IOENGINE, LLC

Patent Trials and Appeals Board

Sep 21, 2020

IPR2019-00879 (P.T.A.B. Sep. 21, 2020)

Trials@uspto.gov Paper No. 69
571-272-7822 Date: September 21, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

INGENICO INC.,
Petitioner,

v.

IOENGINE, LLC,
Patent Owner.
____________

IPR2019-00879
Patent 9,059,969 B2
____________

Before ELIZABETH M. ROESEL, SHEILA F. McSHANE, and
SCOTT B. HOWARD, Administrative Patent Judges.

McSHANE, Administrative Patent Judge.

Final Written Decision
Determining Some Challenged Claims Unpatentable
Dismissing Petitioner’s Motion to Exclude
Dismissing Patent Owner’s Motion to Exclude
Denying Petitioner’s Motion for Entry of Deposition Exhibits
35 U.S.C. § 318(a); 37 C.F.R. § 42.64(c);
37 C.F.R § 42.123(b)

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I. INTRODUCTION
We have jurisdiction to hear this inter partes review under 35 U.S.C.
§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a).
For the reasons discussed herein, we determine that Petitioner has shown, by
a preponderance of the evidence, that claims 1, 2, 4–8, 13–16, 19–21, 24, 25,
and 27–29 of U.S. Patent No. 9,059,969 B2 (Ex. 1001, “the ’969 patent”) are
unpatentable and has not shown, by a preponderance of the evidence, that
claims 3, 10–12, and 26 of the ’969 patent are unpatentable.
A. Procedural Background
Ingenico Inc. (“Petitioner”)1 filed a Petition requesting inter partes
review of claims 1–8, 10–16, 19–21, and 24–29 (“the challenged claims”) of
the ’969 patent pursuant to 35 U.S.C. §§ 311–319, along with the supporting
Declaration of James T. Geier. Paper 1 (“Pet.”); Ex. 1002. IOENGINE,
LLC (“Patent Owner”) filed a Preliminary Response to the Petition, along
with the supporting Declaration of Kevin Butler, Ph.D. Paper 11 (“Prelim.
Resp.”); Ex. 2003. Pursuant to 35 U.S.C. § 314(a), on September 26, 2019,
we instituted inter partes review on the grounds of:

1 Petitioner identifies Ingenico Corp. and Ingenico Group S.A. as other real
parties-in-interest. Pet. 3.
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Claim(s) Challenged 35 U.S.C. § Reference(s)
1–8, 10–16, 19–21, 24,
25, 27–29
§ 1022 Iida3
1–8, 10–16, 19–21, 24–
29
§ 103 Iida, Fuji Guide4
4 § 103 Iida, Shaffer5
4 § 103 Iida, Fuji Guide, Shaffer
See Pet. 4, 5; Paper 16 (“Inst. Dec.” or “Dec.”).
Patent Owner filed a Patent Owner Response (“PO Resp.”). Paper 36.
Patent Owner also filed another Declaration of Dr. Kevin Butler to support
its positions. Ex. 2099. Petitioner filed a Reply (“Pet. Reply”) to the Patent
Owner Response. Paper 41. Patent Owner filed a Sur-Reply to Petitioner’s
Reply (“PO Sur-reply”). Paper 43.

2 Petitioner asserts that the Leahy-Smith America Invents Act (“AIA”), Pub.
L. No. 112-29, 125 Stat. 284, 287–88 (2011), which was effective March 16,
2013, applies because the application for the ’969 patent was filed after the
Act’s effective date, that is, on August 6, 2013. Pet. 7. More specifically,
Petitioner contends that there is no mention or written description of the
upload of program code to a communications network node as recited in
claim 9 in any of the parent applications, so the ’969 patent is only entitled
to the priority date of its application, and the post-AIA statutes therefore
apply. Id. at 7–8. We need not determine the effective priority date of the
’969 patent, however, because Petitioner’s asserted references are prior art to
the ’969 patent, even if it is entitled to its earliest possible priority date of
March 23, 2004. We also note that our unpatentability analysis remains the
same under either the pre- or post- AIA versions of 35 U.S.C. §§ 102
and 103.
3 U.S. Publication No. 2003/020813 (published January 30, 2003)
(Ex. 1003).
4 Software Quick Start Guide, Publication No. BL00002-201(1) (Fujifilm
2001) (Ex. 1004).
5 U.S. Patent No. 5,784,461 (issued July 21, 1998) (Ex. 1006).
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Petitioner filed a Motion to Exclude (Paper 48 (“Pet. Mot. Exclude”)),
with Patent Owner filing an Opposition (Paper 52 (“PO Opp. Mot.
Exclude”)), and with Petitioner filing a Reply in Support of its Motion to
Exclude (Paper 58 (“Pet. Reply Mot. Exclude”)). As authorized by the
Board (Paper 64), Petitioner filed a Motion for Entry of Deposition Exhibits
(Paper 66 (“Pet. Mot. Entry”)), with Patent Owner filing an Opposition to
the Motion for Entry of Deposition Exhibits (Paper 67 (“PO Opp. Mot.
Entry”)).
Patent Owner filed a Motion to Exclude (Paper 50 (“PO Mot.
Exclude”)), with Petitioner filing an Opposition (Paper 51 (“Pet. Opp. Mot.
Exclude”)), and with Patent Owner filing a Reply in Support of its Motion to
Exclude (Paper 59 (“PO Reply Mot. Exclude”)).
An oral hearing was held on June 24, 2020. A transcript of the
hearing is included in the record. Paper 65 (“Tr.”).
B. Related Proceedings
The parties indicate that the ’969 patent, as well as U.S. Patent Nos.
8,539,047 (“the ’047 patent”) and 9,774,703 (“the ’703 patent”), are asserted
in Ingenico Inc. v. IOENGINE, LLC, No. 1:18-cv-00826-WCB (D. Del.)
consolidated with IOENGINE, LLC v. PayPal Holdings, Inc., No. 1:18-cv-
00452-WCB (D. Del.) (“the district court proceedings”). Pet. 2; Paper 3, 2.
The district court proceedings are stayed. IOENGINE, LLC v. PayPal
Holdings, Inc., Nos. 18-452, 18-826, 2019 WL 3943058 (D. Del. Aug. 21,
2019) (stay order) (Circuit Judge Bryson, sitting by designation);
IOENGINE, LLC v. PayPal Holdings, Inc., Nos. 18-452, 18-826 (D. Del.
Jan. 27, 2020) (denying motion to vacate stay).
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The parties also indicate that inter partes review petitions were filed
by Petitioner in IPR2019-00416 (challenging claims of the ’047 patent),
which was instituted, as well as challenges to claims in the ’703 patent in
IPR2019-00584, where institution was denied, and in IPR2019-00929,
which was instituted. Pet. 3; Paper 3, 2. A final decision in IPR2019-00416
issued on July 13, 2020, and a final decision in IPR2019-00929 is being
issued concurrently with this decision. The parties also indicate that
petitions were filed by another party, PayPal, Inc. (“PayPal”) in IPR2019-
00884, IPR2019-00885, IPR2019-00886, and IPR2019-00887 (challenging
claims of the ’047 patent); IPR2019-00906 and IPR2019-00907 (challenging
claims of the ’969 patent); as well as IPR2019-00930 and IPR2019-00931
(challenging claims of the ’703 patent). Id. Institution was denied for
PayPal’s challenges. See IPR2019-00884, Paper 22; IPR2019-00885, Paper
21; IPR2019-00886, Paper 21; IPR2019-00887, Paper 21; IPR2019-00906,
Paper 16; IPR2019-00907, Paper 16; IPR2019-00930, Paper 16; IPR2019-
00931, Paper 16.
C. The ’969 Patent
The ’969 patent is entitled “Apparatus, Method and System for a
Tunneling Client Access Point” and issued on June 16, 2015 from an
application filed on August 6, 2013. Ex. 1001, codes (22), (45), (54). The
’969 patent claims priority to (1) U.S. Application No. 12/950,321 filed on
November 19, 2010 (now the ’047 patent); and (2) U.S. Application No.
10/807,731 filed on March 23, 2004 (now U.S. Patent No. 7,861,006 (“the
’006 patent”)). Id., code (63).
A goal of the invention of the ’969 patent is to provide a means to
securely access, execute, and process data that is available in an extremely
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compact form. Ex. 1001, 2:25–28. The ’969 patent discloses the use of a
tunneling client access point (TCAP) that may be plugged into access
terminals (ATs) such as servers, workstations, desktop computers, laptops,
and portable digital assistants (PDAs). Id. at 3:44–49. Use of a TCAP
“requires the user to simply plug the device into any existing and available
desktop or laptop computer, through which, the TCAP can make use of a
traditional user interface and input/output (I/O) peripherals, while the TCAP
itself, otherwise, provides storage, execution, and/or processing resources.”
Id. at 2:41–46. The TCAP “provides certain kinds of accessing of remote
data in an easy and secure manner.” Id. at 2:49–51. The TCAP may be
packaged in plug-in sticks and has “a highly portable ‘thumb’ footprint.” Id.
at 2:47–48, 21:55–56.
Figure 1 of the ’969 patent is reproduced below:

Figure 1, above, is a flow diagram illustrating a topology between a TCAP
and TCAP server, and, more specifically, illustrates embodiments where
user 133a may plug in TCAP 130 into different ATs 127. Ex. 1001, 3:13–
14, 41–49. If the AT is connected to communications network 113, “the
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TCAP may then communicate beyond the AT.” Id. at 3:64–65. In an
embodiment, TCAP 130 can provide extended storage and/or processing
resources by engaging servers 110, 115, 120 and can access to provide a user
extended storage 105 to the TCAP through the AT. Id. at 3:65–4:2. With
this, to user 133a “the contents of the TCAP 130 appear on the AT as being
contained on the TCAP 125 even though much of the contents may actually
reside on the servers 115, 120 and/or the servers’ storage facilities 105.” Id.
at 4:21–24.
Figure 10 of the ’969 patent is reproduced below.
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Figure 10, above, is a block diagram illustrating embodiments of a tunneling
client access point controller (TCAP controller). Ex. 1001, 3:30–31. TCAP
controller 1001 may include a central processing unit (“CPU”) 1003, clock
1030, central processing unit (CPU) 1003, read only memory (ROM) 1006,
random access memory (RAM) 1005, and/or interface bus 1007. Id. at
22:51–54. Interface bus 1007 may accept, connect, and/or communicate to a
number of interface adapters including input output interfaces (I/O) 1008,
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storage interfaces 1009, and network interfaces 1010. Id. at 23:21–25.
TCAP controller 1001 may be connected to and/or communicate with users
from access terminal 1011b and may be connected to peripherals such as
user input devices (e.g., keyboard 1012a, mouse 1012b, etc.), and/or
communications network 1013. Id. at 21:61–67.
Challenged claims 1, 28, and 29 of the ’969 patent are independent.
Claim 1, an illustrative independent claim of the ’969 patent, is reproduced
below.
1. A portable device configured to communicate
with a terminal comprising
a processor, an input component, an output component, a
network communication interface, and a memory configured to
store executable program code, including
first program code which, when executed by the
terminal processor, is configured to present an interactive
user interface on the terminal output component, and
second program code which, when executed by the
terminal processor, is configured to provide a
communications node on the terminal to facilitate
communications to the portable device and to a
communications network node through the terminal
network communication interface,
the portable device comprising:
an external communication interface configured to enable
the transmission of communications between the portable
device and the terminal;
a processor; and
a memory having executable program code stored
thereon, including:
third program code which, when executed by the
portable device processor, is configured to provide a
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communications node on the portable device to
coordinate with the communications node on the terminal
and establish a communications link between the portable
device and the terminal, and facilitate communications to
the terminal and to a communications network node
through the terminal network communication interface;
and
fourth program code which is configured to be
executed by the portable device processor in response to
a communication received by the portable device
resulting from user interaction with the interactive user
interface;
wherein the portable device is configured to facilitate
communications through the communication node on the
terminal and the terminal network interface to a
communications network node.
Ex. 1001, 30:60–31:29.
II. ANALYSIS
A. The Parties’ Arguments
In our Decision on Institution, we concluded that the arguments and
evidence advanced by Petitioner demonstrated a reasonable likelihood that at
least claims 1, 2, 4–8, 11, 13–15, 19–20, 24, 25 and 27–29 of the ’969 patent
would have been unpatentable under 35 U.S.C. § 102 as anticipated by Iida;
claims 1–8, 11–16, 19–21, and 24–29 would have been obvious over Iida
and Fuji Guide; and claim 4 would have been obvious over Iida and Shaffer,
with or without Fuji Gide. Inst. Dec. 29–64. Here, we determine whether
Petitioner has established by a preponderance of the evidence that the
challenged claims are obvious. 35 U.S.C. § 316(e). We previously
instructed Patent Owner that “any arguments for patentability not raised in
the response may be deemed waived.” Paper 17, 7; see also 37 C.F.R.
§ 42.23(a) (“Any material fact not specifically denied may be considered
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admitted.”); In re Nuvasive, Inc., 842 F.3d 1376, 1379–82 (Fed. Cir. 2016)
(holding Patent Owner waived an argument addressed in the Preliminary
Response by not raising the same argument in the Patent Owner Response).
Additionally, the Board’s Trial Practice Guide states that the Patent Owner
Response “should identify all the involved claims that are believed to be
patentable and state the basis for that belief.” Consolidated Trial Practice
Guide, 66 (November, 2019).6
On the record before us, we note that we have reviewed arguments
and evidence advanced by Petitioner to support its unpatentability
contentions, where Patent Owner chose not to address certain limitations in
its Patent Owner Response. In this regard, the record contains persuasive
arguments and evidence presented by Petitioner regarding the manner in
which the prior art discloses the corresponding limitations of claims 1, 2, 4–
8, 13–16, 19–21, 24, 25, and 27–29 and does not contain persuasive
evidence and argument that the prior art discloses the corresponding
limitations of claims 3, 10–12, and 26 of the ’969 patent.
B. Level of Ordinary Skill in the Art
In the Decision on Institution, we determined that Petitioner’s
proposed description of the qualifications of a person of ordinary skill in the
art aligned with the technology and claims of the ’969 patent. Inst. Dec. 24.
Patent Owner does not challenge this determination and states that it has
applied the Board’s adopted definition of one of ordinary skill in the art. PO
Resp. 2. Dr. Butler testifies that the adopted level of art in the art would not
have any effect on the opinions presented in his declaration, even though Dr.

6 Available at https://www.uspto.gov/sites/default/files/documents/
tpgnov.pdf.
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Butler had previously presented a different proposed qualifications.
Ex. 2011 ¶ 13. Accordingly, for the reasons given in the Decision on
Institution, we adopt Petitioner’s proposed level of ordinary skill, which is
that a person of ordinary skill in the art should have:
a Bachelor of Science degree in Electrical Engineering,
Computer Science, Computer Engineering or related discipline,
and experience in programming software and firmware for
computer peripheral devices and databases/servers and would
have had a working understanding of computer hardware,
operating systems, encryption, data storage, user interfaces, and
peripheral and portable device communication protocols (e.g.,
parallel ports, serial ports, RS-232, USB, Bluetooth, WiFi and
the like).
Pet. 12–13 (citing Ex. 1002 ¶ 13); see also Inst. Dec. 23.
C. Claim Construction
The Board interprets claim terms in accordance with the standard used
in federal district court in a civil action involving the validity or
infringement of a patent. 37 C.F.R. § 42.100(b) (2019). Under the
principles set forth by our reviewing court, the “words of a claim ‘are
generally given their ordinary and customary meaning,’” as would be
understood by a person of ordinary skill in the art in question at the time of
the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
(en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996)). “In determining the meaning of the disputed claim
limitation, we look principally to the intrinsic evidence of record, examining
the claim language itself, the written description, and the prosecution
history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 469 F.3d 1015, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
1312–17). Phillips directs us to diverge from the general principle of using
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the ordinary and customary meaning when a special definition is given to the
term because the inventor acted as a lexicographer. Phillips, 415 F.3d at
1316.
1. “interactive user interface”
In the Decision on Institution, we construed the term “interactive user
interface” (“IUI”) as “a display with which a user may interact to result in
the portable device taking action responsively.” Inst. Dec. 19. The parties
have presented additional arguments in additional briefing on the term’s
construction, which we have further considered, and, as discussed below, we
modify the interpretation of the term. See PO Resp. 7–16; Pet. Reply 1–3.
a. Petitioner’s Assertions
In the Petition, Petitioner asserts that the term “interactive user
interface” should be interpreted as “a display with which a user may interact
to result in the computer taking action responsively.” Pet. 14. Petitioner
argues that this proposed interpretation is consistent with the plain and
ordinary meaning of the term. Id. at 13. Petitioner also contends that
although the term “interactive user interface” is not used in the ’969 patent
specification, the specification consistently describes the terminal output
component as a “display mechanism,” and the interactive user interface is
presented on the terminal output component in the claims. Id. (citing Ex.
1001, 4:40). Petitioner contends that a number of displays in the ’969 patent
respond to text inputs from an input component to elicit a responsive action,
and refers to an example of the input of registration information in screen
515 in Figure 5, where, if the input is successful, follow-up screen 517 is
produced, but otherwise there is an error message. Id. at 13–14 (citing Ex.
1001, 9:52–54, 7:53–56).
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In its Reply, Petitioner asserts that the ordinary meaning of the term
“interactive user interface” is “a presentation (display) with which a user
may interact to result in the computer (portable device) taking action
responsively.” Pet. Reply 1. This is similar to the construction that
Petitioner previously proposed in the Petition, however, Petitioner now
proposes that the “computer” can be considered to be a “portable device,”
and a “display” can also be considered to be a “presentation. See Pet.14.
According to Petitioner, the claims require that the interactive user
interface be presented on the terminal output component. Pet. Reply 1.
Petitioner argues that the specification describes that it is a portable device
that responds to user interaction with the IUI, such as the interaction with a
login screen text box. Id. at 2 (citing Ex. 1046, 52:11–55:13; Ex. 1001,
7:55–56). Petitioner asserts that the claims require that it is the portable
device that responds to user interaction, with the “fourth program code”
executing in response to user interaction with the interactive user interface.
Id. Petitioner compares the claim of the parent ’047 patent, which was
narrowed to refer to “the interactive user interface is configured to enable
the user to cause the portable device processor to execute program code
stored on the portable device memory,” to the claims here. Id. Petitioner
also asserts that “‘[p]resentation’ is used and described in the ’969 patent as
corresponding to a ‘display.’” Id. at 1.
Petitioner also asserts that the claims do not require a graphic user
interface elements, or “GUI,” interface elements, as a GUI is only one type
of user interface that may be used. Pet. Reply 3 (citing Ex. 1001, 26:9–14).
Petitioner argues that the portion of the ’969 patent describing the user
interface module makes no mention of interface elements (Ex. 1001, 26:7–
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27), and instead broadly references “display, execution, interaction,
manipulation, and/or operation of program modules and/or system facilities
through textual and/or graphical facilities” (id. at 26:16–19). Pet. Reply 3.
b. Patent Owner’s Assertions
Patent Owner asserts that the term “interactive user interface” should
be construed as “a display containing interface elements with which a user
may interact to result in the terminal taking action responsively by
responding to the user.” PO Resp. 7 (citing Ex. 2099 ¶¶ 50–51). Patent
Owner argues that the Petitioner agrees that it is the terminal that must take
action in response to user interaction with its statement in the Petition that it
is text inputs from an input component that “elicit[s] a responsive action
from the terminal.” Id. at 14 (citing Pet. 13–14). Patent Owner further
contends that a “computer,” which Petitioner’s construction refers to, is the
device on which the interface is presented, and is not a different device. Id.
(citing Pet. 13). Patent Owner contends that the Board’s inclusion of
“result[s] in the portable device taking action responsively” in the
construction in the Decision on Institution incorporates the functionality of
the claimed fourth program code into the construction of interactive user
interface itself, and it is the terminal and not the portable device which takes
action responsively. Id. (citing Inst. Dec. 17; Ex. 2099 ¶ 66). Patent Owner
argues that, according to the claims, it is the terminal that stores and
executes the first program code “configured to present an interactive user
interface,” and in order to present the interactive user interface, “the terminal
must provide the interface it presents with the required interactivity.” Id. at
15 (emphasis omitted). Patent Owner asserts that the specification is replete
with examples of the terminal responding to the user, with no
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counterexamples. Id. (citing Ex. 1001, 1:52−61, 9:37−48, 10:19−23,
10:35−38, 10:64−11:4, 11:13−31, 11:61−66, Figs. 5a−8). Patent Owner
contends that “the portable device does not execute fourth program code in
direct response to user interaction with the interactive [user interface], but
rather in response to a ‘communication’ from the terminal ‘resulting from
user interaction with the interactive user interface.’” Id. (citing Ex. 1001
31:23–25, 9:28–32) (emphasis omitted).
On the issue of the interface elements, Patent Owner alleges that the
specification, under the “User Interface” paragraph of the “Background”
section, references “[c]omputer interaction interface elements,” which
provides support for user interaction with the interactive user interface being
done through interface elements. PO Resp. 7 (citing Ex. 1001, 1:52–61; Ex.
2099 ¶ 53). Dr. Butler’s testimony relies on the specification’s disclosure
that “[c]omputer interaction interface elements such as check boxes, cursors,
menus, scrollers, and windows . . . facilitate the access, operation, and
display of data and computer hardware and operating system resources,
functionality, and status.” Ex. 2099 ¶ 53 (citing Ex. 1001, 1:52–61). Patent
Owner argues that the ’969 patent specification emphasizes that the interface
elements are what allow the user to interact with, or “engage,” with the
interactive user interface. PO Resp. 7 (citing Ex. 1001, 10:32−35, 10:41−43,
12:56−58, 11:13−17, 1:52−56, 8:19−21, 9:37−48, 10:19−23, 10:64−11:4,
11:61−66; Ex. 2099 ¶ 54). Patent Owner asserts that the qualifying language
in the specification, such as “might,” regarding interaction with interaction
interface elements, indicates that the lists provide examples of necessary
interface elements or pertains to the user’s option to access certain
functionality. Id. at 12 (citing Ex. 1001, 1:47−56, 10:32−35; 11:4−5,
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11:13−17; Ex. 2099 ¶¶ 55−56). Patent Owner further contends that because
the specification indicates that interface elements are what “allow for the
display, execution, interaction, manipulation, and/or operation of program
modules and/or system facilities through textual and/or graphical
facilities[,]” and “provide[] a facility through which users may affect,
interact, and/or operate a computer system,” this supports that an interactive
user interface must include “interface elements with which a user may
interact.” Id. (citing Ex. 1001, 17:58–63; Ex. 2099 ¶¶ 57–58). Patent
Owner refers to extrinsic evidence, with Dr. Butler testifying that “a
fundamental difference between a purely text interface and an IUI is that the
interface elements of an IUI receive input beyond mere characters—e.g.,
positional input—whereas a purely text-based interface does not,” and
pointing to the Shaw article7 for support. Id. at 13 (quoting Ex. 2099 ¶ 64;
citing Ex. 2100, 9).
c. Analysis
We have considered the parties’ arguments and construe “interactive
user interface” to mean “a display containing interface elements with which
a user may interact to result in a computer taking action responsively.”
As Petitioner argues, the specification does not use the term
“interactive user interface.” See Pet. 13. The specification does, however,
disclose in its “User Interface” section that “[t]he user interface provides a
facility through which users may affect, interact, and/or operate a computer
system.” Ex. 1001, 26:19–20. This disclosure is consistent with Mr. Geier’s
testimony that a person of ordinary skill would have understood that a “user

7 Shaw, Mary, An Input-Output Model for Interactive Systems, Conference
on Human Factors in Computing Systems (April 1986) (“the Shaw article”).
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interface” is an interface that enables a user to interact with a computer. Ex.
1002 ¶ 30. This disclosure is also consistent with definition in The
Computer Glossary that a “user interface” is “[t]he combination of menus,
screen design, keyboard commands, command language and help screens,
which create the way a user interact with a computer.” Ex. 1009, 3. We
therefore agree with Petitioner’s proposed claim construction to the extent
that an interactive user interface is something with which a user may interact
to result in the computer taking action responsively. That interpretation is
consistent with the plain and ordinary meaning of the term “user interface”
in the view of one of ordinary skill in the art.
Using the generic term of “computer” in IUI claim construction is also
consistent with the ’969 patent specification. The specification describes
how, in response to a user interacting with the interface, the AT (terminal)
may treat the TCAP (portable device) as memory and retrieve information
from the TCAP—which describes an instance where the terminal is taking
responsive action. See Ex. 1001, 4:47–53. The specification also describes
the TCAP (portable device) processor used only for processing and spooling
files. See id. at 4:53–60. The use of the more general term “computer” in
claim construction is therefore consistent with embodiments in the
specification where a responsive action could be taken either by a portable
device or by a terminal.
Turning to the issue of whether the claim term requires “interface
elements,” as Patent Owner argues, we note that both Petitioner and Patent
Owner agree that the “interactive user interface” must be interactive. See
Pet. 13; PO Resp. 7. And both Petitioner and Patent Owner agree that this
interaction includes the use of “interface elements.” For instance, Mr. Geier
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testifies that, “a user interface includes a combination of elements, such as
menus, screen design, keyboard commands, command language, and help
screens, which create the way a user interacts with a computer” (Ex. 1002
¶ 30 (citing Ex. 1009, 3)), and “there’s going to be some sort of element that
the user is going to interact with” (Ex. 2110, 15:14−16). Dr. Butler refers to
the ’969 patent and testifies that an interactive user interface “must have
interface elements with which a user may interact.” Ex. 2099 ¶¶ 52–53
(citing Ex. 1001, 1:52–61). Thus, we agree with Patent Owner that an
“interactive user interface” requires a “display8 containing interface
elements with which a user may interact.” We do not, however, agree with
Patent Owner to the extent that it is argued that the claims are limited to the
use of certain types of interface elements such as “check boxes, cursors,
menus, scrollers, and window” or that the interaction with the interface
elements has to be done in a certain way, e.g., by positional input, as
allegedly disclosed by Shaw. Cf. PO Resp. 13; Ex. 2099 ¶ 64. As discussed
in the Decision on Institution, the’969 patent specification uses open-ended
terms when discussing interface elements and interactions including “such
as,” “may,” “might,” “perhaps,” “for example,” “in this case,” and/or
indicates that the descriptions refer to embodiments only. See Inst. Dec. 18
(citing Ex. 1001, 1:52–62, 9:37–48, 10:16–23, 10:64–11:4, 11:13–31, 14–
18, 61–64, 17:58–63).

8 We do not agree with Petitioner’s view that “presentation” may be used
interchangeably with “display.” See Pet. Reply 1. The ’969 patent
specification refers to the use of a “display,” and “presentation” is what is
shown on a display. See e.g., Ex. 1001, code (57), 4:39–40, 4:65–5:3, 6:64–
67, 7:12–14, 8:37–41, 15:1–12 (“display”), id. at 12:46–49
(“presentations”).
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Accordingly, for the reasons discussed above we conclude that
“interactive user interface” means “a display containing interface elements
with which a user may interact to result in a computer taking action
responsively.”9
2. “graphic user interface (“GUI”)”
Claim 21 depends from claim 1 and recites “the interactive user
interface comprises a graphic user interface.” Ex. 1001, 32:50–51.
Petitioner refers to examples in the ’969 patent specification that provide
examples of “a conventional graphic user interface,” including “operating
systems and/or operating environments such as Apple Macintosh OS, e.g.,
Aqua, Microsoft Windows (NT/XP), Unix XWindows (KDE, Gnome,
and/or the like).” Pet. 14 (citing Ex. 1001, 26:11–13, 1:58–60). Petitioner
contends that a graphic user element is one that includes a graphical element.
Id. Petitioner asserts that “graphic user interface” should be interpreted as “a
display with which a user may interact, facilitated by a graphic element
displayed thereon, to result in the computer taking action responsively.” Id.
at 14–15.
Patent Owner asserts that the term “graphic user interface” should be
given a plain meaning construction. PO Resp. 21. Patent Owner refers to
Petitioner’s expert testimony that these interfaces are conventional and a
person of skill would have been familiar with them. Id. (citing Ex. 2122,
37:1–10, 38:10–39:4). Patent Owner alternately asserts that, if any

9 We note that including “interface elements” in the construction is in
accordance with the position taken by Patent Owner related to this claim
term. See PO Resp. 7–13. We further note that the revised language—“to
result in a computer taking action responsively”—is taken from Petitioner’s
proposed construction. See Pet. 13–14.
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construction is required, the definition of GUI should be a “graphical IUI.”
Id. Patent Owner contends that the ’969 patent not only discloses graphical
interfaces, but also contemplates audio or tactile interfaces. Id. (citing Ex.
1001, 14:58–15:12). Patent Owner contends that Petitioner’s proposed
construction attempts to read out “interactive user interface” from the term
“graphic user interface.” Id. at 17. Patent Owner asserts that claim 21
further limits the IUI of claim 1 to include only IUIs that are graphical, and
the “difference between an IUI and a GUI is thus not the level of
interactivity that is required, but rather the graphical form of the interface.”
Id. at 21. Patent Owner argues that the IUI of the independent claims is as
interactive as a GUI, but need not be graphical. Id. at 21–22 (citing Ex.
2099 ¶ 84).
In the Decision on Institution the plain and ordinary meaning of the
term “graphic user interface” was adopted as the interpretation of the term
Dec. 20. Although Patent Owner refers to the specification’s disclosure of
the use of audio or tactile interfaces, Patent Owner does not argue that the
term should be construed to include these embodiments; instead, Patent
Owner’s arguments indicate that the interpretation of the term should be that
it is an interactive user interface that includes graphics. See PO Resp. 17.
We agree, and therefore, consistent with the Decision on Institution, we
adopt the ordinary meaning of the term, that is, that a “graphic user
interface” is an interactive user interface that includes graphical elements.
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3. “communications . . . to a communications network
node through the terminal network communications
interface;”“communications through the communication
node on the terminal and the terminal network interface to a
communications network node”
Patent Owner argues that the terms quoted above (hereinafter the
“communications terms”) should be construed as “communications . . .
through the . . . terminal network communication interface, without the
terminal having access to information being communicated.” PO Resp. 17
(citing Ex. 2099 ¶¶ 73–81). Patent Owner alleges that the ’969 patent is
directed to the concept of “tunneling,” where the term “TCAP” is used to
refer to its “tunneling client access point” and that abbreviation is used over
400 times in the specification. Id. Patent Owner argues that the intrinsic
record consistently refers to a portable device configured to communicate
with a remote networked device by tunneling data such that the terminal
does not have access to the data being communicated. Id. (citing Ex. 1001,
code (57), 1:19−25, 2:39−51, 3:40−4:31, 18:12−14, Figs. 1, 5a−5b, 9a−b,
10a−b). Patent Owner contends that the specification explains what
“tunneling” means: the terminal acts as a “conduit” or “bridge” for the
TCAP to communicate with the server/network devices, with data
transmitted accessed only by the TCAP and/or the server, but not the
terminal. Id. at 17–18 (citing Ex. 1001, 4:60−64, 9:5−7, 13:1−4,
27:28−28:15, 28:54−56, Fig. 10b). Patent Owner further contends that the
’969 patent discloses that, to prevent the terminal from accessing
information sent between the TCAP and the server, the TCAP and the server
preferably include cryptographic server modules, which encrypt data sent
through the terminal. Id. at 18 (citing Ex. 1001, 19:38−20:24, 27:28−28:15,
Figs. 9a−b, 10a−b; Ex. 2099 ¶¶ 74−75). Patent Owner argues that tunneling
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does not require encryption, although encryption is one way to accomplish
what tunneling requires, that is, the terminal not have access to the tunneled
information. Id. at 18, n.3.
Patent Owner asserts that it does not dispute the generic meaning of
“through,” but rather the issue is what that term means in the context of the
claims and specification. PO Resp. 19. Patent Owner points to deposition
testimony of Petitioner’s expert, Mr. Geier, where the testimony admitted
that, in the context of communications from one device “through” an
intermediary, the content was not accessible to the intermediary devices. Id.
at 19–20 (citing Ex. 2110, 117:15−24, 119:11−15).
Petitioner asserts that that the claim terms should be construed
according to their ordinary and customary meaning as understood by one of
ordinary skill in the art. Pet. 13. Petitioner argues that the ’969 patent is a
continuation of the ’006 patent, and the ’006 patent claimed a “portable
tunneling storage and processing apparatus;” however, patentee then sought
broader protection in claiming a “portable device.” Pet. Reply 4 (citing Ex.
1015, 30:60). Petitioner contends that, although the specification describes
embodiments that “may tunnel data through an AT,” “tunnel” is absent from
the claims, which indicates a broader and ordinary meaning is intended. Id.
(citing Ex. 1001, 4:27–30, code (57), 1:14). Petitioner argues that “through”
is entitled to its ordinary meaning, “[w]hereas Patent Owner associates
‘tunneling,’ ‘tunneling client,’ and ‘TCAP’ (all missing from the claims)
with preventing access to information, the same cannot be said for the word
‘through.’” Id. (citing Ex. 3001). Petitioner also argues that Mr. Geier’s
testimony cited by Patent Owner was referring to the prior art reference Iida,
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rather than the specification of the ’969 patent. Id. at 5 (citing PO Resp. 20;
Ex. 2110, 116:14–119:10).
In the Decision on Institution, we determined that:
The language of claim 1 itself does not recite a limitation that
the terminal cannot access information being communicated
and there is no recital of “tunneling.” Although the
specification includes embodiments where data is transmitted
through the terminal without access to information being
communicated, we decline to add this limitation based on
embodiments of the invention. See Phillips, 415 F.3d at 1323;
Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187
(Fed. Cir. 1998) (the specification may aid in interpreting the
meaning of disputed claim language, particular embodiments
and examples appearing in the specification will not generally
be read into the claims). We do not discern that the
specification indicates disavowal of claim scope of these claim
terms. Moreover, we do not discern that there was any special
meaning attributed to the term “through,” or any of the other
individual words in this claim term. The communications terms
use the term “through” consistently with definitions such as
“used as a function word to indicate movement into at one side
or point and out at another and especially the opposite side of,”
“by way of,” or “used as a function word to indicate passage
from one end or boundary to another.” Ex. 3001. Therefore,
we decline to adopt Patent Owner’s proposed interpretation of
the communications terms, and the ordinary meaning for them
will be adopted for the purposes of this Decision.
Inst. Dec. 22. The additional arguments that Patent Owner presents do not
persuade us to modify the determination made in the Decision on Institution.
The claim language itself does not recite tunneling nor TCAP, nor is there
any limitation that states that the terminal does not have access to the
information being communicated. See Ex. 1001, 30:60–34:35.
As Petitioner points out, some of the claims of the ’006 patent stand in
contrast to the instant claims because, for instance, claim 1 of the ’006 patent
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explicitly recites a “portable tunneling storage and processing apparatus.”
Ex. 1015, 30:60. Each claim of the ’006 patent includes a limitation for
tunneling and/or encryption, with Patent Owner stating that encryption has
the same result as tunneling, that is, the terminal does not have access to the
tunneled information, as discussed above. See id. at 30:60–36:10. We agree
with Petitioner’s view that the language of the claims of the ’006 patent
demonstrates that the applicant knew how to claim tunneling and the
absence of similar language in the claims of the ’969 patent shows that the
patent applicant did not intend to so limit the claims in the ’969 patent.
Further, we do not discern that the specification indicates disavowal
of claim scope of these claim terms. At most, for instance, the specification
discusses various embodiments that, for example, encrypt data. See, e.g.,
Ex. 1001, 13:2–4, 27:28–28:15. And, although the abstract of the ’969
patent states that the TCAP “enables the user to observe data stored on the
TCAP without it being resident on the AT,” it uses the word “may” to
indicate that tunneling the data through the AT to a communication network
is possible and to indicate that tunneling is optional. See id., code (57). We
determine that the claim terms should be accorded their plain and ordinary
meaning, consistent with the use of the terms in the specification, including
the term “through,” with an ordinary meaning of a passage from one end to
another (Ex. 3001), and we decline to add a limitation prohibiting the
terminal from access to information being communicated.
We do not find the Patent Owner’s argument on alleged admissions
by Mr. Geier to be persuasive. A review of Mr. Geier’s testimony in context
indicates that the references to communications from one device “through”
an intermediary referred to his understanding of Iida and not the ’969 patent.
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See Ex. 2110, 117:15–120:1 (testimony including reference to Iida by name,
as well as several references to a camera, which is used in Iida); see also id.
at 112:7–117:14 (testimony referring to particular portions of Iida).
Further, we find the case law cited by Patent Owner in support of its
arguments to be distinguishable from the circumstances here. See PO Resp.
18–19. For instance, Patent Owner relies on VirnetX Inc., however, in that
case the Federal Circuit determined that there was no plain and ordinary
meaning for a term and a construction had to be determined by reference to
the specification. See VirnetX Inc. v. Cisco Sys. Inc., 767 F.3d 1308, 1317
(Fed. Cir. 2014). Here, however, the claim term has a plain and ordinary
meaning. In Eon-Net, the Federal Circuit construed terms in accordance
with the specification which “repeatedly and consistently defines the
invention as a system that processes information derived from hard copy
documents.” Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314, 1321–22
(Fed. Cir. 2011). In the instance case, the ’969 patent specification instead
states that the TCAP “may” tunnel data through the AT to a communication
network, and, as discussed above, the applicant did not to use the term
“tunneling” in the claim, but rather opted for the use of broader language.
Ex. 1001, code (57). And, while explicit disavowal of the ordinary meaning
of a term is not required, and the specification is highly relevant to the
construction of a claim term, in this case, as discussed, we have not only
considered whether there was disavowal, but have also considered the
disclosures of the specification as well as the claim language that the
applicant sought. See Trustees of Columbia Univ. in City of New York v.
Symantec Corp., 811 F.3d 1359, 1364 (Fed. Cir. 2016)
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Accordingly, and consistent with the Decision on Institution, we adopt
the ordinary meaning of the communications terms.
4. Other Claim Terms
We determine that it is not necessary to provide an express
interpretation of any other term of the claims. See Vivid Techs., Inc. v. Am.
Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms
need be construed that are in controversy, and only to the extent necessary to
resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
D. Alleged Anticipation by Iida
Petitioner contends that claims 1–8, 10–16, 19–21, 24, 25 and 27–29
are anticipated by Iida. Pet. 15–53. To support its contentions, Petitioner
provides explanations as to how Iida discloses each claim limitation. Id.
Petitioner also relies upon the Geier Declaration (Ex. 1002) to support its
positions. Patent Owner alleges that Iida fails to disclose some of the
limitations of the claims. PO Resp. 22–41. Patent Owner relies upon the
Butler Declarations (Exs. 2003, 2099) to support its positions.
On this record, we are persuaded by Petitioner’s explanations and
evidence in support of the Iida anticipation ground for claims 1, 2, 4–8, 13–
16, 19–21, 24, 25, and 27–29, and do not find them persuasive for claims 3
and 10–12. We begin our discussion with a brief summary of Iida and then
address the evidence, analysis, and arguments presented by the parties on the
anticipation ground.
1. Iida (Ex. 1003)
Iida is directed to a system for image photography and for ordering
prints. Ex. 1003 ¶ 2. The priority date of Iida is July 25, 2002, the filing
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date, which is prior to the earliest possible filing date of the ’969 patent of
March 23, 2004.
Iida discloses the use of a digital camera as depicted in Figures 2A
and 2B reproduced below.

Figures 2A and 2B above illustrate perspective views showing the external
appearances of digital camera 12. Ex. 1003 ¶ 52. Figure 1A, a block
diagram of the digital camera is reproduced below.
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Figure 1A above depicts a block diagram of digital camera 12 that includes
imaging device 31, an analog/digital (A/D) converter, signal processing unit
44, built-in memory 48, bus 50, and control unit 52 (which contains a CPU,
RAM, and ROM). Ex. 1003 ¶¶ 63, 65. Additionally, digital camera 12
includes wireless communications unit 56 for performing wireless
communication. Id.
Iida uses portable terminal 14 in its system, which may be a user’s
portable telephone or a PDA, wearable computer, or mobile computer.
Ex. 1003 ¶¶ 57, 144. A block diagram of portable terminal 14 depicted in
Figure 1B reproduced below.
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Figure 1B above depicts block diagram of portable terminal 14 which
includes display unit 62, operating unit 64 (which may have keys, touch pad
or the like), among other components. Ex. 1003 ¶ 68. Portable terminal 14
also includes first wireless communication unit 66 that communicates with a
base station connected to a telephone network which provides an Internet
connection. Id. ¶¶ 68, 69. Portable terminal 14 includes second wireless
communication unit 68 which performs wireless communication with digital
camera 12 via its wireless communication unit 56. Id. ¶ 69.
In Iida, the control unit 52 of the camera reads and outputs
information to the wireless communication unit 56 and instructs this unit 56
to transmit the information to the portable terminal 14. Ex. 1003 ¶ 83. The
control unit 60 of the portable terminal 14 analyzes the received information
and executes a process that results in a menu screen on display unit 62 by
using the received information, as shown, for example, in embodiments
depicted in Figures 6A–6C reproduced below, which are image diagrams
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showing examples of various screens displayed on the display unit of a
portable apparatus.. Id. ¶¶ 56, 83.

Figures 6A–6C, above, are image diagrams showing examples of various
screens which are displayed on the display unit of a portable apparatus. Ex.
1003 ¶ 56. A user may input a number in response to one of the menu
screens, which is transmitted to the camera for subsequent processing. Id. ¶
84.
Figures 6E and 6F depicting screens displayed on the display unit 62
of portable terminal 14 are reproduced below. Ex. 1003 ¶ 56.
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Figures 6E and 6F, above, show menu screens for allowing a user to select
and save prints photographed images. Ex. 1003 ¶¶ 93–107, 126–134.
2. Analysis
A claim is unpatentable under 35 U.S.C. § 102 if a prior art reference
discloses each and every limitation of the claimed invention, either explicitly
or inherently. Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 (Fed. Cir.
1995); see MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365
(Fed. Cir. 1999) (“To anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention”; any limitation not explicitly
taught must be inherently taught and would be so understood by a person
experienced in the field); In re Baxter Travenol Labs., 952 F.2d 388, 390
(Fed. Cir. 1991) (the dispositive question is “whether one skilled in the art
would reasonably understand or infer” that a reference teaches or discloses
all of the limitations of the claimed invention).
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a. Independent claim 1
(1) Terminal Elements
Petitioner asserts that Iida’s portable digital camera 12 corresponds to
the claimed portable device and Iida’s portable terminal 14 corresponds to
the claimed terminal. Pet. 15–16. Petitioner’s mapping of the claim
elements to Iida’s disclosures is reproduced below:

Pet. 16. The figure reproduced above is a chart identifying various
limitations (1a–1g) of claim 1, with Petitioner’s mapping of the claimed
terminal elements to components of Iida. Id. Patent Owner does not present
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arguments directed to the mapping of these elements. See generally PO
Resp. We find that the evidence of record sufficiently supports Petitioner’s
assertions.
(2) First Program Code
Petitioner asserts that the first program code limitation, which recites
that “when executed by the terminal processor, is configured to present an
interactive user interface on the terminal output component,” is disclosed by
Iida’s control unit 60 of terminal 14 that executes a process to display the
menu screen on display unit 61. Pet. 17–18. Mr. Geier testifies that:
The first program code of claim 1 corresponds to the control
unit 60 executing a process that displays a menu screen on
display unit 62. Ex. 1003, [0083][.] The menu screen displays
choices which can be selected by the user making the screen
thereby interactive. The menu and its choices may be
determined by the information received from the camera 12.
Ex. 1002 ¶ 51.
Patent Owner argues that the “first program code” limitation is not
disclosed by Iida because it “does not disclose the terminal executing code
to ‘present’ an IUI.”10 PO Resp. 23. Patent Owner asserts that “[i]n Iida, if
the alleged terminal determines that it has received an image, it merely
displays that image, without alteration.” Id. at 23–24. We do not find this
argument persuasive because it is based on limitations not appearing in the
claim. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). The claim
element requires only that the first program code “present” an interactive
user interface. We find Petitioner’s reliance on Iida’s execution of a process

10 Patent Owner makes several other arguments related to Iida’s teaching of
an interactive user interface which we address in the section below on the
fourth program code.
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by control unit 60 to display a menu screen on display unit 62 of the terminal
to be persuasive evidence of the disclosure of this limitation.
(3) Second Program Code
Petitioner contends that the second program code limitation is
disclosed by terminal 14 communications to portable device (camera 12) and
communications to the computer network. Pet. 18–19. Mr. Geier testifies
that with respect to terminal 14, a node is configured to communicate on a
Bluetooth or HomeRF network to form a communication link with the
camera 12 and a node is also configured for network communications on a
communication network link with a base station. Ex. 1002 ¶ 52.
Patent Owner contends that there is no disclosure in Iida of an ability
to secure communications between the server and camera and therefore Iida
does not meet the limitations of “communication . . . through.” PO
Resp. 30. Patent Owner asserts that Iida is silent on any program that might
be used to provide a communications node on the portable apparatus. Id. at
31. Patent Owner also argues that “the Petition conflates the ‘terminal’ with
the ‘communications node on the terminal,’ by contending that Iida’s
portable apparatus 14 is the claimed terminal . . . while simultaneously
contending that the same portable apparatus 14 is the communications node
on the terminal.” Id. at 32 (emphasis omitted). Patent Owner contends that
a single structure cannot satisfy two different claim limitations and the
language of the claims requires both a terminal and a communications node
on the terminal as separate and distinct structures. Id.
The majority of the arguments that Patent Owner presents on the
necessity of secure communications are based on its proposed claim
construction on “communication . . . through.” As discussed in Section
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II.C.3 above, we do not adopt Patent Owner’s proposed claim construction
for these terms and, therefore, Patent Owner’s arguments do not apply.
On the issue of Patent Owner’s contention that Iida is silent regarding
any program code that provides a communication node, we are not
persuaded. Mr. Geier explains that in Iida’s terminal 14,
initialization/configuration information is sent to one of its communication
units 66 or 68 and a person of skill “would understand that the operation of
control unit 60 when sending this information to one of the communication
units 66 or 68 would involve the CPU of control unit 60 fetching the code
from the ROM or RAM of control unit 60 and executing it.” Ex. 1002 ¶ 53
(citing Ex. 1003, Fig. 1B). We credit Mr. Geier’s testimony because he
provides this reasoned technical analysis as support for his conclusion on the
second program code limitation from the viewpoint of one of ordinary skill
in the art. Dr. Butler does not refute Mr. Geier’s testimony on a technical
basis, and instead limits his testimony to the issue that Iida does not
explicitly disclose the use of program code. See Ex. 2099 ¶ 116. But Patent
Owner asks too much—anticipation need not satisfy ipsissimis verbis
disclosure and instead the dispositive issue is whether one of ordinary skill
in the art would infer that a reference discloses a limitation. In re Gleave,
560 F.3d 1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832
(Fed. Cir. 1990); In re Baxter, 952 F.2d at 390.
We also do not agree with Patent Owner’s argument that Petitioner is
required to identify separate hardware structures for the terminal and its
communications node because the ’969 patent describes that the terminal or
portable device may act as a communication node. As Petitioner asserts, the
’969 patent specification states that “[a] computer, other device, software, or
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combination thereof that facilitates . . . is commonly referred to as a ‘node’.”
Pet. Reply 10 (citing Ex. 1001, 2:7–11). The specification further states that
“the TCAPS . . . may serve as node within a virtual private network (VPN).”
Ex. 1001, 19:66–20:1. As Mr. Geier testifies, Iida’s control unit 60, which is
in the terminal, executes code that performs configurations to enable
terminal communications on a communication network link (for
communication to a base station) and on a Bluetooth or HomeRF network
(for communication with the camera), and this configuration is done within
the terminal. See Ex. 1002 ¶ 52; Pet. 19–20. We do not discern any
deficiency with Petition’s assertion that the configuration of the terminal by
code, as disclosed by Iida, comprises the claimed “communication node” as
the claim requires.
(4) Portable Device Elements
Reproduced below is Petitioner’s mapping of camera 12 components
to the claim elements.

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Pet. 21–22. The figure reproduced above is a chart identifying various
limitations (1j, 1k, and 1l) of claim 1, with Petitioner’s mapping of portions
of Iida where Petitioner asserts those elements are disclosed. Patent Owner
does not present arguments directed to this element mapping. See generally
PO Resp. We find that the evidence of record persuasively supports
Petitioner’s assertions.
(5) Third Program Code
Petitioner contends that Iida discloses the third program code
limitation by its disclosure of camera 12 communications to terminal 14 and
communications to the computer network. Pet. 22–24. Mr. Geier testifies
that in order to communicate with the terminal via Bluetooth or HomeRF,
camera 12 necessarily includes code for establishing camera 12 as a node to
coordinate communication and establish a link. Ex. 1002 ¶ 54. Mr. Geier
further testifies that control unit 52 establishes camera 12 as a network node
by executing code that sends initialization/configuration information to
wireless communication unit 56. Id.
Patent Owner presents the same arguments for the third program code
as those presented for the second program code. PO Resp. 30–33. We do
not find these arguments persuasive for the reasons discussed above.
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On this record, we find that Petitioner provides persuasive evidence
that Iida discloses the third program code limitation of claim 1.
(6) Fourth Program Code
Petitioner asserts that Iida discloses the fourth program code by the
user input on terminal 14 of a number that is transmitted to camera 12.
Pet. 24–26 (citing 1003 ¶¶ 84, 105, 131). Based on the instruction inputted
by the user and then transmitted, Petitioner contends that the code stored on
the camera’s ROM performs the steps shown in Figures 4A–4D. Id. at 25–
26. Petitioner asserts that steps 236–249 of Figure 4C, like all the steps
shown in Figures 4A to 4D, are performed by control unit 52 of camera 12,
based on stored program code. Id. at 26 (citing Ex. 1003 ¶¶ 54, 65).
Petitioner argues that these steps generate an interactive user interface on the
terminal’s screen (step 236), and then receive instructions from the user, and
perform steps responsive to user selection from choices displayed on the
interactive user interface. Id. (citing Ex. 1003 ¶¶ 99–114; Ex. 1002 ¶ 57).
Petitioner’s more specific assertions on the operation of Iida are that
the menu screen on display unit 62 of the portable terminal constitutes the
interactive user interface, and the menu screen offers choices for user
interaction. Pet. 19 (citing Ex. 1003 ¶ 83). Petitioner contends that when
the user inputs a number into the operating unit 64 of portable terminal 14, it
is transmitted to camera 12, and there is a response, that is, steps are
executed by camera 12. Id. at 24–26. In support, Mr. Geier testifies “[t]he
menu screen displays choices which can be selected by the user making the
screen thereby interactive,” and then the control unit and code of the camera
performs steps “responsive to the user selection from choices displayed on
the interactive user interface.” Ex. 1002 ¶¶ 51, 57.
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Petitioner contends that the activity disclosed in Iida is interactive
because the “user’s inputs are dependent on the displayed user interface.”
Pet. Reply 5. Petitioner points to the example in Iida illustrated on Figures
6A, 6E, and 6F, where if a user enters “2” when the Figure 6A is presented,
the display is changed. Id. (citing Ex. 1003 ¶¶ 94–95). Petitioner further
asserts that if a user selects a “2” when Figure 6E is presented, the image
corresponding to the input number has its resolution transformed for the
thumbnail image display, and if there is a user selection of “2” when Figure
6F is presented, the routine returns and Figure 6A is displayed. Id. at 5–6
(citing Ex. 1003 ¶¶ 99, 102). Petitioner asserts that:
The camera responds to the number “2” in each case depending
on what is displayed in the interface. The interaction between
the user input and what is seen in the interface determines what
happens next. This is one way a user interacts with the
displayed menu.
Pet. Reply 6.
Petitioner additionally contends that Iida discloses that the portable
device is configured to facilitate communications through the
communications node on the terminal and the terminal network interface to
communication network node by its disclosure of the function of control unit
52 causing portable terminal 14 to dial a telephone number to connect it to
the Internet. Pet. 26–27 (citing Ex. 1003 ¶ 113). Petitioner also asserts that
Iida discloses that image data is transferred to image server 18 via portable
terminal 14. Id. at 27 (citing Ex. 1003 ¶ 114).
Patent Owner alleges Iida does not disclose the “fourth program code”
and Iida’s screen is not an interactive user interface because (1) there is no
user interaction with Iida’s display; (2) Iida does not disclose an interactive
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user interface “present[ed]” by execution of program code on the terminal
and Iida’s display is a static image which has no interactive properties; (3)
Iida’s mode of operation in presenting images is fundamentally different
than an interactive interface; and (4) the fourth program code requires “a
communication resulting from user interaction with the interactive user
interface,” and Iida only discloses pushing a button on a keypad, which is
not part of the interactive user interface. PO Resp. 22–24.
More specifically, Patent Owner asserts that Petitioner relies on static
menu images displayed on the display unit of Iida’s portable apparatus. PO
Resp. 25 (citing Pet. 17–18). Patent Owner argues that Iida’s static images
“are not interactive and do not present a display with which a user may
interact.” Id. Patent Owner asserts that a user does not engage with any
interactive elements, but only presses a button on a keypad. Id. at 26 (citing
Pet. 16). Patent Owner contrasts Iida’s disclosures with the interactive user
interface of the ’969 patent which discloses user “engagement” with an
interactive user interface. Id. (citing Ex. 1001, 1:52−61, 10:32−35,
10:41−43, 12:56−58; 11:13−17, 8:19−21, 9:37−48, 10:19−23, 10:64−11:4,
11:61−66, Figs. 5a−8; Ex. 2099 ¶¶ 98−102). Patent Owner also contends
that the keypad operation of Iida is unlike interactive user interfaces known
at the time, such as that disclosed in the Shaw article, which distinguished
“typescript-oriented” interfaces from those with user interactions based in
part on the locations and/or movement of the user’s point of interaction with
the display. Id. (citing Ex. 2100, 4–6, 9)11.

11 Patent Owner’s references to the page numbers of Shaw are unclear. As
best we can ascertain, they appear to relate to the order of the pages in the
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Patent Owner also argues that Iida does not teach the terminal taking
action responsively by responding to the user because it is the camera, and
not the terminal, that analyzes the key-press information, determines what
action to take, and responds to the user. PO Resp. 27–28. Patent Owner
contends that “[t]he terminal in Iida does not take any action that responds to
the user but simply conveys the inputted key-press information to the camera
[,] regardless of what it is.” Id. at 28 (emphasis omitted). Patent Owner
asserts that this is inconsistent with what a person of ordinary skill would
expect from an interactive user interface, as under the Shaw article and the
’969 patent disclosures. Id. at 28–29 (citing Ex. 2100, 5; Ex. 2099 ¶¶ 105–
108; Ex. 1001, 11:61−66).
We find that the evidence and argument presented by Petitioner is
persuasive to demonstrate that Iida discloses the fourth program code
limitation as claimed. Applying the construction for an interactive user
interface adopted supra Section II. C.1, which is “a display containing
interface elements with which a user may interact to result in a computer
taking action responsively,” we agree with Petitioner that the menus of Iida
are interface elements that users interact with. Mr. Geier’s testimony on
user input for the selection of options on menus is supported by Iida’s
disclosure of menu screens, such as those depicted in Figures 6A, 6E and 6F,
which display choices that a user can select. See Ex. 1002 ¶¶ 51, 57. We
agree with the Petitioner that the evidence supports that the menu screens are

Shaw article, but these numbers are not reflected in the record copy. See
Ex. 2100.
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interactive elements12 because Iida discloses that a user can input option
choices, such as, as Petitioner asserts, if a user enters “2” when the Figure
6A is presented, the display is changed. See e.g, Ex. 1003 ¶¶ 83, 93–95.
User selection of the numerical input is “user interaction,” where, as Mr.
Geier testifies, “[t]he menu screen displays choices which can be selected by
the user making the screen thereby interactive,” and actions are taken
responsive to user selections from the choices displayed on the interactive
user interface. Ex. 1002 ¶¶ 51, 57.
We do not find persuasive Patent Owner’s arguments on the keypad
operation of Iida based on the Shaw article. See PO Resp. 25. As discussed
in claim construction supra Section II. C.1, as part of the consideration of
the interpretation of interactive elements, we decline to import a limitation
requiring that user interaction be based on location and/or movement of a
user’s point of interaction as Patent Owner argued was required based on the
Shaw article. Additionally, we note that Shaw is directed to detailing the
deficiencies of batch-style input-output and presenting a new model for
input-output for modern interactive systems. See Ex. 2100, 14, Abstract.13
Shaw states that “advances in software and hardware have introduced new
problems” that may include “interactive input.” Id. at 18. In Shaw, cursor
location may be accounted for if a pointer device is supported by a terminal
or workstation, however, “interactive input” also includes feedback during
input which “may be a[s] simple as echoing characters,” which would apply

12 This view is consistent with the ’969 patent specification’s disclosure of
“[c]omputer interaction interface elements such as check boxes, cursors,
menus, scrollers, and windows.” Ex. 1001, 1:52–53 (emphasis added).
13 For references to Shaw, we use the annotated page numbers in the lower
right hand corner of the document.
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to input such as keyboard entry such as that disclosed in Iida, for instance.
Id. at 22. As such, Shaw is consistent with the claim construction adopted,
as well as our determinations on the sufficiency of Iida’s disclosures.
Finally, we also do not find persuasive Patent Owner’s argument that
Iida does teach not the terminal taking action responsively because that is
not required under the claim construction adopted here. Patent Owner
attempts to read in limitations not appearing in the claims. Instead, it is
undisputed that it is the portable device, that is, the camera of Iida, that takes
the action responsively, and that falls within the claim construction adopted
here. See PO Resp. 27–28.
Based on the entirety of the record, we determine that Petitioner has
presented persuasive evidence Iida discloses the fourth program code
limitation.
(7) Summary for claim 1
To summarize, we determine that Petitioner has demonstrated by a
preponderance of the evidence that Iida discloses all the elements of claim 1.
b. Dependent claim 2
Claim 2 depends from claim 1 and recites the portable device
“wherein the fourth program code which, when executed by the portable
device processor, is configured to cause a communication to be transmitted
to the communication network node.” Ex. 1001, 31:30–33. Petitioner relies
upon Figure 4C of Iida which discloses steps performed by the camera,
including transmission of a user identifier (“ID”) and password to an image
server, with Petitioner mapping the image server to a communication
network node. Pet. 28–29 (citing Ex. 1003 ¶¶ 113–114, Fig. 4C; Ex. 1002 ¶
59).
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Patent Owner provides no additional arguments related to claim 2,
beyond those related to independent claim 1, which we do not find
persuasive for the reasons explained above. See generally PO Resp.
On this record, we determine that Petitioner has demonstrated by a
preponderance of the evidence that Iida discloses all the elements of claim 2.
c. Dependent claim 3
Claim 3 depends from 2 and recites the portable device “wherein the
communication caused to be transmitted to the communication network node
facilitates verification of the portable device.” Ex. 1001, 31:34–37.
In the Petition, Petitioner relies upon Iida’s disclosure of steps for
writing and transmitting a user ID and password for authentication purposes.
Pet. 29–30. Patent Owner argues that Iida’s user ID is associated only with
the current user, and not with the camera. PO Resp. 33 (citing Pet. 29; Ex.
1003 ¶¶ 75, 113; Ex. 2099 ¶¶ 120–121).
In Reply, Petitioner argues that “[i]n Iida, the shop writes a user ID
and password into the camera, uniquely identifying it.” Pet. Reply 11 (citing
Ex. 1003 ¶ 75). Petitioner asserts that the identifying information is not
entered by the user, so it verifies the camera, and the renter may hand
anyone the camera to use. Id. (citing Ex. 1003 ¶ 125).
In the Decision on Institution, we determined that Iida did not
anticipate this claim because Iida discloses only that the user is
authenticated, however, there is no verification of the portable device. See
Inst. Dec. 40. Based upon the entirety of the record, we are not persuaded
that Petitioner has provided persuasive evidence of Iida’s disclosure of the
limitation of this claim because Iida discloses that camera 12 may be rented
to multiple users, the shop assigns a user ID to the user when the camera 12
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is rented, writes it into the camera’s memory, communicates it to a company
managing image server 18, with an image data saving area dedicated to a
user. Ex. 1003 ¶¶ 12, 57, 75, 76. Log-in processing is executed, with the
user ID and password transmitted to image server 18, and “the user renting
the digital still camera 12 is authenticated by the image server 18 and is
thereby able to use the service offered by the image server 18” (id. ¶ 113).
The evidence therefore supports Patent Owner’s argument (PO Resp. 33),
that Iida’s user ID is associated with the current user of the camera, not the
camera itself, and does not “facilitate verification of the portable device,” as
required in claim 3.
Accordingly, on this record, we determine that Petitioner has not
demonstrated by a preponderance of the evidence that Iida discloses all the
elements of claim 3.
d. Dependent claim 4
Claim 4 depends from claim 2, and recites the portable device
“wherein the communication caused to be transmitted to the communication
network node facilitates the transmission of encrypted communications from
the communication network node to the terminal.” Ex. 1001, 31:38–42.
Petitioner argues that in Iida the camera performs access point
determination and log-in processing with the image server, and a person of
ordinary skill in the art would understand that a connection/channel has been
established from the image server to the camera through the terminal.
Pet. 30. With that, Petitioner asserts that “transmissions from the image
server, whether encrypted or not, have been facilitated.” Id. (citing Ex. 1002
¶ 63). Petitioner further asserts that the claimed function is facilitating
communications and whether the information is encrypted or not is merely
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the difference in the information content being transmitted, which is not
entitled to patentable weight. Id. at 31. Petitioner contends that under the
printed matter doctrine no patentable weight is afforded to information
content that is not functionally related to its substrate. Id. at 31–32.
Patent Owner argues that the printed matter doctrine does not apply
because the claim does not merely recite encrypted information, it recites a
communication that “facilitates the transmission of encrypted
communications” as a result of execution of fourth program code by the
portable device processor. PO Resp. 34. Patent Owner asserts that
facilitating transmission of encrypted communications could include setting
up appropriate digital certificates or performing any necessary public key
management that are technical steps are necessary to facilitate encrypted
communications and that demonstrate the functional relationship to the
invention and the claimed portable device. Id. (citing Ex. 1001, 27:39–44;
Ex. 2099 ¶¶ 122–128). Patent Owner contends that the case law cautions
against applying the printed matter doctrine to information that is processed
by a computer, such as the claimed encrypted communications. Id. at 34–35
(citing In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (“The printed
matter cases have no factual relevance where…the information [is]
processed . . . by a machine, the computer.”)).
In Reply, Petitioner argues that the transmitted encrypted
communication is subject to the two-step printed matter doctrine. Pet. Reply
12 (citing In re Distefano, 808 F. 3d 845, 848 (Fed. Cir. 2005)). Petitioner
asserts that, contrary to the Patent Owner’s arguments, the encrypted data is
not functionally related to the communication carrying it or to any other
element in the claim. Id. at 13. Petitioner contends that, even where
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information in computer storage is manipulated by a computer in accordance
with recited limitations in a claim, “the nature of the information being
manipulated ‘does not lend patentability to an otherwise unpatentable
computer-implemented product or process.’” Id. at 14 (quoting Ex parte
Nehls, 88 U.S.P.Q.2d 1883, 1889 (BPAI 2008) (precedential)).
In our Decision on Institution, we stated:
If a limitation claims (a) printed matter that (b) is not
functionally or structurally related to the physical substrate
holding the printed matter, it does not lend any patentable
weight to the patentability analysis. In re Gulack, 703 F.2d
1381, 1384–85 (Fed. Cir. 1983). Under DiStefano, “printed
matter must be matter claimed for what it communicates,” that
is, “matter claimed for its communicative content.” In re
DiStefano, 808 F.3d 845, 849–50 (Fed. Cir. 2015). If the
limitation in question is determined to be printed matter, one
turns to the question of whether the printed matter nevertheless
should be given patentable weight. Id. at 850. “Printed matter
is given such weight if the claimed informational content has a
functional or structural relation to the substrate.” Id.
As Patent Owner argues, Petitioner does not refer to any
case law to support that data in a computer application should
be subject to the printed matter doctrine. DiStefano, however,
included a limited discussion of the issue. See DiStefano, 808
F.3d at 850. In its discussion relating to Lowry, the Federal
Circuit stated that “a computer-based structural database was
not printed matter, not because it involved a computer, but
because the data structures ‘contain[ed] both information used
by application programs and information regarding their
physical interrelationships within a memory.’” Id. (emphasis
added) (quoting In re Lowry, 32 F.3d at 1583–84); see also In
re Nuijten, 500 F.3d 1346, 1365 (Fed. Cir. 2007) (information
stored on claimed storage medium cannot distinguish from
prior art storage medium absent a functional relationship
between the stored information and the storage medium).
Inst. Dec. 41–42.
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The claim requires only that the “communication caused to be
transmitted to the communication network node facilitates the transmission
of encrypted communications.” Patent Owner argues that the printed matter
doctrine does not apply because the facilitation of the transmission of
encrypted communications could include setting up digital certificates or
performing public key management, which requires a functional
relationship. See PO Resp. 34. We do not agree. The claim requires only
that there be facilitation of the transmission of encrypted communications,
and we discern nothing in the claim that requires anything beyond sending
and receiving data, even if the data is in an encrypted form. Thus, we
determine that “encrypted communications” claims only communicative
content, i.e. printed matter. See In re DiStefano, 808 at 849–50. We turn to
whether there is a functional relationship of the content and the claimed
communications. Outside of the communications being transmitted being in
an encrypted form, we discern nothing else recited in the claim directed to
the data being used or manipulated, that is, there is nothing in the claim
requiring any processing of encrypted data beyond the transmission of the
same. As such, there is no functional relationship of the encrypted data to
the communication carrying it, and, accordingly, we afford no patentable
weight on the basis of the “encrypted” nature of the communication.
Petitioner asserts that Iida’s disclosures relating to the fourth program
code show the facilitation of transmissions, that is, the opening a channel of
communications, so the claim element is disclosed regardless of the contents
of the communications. See Pet. 30; Pet. Reply 12. Considering the specific
language of the claim itself, we agree that, as disclosed in Iida, the
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establishment of these communications facilitates the transmission of
communications. See id.
Accordingly, on this record, we determine that Petitioner has
demonstrated by a preponderance of the evidence that Iida discloses all the
elements of claim 4.
e. Dependent claims 5, 6, and 8
Claim 5 depends from claim 2 and further recites the portable device
“wherein the communication network node comprises a database and the
communication caused to be transmitted to the communication network node
facilitates access to the communication network node database.” Ex. 1001,
31:43–47. Claim 6 depends from claim 2 and recites “the communication
network node comprises a database and the communication caused to be
transmitted to the communication network node facilitates the download of
content on the communication network node database to the terminal.” Id.
at 31:48–52. Claim 8 depends from claim 2 and recites “the communication
network node comprises a database and the communication caused to be
transmitted to the communication network node facilitates the upload of
content on to the communication network node database.” Id. at 31:58–62.
Petitioner relies upon Iida’s disclosure of a large number of image
data saving areas in storage medium 88 connected to image server 18 as the
claimed databases. Pet. 33 (citing Ex. 1003 ¶ 70, Fig. 1C). Mr. Geier
provides testimony in support of the contention. Ex. 1002 ¶ 66. Petitioner
asserts that Iida discloses communication transmissions, access, download,
and upload to/from the image data saving areas as mapped. Pet. 33–35.
For arguments on claims 5–8, 10, and 11, Patent Owner asserts that a
person of ordinary skill would understand that a database is more than a
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collection of files because it has to be an organized collection of data, as
Petitioner recognizes, and there is no evidence presented by Petitioner that
the image data saving areas are organized in any way. PO Resp. 35 (citing
Ex. 2122, 20:16−22, 21:9−22, 22:19−23:2; Ex. 2099 ¶¶ 129–133).
In Reply, Petitioner points to Iida’s disclosure of a storage medium
“organized to provide ‘a large number of image data saving areas for
separately saving image data for individual users.’” Pet. Reply 15 (quoting
Ex. 1003 ¶ 70). Petitioner argues that Patent Owner presents no argument
that overcomes Iida’s explicit teaching of organization of the storage
medium by separating it into areas for each user. Id. (citing Ex. 1002 ¶ 66).
Dr. Butler testifies that a person of skill in the art would understand
that “a database is commonly understood to be ‘an organized collection of
data.’” Ex. 2099 ¶ 129. Dr. Butler goes on to testify that the “image data
saving areas” of Iida “do not qualify as databases because they are described
as a mere collection of files.” Id. ¶ 133. Dr. Butler identifies other
references that, for instance, use special software, or are a set of records
organized by creating relations between sets of records. See id. ¶¶ 132–133.
We are not persuaded by Patent Owner’s arguments, nor Dr. Butler’s
testimony in support of the arguments on this issue, because Patent Owner
itself presents an understanding of a broad interpretation of “database”
which only requires that it be “an organized collection of data.” See
Ex. 2099 ¶ 129. Iida’s disclosure of separately saving image data for
individual users is sufficient to qualify as a “database” under Patent Owner’s
construction of the term.
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Accordingly, on this record, we determine that Petitioner has
demonstrated by a preponderance of the evidence that Iida discloses all the
elements of claims 5, 6, and 8.
Like claims 5, 6, and 8, claims 7, 10, and 11 also recite that “the
communication network node comprises a database,” and we find that
Petitioner has demonstrated by a preponderance of the evidence that Iida
discloses this limitation of claims 7, 10, and 11 for the same reasons as
discussed above.
f. Dependent claim 7
Claim 7 depends from claim 2 and further recites the portable device
“wherein the communication network node comprises a database and the
communication caused to be transmitted to the communication network node
facilitates the download of program code on the communication network
node to the terminal.” Ex. 1001, 31:53–57.
Petitioner contends that downloading of program code is no different
than downloading any other kind of data, and there is no function recited for
the downloaded program code, other than it is received by the terminal.
Pet. 34. Petitioner argues that the information content of what gets received
is not entitled to patentable weight. Id.
Patent Owner argues that Petitioner misapplies the printed matter
doctrine. PO Resp. 36. Patent Owner asserts that Petitioner’s contention
that the program code in claim 7 “provides no function . . . disregards that
the purpose of program code is to impart functionality to the apparatus that
runs it” because “software update is functionally related to the device
receiving it. Id. (citing Ex. 2099 ¶¶ 134–139). Patent Owner contends that a
“reasonable interpretation of Claim 7 is that the downloaded code is
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intended to be executed by the portable device or terminal referenced in the
claims,” and the ’969 patent specification, which discusses updating
program code on the TCAP and/or access terminal, explains that purpose.
Id. (citing Ex. 1001, 9:32−35, 19:12−17; Ex. 2099 ¶ 135) (emphasis
omitted). Patent Owner further asserts that it is undisputed that Iida does not
teach facilitating the download of program code. Id. at 37.
After considering the entire record, we determine that the recital of
“program code” in claim 7 is not entitled to patentable weight. The recital of
“downloading” of program code in claim 7 is limited to downloading
(sending or transmitting) the code, which is a communication, and no other
function is recited in the claim. We decline Patent Owner’s request to
import non-recited functions into claim 7 because Patent Owner does not
explain why we should do so.
Accordingly, on this record, we determine that Petitioner has
demonstrated by a preponderance of the evidence that Iida discloses all the
elements of claim 7.
g. Dependent claim 10
Claim 10 depends from claim 2 and recites the portable device
“wherein the communication network node comprises a database and the
communication caused to be transmitted to the communication network node
facilitates synchronizing content on the portable device with content on the
communication network node database.” Ex. 1001, 32:1–6.
Petitioner argues that Iida’s program code provides the user with the
tools for synchronizing content. Pet. 35. Petitioner asserts that in Iida
saving the data on camera 12 into data storage medium 88 of image server
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18 and saving data from data storage medium 88 into camera 12 serves to
synchronize the content. Id. (citing Ex. 1002 ¶ 70).
Patent Owner argues that “Petitioner and its expert contend that any
pair of devices with the capability of storing data must ‘facilitate
synchronizing data’ . . . because a user could take the initiative to save
images of his or her own choosing.” PO Resp. 38 (citing Pet. 35; Ex. 1002
¶ 70). Patent Owner contends that Iida says nothing about synchronization,
Petitioner’s argument is hindsight speculation, and the assertion is
inconsistent with Mr. Geier’s previous statement. Id. (citing Ex. 2099
¶¶ 140–141; Ex. 2124, 92).
In Reply, Petitioner argues that claim 10 does not require automatic
synchronization nor the performance of synchronization. Pet. Reply 17.
Petitioner asserts that the claim requires that the “fourth program code
executed by the portable device in response to user interaction with an IUI
that causes a transmission to the network node so as to facilitate
synchronizing content,” and Iida teaches that facilitation by its log-in
processing transmission that makes uploading and downloading possible.
Id. (citing Ex. 1002 ¶ 70).
On the full record, we agree with Patent Owner that Petitioner
presents insufficient evidence to support that Iida discloses this limitation, as
we found in the Decision on Institution. See Inst. Dec. 46. As discussed,
Mr. Geier testifies that Iida’s program code provides a user the ability to
save data in either uploads, downloads, or in erasing content. See id. (citing
Ex. 1002 ¶ 70). However, Petitioner provides us with no claim construction
to support why we should credit Mr. Geier’s testimony to the extent that the
piecemeal saving or erasing data disclosed in Iida on an “as desired” basis
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would be sufficient to teach the claimed “facilitate[ing] synchronizing
content” in the view of one of ordinary skill in the art.
Accordingly, on this record, we determine that Petitioner has not
demonstrated that Iida discloses all the elements of claim 10 by a
preponderance of the evidence.
h. Dependent claim 11
Dependent claim 11 recites the portable device of claim 2 “wherein
the communication network node comprises a database and the
communication caused to be transmitted to the communication network node
facilitates the download of a live data feed to the terminal.” Ex. 1001, 32:7–
11. Similar to its arguments for claims 4 and 7, Petitioner alleges that Iida
discloses a communication transmitted to image server that can be used to
facilitate a download. Pet. 35 (citing Ex. 1002 ¶ 71). Mr. Geier testifies that
“Iida discloses a digital still camera [the FinePix6800Z camera] that can
record a dynamic image with sound.” Ex. 1002 ¶ 71 (emphasis added). Mr.
Geier further testifies that “[w]hether the content being downloaded is
coming from a storage medium or being delivered live from a server is of no
consequence” for facilitating the download. Id. And Mr. Geier testifies that
“[i]t makes no difference to the claimed facilitating communication whether
the short video is a recorded feed or a live feed.” Id.
Patent Owner argues that Petitioner disregards the claim element “live
data feed,” in its arguments. PO Resp. 38 (citing Pet. 35). Dr. Butler
testifies that “live” means “at the actual time of occurrence” and
“[d]ownloading an entire file and playing it back later does not count as
‘live,’” and further asserts that Mr. Geier agrees with this interpretation on
the meaning of “live data feed.” Ex. 2099 ¶ 145 (citing Ex. 2122, 160:24–
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161:2, 185:19–186:18; Ex. 2125, 728). Patent Owner contends that “Iida’s
terminal is capable of receiving only discrete image data files, which are
downloaded in their entirety before being stored or viewed.” PO Resp. 39
(citing Ex. 1003 ¶¶ 106, 114, 128; Ex. 2122, 176:7–10). Dr. Butler further
testifies that live data feeds are handled differently from other types of
downloads because of technical differences, such as requiring large
bandwidth and protocols such as Real-time Transport Protocol (RTP) or
isochronous transfers. Ex. 2099 ¶ 146–148 (citing Ex. 2120, 50, 72; Ex.
2136, 5).
Although Mr. Geier testifies that “it is of no consequence” whether
the download is coming from a storage or being delivered live from a server
(Ex. 1002 ¶ 71), Mr. Geier also testifies:
Q. Right. So a prerecorded data file that is transmitted after
the recording is complete, that does not count as transmission
of a live data feed; correct? . . .

THE WITNESS: I thought that was the same question you
asked before. So we've already stored it and now we’re going to
send it someplace else and that's just a file you’re – you’re
moving someplace. . .

Q. And that’s not a live data feed; correct? Yes or no question.

A. Well, I -- as I -- I thought I answered that before. I can’t
think of a reason why that would be a live data feed, so –

Q. Okay. That’s –

A. -- no, I mean, I answered that before.
Ex. 2122, 185:19–186:19 (emphases added). We find that, even if Iida
implicitly discloses transmission of a dynamic image with sound (Ex. 1003
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¶¶ 127, 153), there is no explicit or implicit disclosure that the transmission
is a live data feed as opposed to transmission of prerecorded data file, which
Mr. Geier concedes is not the same as transmission of a live data feed. Id.
On the full record, we agree with Patent Owner that Petitioner
presents insufficient evidence to support that Iida discloses the limitation of
claim 11. Petitioner provides us with no claim construction to support why
we should consider that “download of a live data feed” should be interpreted
so broadly as to include the download of pre-stored image data. And both
Mr. Geier’s and Dr. Butler’s testimony support that the claim language
should not be interpreted so broadly; instead, a pre-stored data file that is
later sent is not a “live data feed.” Ex. 2099 ¶ 145; Ex. 2122, 185:19–
186:19. And Iida fails to disclose a “live data feed” because its teachings are
limited to recording dynamic images.
Accordingly, on this record, we determine that Petitioner has not
demonstrated by a preponderance of the evidence that Iida discloses all the
elements of claim 11.
i. Dependent claim 12
Claim 12 depends from claim 11, and recites that the portable device
“wherein live data feed is presented on the terminal output component.”
Ex. 1001, 32:12–13. As discussed above, the Petition fails to demonstrate
that Iida discloses all the elements of claim 11, and Petitioner’s evidence and
arguments presented for claim 12 fail to cure those deficiencies. See Pet. 36.
By virtue of its dependency on claim 11, we find that that Petitioner has not
demonstrated by a preponderance of the evidence that Iida discloses all the
elements of claim 12.
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j. Dependent claims 13–15
Claim 13 recites the portable device of claim 1, “wherein the portable
device is further configured to affect the presentation of the interactive user
interface on the terminal output device.” Ex. 1001, 32:14–16. Claims 14
and 15 recite, respectively, the portable device of claim 13 “wherein the
portable device memory has fifth program code stored thereon, which, when
executed, is configured to affect the presentation of the interactive user
interface on the terminal output device,” and “wherein the portable device is
configured to provide the terminal with access to content stored on the
portable device memory which affects the presentation of the interactive
user interface on the terminal output device.” Id. at 32:17–27. Petitioner
predominantly relies upon Iida’s disclosure of software executing the code
of Figures 4A–4D for the disclosure of these claim limitations. Pet. 37–38.
Patent Owner does not provide any additional arguments for these
claims, beyond those related to independent claim 1, which we do not find
persuasive for the reasons explained above. See PO Resp. 33–41.
Accordingly, on this record, we determine that Petitioner has
demonstrated by a preponderance of the evidence that Iida discloses all the
elements of claims 13–15.
k. Dependent claim 16
Claim 16 depends from claim 15 and recites the portable device
“wherein the content comprises a user name and/or a portable device
identifier, and the interactive user interface is affected to present the user
name and/or portable device identifier.” Ex. 1001, 32:28–31. Petitioner
asserts that claim 16 requires that the accessible content of the claim be a
user name or a portable device identifier, but that is of no patentable
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significance as it is merely being presented on a monitor. Pet. 38. Petitioner
further contends that Figures 6A–6I of Iida illustrate presenting content from
the portable memory device on the terminal output device and patentability
cannot be established by changing the words and information being
displayed. Id. More specifically, Petitioner asserts that the claim requires
presenting content identifying either the portable device or the user on the
interactive user interface, and this is purely communicative content and is
printed matter. Pet. Reply 17 (citing Praxair Distrib., Inc. v. Mallinckrodt
Hosp. Prod. IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018)). Petitioner
argues that if there was alternative printed presentations, “a new product
with new functionality would not result.” Id. at 17–18 (citing AstraZeneca
LP v. Apotex, Inc., 633 F.3d 1042, 1065 (Fed. Cir. 2010)).
Patent Owner asserts the printed matter doctrine does not apply to
information presented by a computer and the user name and/or portable
device identifier should be given patentable weight because it is stored on
the portable device memory and presented on the terminal output
component. PO Resp. 39–40.
Here, we are persuaded by Petitioner’s evidence and argument. As
Praxair, applying DiStefano, states “a claim limitation is directed to printed
matter ‘if it claims the content of information.’” Praxair, 890 F.3d at 1032
(citing DiStefano, 808 F.3d at 848). And although claim 15, from which
claim 16 depends, requires configuration of the portable device to provide
the terminal with access to the content, and claim 16 requires that the
accessed content is presented, claim 16 is explicitly directed to “the
content.” As such, we determine that the user name and portable device
identifier portion of claim 16 is directed to printed matter. Next we turn to
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whether the content has a functional or structural relationship to the
substrate. Here, we discern that there is a distinction between instances
where there was a functional relationship, such as where there was an
interrelationship between printed digits on a circular band, and the case here.
See Pet. Reply 18 (citing In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir.
1983)). The challenged claims do not recited any functional relationship
between the printed matter (a user name and/or a portable device identifier)
and the substrate (the interactive user interface on the terminal output
component). Instead, as Petitioner asserts, regardless of the content
presented, it would not affect functionality as claimed. See Ex parte Nehls,
88 U.S.P.Q.2d at 1889.
Thus, we agree with Petitioner that the “content” portion of the claim,
i.e. user name and a portable device identifier, is nonfunctional printed
matter and should not be afforded patentable weight. Additionally, we agree
that Iida discloses presenting content, such as that depicted in Figure 6B.
See Ex. 1002 ¶ 76.
Accordingly, on this record, we determine that Petitioner has
demonstrated by a preponderance of the evidence that Iida discloses all the
elements of claim 16.
l. Dependent claims 19 and 20
Claim 19 depends from claim 1, and recites “wherein the portable
device is configured to cause the terminal to execute the first program code
and present an interactive user interface on the terminal output component.”
Ex. 1001, 32:40–43. Claim 20 depends from claim 19, and recites “wherein
the portable device memory has fifth program code stored thereon, which,
when executed by the portable device processor, is configured to cause the
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terminal to execute the first program code and present an interactive user
interface on the terminal output component.” Id. at 32:44–49. Petitioner
relies upon Iida’s disclosure of software for executing the code for the steps
shown in Figures 4A–D. Pet. 39–40.
Patent Owner does not provide any additional arguments for these
claims, beyond those related to independent claim 1, which we do not find
persuasive for the reasons explained above. See PO Resp. 33–41.
Accordingly, on this record, we determine that Petitioner has
demonstrated by a preponderance of the evidence that Iida discloses all the
elements of claims 19 and 20.
m. Dependent claim 21
Claim 21 depends from claim 1 and recites the portable device
“wherein the interactive user interface comprises a graphic user interface.”
Ex. 1001, 32:50–51. Petitioner refers to graphic displays of Iida, such as
Figure 6E, for the disclosure of the limitations of claim 21. See Pet. 40–41.
More specifically, Petitioner argues that Iida discloses that “the user
interface as described by Iida takes place through the terminal’s ‘operating
unit 64 comprising a ten-keys, touch pad or the like.’” Id. (citing Ex. 1003
¶ 68). Petitioner further argues that Figure 6E discloses a “graphic[al]
display” and that “a touch pad was known to manipulate a cursor on graphic
displays such as shown in Fig. 6E for making a selection of one of the
displayed images.” Id. at 41 (citing Ex. 1002 ¶ 77).
Patent Owner asserts that Iida does not disclose a graphic user
interface because “[t]he user in Iida merely looks at the thumbnails in Iida
and presses a numeric key separate from the display.” PO Resp. 40 (citing
Ex. 1003 ¶¶ 68, 95–97, 128). Patent Owner also argues that there is no
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connection between the touch pad and the display because the only way a
user can react to a display is to input a number. Id. at 40–41 (citing Ex.
1003 ¶¶ 68, 97, Fig. 6E). Patent Owner also contends that “[n]othing in Iida
suggests using a touch pad to enter a number, and the user does not click,
tap, use a cursor on, or otherwise interact with the thumbnails in Iida.” Id. at
41 (citing Ex. 2099 ¶¶ 155–156).
Patent Owner’s arguments are premised on its proposed interpretation
for the term “interactive user interface.” See supra Section II.C.1. As
discussed, we rejected that interpretation, determining only that an
“interactive user interface” means “a display containing interface elements
with which a user may interact to result in a computer taking action
responsively.” See id. Patent Owner’s arguments are also premised on its
contention that Iida’s menus are not interactive user interfaces and a user
does not engage with the interactive elements. See supra Section II.D.2.a.6.
As discussed above, we reject those arguments, determining that Iida
discloses interface user interfaces with menu screens operating as interactive
elements, and with user selection of numerical input serving as user
interaction. See id.
Here, we have adopted the ordinary meaning of the term “graphic user
interface,” that is, it is a user interface that includes graphical elements—and
all that is required under claim 21 is that “the interactive user interface
comprises a graphic user interface.” See supra Section II.C.2. Petitioner
relies on the graphic displays of Iida, such as Figure 6E, which discloses
graphical elements, and which we determine to be sufficient disclosure to
teach the claim element.
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Accordingly, on this record, we determine that Petitioner has
demonstrated by a preponderance of the evidence that Iida discloses all the
elements of claim 21.
n. Dependent claims 24, 25, and 27
Claim 24 depends from claim 1 and recites “a portable device
memory comprises one or more of the group consisting of flash memory,
read only memory, random access memory.” Ex. 1001, 32:59–62. Claim 25
depends from claim 1 and recites “communications network node comprises
a server.” Id. at 32:63–64. Claim 27 depends from claim 1 and recites
“external communication interface comprises a wireless communication
interface.” Id. at 33:1–3. Petitioner relies upon Iida’s disclosures of a
ROM/RAM memory in the portable device, its image server, and a wireless
communication unit. Pet. 41–42.
Patent Owner does not provide any additional arguments for these
claims, beyond those related to independent claim 1, which we do not find
persuasive for the reasons explained above. See PO Resp. 33–41.
Accordingly, on this record, we determine that Petitioner has
demonstrated by a preponderance of the evidence that Iida discloses all the
elements of claims 24, 25, and 27.
o. Independent claims 28 and 29
Independent claims 28 and 29, recited in method and system forms,
have similar limitations to claim 1. We find the evidence and argument
presented in the Petition is persuasive for the reasons explained above for
claim 1. See Pet. 42–54. Patent Owner presents no additional arguments
directed to these claims. See PO Resp. 22–41.
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Accordingly, on this record, we determine that Petitioner has
demonstrated by a preponderance of the evidence that Iida discloses all the
elements of claims 28 and 29.
p. Summary of Anticipation Challenge
On this record, we determine that Petitioner has shown by a
preponderance of the evidence that claims 1, 2, 4–8, 13–16, 19–21, 24, 25,
and 27–29 of the ’969 patent are anticipated by Iida and that Petitioner has
not shown by a preponderance of the evidence that claims 3 and 10–12 are
anticipated by Iida.
E. Alleged Obviousness over Iida and Fuji Guide
Petitioner contends that claims 1–8, 10–16, 19–21, and 24–29 would
have been obvious over Iida and Fuji Guide. Pet. 54–64. To support its
contentions, Petitioner provides explanations as to how Iida and Fuji Guide
teach each claim limitation. Id. Petitioner also asserts that the Fuji Guide
was sufficiently available to the public interested in the art. Pet. 10–11; Pet.
Reply 21–22. Petitioner relies upon the Geier Declaration (Ex. 1002) to
support its positions on obviousness as well as the Widener Declaration (Ex.
1005) to support its position on public accessibility.
In addition to arguing that the prior art fails to teach some claim
limitations and there is insufficient rationale to combine the prior references,
Patent Owner argues that Petitioner has failed to prove that the Fuji Guide
was sufficiently available to the public interested in the art, is not a printed
publication, and therefore the Fuji Guide cannot be used as prior art. PO
Resp. 41–56; PO Sur-Reply 20–25. Patent Owner relies upon the Butler
Declarations (Exs. 2003, 2099) to support its positions.
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We begin our discussion with a brief summary of Fuji Guide, and then
address the evidence and arguments presented.
1. Fuji Guide (1004)
Fuji Gide, entitled “Software Quick Start Guide,” is one of the user
manuals which was allegedly provided to purchasers of the FinePix6800Z
camera, and this model of camera is referred to in Iida. Ex. 1003 ¶ 153;
Ex. 1004;14 Ex. 1005.
Fuji Guide depicts setting up the camera with an attachment to a
personal computer, as depicted in the figure reproduced below. Ex. 1004, 7.

The figure reproduced above depicts an attachment of the camera to a
personal computer, and also depicts communications to allow participation
in a videoconference. Ex. 1004, 7. This figure also shows that the camera

14 Hereafter, we refer to the page numbering appended to Fuji Guide and not
its original page numbers.
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may be attached to the personal computer by a USB cable. Id. Fuji Guide
also depicts CD-ROMs that can load software on the personal computer. Id.
FinePixViewer software, which may operate in Windows, allows thumbnail
images from the camera to be displayed on the computer screen as depicted
in the figure reproduced below. Id. at 17.

As depicted in the figure reproduced above, the FinePixViewer startup
window launches and thumbnail images are communicated from the camera
and displayed. Ex. 1004, 17. The FinePixViewer also includes features for
communications with the Internet. Id. at 20–21.
2. Analysis
a. Legal Standard for Obviousness
A patent 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. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
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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 ordinary skill in the art; and when presented (4) objective
evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966).
b. Availability of the Fuji Guide as Prior Art
i. Legal Standards for Printed Publication
We look to the underlying facts to make a legal determination as to
whether a reference is a printed publication. Suffolk Techs., LLC v. AOL
Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a
given reference qualifies as a prior art “printed publication” involves a case-
by-case inquiry into the facts and circumstances surrounding its disclosure to
members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir.
2004). “A reference is considered publicly accessible if ‘persons interested
and ordinarily skilled in the subject matter or art, exercising reasonable
diligence, can locate it.’” Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929
F.3d 1363, 1369 (Fed. Cir. 2019) (quoting Acceleration Bay, LLC v.
Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018)). “A given
reference is ‘publicly accessible’ upon a satisfactory showing that such
document has been disseminated or otherwise made available to the extent
that persons interested and ordinarily skilled in the subject matter or art
exercising reasonable diligence, can locate it.” Bruckelmyer v. Ground
Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (citation omitted).
User manuals require evidence of publication or dissemination to be
deemed a printed publication. See ResQNet.com, Inc. v. Lansa, Inc., 594
F.3d 860, 865−66 (Fed. Cir. 2010). “[I]t is not enough for Petitioner to
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establish that a product was available to the public. Rather, the critical
inquiry is whether the document itself was publicly accessible.” ASM IP
Holding B.V. v. Kokusai Elec. Corp., IPR2019-00369, Paper 8, 15–16
(PTAB Jun. 27, 2019).
ii. Evidence and Argument Presented
Petitioner asserts that Iida references the “‘FinePix6800Z” camera
manufactured by Fuji Photo Film Co., Ltd. and this camera was available at
least by 2001, as confirmed by reviews appearing in magazines. Pet. 10
(citing Ex. 1008; Ex. 1011; Ex. 1002 ¶ 38–40). Petitioner contends that the
FinePix6800Z camera was a consumer item with unlimited distribution to a
mass market as confirmed by reviews in magazines, and further confirmed
by actual sales. Pet. Reply 21 (citing Ex. 1008; Ex. 1011; Ex. 1043, 12;
Ex. 1002 ¶ 38–40).
Petitioner relies on the Widener Declaration to support that consumers
purchasing the camera received several user manuals, including a document
referred to as the Fuji Guide. Pet. 10 (citing Ex. 1004; Ex. 1005). Petitioner
contends that Mr. Widener, a purchaser of the camera, testifies that he
received the Fuji Guide in a FinePix6800Z camera package that he
purchased in 2001. Id. (citing Ex. 1005). Petitioner also contends that the
date of the Fuji Guide is corroborated by a substantially similar version
found online having a modify date of February 20, 2001. Id. (citing Ex.
1002 ¶ 41 (determining modify date by the use of metadata); Ex. 1012).
Petitioner refers to a comparison of cited pages of the Fuji Guide with the
web version. Pet. Reply 22 (citing Ex. 1045). Petitioner also refers to a
photograph allegedly taken on March 3, 2003, by the FinePix6800Z camera
Mr. Widener had purchased as further corroboration that the camera had
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been purchased, as discussed in the deposition testimony of Mr. Widener.15
Id. (citing Ex. 2126, 58:5–60:8).
Petitioner argues that the “Fuji Guide is a booklet that could be freely
disseminated by whoever possesses it.” Pet. 10. Petitioner contends that the
Fuji Guide is prior art because it is a printed publication that was accessible
to the public in 2001 through purchase of the camera. Id. (citing Ex. 1005;
Ex. 1002 ¶¶ 38–41).
More specifically, Mr. Widener testifies that he purchased a FinePix
6800 Zoom camera a few months after the model was being offered for sale
to the general public, and to the best of his knowledge, the purchase was in
June, 2001. Ex. 1005 ¶¶ 2–4. Mr. Widener testifies that he retained an
original copy the documentation, which came in a variety of languages,
which accompanied the purchased camera. Id. ¶ 5. Mr. Widener testifies he
attached, as Exhibit D, a reproduction of the original English language
Software Quick Start Guide that accompanied the camera he purchased in
2001. Id. ¶ 14. Mr. Widener testifies that in or around July 2018, he listed
the FinePix camera for sale on eBay, and it was purchased by Mr. Timothy
Murphy.16 Id. ¶¶ 6–10.

15 The referenced photograph is not part of the record of the case. Petitioner
seeks to enter this photograph, as well as two other documents, which are
two screenshots of metadata associated with the photograph, by its Motion
for Entry of Deposition Exhibits, which we address below. Paper 66.
Although we deny Petitioner’s Motion, we nevertheless address the
deposition testimony related to the photograph in our analysis of the printed
publication status of the Fuji Guide.
16 Mr. Timothy Murphy is a counsel of record representing Petitioner in this
proceeding.
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Mr. Geier testifies concerning a version of a Fujifilm Software Quick
Start Guide that he found on the Internet. Ex. 1002 ¶ 41 (citing Ex. 1012).
Mr. Geier testifies that he used a metadata analyzer (www.get-
metadata.com) to learn that the document had a create date of February 19,
2001, and a modify date of February 20, 2001. Id. Petitioner also includes
the Declaration of Mr. Steven W. Ramsdell, who also determined dates from
the metadata of Exhibit 1012 using the same software. Ex. 1044. Mr. Geier
further testifies that “I was unable to determine when the Fuji web page with
the guide was made publicly available.” Ex. 1002 ¶ 41. Mr. Geier
additionally testifies that the online version of the guide, which he found, is
substantially similar to the Fuji Guide that is designated as Exhibit 1004. Id.
Patent Owner filed a motion to exclude the Fuji Guide (Ex. 1004); the
Widener Declaration (Ex. 1005); the Internet version of the Fuji Guide
(Ex. 1012); Fuji’s 2001 Annual Report (Ex. 1043); the Declaration of Mr.
Steven W. Ramsdell (Ex. 1044); and Exhibit 1045, a document purported to
be a comparison of Exhibits 1004 and 1012. PO Mot. Exclude 1–12. These
documents all relate to the printed publication status of the Fuji Guide.
Mr. Widener and Mr. Geier were both deposed by Patent Owner.17
See Ex. 2122; Ex. 2126. Patent Owner asserts that the Widener Declaration

17 Petitioner sought authorization by motion to file the Declaration of Mr.
Christopher Maxwell as supplemental evidence, which related to the status
of the Fuji Guide (Ex. 1004) as prior art, as well as for authorization to apply
to the District Court for a subpoena compelling the testimony of Mr.
Maxwell. See Papers 28, 31, 33, 35. The Maxwell Declaration was served
on Petitioner, but not filed with the Board. Paper 35, 2, n.1. Petitioner’s
motion was denied and the Order identified additional options for obtaining
related evidence. See id. at 6. Petitioner subsequently did not make any
additional requests to the Board related to this issue.
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is unreliable because, in his deposition testimony, Mr. Widener testified that
the purported date of public accessibility in the declaration was based on
Internet searches and not his own personal knowledge. PO Resp. 41–42
(citing Ex. 2126, 12:20−13:5, 47:11−48:5; Ex. 1005 ¶ 7). Patent Owner
alleges there is no contemporaneous receipt of the purchase, or other record,
to establish when Mr. Widener purchased the camera. Id. at 42 (citing Ex.
2126, 24:7−17, 24:18−25:18). Patent Owner contends that, contrary to his
declaration, in his deposition Mr. Widener testified that he gave the camera
to his father and did not have custody of the camera or any documentation
for more than 10 years, until it was retrieved for sale. Id. at 41–42 (citing
Ex. 2126, 41:3−17, 48:6−13, 48:21−49:19). Patent Owner also alleges that
during the deposition, Mr. Widener was unable to identify the Fuji Guide as
an attachment to his declaration and instead identified the two out of three
documents that were not attached to his declaration. Id. at 42 (citing Ex.
2126, 43:10−44:22).
Patent Owner argues that the Widener Declaration fails to establish
public accessibility, which requires that persons interested and skilled in the
art, exercising reasonable diligence, can locate it. PO Resp. 43–45. Patent
Owner asserts that even if the Fuji Guide were available, there is no
evidence of any expectation that customers would copy or disseminate it and
points to a user license agreement the Fuji Guide prohibiting distribution.
Id. at 45 (citing Ex. 1004, 4).
Patent Owner additionally argues that Petitioner attempts to
corroborate the evidence on the Fuji Guide by relying on a different
document that was found online on the web. PO Resp. 46 (citing Ex. 1012).
Patent Owner asserts that Exhibit 1012 (the web version) is “clearly not the
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same document as the Fuji Guide,” and the on-line web manual is missing
numerous passages that are in the Fuji Guide. Id. Patent Owner refers to
Mr. Geier’s testimony that he was unable to determine when the Fuji web
page was made publically available. Id. Patent Owner also contests the
method used to determine the modification date of the Fuji web page version
using a metadata analyzer. Id. at 47.
iii. Analysis
The issue before us is whether Petitioner has met its burden to
establish that the Fuji Guide (Ex. 1004) is a printed publication. Hulu, LLC
v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 29, 11 (PTAB
Dec. 20, 2019) (precedential) (“To prevail in a final written decision in an
inter partes review, the petitioner bears the burden of establishing by a
preponderance of the evidence that a particular document is a printed
publication.” (citations omitted)). We have reviewed the parties’ arguments
and evidence presented and determine that Petitioner has not met its burden
to demonstrate that the Fuji Guide is a printed publication.
For the purposes of this evaluation, we have considered all the
evidence presented, including that which is the subject of Patent Owner’s
Motion to Exclude, as well as deposition testimony related to the photograph
that is the subject of the Motion for Entry of Deposition Exhibits.
Our view is that Petitioner has presented sufficient evidence that Fuji
FinePix 6800 Zoom cameras were on sale by at least November, 2001, as
supported by a review of this product in a dated magazine article. See
Ex. 1008. Patent Owner raises reasonable questions about the date Mr.
Widener may have purchased a FinePix 6800 Zoom camera because there is
no receipt or other proof evidencing the time of purchase, and additionally
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because Mr. Widener’s testimony indicates that he determined the
approximate date of purchase by Internet searches, rather than from his own
personal knowledge. See Ex. 2126, 24:7–17, 47:13–18. Nevertheless, we
will afford weight to Mr. Widener’s testimony concerning the approximate
purchase date of the camera. The deposition testimony that a photograph
allegedly taken by Mr. Widener’s father using the gifted camera is dated
March 2, 2003, serves as additional support that the cameras were on sale at
least by that date. Id. at 58:5–60:8.18
Although Petitioner may have provided sufficient evidence to support
the availability of the FinePix 6800 camera for purchase, the operative issue
is whether sufficient evidence has been provided to demonstrate the public
availability of the Fuji Guide document designated as Exhibit 1004. The
Fuji Guide document is undated. Mr. Widener’s testimony is the main
support that Petitioner relies upon to demonstrate that consumers purchasing
the FinePix 6800 camera received the Fuji Guide at a time of purchase in
2001.
In his Declaration, Mr. Widener testifies that “I retained the original
copy of documentation, which came in a variety of languages, that
accompanied my purchased FinePix camera.” Ex. 1005 ¶ 5 (emphasis
added). At deposition, however, Mr. Widener testifies that he had purchased
the camera for his father as a birthday gift, the camera and manuals were
given to the father in a box, and it was Mr. Widener’s father who had kept

18 We note that Patent Owner objects to consideration of this photograph for
several reasons, including that the photograph was not taken by Mr.
Widener, and instead the photograph was presumably taken by his father.
See PO Sur-Reply 21; PO Mot. Exclude; see also, Ex. 2126, 40:8–22.
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the camera and manuals for over 10 years. See Ex. 2126, 41:3−17, 48:6−13,
48:21−49:19. In part, Mr. Widener testified:
Q. So you said that you bought the camera yourself, right?
A. Correct.
Q. Did you buy it for your parents?
A. I did.
Q. Was it like as a gift?
A. It was my dad’s birthday present.
Q. And so when you gave it to him for his birthday, you gave it
to him in the box with all the manuals and everything, right?
A. Correct.
Q. And so he had it for that whole time until you went and
found it in 2018?
A. I’m not sure of the year but when I found it, yes.

* * *

Q. Do you know if your father retained all of the documentation
from the camera?
A. He retained what I had.
Q. Well, you gave it to him, right?
A. I did.
Q. And he had it for over 10 years, right?
A. Correct.
Q. Do you know if during that time that he had it if he retained
everything that you gave to him or do you know what he did
with it?
A. Yes, he retained what he had.
Q. How do you know he didn’t get rid of some of the
documentation?
A. He wouldn’t have it anymore if he got rid of it.
Q. Okay. So what you know is that what you got back when
you went and found the camera is what had been retained,
correct?
A. Correct.
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Q. But you don’t particularly know what happened in the
intervening years when your father had the camera?
A. Correct.
Ex. 2126, 41:3−17, 48:21–49:19 (emphases added).19
We concur with some of Patent Owner’s concerns relating to the
testimony of Mr. Widener. PO Resp. 41–47. A concern is the lack of
credible evidence that the Fuji Guide was included with the FinePix camera
at the time it was purchased by Mr. Widener. The accuracy and reliability of
Mr. Widener’s recollections concerning documentation included with the
camera at the time he purchased it nearly twenty years ago is questionable,
particularly when Mr. Widener did not regain possession of the camera until
recently. A related concern is the credibility of Mr. Widener’s testimony in
light of the fact that the camera and associated documentation were outside
of Mr. Widener’s possession for a long period of time, and he appears to
have little knowledge of how the documentation was used, stored, and
retained during that time. See Ex. 2126, 41:3−17, 48:21–49:19.
Our concerns about credibility are not lessened by Mr. Widener’s
inability at deposition to identify the documentation attached to his
declaration; he incorrectly identified two documents that were not attached,
but did not identify a copy of the Fuji Guide as being attached. Ex. 2126,
43:10−44:22; PO Resp. 42, n.5. Petitioner attempts to explain some of the
potential reasons for misidentification at deposition, such as Mr. Widener
limiting his review to some portions of the documents and one document
being incorrectly copied out of order. See Tr. 38:13–39:9, 116:1–17. We

19 We note that Patent Owner has filed a Motion to Exclude Mr. Widener’s
Declaration based on, among other things, lack of firsthand knowledge and
foundation. PO Mot. Exclude. 3–4.
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nonetheless have concerns about the credibility of Mr. Widener’s testimony
concerning identification of the camera documentation in light of the facts.
The camera was given as a gift,20 the documentation was not in Mr.
Widener’s possession for over 10 years, and Mr. Widener had no knowledge
of what happened to that documentation during the intervening time. Mr.
Widener testifies that his father did not get rid of documentation, but a
concern is whether a document, such as the Fuji Guide, could have been
added to the camera box at a later time.21 Accordingly, we afford little
weight to Mr. Widener’s testimony concerning the document identified as
Exhibit 1004, the Fuji Guide.
Petitioner also relies on another version of the Fujifilm Software
Quick Start Guide found on the web for corroboration of the date of the Fuji
Guide, with metadata used to determine a modify date of February 20, 2001,
but with no known publication date. See Pet. 10 (citing Ex. 1002 ¶ 41; Ex.
1012). Notably, Petitioner does not rely on the web version of Fujifilm
Software Quick Start Guide as prior art.
Although the modify date of the web version the Fujifilm Software
Quick Start Guide may be close to that of the alleged date of the availability

20 Mr. Widener does not provide testimony on the detail in which he
examined the user guides in the camera box prior to giving the gift away,
although at deposition he testified that manuals came with the camera
purchase and that his recollection was that the manuals were those that were
provided with his declaration. Ex. 2126, 25:19–26:6. In response to a
question as to whether all the manuals that came with camera had been
included with his declaration, Mr. Widener replied “[t]o the best of my
knowledge.” Id. at 26:7–9.
21 We note that, as discussed above, the Fuji Guide is a software user guide
for use with software loaded onto personal computers, and is not per se a
user guide for the camera itself. See Ex. 1004.
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of the Fuji Guide, the two versions of the documents are different, so the
existence of the web version does not provide support that there was a
standard version of the user guide available at that time.22 See Exs. 1004,
1012, 2074, 2075. More importantly, however, Petitioner does not identify
how or why the web version should serve as probative evidence that the Fuji
Guide was provided with the camera sold to Mr. Widener and, therefore,
does not serve to corroborate his testimony or otherwise demonstrate that the
Fuji Guide was distributed to the public with camera sales in 2001. At most,
the web version shows only that a similar document to the Fuji Guide was
available on the internet at about the same time.
Petitioner also relies on an advertisement for the Fuji FinePix camera,
which briefly discusses software used with the camera, which is asserted to
be similar to Kodak’s EasyShare System. Ex. 1008; Tr. 114:11–12, 115:16–
17. This evidence does not, however, provide support that the document
identified as Exhibit 1004, the Fuji Guide, was distributed to consumers
purchasing the FinePix 6800 camera in 2001.
Considering the evidence of record as a whole, we determine that
Petitioner has not carried its burden to show by a preponderance of the
evidence that consumers purchasing the FinePix 6800 camera received the
Fuji Guide at a time of purchase in 2001. Therefore, we conclude that the
Fuji Guide does not qualify as a prior art printed publication.
c. Summary of Obviousness Challenge
For this ground, Petitioner relies upon Fuji Guide for the teachings of
the first and second program codes for all the independent claims of the ’969

22 The differences in the documents give rise to concerns that the software
user guide was subject to modifications.
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patent. Pet. 26. In Petitioner’s obviousness challenge to claim 26, the only
claim challenged in the obviousness ground that was not included in the
anticipation challenge, Petitioner relies upon Iida’s disclosure of the use of
the FinePix6800Z product as the camera, and the use of the USB connection
between the camera and the terminal in Fuji Guide. Id. at 63–64.
Because we find that Petitioner has not shown that Fuji Guide is a
prior art publication, and Petitioner relies on Fuji Guide in combination with
Iida for all the claims challenged under this ground, we determine that
Petitioner has not demonstrated by a preponderance of the evidence that
claims 1–8, 10–16, 19–21, and 24–29 would have been obvious over Iida
and Fuji Guide.
Because we determine that Petitioner has not demonstrated
obviousness, we need not determine whether Patent Owner’s evidence of
objective indicia of nonobviousness weighs even further against a
conclusion of obviousness. See Hamilton Beach Brands, Inc. v. f’real
Foods, LLC, 908 F.3d 1328, 1343 (Fed. Cir. 2018) (holding, in affirming
Board decision determining that petitioner had not shown unpatentability,
that “objective indicia of nonobviousness” “need not [be] addressed”
because the court “affirmed the Board’s findings regarding the failure of the
prior art to teach or suggest all [claim] limitations”); Palo Alto Networks,
Inc. v. Finjan, Inc., 748 F. App’x 317, 324 (Fed. Cir. 2018) (non-
precedential) (affirming Board decision holding that petitioner failed to
establish unpatentability due to a lack of disclosure of a claim limitation,
without reaching secondary considerations, and holding that “it was not
necessary for the Board to consider” expert testimony “limited to the issue
of secondary considerations”).
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F. Alleged Obviousness of Claim 4 over Iida and Shaffer,
with or without Fuji Guide
Petitioner contends that claim 4 would have been obvious over the
combination of Iida and Shaffer or over the combination of Iida, Fuji Guide,
and Shaffer. Pet. 64–68.
Having found challenged claim 4 of the ’969 patent unpatentable as
anticipated by Iida, we decline to address Petitioner’s additional challenge
based on obviousness. See Boston Sci. Scimed, Inc. v. Cook Grp. Inc., Nos.
2019-1594, 2019-1604, 2019-1605, 2020 WL 2071962, *4 (Fed. Cir. Apr.
30, 2020); see also Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed.
Cir. 1984) (holding that once a dispositive issue is decided, there is no need
to decide other issues).
III. PETITIONER’S MOTION TO EXCLUDE
Petitioner moves to exclude Exhibit 2114 because it is not
authenticated or relevant and is hearsay. Pet. Mot. Exclude. We do not rely
on Exhibit 2114 because it is only relevant to objective indicia of
nonobviousness, which we do not address. Accordingly, we need not decide
the motion, and we dismiss Petitioner’s Motion to Exclude Exhibit 2114 as
moot.
IV. PATENT OWNER’S MOTION TO EXCLUDE
Patent Owner moves to exclude Exhibits 1004, 1005, 1012, 1020,
1034, 1037, 1043,1044, and 1045. See PO Mot. Exclude. We address the
issues related to the exhibits, or groups of exhibits, in turn.
Patent Owner moves to exclude the Fuji Guide (Ex. 1004) and
documents related to the printed publication status of the Fuji Guide, that is,
the Widener Declaration (Ex. 1005); the Internet version of the Fuji Guide
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(Ex. 1012); Fuji’s 2001 Annual Report (Ex. 1043); the Declaration of Mr.
Steven W. Ramsdell (Ex. 1044); and Exhibit 1045, and a document
purported to be a comparison of Exhibits 1004 and 1012. PO Mot. Exclude
1–12. We have addressed the printed publication status of the Fuji Guide
and because Patent Owner’s arguments in the motion are substantially
duplicative to those addressed in Section II.E.2.b.iii, we dismiss the motion
for the exclusion of Exhibit 1004. Further, because Petitioner’s Exhibits
1005, 1012, 1043, 1044, and 1045 are offered solely on the issue of the
printed publication status of the Fuji Guide, and we find for Patent Owner on
that issue, notwithstanding our consideration of these exhibits, we dismiss
the motion for the exclusion of these exhibits.
Patent Owner moves to exclude Exhibit 1037, a Reply to Preliminary
Response in related case IPR2019-00416, because it is not relevant, it is
more prejudicial than probative, and it violates the rule against incorporation
by reference. PO Mot. Exclude 8. Petitioner does not rely on Exhibit 1037
anywhere in the record and we do not rely on the exhibit in making our
ultimate determination on the patentability of the challenged claims.
Accordingly, we need not decide Patent Owner’s motion on the exclusion of
this exhibit, and we dismiss as moot the motion for the exclusion of this
exhibit.
Patent Owner moves to exclude Exhibit 1020 as inadmissible hearsay
and as being more prejudicial than probative. PO Mot. Exclude 6–7. Patent
Owner also moves to exclude Exhibit 1034 as inadmissible hearsay. Id.
Patent Owner does not contest Mr. Geier’s testimony related to Exhibit
1020. PO Reply Mot. Exclude 3–4. We do not rely on Exhibits 1020 or
1034 in making our ultimate determination on the patentability of the
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challenged claims. Thus, we need not decide Patent Owners’ motion and we
dismiss as moot Patent Owner’s motion for the exclusion of these exhibits.
Accordingly, we dismiss Patent Owner’s Motion to Exclude Exhibits
1004, 1005, 1012, 1020, 1034, 1037, 1043, 1044, and 1045.
V. PETITIONER’S MOTION FOR
ENTRY OF DEPOSITION EXHIBITS INTO THE RECORD
Petitioner moves for entry of a photograph of a receipt, and two
screenshots of the metadata associated with that photograph, into the record.
See Pet. Mot. Entry. The photograph was allegedly of a receipt that was
allegedly taken by a purchased camera which was discussed at the
deposition of Mr. Widener, which was taken on November 6, 2019. See Ex.
2126, 40:8–22. Petitioner argues that the exhibits present proper rebuttal
evidence and should be admitted under the Board’s discretionary powers.
Pet. Mot. Entry 1, 3. Petitioner asserts that Patent Owner has had a fair
opportunity to respond to the exhibits and Petitioner’s related arguments in
Patent Owner’s Sur-reply and at the oral hearing. Id. at 3–4. Petitioner
argues that admitting the exhibits would be in the interests of justice because
Petitioner was not aware of the existence of the exhibits until a couple of
weeks prior to Mr. Widener’s deposition, and the exhibits are relevant
because they corroborate the prior art status of the Fuji Guide. Id. at 4–5.
Petitioner asserts that the exhibits are not supplemental evidence. Id. at 4.
Patent Owner opposes the motion, arguing that the exhibits are
supplemental information under 37 C.F.R. § 42.123(b), and Petitioner does
not explain why they are not so. PO Opp. Mot. Entry 1–2. Patent Owner
contends that although Petitioner states that the exhibits were properly
presented in Petitioner’s Reply as rebuttal evidence (citing Pet. Mot. Entry
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3), the exhibits were not presented with Petitioner’s Reply. Id. at 2. Patent
Owner asserts that because the exhibits are untimely and entry would not be
in the interests of justice, the motion fails to meet the elements of Rule
42.123(b). Id. at 2–4. Patent Owner alleges that Petitioner produced the
exhibits to it on the night before the Widener deposition, while counsel was
travelling, and Patent Owner lodged objections to the exhibits at the
deposition. Id. at 3–4.
Although we considered the substance of the import alleged for the
photograph argued in Petitioner’s Reply based on the Widener deposition
testimony, that is, that the camera that the subject of Mr. Widener’s
Declaration had been bought and was in possession by a certain date (see
supra Section E.2.b.iii), we nevertheless deny Petitioner’s motion for entry
of the documents. We agree with Patent Owner that these exhibits are
supplemental information because they were not filed with the Widener
Declaration nor with Petitioner’s Reply as rebuttal evidence. And although
Petitioner requests that the exhibits be admitted in the interests of justice
because Petitioner was not aware of the existence of the exhibits until a
couple of weeks prior to Mr. Widener’s deposition, Petitioner provides no
explanation for why the exhibits were then produced to Patent Owner only
on the night before the deposition. See Pet. Mot. Entry 2, 4; Ex. 2126, 40:2–
9, 56:13–21, 56:24–57:12. There is also no explanation for Petitioner’s
delay in seeking entry of these documents once Petitioner became aware of
their existence.
Accordingly, we deny Petitioner’s Motion under Rule 42.123(b)
because filing of the exhibits would be untimely and would not be in the
interest of justice.
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VI. CONSTITUTIONAL CHALLENGES
Patent Owner raises two constitutional challenges. First, Patent
Owner argues that the Board cannot decide this case because “APJs are
principal officers under the Appointments Clause” but “are not appointed by
the President and confirmed by the Senate,” and the Federal Circuit’s
remedy in Arthrex is “inadequate to cure the Constitutional violation.” PO
Resp. 61–62 (citing Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320
(Fed. Cir. 2019)). Second, Patent Owner argues that retroactive application
of inter partes reviews to pre-AIA patents, such as the ’969 Patent, violates
the Takings and Due Process Clauses of the Fifth Amendment, asserting
“IPRs are more akin to civil litigation than prior PTO proceedings,” like
reexamination, “[y]et an IPR does not give the patentee the same rights as
civil litigation” because of the lower burden of proof in IPRs as compared
with civil litigation. Id. at 62–63.
With regard to the Appointments Clause challenge, the issue has been
addressed by the Federal Circuit’s decision in Arthrex, 941 F.3d at 1337
(“This as-applied severance . . . cures the constitutional violation.”); see also
Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir. 2020)
(Moore, J., concurring in denial of rehearing) (“Because the APJs were
constitutionally appointed as of the implementation of the severance, inter
partes review decisions going forward were no longer rendered by
unconstitutional panels.”). Accordingly, we do not consider this issue any
further.
With regard to the Takings and Due Process Clause challenge, we
note that challenges to retroactive application of IPRs to pre-AIA patents
have been addressed by the Federal Circuit in Celgene Corp. v. Peter,
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931 F.3d 1342, 1357–1363 (Fed. Cir. 2019), cert. denied 2020 WL 3405867
(June 22, 2020) (Takings Clause) and Sound View Innovations, LLC v. Hulu,
LLC, Nos. 2019-1865, 2019-1867, 2020 WL 3583556, *3 (Fed. Cir. July 2,
2020) (non-precedential) (Due Process Clause). Accordingly, we do not
consider this issue any further.
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VII. CONCLUSION23
In summary:

23 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).
24 As explained above, because we determined the challenged claim
anticipated by Iida, we decline to address this ground.
25 As explained above, because we determined the challenged claim
anticipated by Iida, we decline to address this ground.
Claims 35 U.S.C. § References
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–8, 10–16,
19–21, 24, 25,
27–29
102 Iida 1, 2, 4–8, 13–
16, 19–21, 24,
25, 27–29
3, 10–12
1–8, 10–16,
19–21, 24–29
103 Iida, Fuji
Guide
1–8, 10–16,
19–21, 24–29
4 10324 Iida, Shaffer
4 10325 Iida, Fuji
Guide,
Shaffer

Overall
Outcome
1, 2, 4–8, 13–
16, 19–21, 24,
25, 27–29
3, 10–12, 26
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VIII. ORDER
For the reasons given, it is:
ORDERED that Petitioner has shown by a preponderance of the
evidence that claims 1, 2, 4–8, 13–16, 19–21, 24, 25, and 27–29 of U.S.
Patent 9,059,969 B2 are unpatentable;
FURTHER ORDERED that Petitioner has not shown by a
preponderance of the evidence that claims 3, 10–12, and 26 of U.S. Patent
9,059,969 B2 are unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude is
dismissed;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed;
FURTHER ORDERED that Petitioner’s Motion for Entry of
Deposition Exhibits is denied; and
FURTHER ORDERED because this is a final written decision, the
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.

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FOR PETITIONER:

Robert M. Asher
Timothy M. Murphy
Kerry L. Timbers
Lawrence M. Green
Sharona H. Sternberg
Lena M. Cavallo
SUNSTEIN KANN MURPHY AND TIMBERS
rasher@sunsteinlaw.com
tmurphy@sunsteinlaw.com
ktimbers@sunsteinlaw.com
lgreen@sunsteinlaw.com
ssternberg@sunsteinlaw.com
lcavallo@sunsteinlaw.com

FOR PATENT OWNER:

Michael A. Fisher
Derek J. Brader
Robert W. Ashbrook Jr.
Noah M. Leibowitz
Gregory T. Chuebon
Jacob R. Porter
DECHERT LLP
michael.fisher@dechert.com
derek.brader@dechert.com
robert.ashbrook@dechert.com
noah.leibowitz@dechert.com
greg.chuebon@dechert.com
jacob.porter@dechert.com