussed above with respect to claim 4. See supra
§ II.D.6. Thus, we determine Petitioner has shown by a preponderance of
the evidence that the subject matter of claim 16 would have been obvious
over the combination of Isaac and Burkey.

19. Claim 17
Claim 17 depends from claim 16 and further recites that “when the
cookie is received, step (b)(iv) comprises retrieving the preference in
accordance with the cookie and, step (d) comprises forming the custom-
formatted information in accordance with the preference thus retrieved; and
when the cookie is not received, step (b)(i) is performed.” Ex. 1001, 10:18–
24. Petitioner relies on the same analysis from claim 5. See Pet. 71–72.
Patent Owner does not dispute Petitioner’s analysis for claim 17.
We have compared claims 5 and 17 in conjunction with Petitioner’s
obviousness contentions as set forth for claim 5, and we are persuaded that
the combination of Isaac and Burkey teaches the limitations of claim 17 for
the same reasons discussed above with respect to claim 5. See supra
§ II.D.7. Thus, we determine Petitioner has shown by a preponderance of
the evidence that the subject matter of claim 17 would have been obvious
over the combination of Isaac and Burkey.

20. Claim 18
Claim 18 depends from claim 13 and further recites that “the custom-
formatted information comprises a link to be clicked by the user to change
the preference.” Ex. 1001, 10:25–27. Petitioner relies on the same analysis
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from claim 6. See Pet. 73. Patent Owner does not dispute Petitioner’s
analysis for claim 18.
We have compared claims 6 and 18 in conjunction with Petitioner’s
obviousness contentions as set forth for claim 6, and we are persuaded that
the combination of Isaac and Burkey teaches the limitation of claim 18 for
the same reasons discussed above with respect to claim 6. See supra
§ II.D.8. Thus, we determine Petitioner has shown by a preponderance of
the evidence that the subject matter of claim 18 would have been obvious
over the combination of Isaac and Burkey.

21. Claim 19
Claim 19 depends from claim 18 and further recites “when the user
changes the preference, re-formatting the custom-formatted information and
subsequent information in accordance with the preference changed by the
user.” Ex. 1001, 10:28–31. Petitioner relies on the same analysis from
claim 7. See Pet. 73. Patent Owner does not dispute Petitioner’s analysis for
claim 19.
We have compared claims 7 and 19 in conjunction with Petitioner’s
obviousness contentions as set forth for claim 7, and we are persuaded that
the combination of Isaac and Burkey teaches the limitations of claim 19 for
the same reasons discussed above with respect to claim 7. See supra
§ II.D.9. Thus, we determine Petitioner has shown by a preponderance of
the evidence that the subject matter of claim 19 would have been obvious
over the combination of Isaac and Burkey.

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22. Claim 20
Claim 20 depends from claim 18 and further recites that “when the
user clicks the link to change the preference and specifies a changed
preference, the information is immediately formatted in accordance with the
changed preference so that the user sees the information formatted in
accordance with the changed preference immediately.” Ex. 1001, 10:33–37.
Petitioner relies on the same analysis from claim 8. See Pet. 73. Patent
Owner does not dispute Petitioner’s analysis for claim 20.
We have compared claims 8 and 20 in conjunction with Petitioner’s
obviousness contentions as set forth for claim 8, and we are persuaded that
the combination of Isaac and Burkey teaches the limitation of claim 20 for
the same reasons discussed above with respect to claim 8. See supra
§ II.D.10. Thus, we determine Petitioner has shown by a preponderance of
the evidence that the subject matter of claim 20 would have been obvious
over the combination of Isaac and Burkey.

23. Claim 21
Claim 21 depends from claim 13 and further recites that “the custom-
formatted information is formatted as dynamic HTML; and step (d)
comprises formatting the information as the dynamic HTML in accordance
with behavioral business objects.” Ex. 1001, 10:38–44. Petitioner relies on
the same analysis from claim 9. See Pet. 74. Patent Owner does not dispute
Petitioner’s analysis for claim 21.
We have compared claims 9 and 21 in conjunction with Petitioner’s
obviousness contentions as set forth for claim 9, and we are persuaded that
the combination of Isaac and Burkey teaches the limitation of claim 21 for
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the same reasons discussed above with respect to claim 9. See supra
§ II.D.11. Thus, we determine Petitioner has shown by a preponderance of
the evidence that the subject matter of claim 21 would have been obvious
over the combination of Isaac and Burkey.

24. Claim 22
Claim 22 depends from claim 13 and further recites that “the user
accesses the information stored in step (a) only through steps (b)-(e).”
Ex. 1001, 10:45–46. Petitioner relies on the same analysis from claim 10.
See Pet. 75. Petitioner further explains that “the information stored in
step (a) . . . is stored in a database” and “steps (b)-(e) in claim 13 are
performed by the Isaac’s server 58, the application server.” Id. Petitioner
contends that, based on its analysis for claim 10, an ordinarily skilled artisan
“would have been motivated to allow access to information stored in the
database server (i.e., information stored in step a) only through the
application server (i.e., by performing steps (b)-(e)).” Id. (citing Ex. 1003
¶ 157); see supra § II.D.12. Patent Owner does not dispute Petitioner’s
analysis for claim 22.
We have compared claims 10 and 22 in conjunction with Petitioner’s
obviousness contentions as set forth for claim 10, and we are persuaded that
the combination of Isaac and Burkey teaches the limitation of claim 22 for
the same reasons discussed above with respect to claim 10. See supra
§ II.D.12. Thus, we determine Petitioner has shown by a preponderance of
the evidence that the subject matter of claim 22 would have been obvious
over the combination of Isaac and Burkey.

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25. Claim 23
Claim 14 depends from claim 13 and recites that
the preference comprises a selection of a personality type from
among a plurality of personality types; and
step (d) comprises:
(i) providing business objects representing the plurality
of personality types; and
(ii) dynamically formatting the information under control
of the business objects in accordance with the personality
type selected in the preference.
Ex. 1001, 10:47–55. Petitioner relies on the same analysis from claim 11.
See Pet. 76. Patent Owner does not dispute Petitioner’s analysis for
claim 23.6
We have compared claims 11 and 23 in conjunction with Petitioner’s
obviousness contentions as set forth for claim 11, and we are persuaded that
the combination of Isaac and Burkey teaches the limitation of claim 23 for
the same reasons discussed above with respect to claim 11. See supra
§ II.D.13. Thus, we determine Petitioner has shown by a preponderance of
the evidence that the subject matter of claim 23 would have been obvious
over the combination of Isaac and Burkey.

6 Even if we were to consider Patent Owner’s arguments against claim 11
(see PO Resp. 13–18) in conjunction with Petitioner’s contentions for
claim 23, Patent Owner’s arguments would not undermine Petitioner’s
persuasive showing for the same reasons discussed above. See supra
§ II.D.13.
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26. Claim 24
Claim 24 depends from claim 13 and further recites that “the custom-
formatted information comprises HTML code which varies in accordance
with the preference specified by the user.” Ex. 1001, 10:56–58. Petitioner
relies on the same analysis from claim 12. See Pet. 74. Patent Owner does
not dispute Petitioner’s analysis for claim 24.
We have compared claims 12 and 24 in conjunction with Petitioner’s
obviousness contentions as set forth for claim 12, and we are persuaded that
the combination of Isaac and Burkey teaches the limitation of claim 24 for
the same reasons discussed above with respect to claim 12. See supra
§ II.D.14. Thus, we determine Petitioner has shown by a preponderance of
the evidence that the subject matter of claim 24 would have been obvious
over the combination of Isaac and Burkey.

E. Obviousness Ground Based on Isaac, Burkey, and Williams
Petitioner contends the subject matter of claims 8, 14–17, and 20
would have been obvious over the combination of Isaac, Burkey, and
Williams. Pet. 16–19, 51–53, 68–70, 73. As discussed above, Petitioner has
demonstrated that the subject matter of claims 1–24 would have been
obvious over the combination of Isaac and Burkey, so we do not reach the
ground based on Isaac, Burkey, and Williams. See SAS Inst. Inc. v. Iancu,
138 S. Ct. 1348, 1359 (2018) (holding a petitioner “is entitled to a final
written decision addressing all of the claims it has challenged”); Boston
Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020)
(non-precedential) (recognizing that the “Board need not address issues that
are not necessary to the resolution of the proceeding” and, thus, agreeing
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Patent 6,401,094 B1
60
that the Board has “discretion to decline to decide additional instituted
grounds once the petitioner has prevailed on all its challenged claims”).

III. CONCLUSION
Petitioner has shown, by a preponderance of the evidence, that the
subject matter of claims 1–24 would have been obvious over the
combination of Isaac and Burkey.7

IV. ORDER
Accordingly, it is
ORDERED that claims 1–24 of the ’094 patent are unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

7 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
Decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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In summary:

8 As explained above, we do not reach this ground. See supra § II.E.
Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–24 103(a) Isaac, Burkey 1–24
8, 14–17,
20
103(a)8 Isaac, Burkey,
Williams

Overall
Outcome
1–24
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Patent 6,401,094 B1
62
PETITIONER:

Jeffrey Berkowitz
Daniel Tucker
Guang-Yu Zhu
Alexander Boyer
Bradley Edgington
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
jeffrey.berkowitz@finnegan.com
daniel.tucker@finnegan.com
guang-yu.zhu@finnegan.com
alexander.boyer@finnegan.com
bradley.edgington@finnegan.com

PATENT OWNER:

Jonathan Szarzynski
SZARZYNSKI PLLC
jon@patentdallas.com