Motorola Mobility LLCv.Intellectual Ventures I LLC

Patent Trial and Appeal Board

Sep 9, 2015

08417140 (P.T.A.B. Sep. 9, 2015)

Trials@uspto.gov Paper 55
571-272-7822 Entered: September 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MOTOROLA MOBILITY LLC,
Petitioner,

v.

INTELLECTUAL VENTURES I LLC,
Patent Owner.
____________

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Patent 5,790,793
____________

Before MICHAEL W. KIM, PATRICK R. SCANLON, and
KRISTINA M. KALAN, Administrative Patent Judges.

KALAN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
Motorola Mobility LLC (“Petitioner”) filed a Petition (“Pet.”) to
institute an inter partes review of claims 1, 4–6, 8, 10, 13–15, 17, 21, 24–26,
28, 30, 33–35, 37, 39, and 40 of U.S. Patent No. 5,790,793 (“the ’793
patent”) pursuant to 35 U.S.C. § 311–319. Paper 4. Intellectual Ventures I
LLC (“Patent Owner”) filed a Preliminary Response (“Prelim. Resp.”).
Paper 7. We instituted trial on all challenged claims. Paper 12 (“Dec.”).
During trial, Patent Owner filed a Patent Owner Response (Paper 21,
“PO Resp.”), which was accompanied by a Declaration from Mark T. Jones,
Ph.D. Ex. 2013. Petitioner filed a Reply to the Patent Owner Response.
Paper 28 (“Pet. Reply”). A hearing for this proceeding was held on May 5,
2015. A transcript of the hearing has been entered into the record. Paper 47
(“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
We determine that Petitioner has shown by a preponderance of the evidence
that claims 1, 4–6, 8, 10, 13–15, 17, 21, 24–26, 28, 30, 33–35, 37, 39, and 40
of the ’793 patent are unpatentable. Patent Owner’s Motion to Exclude
(Paper 35) is dismissed-in-part and denied-in-part.
A. Related Proceedings
Petitioner represents that the ’793 patent has been asserted against it
by Intellectual Ventures I LLC and Intellectual Ventures II LLC in
Intellectual Ventures I LLC v. Motorola Mobility LLC, No. 0:13-cv-61358-
RSR (S.D. Fla.) (“the district court case”). Pet. 1–2; Ex. 1013.

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B. The ’793 Patent
The ’793 patent relates to “a method and system for sending and
receiving Uniform Resource Locators (URLs) in electronic mail over the
Internet.” Ex. 1001, Abstract. Figure 4 of the ’793 patent is reproduced
below.

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Figure 4 illustrates a flow chart which contains an exemplary process of
the ’793 patent. Id. at 5:1–2.
C. Illustrative Claims
Of the challenged claims, claims 1, 10, 21, 30, and 39 are
independent. Claim 1 is illustrative of the claims at issue:
1. A method of communicating between computers, comprising
the steps of:
creating a message at a first computer, said message including a
reference to a predetermined location;
transmitting, by the first computer, said message to a second
location; and
receiving said message by a computer at the second location;
decoding said message by the computer at the second location
by retrieving data from the predetermined location,
automatically by a single application, without requiring user
interaction, into the computer at the second location.
Ex. 1001, 9:3–15.
D. Prior Art Supporting Instituted Unpatentability Grounds
Payne U.S. 5,715,314 Feb. 3, 1998 (Ex. 1007)

Steve Putz, Interactive Information Services Using World-Wide Web
Hypertext, Xerox Palo Alto Research Center (April 20, 1994) (Ex. 1011).

Steve Putz, Interactive Information Services Using World-Wide Web
Hypertext, Computer Networks and ISDN Systems 27 (1994) 273–280
(Ex. 1012).1

1 Petitioner represents that Putz (Ex. 1011) was reprinted at a later date, and
submits the reprint as Ex. 1012. Pet. 4. Petitioner also represents that “these
references [Ex. 1011 and Ex. 1012] have the same disclosure, in different
formats.” Id. at 29. In our discussion of Putz, we refer to Exhibit 1011.
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E. Instituted Unpatentability Grounds
We instituted an inter partes review of claims 1, 4–6, 8, 10, 13–15,
17, 21, 24–26, 28, 30, 33–35, 37, 39, and 40 of the ’793 patent on the
following grounds. Dec. 24.
Reference(s) Basis Claims Challenged
Payne § 102(e) 1, 4–6, 8, 10, 13–15, 17, 21, 24–26,
28, 30, 33–35, 37, 39, 40
Putz § 102(a) 1, 4–6, 8, 10, 13–15, 17, 21, 24–26,
28, 30, 33–35, 37, 39, 40

II. ANALYSIS
A. Claim Construction
The Board interprets claims in an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793
F.3d 1268, 1277–79 (Fed. Cir. 2015), reh’g en banc denied, 2015 WL
4100060 (Fed. Cir. July 8, 2015); see also Office Patent Trial Practice
Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). Under that
construction, claim terms are given their ordinary and customary meaning,
as would be understood by one of ordinary skill in the art in the context of
the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
Both parties present their claim construction arguments under the
broadest reasonable interpretation standard. PO Resp. 6; Pet. Reply 1.
Although neither party has noted the expiration date of the ’793 patent, it
appears that the ’793 patent expired on August 4, 2015. We construe
expired patent claims according to the standard applied by the district courts.
See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). Specifically, we
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apply the principles set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005).
Claim terms generally are given their ordinary and customary
meaning, unless it appears from the specification or the file history that they
were used differently by the inventor, in a clear, deliberate, and precise
manner. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Prosecution
history disclaimers, like lexicographic meanings, must be clear and
unambiguous: “[W]hile the prosecution history can inform whether the
inventor limited the claim scope in the course of prosecution, it often
produces ambiguities created by ongoing negotiations between the inventor
and the PTO. Therefore, the doctrine of prosecution disclaimer only applies
to unambiguous disavowals.” Grober v. Mako Prods., Inc., 686 F.3d 1335,
1341 (Fed. Cir. 2012) (citing Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282,
1289 (Fed. Cir. 2009)). Disavowal must be “unmistakable” and
“unambiguous.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir.
2013).
In its Response, Patent Owner proposes that the term “by the first
computer” in claims 1 and 21 be construed as “at the discretion of the first
computer.” PO Resp. 8. Patent Owner proposes similar constructions for
the term “by a computer at the first location” in claims 10 and 30 (“at the
discretion of the computer at the first location”) and the term “computer for
transmitting” in claim 39 (“computer for transmitting at its own discretion”).
Id. Patent Owner argues that the Specification “distinguishes prior-art pull
communications from inventive push communications,” and that the proper
interpretation of the foregoing terms, therefore, “should reflect the nature of
the inventive push communications” described in the Specification. Id. at 7–
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8 (citing Ex. 2013 ¶¶ 26, 28). Patent Owner argues further that the
prosecution history supports its construction, because there is a clear and
unmistakable disavowal of anything related to “pull” communications. Id.
at 6–7.
Petitioner argues that “no evidence supports giving ‘by’ anything but
its plain and ordinary meaning.” Pet. Reply 4; Tr. 8:8–9. Petitioner further
argues that the Specification’s only disclosed embodiment, POP3, is a “pull”
system rather than a “push” system, which contravenes Patent Owner’s
argument that the Specification only describes “push” functions in
conjunction with the claimed invention. Pet. Reply 4–5. Concerning
disavowal, Petitioner responds that disavowal must be clear and
unmistakable, and there is no disavowal where an applicant’s statements are
amenable to multiple reasonable interpretations. Reply 2–3; Tr. 12:10–17.
Petitioner argues that the alleged disavowal was unrelated to the “by,” in that
the amendment in the prosecution history was to the decoding step (rather
than the transmitting step). Tr. 59:10–15. Petitioner further argues that
Patent Owner’s uncertainty as to why the Examiner used the word
“discretion” is “anything but clear disavowal.” Id. at 59:16–60:4.
We are unpersuaded that the “by” terms identified by Patent Owner
should be accorded anything other than their ordinary and customary
meaning, which in the context of the relevant claim limitations, is a
computer’s performance of a given action. Regarding Patent Owner’s
arguments concerning the Specification, Patent Owner concedes that the
term “discretion” appears neither in the claims nor in the Specification. Tr.
43:22–25. Instead, Patent Owner would have us infer “discretion” based on
an allegedly clear and unmistakable disavowal of “pull” communications in
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the Specification. As an initial matter, we are unpersuaded that there is a
sufficiently definitive relationship between “pull” communications and
“discretion” to infer that a disavowal of “pull” communications requires the
inclusion of the term “discretion” in a proper construction of “by.”
Moreover, we are unpersuaded that disclosure of exemplary “pull”
communications in the Background section and use of “push”
communications in a non-limiting embodiment of the Specification, without
more, constitutes a clear and unmistakable disavowal of “pull”
communications, especially where the referenced embodiment in the
Specification actually may refer to “pull” communications.
Moreover, we do not find sufficient evidentiary support for Patent
Owner’s assertion that a proper interpretation of the “by” terms “should
reflect the nature of the inventive push communications described in the
specification.” PO Resp. 8. Although Patent Owner’s expert opines that
Patent Owner’s proposed construction “properly reflect[s] the applicant’s
and the Office’s mutual understanding” (Ex. 2013 ¶ 28), he further testifies
that in his experience he does not recall using (or not using) or hearing
someone else using the term “discretion” to describe what a computer does.
Ex. 1032, 43:12–22. Petitioner’s expert, conversely, opines that the
“concept of a computer transmitting at its own discretion, or creating a
message at its own discretion have no meaning in or currency in computer
engineering.” Ex. 1030 ¶ 17. We credit Petitioner’s expert that a person of
ordinary skill in the art would understand “by” to describe, generally, a
computer’s performance of an action. Pet. Reply 1–2 (citing Ex. 1030 ¶ 16).
To be sure, the word “discretion” does appear in the prosecution
history. Patent Owner, however, points to no persuasive evidence in the
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prosecution history or elsewhere supporting its assertion that the “by” terms
identified above should be limited to actions taken at the relevant computer’s
“discretion.” Patent Owner characterizes the word “discretion” as being
“used by the examiner to restate his . . . understanding of the push concept.”
Tr. 46:13–14. We have no further insight on this record, however, into the
Examiner’s reasoning or what the Examiner meant by using the word
“discretion.” Moreover, because Patent Owner did not respond to the
Examiner’s “discretion” comment during prosecution, the connection
between the proposed “by” construction, the push concept, and the use of the
word “discretion” is tenuous at best, and certainly not clear and
unmistakable, as required for any determination of disavowal.
The term “by” occurs throughout independent claims 1, 10, 21, and
30, referring to actions not only by the first computer, but also by the second
computer or by a single application. In each case the term “by” indicates a
computer or application simply performing the action indicated, whether it
be transmitting a message, receiving a message, or decoding a message.
Tr. 10:21–22. Patent Owner has proffered a push/pull explanation as to why
the term “by” should be construed as Patent Owner proposes, but has not
explained persuasively why we should treat “by” as it relates to actions by
the first computer any differently than “by” as it is used elsewhere in the
claims. Thus, we determine that the “by” terms identified by Patent Owner
do not require “discretion,” and instead indicate a computer’s performance
of a given action without further limitation. We note that we would reach
this conclusion under both the broadest reasonable interpretation standard
and the standard applied by the district courts.
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In the Decision to Institute, we determined that the term “displaying
the message and the data from the predetermined location” did not require
express construction. Dec. 12–13. Regarding the “means” terms, Petitioner
in its Petition proposed that the several terms containing “means” in claims
21 and 28 qualify as terms under 36 U.S.C. § 112, sixth paragraph.2 Pet. 6–
7. We determined that the various “means” terms of claim 21 and 28 were
means-plus-function elements under § 112, ¶ 6, and adopted Petitioner’s
construction of the terms “means for creating,” “means for transmitting,”
“means for receiving,” and “means . . . for decoding,” and Patent Owner’s
construction of “means for displaying.” Dec. 12. Neither party now
proposes a different construction of these terms. We note that, in the
Petition and Preliminary Response, the parties represented that the “means”
terms constructions proposed to the Board were also proposed and agreed
upon in the district court case. Pet. 6; Prelim. Resp. 6–7. We have reviewed
our analysis in the Decision to Institute, and have determined, on the record
presently before us, that application of the district court standard does not
change our construction of the various terms reciting “means” set forth in
the Decision to Institute. Dec. 9–12. Based on the complete record now
before us, we see no reason to alter our earlier constructions, and maintain
these constructions for this Final Written Decision.

2 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 11229,
125 Stat. 284 (2011) (“AIA”) re-designated 35 U.S.C. § 112, ¶ 6, as
35 U.S.C. § 112(f). Because the ’793 patent has a filing date prior to
September 16, 2012, the effective date of § 4(c) of the AIA, we refer to the
pre-AIA version of 35 U.S.C. § 112.
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B. Alleged Anticipation of Claims 1, 4–6, 8, 10, 13-15, 17, 21, 24–26, 28, 30,
33–35, 37,39, and 40 Under 35 U.S.C. § 102(e), Based on Payne
We have reviewed the Petition, the Patent Owner Response, and
Petitioner’s Reply, as well as the relevant evidence discussed in those
papers. Petitioner asserts that claims 1, 4–6, 8, 10, 13–15, 17, 21, 24–26, 28,
30, 33–35, 37, 39, and 40 are unpatentable under 35 U.S.C. § 102(e) as
anticipated by Payne. Pet. 13–28. Petitioner refers to Ex. 1014 (Declaration
of Peter Alexander, Ph.D.) to support its anticipation arguments. Id.
Payne discloses a network-based sales system including at least one
buyer computer for operation by a user desiring to buy a product, at least one
merchant computer, and at least one payment computer. Ex. 1007, Abstract.
Figure 1 of Payne is reproduced below:

Figure 1 shows a block diagram of a network sales system. Id. at
3:59–60.
(i) Independent Claims 1 and 10
Petitioner argues that Payne discloses a method for communicating
between computers, as recited in claim 1, including two embodiments of
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creating a message at a first computer, said message including a reference to
a predetermined location, and transmitting, by the first computer, said
message to a second location. Pet. 15 (citing Ex. 1007, 4:35–45). Petitioner
argues that in the first embodiment, the first computer is the payment
computer, the message includes an access URL, and the payment computer
sends a message to the buyer computer. Petitioner argues that in the second
embodiment, the first computer is the merchant computer, the message
includes payment URL A, and the merchant computer sends a message to
the buyer computer. Id. at 16–20.
Petitioner further argues that Payne discloses two embodiments of
receiving said message by a computer at the second location and decoding
said message by the computer at the second location, as recited in claim 1.
Petitioner argues that in the first embodiment, the buyer computer receives
the message sent by the payment computer, automatically decodes the URL,
and retrieves a “fulfillment document.” Pet. 20–22. Petitioner argues that in
the second embodiment, the buyer computer receives the message sent by
the merchant computer, automatically decodes the URL, and retrieves a
“confirmation document.” Id. Petitioner argues that Payne discloses
decoding of URLs to retrieve data from a predetermined location, in that the
URLs are transmitted in standard HTTP requests and in HTTP redirect
responses, and Payne uses standard HTTP protocol methodology for
redirecting an HTTP request automatically to a different URL. Pet. 13–14
(citing Ex. 1014 ¶¶ 64–67).
Petitioner argues that independent claim 10 and its dependent claims
have essentially the same limitations as claim 1 and its dependent claims and
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that, therefore, “Payne anticipates these claims in the same manner as
described in the charts for claims 1, 4, 5, 6, and 8 above.” Pet. 26.
Patent Owner, in its Response, argues generally that Payne does not
anticipate the aforementioned claims under either the first embodiment or
“primary embodiment” theory, or the second embodiment or “alternate
embodiment” theory. PO Resp. 17, 34. Patent Owner argues that “[t]he
alternate embodiment theory is a mere variation of the pull communications
of the primary embodiment theory.” Id. at 34.
Concerning the transmitting step, Patent Owner argues that the HTTP
message in the first embodiment of Payne is not transmitted or “pushed” by
the payment computer at the payment computer’s discretion, relying on
Patent Owner’s proffered construction of the term “by a first computer,”
which requires that the first computer “push” a message to the second
location. Id. at 19. Patent Owner argues similarly that the HTTP message in
the second embodiment is not transmitted at the merchant computer’s
discretion. Id. at 34. Patent Owner notes that Petitioner’s expert doesn’t
remember Payne “having anything that one of ordinary skill in the art would
understand to be a push system.” Ex. 2019, 64:8–16; Tr. 48:6–8.
Petitioner responds that “Patent Owner’s sole argument that this
[transmitting] limitation is not disclosed relies on its proposed claim
construction for ‘by,’ which as explained above, is incorrect.” Pet. Reply 6.
We have not adopted Patent Owner’s construction of the term “by,” as
discussed supra. Thus, there is no requirement that the transmitting action
be taken at the “discretion” of the first computer. Independent claims 1 and
10 require only that the action of transmitting the first message be done by
the first computer. The payment computer of Payne in the first embodiment
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sends the first message. Ex. 1007, 7:31–39 (“The payment computer then
sends a redirect to access URL to the buyer computer (step 90), which sends
the access URL to the merchant computer (step 92).”); Pet. 19–20, 26. The
merchant computer of Payne in the second embodiment sends the first
message. Ex. 1007, 5:48–53 (“merchant computer provides payment VRL
A to the buyer computer in response to the purchase product message.”);
Pet. 20; 26. Therefore, we determine that the transmitting limitation is
anticipated by Payne.
With respect to the decoding step in the first embodiment and in the
second embodiment, Patent Owner argues that the buyer computer does not
“decode” the HTTP message automatically, without requiring user
interaction. PO Resp. 19, 35. Patent Owner takes the position that the user
at the buyer computer controls the purchase process and repeatedly requests
action by the merchant computer (in the first embodiment) or requests action
by the payment computer (in the second embodiment). PO Resp. 21, 37.
Although Patent Owner agrees that Payne sends a redirect, Patent Owner
argues that Petitioner’s reliance on extrinsic evidence to show how a redirect
works is flawed, in that the extrinsic evidence (RFC 1945 (Ex. 1019)) does
not antedate the critical date. Id. at 21–22, 38. Patent Owner also argues
that Payne does not disclose that the redirect operation is automatic, because
some embodiments of Payne require user interaction, which purportedly
defeats Petitioner’s inherency argument. Tr. 50:9–51:12.
Petitioner disputes Patent Owner’s contention that Payne requires user
interaction for the buyer computer to perform the decoding step, either in the
primary embodiment or in the alternate embodiment. Pet. Reply 6–7.
Petitioner asserts that any user interaction steps occur before or after the
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steps recited in the claim, and therefore that Patent Owner’s contentions are
irrelevant. Id. at 7. Petitioner also argues that Payne discloses “automatic
(without user interaction) redirection of a web browser based on a standard
HTTP request message that includes a URL (such as the access URL).” Id.
With respect to the decoding step in the first embodiment, we find that
the buyer computer of Payne decodes the message without user interaction,
sending the access URL to the merchant computer to retrieve the fulfillment
document. Ex. 1007, 7:46–50 (“the merchant computer verifies that the
buyer computer network address is the same as the buyer network address in
the access URL (step 101), and if so, sends a fulfillment document to the
buyer computer (step 102), which is displayed by the buyer computer (step
104)”), Figs. 2H, 10. With respect to the decoding step in the second
embodiment, we find that the buyer computer sends the payment URL to the
payment computer to automatically retrieve the confirmation document. Id.
at 5:53–60 (“buyer computer then sends the payment URL A it has received
from the merchant computer to the payment computer.”), id. at 6:5–14
(“payment computer sends a payment confirmation document to the buyer
computer,”), Fig. 6 (showing an example of the confirmation document), id.
at 4:7–9.
We are persuaded by Petitioner’s arguments and evidence, supported
by Dr. Alexander’s testimony, that the redirection of a web browser based
on a standard HTTP request message including a URL disclosed in Payne is
automatic. Tr. 28:2–9. In discussing HTTP protocol methodology as it
relates to Payne, Dr. Alexander states that the “HTTP protocol is described
in various Internet RFCs.” Ex. 1014 ¶¶ 65–66. As an example, he relies on,
and cites in a footnote, a March 1995 publication describing the HTTP
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protocol, to establish the knowledge of one of ordinary skill in the art at the
time of the invention. Id. at ¶66; Pet. 14. Patent Owner objects to Dr.
Alexander’s reliance on the March 1995 publication, on the ground that the
first page of Exhibit 1019, a later version of the March 1995 publication
submitted by Petitioner with its Petition, shows a date of May 1996. PO
Resp. 21–22, 38. Patent Owner’s objection, however, does not account
properly for the express reliance by Dr. Alexander on the March 1995
publication referenced in his declaration. Ex. 1014 ¶ 66 n.4. We can accord
appropriate weight to an expert’s testimony, taking into account the expert’s
understanding of the level of skill in the art at the time of the invention, and
the later submission of the March 1995 publication as Exhibit 1036. See,
e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the
Board has discretion to give more weight to one item of evidence over
another “unless no reasonable trier of fact could have done so”); In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board
is entitled to weigh the declarations and conclude that the lack of factual
corroboration warrants discounting the opinions expressed in the
declarations.”). Moreover, given the “comprising” construction of claims 1
and 10, the method may include additional steps before and after the
disputed steps, but whether those additional steps require user interaction
does not change our analysis of the steps at issue in claims 1 and 10. See
Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir.
2003).
On this record, we are persuaded by Petitioner’s arguments that
Payne, by a preponderance of the evidence, anticipates claims 1 and 10 of
the ’793 patent.
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(ii) Independent Claims 21 and 30
Independent Claims 21 and 30 are means-plus-function claims.
Petitioner argues that independent claims 21 and 30 and their respective
disputed dependent claims “have essentially the same limitations as Claims
1, 4, 5, 6, and 8” and that, therefore “Payne anticipates these claims in the
same manner as described in the charts for claims 1, 4, 5, 6, and 8 above.”
Pet. 25 (citation and footnote omitted).
Patent Owner argues that the Petition “suffers from a complete failure
of proof for claims 21 and 30” in that (a) Payne does not disclose the
transmitting means of claim 21 or the corresponding structure, and that the
payment/merchant computer sends the HTTP message to the buyer computer
directly, not via a server; (b) the HTTP message with the access URL in
claims 21 and 30 is not created or transmitted at the payment/merchant
computer’s discretion (relying on its earlier claim construction arguments);
and (c) Payne does not disclose the decoding means of claims 21 and 30,
because the Petition does not explain how Payne discloses the corresponding
structure of the decoding means. PO Resp. 22–29 (first embodiment), 38–43
(second embodiment).
Petitioner identified, and we construed, the transmitting means’
corresponding structure as including Step 404 (TRANSMIT DOCUMENT
VIA ELECTRONIC MAIL OR OTHER SERVER). Pet. 6–7; Dec. 11–12.
Petitioner responds that (a) Payne discloses the transmitting means of claim
21 and its corresponding structure, in that the HTTP message with the access
URL is transmitted via a payment computer (first embodiment) or merchant
computer (second embodiment): “In other words, the ‘payment computer’
(primary) or the ‘merchant computer’ (alternate) is the ‘other server.’” Pet.
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Reply 8–9 (citing Pet. 19–20, 26; Ex. 1007, 5:48–53, 7:31–39, Fig. 2G.).
We are persuaded by Petitioner’s arguments that the structure identified in
the ’793 patent is found in Payne. Use of the term “via” in step 404 does not
require an additional step or structure in the transmission process. See also
Step 406 (RECEIVE DOCUMENT VIA ELECTRONIC MAIL OR OTHER
MEANS). In this case, “via” means that the document can be sent by a
server such as the payment computer or the merchant computer.
Patent Owner’s arguments for its point (b) rely on its proposed
construction of the terms “by the first computer” in claim 21 and “by a
transmitting computer at a first location” in claim 30. We have considered
and discussed the proposed constructions, and for substantially the reasons
given above, are not persuaded by Patent Owner’s arguments on this point.
Petitioner identified, and we construed, the decoding means’
corresponding structure as including Step 408 (WHAT IS THE
DOCUMENT TYPE). Pet. 7; Dec. 11–12. Patent Owner’s argument (c) is
that because Payne’s HTTP message is always the same type of message,
Payne’s computers need not and likely do not determine whether the
message could be another type. PO Resp. 27, 41. Payne states that “in
preferred embodiments the URL is sent in a standard HTTP request
message,” and also allows that a URL message may be specified as a
redirection. Ex. 1007, 9:51–54. Petitioner responds that the examination of
redirect commands is an examination of the document type. Pet. Reply 9.
Petitioner further argues that Payne’s access URL could be one of many
other messages capable of being sent via standard HTTP protocol. Id. at 9–
10. We are not persuaded by Patent Owner’s speculation that Payne’s
computers “need not and likely do not” determine the document type. PO
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Resp. 27, 41. In determining whether the message is one type or another, we
find that the decoding means would need to examine the document type.
On this record, we are persuaded by Petitioner’s arguments that
Payne, by a preponderance of the evidence, anticipates claims 21 and 30 of
the ’793 patent.
(iii) Independent Claim 39
Patent Owner refers to and relies on its earlier arguments for claims
21 and 30 to argue that claim 39 is not anticipated, because (a) the HTTP
message with the access URL is not transmitted at the payment/merchant
computer’s discretion, (b) Payne does not disclose examining a type of the
message, and (c) Payne does not disclose the transmitting means. PO Resp.
29–30, 43–44.
For the same reasons given above, we are not persuaded by Patent
Owner’s arguments. On this record, we are persuaded that Petitioner has
demonstrated by a preponderance of the evidence that Payne discloses the
limitations of claims 39.
(iv) Dependent Claims 5, 14, 25, and 34
Patent Owner argues that claims 5, 14, 25, and 34 are not anticipated
by Payne, because Payne does not automatically retrieve data “without the
user requesting the retrieval of the data corresponding to the URL.” PO
Resp. 30, 44. Specifically, Patent Owner argues that Payne’s user at the
buyer computer explicitly requests the retrieval of the fulfillment document
associated with the access URL, at least twice, and retrieval of the
confirmation document. Id. Petitioner responds that Patent Owner’s
argument “focuses only on irrelevant steps that occur before or after the
steps recited in the claims.” Reply 10. We are persuaded by Petitioner’s
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earlier arguments that the computer automatically takes the steps required by
claims 5, 14, 25, and 34, without user interaction. Moreover, given the
“comprising” construction of claims 5, 14, 25, and 34, the method may
include additional steps before and after the disputed steps, but whether
those additional steps require user interaction does not change our analysis
of the steps at issue.
On this record, we are persuaded by Petitioner’s arguments that
Payne, by a preponderance of the evidence, anticipates claims 5, 14, 25, and
34 of the ’793 patent.
(v) Dependent Claims 8, 17, 28, and 37
Patent Owner argues that claims 8, 17, 28, and 37, which recite
additional limitations for “display,” are not anticipated by Payne, because
Payne does not display any part of the HTTP message from the payment
computer to the buyer computer (first embodiment) or from the merchant
computer to the buyer computer (second embodiment). PO Resp. 32, 47.
We agree with Petitioner that Payne discloses displaying the message.
Figure 10 of Payne is “a screen snapshot of a fulfillment document that the
merchant computer sends to the buyer computer,” as in Petitioner’s proposed
first embodiment. Ex. 1007, 4:20–21. Figure 6 of Payne is “a screen
snapshot of a confirmation document that the payment computer sends to the
buyer computer,” as in Petitioner’s proposed second embodiment. Id. at
4:7–8. Figures 6 and 10 clearly indicate display of a URL in a field
denominated “Document URL”. Dr. Alexander testifies that “the browser
URL field designated “Document URL” in Figure 10 is the access URL––
representing a message that was sent from the merchant computer to the
buyer computer.” Ex. 1014, 42. He further testifies that in the alternate
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embodiment, the “‘Document URL’ in Fig. 6 is the payment URL.” Id. at
45. We agree with Petitioner that in Figure 10 of Payne, the Document URL
is consistent with the Access URL (the message in the first embodiment),
and in Figure 6 of Payne, the Document URL is consistent with the Payment
URL (the message in the second embodiment). Pet. Reply 10–11.
On this record, we are persuaded by Petitioner’s arguments that
Payne, by a preponderance of the evidence, anticipates claims 8, 17, 28, and
37 of the ’793 patent.
(vi) Appendix E
Patent Owner argues that Exhibit 1008 (“Appendix E”) was not part
of Payne’s application, and is not part of Payne for the purposes of § 102(e).
PO Resp. 9–15. In our Decision to Institute, we stated that our reasons for
instituting rely on portions of Payne’s specification cited by Petitioner, not
on Appendix E. Dec. 17. Here, we find similarly that our reasons for
reaching our determination do not rely on Appendix E. Accordingly, for
purposes of this final decision, we need not reach the merits of Patent
Owner’s arguments regarding Appendix E.
(vii) Conclusion
Based on the information presented, Petitioner has demonstrated by a
preponderance of the evidence that challenged claims 1, 4–6, 8, 10, 13–15,
17, 21, 24–26, 28, 30, 33–35, 37, 39, and 40 are unpatentable as anticipated
by Payne.
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D. Alleged Anticipation of Claims 1, 4–6, 8, 10, 13–15, 17, 21, 24–26,
28, 30, 33–35, 37, 39, and 40 Under 35 U.S.C. § 102(a), Based on Putz
Petitioner asserts that claims 1, 4–6, 8, 10, 13–15, 17, 21, 24–26, 28,
30, 33–35, 37, 39, and 40 are unpatentable under 35 U.S.C. § 102(a) as
anticipated by Putz. Pet. 29–40.
Putz discloses certain interactive World-Wide Web servers that
produce information displays and documents dynamically, rather than just
providing access to static files. Ex. 1011, 1. Putz gives examples such as
the PARC Map Viewer, which uses a geographic database to create and
display maps of any part of the world on demand, and the Digital Tradition
folk music server, which provides access to a large database of song lyrics
and melodies. Id.
The first unnumbered figure of Putz (“Figure 1”) is reproduced below:

Putz’s Figure 1 shows an overview of the system described by Putz. Id. at 2.
(i) Putz as Prior Art
Patent Owner contends that the Petition does not establish that the
Putz references are printed publications that are prior art under § 102(a). PO
Resp. 13–14. Patent Owner argues that its own evidence, i.e., a Section 131
affidavit filed in the subject patent’s original prosecution indicating
conception prior to December 20, 1994, supports a conclusion that Putz is
not prior art. Id. at 14. As we noted in our Decision to Institute, the earliest
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date mentioned in the Section 131 affidavit was November 24, 1994.
Dec. 22–23.
Petitioner responds that Putz is prior art, by virtue of at least its
inclusion in a publication distributed to at least 380 attendees of the First
International Conference on the World-Wide Web which took place on May
25–27, 1994. Pet. Reply 11 (citing Ex. 1028, 2–3). Petitioner also relies on
Putz’s public availability on the First International Conference on World-
Wide Web website by at least mid-June 1994. Id. at 11–12 (citing Ex. 1023,
3–5). Finally, Petitioner relies on the testimony of Steve Putz, stating that
Putz is prior art and qualifies as a printed publication, to support its
argument. Id. at 12 (citing Ex. 1023, Ex. 1028).
Although the ultimate determination of whether a document is a
printed publication is a question of law, it is a question that is closely based
on the underlying facts and circumstances surrounding the disclosure of a
document to members of the public. Suffolk Techs., LLC v. AOL Inc., 752
F.3d 1358, 1364 (Fed. Cir. 2014); SRI Int’l, Inc. v. Internet Sec. Sys., Inc.,
511 F.3d 1186, 1192 (Fed. Cir. 2008); In re Klopfenstein, 380 F.3d 1345,
1350 (Fed. Cir. 2004). Public accessibility is a key question in determining
whether a document is a printed publication and is determined on a case-by-
case basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed
publication, a document “must have been sufficiently accessible to the
public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir.
2009).
“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
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subject matter or art exercising reasonable diligence, can locate it.” SRI
Int’l, 511 F.3d at 1194 (quoting Bruckelmyer v. Ground Heaters, Inc., 445
F.3d 1374, 1378 (Fed. Cir. 2006)).
Putz, on its face, has a date of April 20, 1994. Ex. 1011, 1. Putz also
indicates, in its front-page footer, that the document was “[p]repared for the
First International Conference on World-Wide Web, May 25–27, in Geneva,
Switzerland.” Id. Petitioner states that Putz was “presented at the First
International Conference on the World-Wide Web, held at CERN in Geneva,
Switzerland, in May, 1994.” See http://www94.web.cern.ch/WWW94/
Welcome.html.” Pet. 3–4. Petitioner also cites to a “list of the formal
presentations given at the conference, which references” Putz. Id. at 4
(citing http://www94.web.cern.ch/WWW94/PrelimProcs.html). Petitioner
submitted copies of these cited webpages with the Petition as Exhibit 1006.3
Id.
Exhibit 1006, which on its face denotes that the aforementioned
webpage was accessed on August 30, 2013, indicates that the
abovementioned conference took place on May 25–27, 1994, and that “[t]his
page remains of interest as a report and as pointer to the next ones.”
Ex. 1006, 1. It also states that the “three days in Geneva were attended by
380 participants from all over the world.” Id. The page indicates that the
“proceedings will be published in two forms, and until then, the preliminary
proceedings [linked] are available for inspection.” Id. On the linked
“Preliminary Proceedings” page, which includes links “to the PostScript
files as submitted,” Putz appears as item 38. Id. at 2, 6.

3 Patent Owner objected to Exhibit 1006 (Exhibit 2020, 2), but did not make
it a part of its Motion to Exclude.
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The evidence submitted with the Petition supports that Putz was
delivered orally at the First International Conference on the World-Wide
Web held on May 25–27, 1994. See Mass. Inst. of Tech. v. AB Fortia, 774
F.2d 1104, 1109 (Fed. Cir. 1985) (holding that a paper delivered orally at a
conference attended by 50–500 people, and later distributed to at least six
people, was a printed publication). The “List of PostScript files for the
WWW94 advance proceedings” includes a link to Putz, illustrating that the
linked document was disseminated or otherwise made available to the extent
that persons interested and ordinarily skilled in the subject matter or art
exercising reasonable diligence could locate it.
Mr. Putz’s testimony, which we find credible, confirms that he gave
an oral presentation of the material contained in Exhibit 1011 at the
conference. Ex. 1023 ¶ 8, Ex. 1028 ¶ 4. According to Mr. Putz, he visited
the conference webpage no later than mid-June 1994 and downloaded a copy
of his document; he states that the webpage “currently is in the same
condition, with the same contents, as I remember it being in when I accessed
it.” Ex. 1023 ¶¶ 14–15. See Thompson v. Bank of Am. N.A., 783 F.3d 1022,
1027 & n.9 (5th Cir. 2015) (citing Osborn v. Butler, 712 F. Supp. 2d 1134,
1146–47 (D. Idaho 2010)). Finally, Mr. Putz confirms that all attendees of
the conference were given a copy of “Advance Proceedings,” which
included copies of the articles presented at the conference. Ex. 1028 ¶¶ 5–6.
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Based on the totality of evidence regarding presentation and
dissemination of Putz, we determine that Putz was publicly accessible as of
at least mid-June 1994, and thus is prior art4.
(ii) Independent Claims 1 and 10
Petitioner argues that Putz discloses a method for communicating
between computers, as recited in claim 1, including creating a message at a
first computer, said message including a reference to a predetermined
location, and transmitting, by the first computer, said message to a second
location. Pet. 31–34; Ex. 1011, 2, Fig. 1. Petitioner states that an HTML
document is created in Putz that includes an IMG element with a URL
specifying the appropriate map image, Ex. 1011, 3, and that the message
created by the HTTP web server is transmitted to the client computer in the
form of an HTTP response. Pet. 33–34; Ex. 1011, 2.
Petitioner further states that Putz discloses receiving said message by
the client computer, i.e., the computer at the second location, and decoding
said message by the computer at the second location as recited in claim 1.
Pet. 34–35. Petitioner argues that the client computer receives the HTTP
response (Ex. 1011, 2), and that the web browser automatically decodes the
tag with no user interaction required, because Putz uses standard
web browsers that inherently operate in that manner for fetching images
identified by tags. Pet. 34; Ex. 1011, 5; Tr. 23:14–21.

4 We are persuaded that the evidence submitted with the Petition alone is
sufficient to support our determination as to the public accessibility of Putz.
Nevertheless, we acknowledge the testimony of Mr. Putz himself, which
leaves little doubt that our determination is correct.
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Patent Owner argues that claims 1 and 10 are not anticipated by Putz
because, first, the HTML response with the image URL is not transmitted at
the server’s discretion, but rather, the client computer is manually activated
to retrieve it under a user’s direct manual control. PO Resp. 52. Patent
Owner points to Dr. Alexander’s testimony that he doesn’t remember Putz
having anything to do with push. Ex. 2019, 64:7–9; Tr. 49:2–3. Second,
Patent Owner argues, the client does not “decode” the HTML response
automatically, without requiring user interaction. PO Resp. 53.
Petitioner, referring back to its earlier argument regarding claim
construction of the term “by,” argues that the transmitting limitation of
claims 1 and 10 “only requires transmission of a message by a first computer
to a second location, it does not require transmission of a message ‘at the
discretion’ of the first computer to a second location.” Pet. Reply 12; Tr.
23:9–13. Petitioner further argues, regarding the decoding step, that the web
browser at the client computer in Putz fetches or retrieves the images
identified by the tag from the URL location, thus requiring no user
interaction. Pet. Reply 13. Petitioner argues that the “user interaction” all
occurs before any of the limitations—transmitting, creating, receiving,
decoding—of the claimed method. Tr. 23:21–24.
Referring to our discussion of the “by” terms, we are not persuaded
that the transmitting step must be taken at the discretion of the first
computer. Thus, it is enough that the first computer transmits a message to a
second location. Putz’s first computer, i.e., a web server, transmits an
HTML document with an embedded URL image element to a second
location, i.e., a client computer. Ex. 1011, 2; Pet. 29–30, 33–34. Thus, we
find that this element is anticipated by Putz.
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Regarding the decoding step, we agree with Petitioner that steps taken
before or after a retrieval step are immaterial. See Invitrogen Corp., 327
F.3d at 1368. Putz provides that the “HTML document is created which
includes an IMG element with a URL specifying the appropriate map
image.” Ex. 1011, 3. We are persuaded that this language and the
Petitioner’s evidence support adequately a finding that the client browser of
Putz fetches or retrieves and automatically decodes, without user interaction,
the images identified by the tag from the URL location.
On this record, we conclude that Petitioner has demonstrated by a
preponderance of the evidence that claims 1 and 10 are anticipated by Putz.
(iii) Independent Claims 21 and 30
Patent Owner argues that (1) Putz does not disclose the transmitting
means of claim 21; (2) for claims 21 and 30, that Putz does not disclose that
the HTML response with the image URL is created at the server’s
discretion; and (3) Putz does not disclose the decoding means of claims 21
and 30. PO Resp. 54–58.
Petitioner argues, regarding Patent Owner’s argument (1) that Putz
discloses the structure of the transmitting means as, for example, an HTML
document containing an embedded URL image element, transmitted via a
web server (i.e., the “other server”) to a client computer. Pet. Reply 13.
Petitioner further argues, regarding Patent Owner’s argument (3) that the
decoding means, and its corresponding structure, is disclosed in Putz, as
there are multiple document types (i.e. images, SGML) in Putz that are
examined. Id. at 14.
For argument (1), we agree with Petitioner that Putz discloses the
transmitting means of claim 21. As discussed, Petitioner identifies, and we
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construe, the transmitting means’ corresponding structure as including Step
404 (TRANSMIT DOCUMENT VIA ELECTRONIC MAIL OR OTHER
SERVER). Pet. 6–7; Dec. 11–12. We are persuaded by Petitioner’s
arguments that the web server of Putz corresponds properly to the recited
“other server.” Use of the term “via” in step 404 does not require an
additional step or structure in the transmission process. See also Step 406
(RECEIVE DOCUMENT VIA ELECTRONIC MAIL OR OTHER
MEANS). In this case, “via” means that the document can be sent by a
server, such as Putz’s web server.
Patent Owner’s argument (2) relies on its proposed construction of the
terms “by the first computer” in claim 21 and “by a transmitting computer at
a first location” in claim 30. We have considered and discussed the
proposed constructions above, and for substantially the reasons given above,
are not persuaded by Patent Owner’s arguments on this point.
Finally, for argument (3), we agree with Petitioner that Putz examines
multiple document types. Pet. Reply 14. As discussed, Petitioner identifies,
and we construe, the decoding means’ corresponding structure as including
Step 408 (WHAT IS THE DOCUMENT TYPE). Pet. 7; Dec. 11–12.
Petitioner argues that the MIME-type parameters used in the HTTP response
message of Putz can specify document types, such as images. Pet. Reply 13.
Putz also discloses HTML, “which is a . . . SGML document type allowing
structured text with links,” (Ex. 1011, 1) and thus Petitioner argues that
multiple document types are examined in Putz. Id. We are not persuaded by
Patent Owner’s speculation that “[Putz’s] computers “need not and likely do
not determine whether the message could be another type.” PO Resp. 58. In
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determining whether the message is one type or another, we find that the
decoding means would need to examine the document type.
On this record, we conclude that Petitioner has demonstrated by a
preponderance of the evidence that claims 21 and 30 are anticipated by Putz.
(iv) Independent Claim 39
Patent Owner refers to and relies on its earlier arguments for claims
21 and 30 to argue that claim 39 is not anticipated, because (i) the HTML
response with the image URL is not transmitted at the server’s discretion,
(ii) Putz does not disclose examining a type of the message, and (iii) Putz
does not disclose the recited transmitting means. PO Resp. 58–59.
For the same reasons given above, we are not persuaded by Patent
Owner’s arguments. We are persuaded that Petitioner has demonstrated by a
preponderance of the evidence that Putz discloses the limitations of claims
39.
(v) Dependent Claims 5, 14, 25, and 34
Patent Owner argues that claims 5, 14, 25, and 34 are not anticipated
by Putz, because Putz does not automatically retrieve data “without the user
requesting the retrieval of the data corresponding to the URL.” PO Resp.
59. Specifically, Patent Owner argues that Putz’s user at the client computer
explicitly requests the retrieval of the map image associated with the image
URL by clicking or selecting a web page URL. Id. Petitioner responds that
the “web browser on the client computer automatically retrieves the map
image from the image source without user interaction and thus anticipates
these claims.” Pet. Reply 14. We are persuaded by Petitioner’s earlier
arguments that the computer of Putz automatically takes the steps required
by claims 5, 14, 25, and 34, without user interaction, notwithstanding any
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earlier step that may be taken by a user at a client computer. Moreover,
given the “comprising” construction of claims 5, 14, 25, and 34, the method
may include additional steps before and after the disputed steps, but whether
those additional steps require user interaction does not change our analysis
of the steps at issue.
On this record, we conclude that Petitioner has demonstrated by a
preponderance of the evidence that claims 5, 14, 25, and 34 are anticipated
by Putz.
E. Remaining Claims
Petitioner argues that “Patent Owner does not address claims 4, 6, 13,
15, 24, 26, 33, 35 and 40; thus concedes Payne discloses each of these
limitations.” Pet. Reply 11. Petitioner also argues that “Patent Owner does
not address claims 4, 6, 8, 13, 15, 17, 24, 26, 28, 33, 35, 37 and 40, thus
conceding that Putz . . . discloses each of the limitations of these claims.”
Id. at 14.
As discussed, we find that Petitioner has established, by a
preponderance of the evidence, that Payne anticipates independent claims 1,
10, 21, 30, and 39, and dependent claims 5, 14, 25, and 34 as well as 8, 17,
28, and 37. We further find that Petitioner has established, by a
preponderance of the evidence, that Putz anticipates independent claims 1,
10, 21, 30, and 39, and dependent claims 5, 14, 25, and 34. We have
reviewed the arguments presented in the Petition and the supporting
evidence regarding the anticipation of the remaining claims as identified by
Petitioner (Pet. Reply 11, 14), which were not disputed by Patent Owner in
its Response. Patent Owner, in its Response, relies solely on its arguments
and evidence concerning the independent claims and additional dependent
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claims identified in its Response. In the Scheduling Order, we cautioned
Patent Owner that any arguments for patentability not raised in the Response
would be deemed waived. Paper 13, 3. After reviewing of the arguments
and evidence presented concerning the remaining claims, we find a
preponderance of the evidence establishes that Payne expressly discloses the
limitations of claims 4, 6, 13, 15, 24, 26, 33, 35 and 40, and that Putz
discloses the limitations of claims 4, 6, 8, 13, 15, 17, 24, 26, 28, 33, 35, 37
and 40.
F. Real Parties in Interest
The Petition, in its real-party-in-interest section, identified Google as
a party that holds more than a 10% ownership of Petitioner. Dec. 8. In the
Decision to Institute, we determined that the Petition sufficiently identified
all real parties-in-interest pursuant to 35 U.S.C. § 312(a)(2). Id. at 9. Patent
Owner argues that the Decision to Institute relies on a legally incorrect
interpretation of the statute. PO Resp. 15. In its Response, Patent Owner
presents no substantially new arguments that require revisiting our
determination regarding identification of real parties-in-interest. We,
therefore, decline to dismiss the Petition for the same reasons given in the
Decision to Institute.
G. Patent Owner’s Motion to Exclude
Patent Owner filed a Motion to Exclude (Paper 35, “Mot. to Excl.”),
to which Petitioner responded (Paper 38, “Resp. to Mot. to Excl.”), and
Patent Owner filed a Reply (Paper 39, “Reply on Mot. to Excl.”). Patent
Owner’s Motion seeks to exclude (i) Exhibit 1008 (Payne Appendix E) as
irrelevant and confusing; (ii) Exhibit 1019 (RFC 1945) as irrelevant and
confusing; (iii) Exhibit 1035 (Payne prosecution history) as needlessly
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cumulative of Exhibit 2003; and (iv) Exhibit 1036 (RFC 1945 draft) as
improper reply evidence, not a printed publication, and prejudicial. Mot. to
Excl. 1–12.
Petitioner argues that (i) Exhibit 1008 is relevant, admissible, and not
confusing; (ii) Exhibit 1019 is relevant, admissible, and not confusing;
(iii) Exhibit 1035 contains the complete prosecution history of Payne, unlike
the excerpted prosecution history in Exhibit 2003, and therefore is not
cumulative; and (iv) Exhibit 1036 is relevant, admissible, and proper reply
evidence. Resp. to Mot. to Excl. 1–11.
As an initial matter, we note that we do not rely upon Exhibit 1008 or
Exhibit 1035 in our present determination. We therefore need not decide the
Motion to Exclude as to those Exhibits; it is dismissed as moot.
The moving party has the burden of proof to establish that it is entitled
to the requested relief. 37 C.F.R. § 42.20(c). A motion to exclude is neither
a substantive sur-reply, nor a proper vehicle for arguing whether a reply or
supporting evidence is of appropriate scope. Zynga Inc. v. Personalized
Media Commc’ns, LLC, IPR2013-00162, slip op. at 3 (PTAB Aug. 28,
2013) (Paper 15); Berk-Tek LLC v. Belden Tech., Inc., IPR2013-00057, slip
op. at 3 (PTAB Oct. 31, 2014) (Paper 39).
Patent Owner’s objections to Exhibits 1019 and 1036 are directed to
the weight that the information disclosed therein should be afforded, rather
than to its admissibility. It is within our discretion to assign the appropriate
weight to be accorded to the information in Exhibits 1019 and 1036. The
Board, sitting as a non-jury tribunal with administrative expertise, is well-
positioned to determine and assign appropriate weight to evidence presented.
Gnosis S.P.A. v. S. Ala. Med. Sci. Found., IPR2013-00118, slip op. at 43
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(PTAB June 20, 2014) (Paper 64); see also Donnelly Garment Co. v. NLRB,
123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately
upon the admissibility of evidence is equally capable of sifting it accurately
after it has been received.”). We thus decline to exclude Exhibits 1019 and
1036.
Accordingly, the Motion to Exclude is dismissed as to Exhibits 1008
and 1035, and denied as to Exhibits 1019 and 1036.
SUMMARY
Petitioner has demonstrated, by a preponderance of the evidence, that
claims 1, 4–6, 8, 10, 13–15, 17, 21, 24–26, 28, 30, 33–35, 37, 39, and 40 of
the ’793 patent are unpatentable under 35 U.S.C. § 102(e) as anticipated by
Payne, and unpatentable under 35 U.S.C. § 102(a) as anticipated by Putz.
This is a Final Written Decision of the Board under 35 U.S.C. § 318(a).
ORDER
For the reasons given, it is
ORDERED that Patent Owner’s Motion to Exclude is dismissed as to
Exhibits 1008 and 1035 and denied as to Exhibits 1019 and 1036.
FURTHER ORDERED that claims 1, 4–6, 8, 10, 13–15, 17, 21, 24–
26, 28, 30, 33–35, 37, 39, and 40 of the ’793 patent are unpatentable; and
FURTHER ORDERED that parties to the proceeding seeking judicial
review of this final written decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.
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PETITIONER:

John C. Alemanni
Theodore G. Brown, III
Christopher Schenck
Shayne O’ Reilly
Mitchell G. Stockwell
KILPATRICK TOWNSEND & STOCKTON LLP
jalemanni@kilpatricktownsend.com
tbrown@kilpatricktownsend.com
cschenck@kilpatricktownsend.com
soreilly@kilpatricktownsend.com
mstockwell@kilpatricktownsend.com

PATENT OWNER:

Brenton R. Babcock
Ted M. Cannon
Curtis R. Huffmire
Bridget A. Smith
John R. King
KNOBBE, MARTENS, OLSON & BEAR, LLP
2BRB@knobbe.com
2tmc@knobbe.com
2crh@knobbe.com
2bzs@knobbe.com
2jrk@knobbe.com

Donald Coulman
INTELLECTUAL VENTURES
dcoulman@intven.com