Google Inc.v.B.E. Technology, L.L.C.

Patent Trial and Appeal Board

Apr 6, 2015

09744033 (P.T.A.B. Apr. 6, 2015)

Trials@uspto.gov Paper 33
571-272-7822 Entered: April 6, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE, INC.,
Petitioner,

v.

B.E. TECHNOLOGY, L.L.C.,
Patent Owner.
____________

Case IPR2014-00031
Case IPR2014-00033
Patent 6,771,290 B1
____________

Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

I. INTRODUCTION
We have jurisdiction to hear these inter partes reviews under
35 U.S.C. § 6(c). This Final Written Decision is issued pursuant to
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein,
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Petitioner has shown by a preponderance of the evidence that claims 2 and 3
of U.S. Patent No. 6,771,290 B1 are unpatentable.
A. Procedural History
Petitioner, Google, Inc., filed two Petitions1 for inter partes review of
claims 2 and 3 of U.S. Patent No. 6,771,290 B1 (31 Ex. 1001, “the
’290 patent”).2 31 Paper 1 (“31 Pet.”); 33 Paper 1 (“33 Pet.”). Patent
Owner, B.E. Technology, L.L.C., did not file a Preliminary Response to
either Petition. On April 9, 2014, pursuant to 35 U.S.C. § 314, we instituted
inter partes reviews for claims 2 and 3 of the ’290 patent on the grounds of
anticipation by Kikinis3 under 35 U.S.C. § 102(b) and obviousness over
Foley4 under 35 U.S.C. § 103(a). 31 Paper 9; 33 Paper 9.
In each proceeding, subsequent to institution, Patent Owner filed a
Patent Owner Response (31 Paper 23, “31 PO Resp.”; 33 Paper 23,
“33 PO Resp.”), and Petitioner filed a Reply to the Patent Owner Response
(31 Paper 25, “31 Reply”; 33 Paper 25, “33 Reply”). On December 11,
2014, we held a consolidated hearing for five inter partes reviews involving

1 Citations may be preceded by “31” to designate IPR2014-00031 or “33” to
designate IPR2014-00033.
2 In IPR2014-00033, the ’290 patent also is entered in the record as Exhibit
1001.
3 PCT International Publication Number WO 97/09682, published Mar. 13,
1997 (31 Ex. 1002) (“Kikinis”).
4 U.S. Patent No. 5,706,502, issued Jan. 6, 1998 (33 Ex. 1002) (“Foley”).
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the ’290 patent.5 A transcript of the oral hearing is included in the record.
31 Paper 32 (“31 Tr.”); 33 Paper 32 (“33 Tr.”).
B. Related Proceedings
The parties indicate that the ’290 patent is at issue in B.E. Technology,
L.L.C. v. Google, Inc., No. 2:12-cv-02830 (W.D. Tenn.), and numerous
other district court cases filed by Patent Owner against other defendants.
31 Pet. 1; 31 Paper 4, 1–3 (Patent Owner’s Mandatory Notices). As noted,
the ’290 patent is the subject of three other inter partes reviews: IPR2014-
00029, IPR2014-00040, and IPR2014-00044.
C. The ’290 Patent
The ’290 patent describes a system that provides remote storage of
user-specific files and resources that can be accessed over a network, such as
the Internet. 31 Ex. 1001, 5:43–50, 12:45–50. The disclosed system
includes client computers, each running a client software application that
provides access via a network to an advertising and data management
(ADM) server. Id. at 11:42–49. The server includes a user database that
stores a user profile and a user library for each user. Id. at 12:45–13:12.
The user profile is accessed by the client software application using a unique
identifier for the user via a login. Id. at 12:52–56. The user profile may
contain user-specific customized settings for the operating system used by
the client computer. Id. at 12:56–58. Additionally, the user profile may

5 Sony Mobile Commc’ns (USA) Inc. v. B.E. Tech., L.L.C., Case IPR2014-
00029; Google Inc. v. B.E. Tech., L.L.C., Case IPR2014-00031; Google Inc.
v. B.E. Tech., L.L.C., Case IPR2014-00033; Microsoft Corp. v. B.E. Tech.,
L.L.C., Case IPR2014-00040; Samsung Elecs. Am., Inc. v. B.E. Tech.,
L.L.C., Case IPR2014-00044.
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contain “bookmarks, shortcuts, and other such links to files and information
resources accessible via” the network. Id. at 12:67–13:3. The user library
“enables the user to store files (documents, executable programs, email
messages, audio clips, video clip, or other files) that can then be accessed
from any client computer.” Id. at 13:4–7. By storing user profiles and user
libraries on the server, users “can have world-wide access to their
preferences, addresses, bookmarks, email, and files without having to
physically transport them from one place to another.” Id. at 13:9–12.
The ’290 patent further describes a user interface on a client
computer, provided by a graphical user interface (GUI) module. Id. at
13:41–43. The user interface comprises an application window with
selectable items such as icons. Id. at 13:43–53. As shown in Figure 5b, the
application window may include “icons that represent various files and links
to information resources.” Id. at 15:48–53.
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Figure 5b of the ’290 patent is reproduced below:

Figure 5b illustrates an application window with icons
representing files and links to information resources.
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The application window in Figure 5b includes a library icon, which,
when selected, provides a display as shown in Figure 5c, reproduced below.

Figure 5c illustrates an application window
displaying files in a user library.
The display in Figure 5c provides a list of all files contained in a user
library. Id. at 15:55–56. From this window, “the user can access any of the
files contained in his or her user library.” Id. at 15:56–57.
D. Claims
Petitioner challenges claims 2 and 3 of the ’290 patent, which read:
2. A computer-readable memory for use by a client
computer in conjunction with a server that is accessible by the
client computer via a network, the server storing a user profile
and user library for each of a number of different users, with the
user library containing one or more files and the user profile
containing at least one user link that provides a[] link to one of
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the files in the user library, the computer-readable memory
comprising:
a non-volatile data storage device;
a program stored on said non-volatile data storage device
in a computer-readable format;
said program being operable upon execution to display a
graphical user interface comprising an application window
having a number of user-selectable items displayed therein,
wherein each of said items has associated with it a link to an
information resource accessible via the network and wherein
said program is operable upon execution and in response to
selection by a user of one of said items to access the associated
information resource over the network;
said program being operable upon execution to receive
from [the] server one of the user profiles and to display a user-
selectable item for user links contained within the user profile,
said program further being operable in response to selection by
a user of one of the user links to access the file associated with
the selected user link from the user library associated with the
received user profile.
3. A computer-readable memory as defined in claim
2, wherein said program is operable upon execution and in
response to selection by a user of one of said items to access the
associated information resource over the network using a
browser.
Id. at 39:1–40:16.
II. ANALYSIS
A. Claim Construction
In an inter partes review, we construe claim terms in an unexpired
patent according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
Patent Owner contends the Board’s adoption of the “broadest reasonable
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construction” standard exceeded the Office’s rulemaking authority and
requests that we construe the claims in this case in a manner consistent with
claim construction that would be applied in the district court. 31 PO Resp.
25–27; 33 PO Resp. 26–28. Recently, however, the United States Court of
Appeals for the Federal Circuit held that “Congress implicitly adopted the
broadest reasonable interpretation standard in enacting the [America Invents
Act].” In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1281 (Fed. Cir.
2015). The court further held that even if the broadest reasonable
interpretation standard were not incorporated into the inter partes statutory
provisions, the Office properly adopted the standard by regulation under the
rulemaking authority provided by 35 U.S.C. § 316. Id. at 1282.
Accordingly, we construe the claims in this proceeding using the broadest
reasonable construction standard.
Consistent with the broadest reasonable construction standard, claim
terms are presumed to have their ordinary and customary meaning, as
understood by a person 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). An inventor may provide a meaning for a term that is different
from its ordinary meaning by defining the term in the specification with
reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
1. Claim Terms Defined in the ’290 Patent
The ’290 patent recites explicit definitions for many terms. In the
table below, we construe claim terms relevant to our decision in accordance
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with the definitions provided in the ’290 patent, which are set forth in the
written description with reasonable clarity, deliberateness, and precision.
Claim Term Construction
data set
“A group of data items; for example, links,
keywords, or entries in an address book.”
31 Ex. 1001, 4:18–19.
file
“Any digital item, including information,
documents, applications, audio/video
components, and the like, that is stored in
memory and is accessible via a file
allocation table or other pointing or
indexing structure.” 31 Ex. 1001, 4:25–28.
information resource
“A source of information stored on a
server or other computer that is accessible
to other computers over a network.”
31 Ex. 1001, 4:33–35.
link
“A data item that identifies the location or
address of a program or information
resource.” 31 Ex. 1001, 4:39–40.6
non-volatile data storage
device
“A memory device that retains computer-
readable data or programming code in the
absence of externally-supplied power,
including such things as a hard disk or a
floppy disk, a compact disk read-only
memory (CDROM), digital versatile disk
[(]DVD), magneto-optical disk, and so
forth.” 31 Ex. 1001, 4:46–51.

6 The ’290 patent further provides: “A URL [i.e., a uniform resource
locator] is a link, as is a path and filename of an information resource.”
31 Ex. 1001, 4:40–41. We consider these to be examples of a “link,” not
part of the definition, and, therefore, not part of our construction of the claim
term.
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Claim Term Construction
profile
“User-specific information relating to an
individual using a computer.”
31 Ex. 1001, 4:52–53.
program component
“A set of instructions stored in a file in
computer-readable format, whether as
object code or source code, and whether
written in a compiled language, in byte
code (such as JavaTM), or in a scripting or
other interpreted language.” 31 Ex. 1001,
4:54–58.
program module “One or more related program components.” 31 Ex. 1001, 4:60–61.
program “One or more related program modules.” 31 Ex. 1001, 4:62.
2. User library
Claim 2 recites a “server storing a . . . user library for each of a
number of different users, with the user library containing one or more
files.” 31 Ex. 1001, 39:3–5 (emphasis added). Claim 2 further provides that
files in the user library are accessed via user links in a user profile.
Id. at 39:6–7, 40:8–11. Although the ’290 patent does not provide an
explicit definition of “user library,” it provides the following description:
“[T]he User Database 46 of ADM server 22 can include a user library that
enables the user to store files (documents, executable programs, email
messages, audio clips, video clips, or other files) that can then be accessed
from any client computer 40.” Id. at 13:3–7 (emphasis added). The written
description of the ’290 patent further explains that a user library is “used to
store [a user’s] individual files and resources that the user wishes to be able
to access from anywhere on the network.” Id. at 5:56–58.
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An ordinary meaning of “library” in the context of electronic
document storage is a “collection of software or data files,”7 and, thus, a
“user library” is a “collection of a user’s software or data files.” In view of
this ordinary meaning and the claims and written description of the
’290 patent, the broadest reasonable construction of “user library” consistent
with its use in the ’290 patent is “a collection of an individual’s stored files.”
B. Asserted Ground of Anticipation by Kikinis
Petitioner contends that claims 2 and 3 are unpatentable under
35 U.S.C. § 102(b) as anticipated by Kikinis, relying on declaration
testimony of Mr. Stephen Gray. 31 Pet. 14–30 (citing 31 Ex. 1004). Patent
Owner responds, relying on declaration testimony of Dr. Cory Plock. 31 PO
Resp. 8–25 (citing 31 Ex. 2001). Having considered the parties’ contentions
and supporting evidence, we determine that Petitioner has demonstrated by a
preponderance of the evidence that claims 2 and 3 are anticipated by Kikinis.
1. Summary of Kikinis
Kikinis describes a document management system that provides for
remote storage and retrieval of electronic documents. 31 Ex. 1002, Abstract,
1:7–9. Figure 2, reproduced below, illustrates Kikinis’s electronic document
system.

7 See MICROSOFT COMPUTER DICTIONARY 309 (5th ed. 2002).
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As shown in Figure 2, Kikinis discloses user station 53 with a web browser
that allows a user to access, via the Internet, servers provided by a remote
Internet service provider (ISP), labeled “User’s Provider” in the figure.
Id. at 6:11–14, 6:24–26. In the embodiment shown in Figure 2, the remote
ISP includes web server 67 and a set of electronic document servers 69, all
of which have access to the Internet. Id. at 6:24–27.
Each electronic document server 69 runs software that supports a
specific application. Id. at 6:27–29. As shown in Figure 2, examples
include e-mail program 79, fax program 81, voice-mail program 85, and
other programs 87, which provide access to other electronic documents.
Id. at 6:29–31. Web server 67 stores a set of databases 71, each of which is
associated with a different user. Id. at 6:32–35. Each database set 71
includes home page 73 that is individualized to a specific user and provides
links to various lower-order databases maintained by electronic document
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server 69 for each user, such as e-mail database 89, fax database 91, voice-
mail database 93, and other electronic documents in database 95. Id. at
6:35–7:4. A user may be required to provide a password and user name to
gain access to home page 73 of an electronic document database. Id. at
8:21–24.
A user who wishes to access electronic documents stored on an
electronic document server invokes the web browser at a user station. Id. at
7:17–29. Figure 3 of Kikinis, reproduced below, illustrates a series of web
browser windows for accessing electronic documents.

As shown in Figure 3, a user enters a URL for his home page in
field 113. Id. at 7:29–31. Home page 73 is retrieved from the remote server
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and displayed as a graphical user interface to data and other web
destinations, with on-screen links to the user’s electronic documents stored
on the electronic document server. Id. at 7:31–8:1. For example, as shown
in Figure 3, home page 73 provides links to the user’s voice-mail
(button 117), e-mail (button 118), faxes (button 120), and other electronic
documents (button 122). Id. at 8:2–13. A user also may use home page 73
to link to other databases, “such as a personal multi-lingual dictionary
featuring pronunciation, a spelling checker, or a thesaurus; or indeed, almost
any other sort of digital data or control routines.” Id. at 8:14–18.
2. Claims 2 and 3
Independent claim 2 of the ’290 patent is directed to a computer-
readable memory for use by a client computer in conjunction with a server
that is accessible by the client via a network and stores a user profile and a
user library containing one or more files. 31 Ex. 1001, 39:1–5. The
computer-readable memory on the client includes a “program stored on [a]
non-volatile data storage device.” Id. at 39:10–11. The program is, among
other things, “operable upon execution to receive from [the] server one of
the user profiles and to display a user-selectable item for user links
contained within the user profile,” and “operable in response to selection by
a user of one of the user links to access the file associated with the selected
user link from the user library associated with the received user profile.” Id.
at 40:3–11. Claim 3 depends from claim 2 and specifies that the program
uses a browser. Id. at 40:13–17.
Petitioner provides detailed analysis and claim charts showing where
Kikinis describes each limitation of claims 2 and 3. 31 Pet. 15–30. In
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particular, Petitioner asserts that Kikinis discloses the recited “program” (a
web browser on a user station), “user library” (user-specific databases, such
as an e-mail database, a fax database, a voice-mail database, and an
electronic document database, all of which contain user-specific files), and
“user profile” (home page) with links to the user’s files. Id. at 16–21 (citing
31 Ex. 1004 ¶¶ 119–25). Patent Owner argues that Kikinis fails to describe
(a) a program stored on a non-volatile data storage device that performs the
functions recited in the claim, (b) a file associated with a selected user link,
and (c) a user profile. 31 PO Resp. 8–24. Patent Owner contends that
Kikinis does not anticipate claim 3 for the same reasons provided for claim
2. Id. at 25.
Having considered the parties’ contentions and supporting evidence,
we determine that Petitioner has demonstrated by a preponderance of the
evidence that Kikinis anticipates claims 2 and 3 of the ’290 patent. For the
reasons discussed below, we are not persuaded by Patent Owner’s
contentions.
a. Program stored on a non-volatile data storage device
Patent Owner contends that Kikinis does not disclose a program
stored on a client that performs the functions of a “program” as recited in
claim 2. 31 PO Resp. 8–16. Specifically, Patent Owner argues that Kikinis
discloses a system that provides indirect access to electronic documents
because it requires programs remotely stored on a server to access remotely
stored electronic documents. Id. at 9. For example, each electronic
document server shown in Figure 2 of Kikinis runs software that supports a
specific application, such as an e-mail program or a voice-mail program.
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Id. at 9–10 (citing 31 Ex. 1002, 6:27–31). Patent Owner further submits that
Kikinis’s web browser, although stored on a non-volatile data storage device
on a client, does not perform the claimed functions of a “program” because
it cannot access electronic documents by itself without additional software
programs stored on a remote server. Id. at 14–16 (citing 31 Ex. 2001 ¶ 21).
In other words, Patent Owner essentially contends that the client program
recited in claim 2 must provide direct access to a file stored in a user library
on the server, without the assistance of any program on the server. See
31 PO Resp. 9; see also 31 Ex. 2004, 24:3–24 (Dr. Plock testifying that
Kikinis’s browser cannot correspond to the claimed “program” because it
must use a server-side program to access databases, and thus “cannot
directly access” the databases).
We are not persuaded by Patent Owner’s argument, which improperly
reads “direct” access into the claim. Claim 2 simply requires the program to
“access the file,” without precluding the involvement of software on the
server to facilitate that access. The broadest reasonable interpretation of
“access,” as used in the claim without any modifiers, encompasses the type
of file access performed by the browser in the Kikinis system. Moreover,
Patent Owner’s own expert admits that in any client-server system, such as
the system described and claimed in the ’290 patent, software on a server
necessarily is required for the server to respond to a request from a client
program, such as a browser. See 31 Ex. 2005, 53:14–19, 54:13–18. Thus,
we find that Kikinis’s web browser is a program stored on a client that is
operable to perform the functions of the “program” recited in claim 2,
including accessing a file on the server.
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b. File associated with a selected user link
Patent Owner contends that Kikinis does not disclose “selection by a
user of one of the user links to access the file associated with the selected
user link from the user library,” as recited in claim 2. 31 PO Resp. 16–22.
According to Patent Owner, Kikinis describes links to software programs
and databases, but not links to specific files. Id. at 18. As part of its
argument, Patent Owner submits that the ’290 patent describes a “one-click”
system that provides a “direct link” from an item in the user profile to a
specific file in the user library. Id. (citing 31 Ex. 1001, 15:12–13 (“The user
has the ability to subscribe the channel by making a direct link to a
file . . . .”)).
As an initial matter, the plain language of claim 2 does not require
“one-click” access or a “direct link” to files. Although the ’290 patent
describes direct links to files, it also describes other means for accessing
files. See, e.g., 31 Ex. 1001, 15:12–15 (“The user has the ability to subscribe
the channel by making a direct link to a file, or by combining various files
under some category, or by providing a drop down list to a subscribed
channel.” (emphases added)); id. at 15:53–57 (“[A] library icon . . . , when
selected, provides a display as shown in FIG. 5c which contains a list of all
of the files contained in the user library. From here, the user can access any
of the files contained in his or her user library . . . .” (emphasis added)).
Patent Owner does not present persuasive evidence or argument for
importing a “one-click” limitation into claim 2.
Turning to Kikinis, we find that, contrary to Patent Owner’s
arguments, Kikinis discloses the selection of a user link to access the file
associated with the selected user link from the user library. Kikinis
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specifically states that its home page, which corresponds to the claimed user
profile, has “on-screen links to electronic documents reserved for the home
page ‘owner’, such as e-mail and faxes.” 31 Ex. 1002, 7:35–8:1. Patent
Owner’s expert, Dr. Plock, agrees that this passage from Kikinis discloses
links to electronic documents. 31 Ex. 2005, 66:6–20. Thus, Kikinis clearly
discloses links on a user’s home page to individual, electronic documents,
which are “files” as that term is defined in the ’290 patent. See supra II.A.1.
In addition, it is undisputed that Kikinis discloses a home page with
links to databases. See, e.g., 31 Pet. 17; 31 PO Resp. 20. As described in
Kikinis, in connection with Figure 2, web server 67 stores a set of databases
71, each of which “belongs to (or is assigned to or is associated with) a
different client.” 31 Ex. 1002, 6:32–35. Each database set 71 includes home
page 73 that is individualized to a specific user and provides links to various
lower-order databases maintained by electronic document server 69 for each
user, such as e-mail database 89, fax database 91, voice-mail database 93,
and database 95 containing other electronic documents. Id. at 6:35–7:4; see
id. at Fig. 2 (showing client-specific databases 89, 91, 93, and 95).
Patent Owner agrees that Kikinis describes links to databases, but
argues that databases are not files. 31 PO Resp. 17–18, 20; 31 Ex. 2001
¶¶ 24–25. The ’290 patent, however, defines “file” as “[a]ny digital item,
including information, documents, applications, audio/video components,
and the like, that is stored in memory and is accessible via a file allocation
table or other pointing or indexing structure.” 31 Ex. 1001, 4:25–28; see
supra II.A.1. At his deposition, Patent Owner’s expert, Dr. Plock, admitted
that the databases for e-mail, fax, voice-mail, and other electronic documents
in Kikinis meet the requirements of a file, as that term is used in the
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’290 patent. See 31 Ex. 2005, 59:21–63:20. Specifically, Dr. Plock agreed
that the databases are stored in digital form, id. at 63:15–20, are stored in
memory, id. at 59:21–23, 62:21–24, and can be accessed using a pointing or
indexing structure, id. at 59:24–60:1, 60:9–11, 62:25–63:7. Dr. Plock
further agreed that a user accesses the databases in Kikinis via links on the
home page, which corresponds to the claimed user profile. Id. at 71:19–
72:8. The databases disclosed in Kikinis, therefore, are files associated with
selected user links, as recited in claim 2.
Patent Owner and its expert contend that Kikinis’s lower-order
databases (e-mail database 89, fax database 91, voice-mail database 93, and
database 95 for other electronic documents) do not comprise a “user
library,” as required by claim 2, because the databases contain e-mails,
voice-mails, and faxes for multiple users. See 31 Tr. 32:11–25; 31 Ex. 2004,
36:3–14; 31 Ex. 2005, 56:20–57:1. This argument, however, is inconsistent
with the disclosures in Kikinis, including the client-specific databases shown
in Figure 2. See 31 Ex. 1002, 8:30–31 (describing electronic document
databases as belonging to a user). Kikinis, therefore, discloses a user library
(i.e., a collection of databases stored for a user) containing one or more files
(i.e., databases 89, 91, 93, and 95), which may be selected by a user link in a
user profile (i.e., home page).
Thus, Kikinis discloses selection of a link to access a file associated
with the selected link from a user library in at least two ways—via a link to
an electronic document stored in a user’s database of electronic documents,
which corresponds to the recited “user library,” and via a link to one of the
user’s databases, e.g., the user’s e-mail database, which is a “file” as that
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term is defined in the ’290 patent and which, together with other databases,
comprise a “user library.”
c. User profile
Patent Owner contends that the home page disclosed in Kikinis is not
a “user profile” as recited in claim 2 because Kikinis contains no mention of
any “user-specific information relating to an individual using a computer”
found within the home page. 31 PO Resp. 23. Kikinis, however, describes a
home page as “a graphical interface unique to an individual user” that
“functions in part as a table of contents.” 31 Ex. 1002, 2:3–5. Further,
Kikinis specifically indicates the home page has “indicia identifying the
home page owner” and is “individualized to a specific client.” Id. at 3:3–4,
6:34–35. Patent Owner’s argument fails to account for these express
disclosures of “user-specific information” in Kikinis.
C. Asserted Ground of Obviousness over Foley
Petitioner contends that claims 2 and 3 are unpatentable under
35 U.S.C. § 103(a) for obviousness over Foley, relying on declaration
testimony of Mr. Gray.8 33 Pet. 13–43 (citing 33 Ex. 1003). Patent Owner
responds, relying on declaration testimony of Dr. Plock. 33 PO Resp. 8–26
(citing 33 Ex. 2001). Having considered the parties’ contentions and

8 Patent Owner argues that the testimony submitted by Petitioner from
Mr. Gray is not in the form of an affidavit and, therefore, does not comply
with 37 C.F.R. § 42.53. 33 PO Resp. 26. Patent Owner, however, did not
serve objections to this testimony within ten days of the institution of trial
and did not file a motion to exclude this testimony. See 33 Tr. 52:6–17.
Accordingly, Patent Owner has withdrawn the objection to Mr. Gray’s
testimony. Id. at 52:18–53:3.
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supporting evidence, we determine that Petitioner has demonstrated by a
preponderance of the evidence that claims 2 and 3 would have been obvious
over Foley.
1. Summary of Foley
Foley describes a software development and file management system
that enables users to create and work with portfolios of software projects that
are distributed over a set of networked computers connected to the Internet.
33 Ex. 1002, 1:5–8, 2:46–49. The system includes a software application
called the Java Workshop (JWS) program stored in memory on a first
computer of the set of networked computers. Id. at 3:63–66, 4:28–31. The
JWS program allows a user to organize various projects, including
executable programs (Java applets and standalone executable programs) and
non-executable files (image files and Java class libraries), into collections
called portfolios. Id. at 3:66–4:3. In particular, the JWS program has an
integrated browser that allows a user to create and work with portfolios that
are remote from the user’s computer and local network, in addition to
portfolios that are local. Id. at 4:3–8. A user can create and name a new
portfolio, and add or import projects to the portfolio. Id. at 7:66–8:10. The
creator of a portfolio can keep it private or publish it on the Internet to be
accessed by others. Id. at 8:11–13.
In a preferred embodiment, “a portfolio file represents one portfolio
and includes respective references to members of a set of project files.”
Id. at 2:55–57. Figure 5 of Foley, reproduced below, illustrates the structure
of a portfolio file and its constituent projects. Id. at 7:29–46.
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As shown in Figure 5, portfolio file 160A1 contains references 162A1j to
constituent projects. Id. at 7:29–40. For example, reference 162A1a
(“Project1 URL/Name/home/Applet.prj”) provides a reference, or link, to
project file 170A1 (“Applet.prj”), and reference 162A1b (“Project1
URL/Name/home/Standalone.prj”) provides a link to project file 170A2
(“Standalone.prj”). Id. Each reference to a project file can be a file name
when the project file is local to the user’s computer (e.g., Machine A in
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Figure 5) or a Web page URL when the project file is stored on a remote
computer. Id. at 2:57–60, 7:35–40.
Figure 6 of Foley, reproduced below, depicts the graphical user
interface of the JWS program on a user’s computer with portfolio files and
projects displayed. Id. at 12:63–13:25.

As shown in Figure 6, Machine C is a remote computer that stores
Portfolio 2 and its project files P2a, P2b, and P2c. Id. at 13:13–14. The
user’s computer obtains portfolio file and project information from
Machine C over the Internet and displays the links to project files P2a, P2b,
and P2c. Id. at 13:14–17. The user can interact with remote project files in
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the same way as local project files, e.g., by double-clicking an icon
representing an applet, or by selecting a project for editing. Id. at 4:22–25,
8:66–9:7.
2. Claims 2 and 3
Petitioner provides detailed analysis and claim charts showing where
Foley teaches or suggests each limitation of claims 2 and 3. 33 Pet. 14–43.
In particular, Petitioner asserts that Foley teaches a portfolio management
system resident on a first computer, corresponding to the claimed “client,”
and portfolio and project information on a remote computer, corresponding
to the claimed “server.” 33 Pet. 14–15, 27. Petitioner further submits that
Foley’s JWS program, which includes a browser, corresponds to the
“program” recited in claims 2 and 3. Id. at 21–27, 32–43. As for the
remaining limitations of claim 2, Petitioner asserts that Foley teaches a “user
profile” (Foley’s portfolio file, e.g., A160A1 in Figure 5) containing “user
links” (references to project files, e.g., A162A1a in Figure 5) that provide
links to “files” (project files, e.g., 170A1 in Figure 5) contained in a “user
library” (collection of a user’s project files, e.g., projects 170A1–A4 in
Figure 5). Id. at 15–18, 27–32.
Claim 2 requires the server to store a user profile and user library for
each of a number of different users. 33 Ex. 1001, 39:3–5. Petitioner asserts
that Foley teaches, or at least suggests, that a single server can store both the
portfolio file (corresponding to the claimed user profile) and the collection
of project files (corresponding to the claimed user library), as shown in
Figure 6 of Foley. 33 Pet. 18–19 (citing 33 Ex. 1002, Fig. 6, 12:63–13:25).
Moreover, although Foley does not state explicitly that portfolios and project
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files for two or more users can be stored on the same computer (server),
Petitioner asserts it would have been obvious to a person of ordinary skill in
the art that multiple users could create portfolios with corresponding projects
on the same computer for the purpose of convenient access and reduction in
hardware costs. 33 Pet. 19–20 (citing 33 Ex. 1003 ¶¶ 122–23).
Patent Owner argues that Foley fails to teach (a) a user profile, (b) a
user profile that is distinct from the user library, and (c) a program stored on
a non-volatile data storage device that performs the functions recited in
claim 2. 33 PO Resp. 8–25. Patent Owner contends that claim 3 would not
have been obvious for the same reasons provided for claim 2. Id. at 26. For
the reasons discussed below, we are not persuaded by Patent Owner’s
contentions. Instead, having considered the parties’ contentions and
supporting evidence, we determine that Petitioner has demonstrated by a
preponderance of the evidence that Foley teaches or suggests all the
limitations of claims 2 and 3 of the ’290 patent and that claims 2 and 3
would have been obvious over Foley.
a. User profile
Patent Owner contends that the portfolio file described in Foley is not
a “user profile” as recited in claim 2 because the portfolio file incorporates
no components that are “user-specific information relating to an individual
using a computer,” according to the definition of a user profile provided in
the ’290 patent. See supra II.A.1. 33 PO Resp. 13–14. We are not
persuaded by Patent Owner’s argument. As Petitioner asserts, a portfolio
file in Foley contains references or links to a user’s project files, which are
created and named by the user. 33 Pet. 15 (citing 33 Ex. 1002, 7:66–8:13;
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33 Ex. 1003 ¶ 120). Foley also teaches that a user can create and name a
new portfolio and keep it private instead of making it available for public
use. 33 Ex. 1002, 7:66–8:13. Patent Owner’s expert, Dr. Plock, confirmed
these teachings of Foley and agreed that a profile containing a user’s
preferences of links is a profile including “user-specific information.”
See 33 Ex. 1014, 19:2–5, 19:16–21, 21:22–22:2. Thus, we find that Foley
teaches a user profile as recited in claim 2.
b. User profile distinct from user library
Patent Owner contends that Foley does not teach a “user profile”
separate from a “user library.” 33 PO Resp. 8–13. We disagree. In its
mapping between the disclosure of Foley and the limitations of claim 2,
Petitioner asserts that Foley’s portfolio file corresponds to the claimed “user
profile,” and the collection of a user’s project files in Foley corresponds to
the claimed “user library.” 33 Pet. 15–18. Patent Owner does not dispute
this mapping, but instead argues that Foley’s portfolio file and collection of
project files “describe the same thing.” 33 PO Resp. 9.
Based on the evidence and our reading of Foley, we agree with
Petitioner that Foley teaches a user profile (Foley’s portfolio file) that is
distinct from a user library (Foley’s collection of project files). As depicted
in Figure 5 of Foley, the portfolio file is a file that provides references or
links to individual project files. 33 Ex. 1002, 7:29–40. For example,
reference 162A1a (“Project1 URL/Name/home/Applet.prj”) in portfolio file
160A1 provides a link to project file 170A1 (“Applet.prj”). Id. at 7:38–40.
The collection of project files, on the other hand, is the plurality of
individual project files that can be linked from the portfolio file. Id. at
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Fig. 5; 33 Ex. 2003, 279:9–11 (Mr. Gray testifying that Foley’s “portfolio
file has pointers that point into the collection [of] projects that . . . comprise
the portfolio”); 33 Ex. 1003 ¶ 121. Contrary to Patent Owner’s argument, its
own expert, Dr. Plock, agreed that a portfolio file contains references to
project files and that the portfolio file is distinct from the collection of
project files. 33 Ex. 1014, 16:3–12. For these reasons, we are not persuaded
by Patent Owner’s contention that Foley fails to teach a user profile that is
separate from a user library.
c. Program stored on a non-volatile data storage device
Patent Owner’s final argument is that Foley does not disclose a single
program that performs all the functions recited in claim 2. 33 PO Resp. 17–
25. Instead, Patent Owner contends that Foley describes two separate
programs—JWS program 150 and JWS browser 154A—and that neither one
alone is operable to perform all the recited functions. Id. Specifically,
Patent Owner argues that the JWS program and JWS browser are not
“related” program modules and, therefore, together do not qualify as a
“program” as that term is defined in the ’290 patent. Id. at 18; see supra
II.A.1 (defining “program” as “[o]ne or more related program modules”).
We are not persuaded by Patent Owner’s argument. First, the
disclosure of Foley contradicts Patent Owner’s assertion, as it states
explicitly that “[t]he JWS program 150A has an integrated JWS Browser
154A that allows a user seamlessly to create and work with portfolios that
are remote . . . or local” and “the JWS program 150A incorporates a JWS
Browser 154A.” 33 Ex. 1002, 4:4–8, 4:59–60 (emphases added). Thus,
under the definition of “program” in the ’290 patent, a person of ordinary
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skill in the art would understand Foley’s JWS program to be a “program”
and the JWS browser to be one “program module” within the JWS program.
See 33 Reply 8.
Even if the JWS program and JWS browser are considered to be
separate program modules, as Patent Owner contends, we find they are
“related” program modules that together comprise a “program.” We are not
persuaded by the opinion of Patent Owner’s expert that the JWS browser
and JWS program have different features and capabilities and, therefore, are
not related. See, e.g., 33 Ex. 2001 ¶ 36. In addition to describing the JWS
browser as integrated within the JWS program, Foley states that the browser
is “employed by,” “triggered by,” or “under control of” the JWS program at
various times. 33 Ex. 1002, 2:66–67, 5:2–4, 13:6–8. Accordingly, the JWS
program and JWS browser described in Foley together satisfy the “program”
limitation recited in claim 2. See 33 Pet. 21–27, 32–43.
III. CONCLUSION
Based on the evidence and arguments, Petitioner has demonstrated by
a preponderance of the evidence that claims 2 and 3 of the ’290 patent are
anticipated by Kikinis under 35 U.S.C. § 102(b), and claims 2 and 3 would
have been obvious over Foley under 35 U.S.C. § 103(a).
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IV. ORDER
Accordingly, it is:
ORDERED that claims 2 and 3 of U.S. Patent No. 6,771,290 B1 are
unpatentable.
This is a final written decision. Parties to the proceeding seeking
judicial review of the decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.

FOR PETITIONER:
Clinton H. Brannon
Brian A. Rosenthal
MAYER BROWN, LLP
cbrannon@mayerbrown.com
brosenthal@mayerbrown.com

FOR PATENT OWNER:

Jason S. Angell
Robert E. Freitas
FREITAS TSENG & KAUFMAN LLP
jangell@ftklaw.com
rfreitas@ftklaw.com