Yahoo! Inc.v.CreateAds LLC

Patent Trial and Appeal Board

Apr 29, 2015

08268613 (P.T.A.B. Apr. 29, 2015)

Trials@uspto.gov Paper 42
571-272-7822 Entered: April 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

YAHOO! INC.,
Petitioner,

v.

CREATEADS LLC,
Patent Owner.
____________

Case IPR2014-00200
Patent 5,535,320
____________

Before MEREDITH C. PETRAVICK, JENNIFER S. BISK, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

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

I. INTRODUCTION
A. Background
On November 27, 2013, Google Inc. and Yahoo! Inc. filed a Petition
(Paper 1) pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes
review of claims 1–20 of U.S. Patent No. 5,535,320 (Ex. 1001, “the ’320
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patent”). A Corrected Petition (Paper 7, “Pet.”) was filed on December 18,
2013. CreateAds LLC (“Patent Owner”) filed a Preliminary Response
(Paper 9, “Prelim. Resp.”) to the Corrected Petition on March 17, 2014.
Pursuant to 35 U.S.C. § 314(a), the Board instituted trial on May 9, 2014, as
to claims 1–20. Paper 10 (“Institution Decision” or “Dec.”).
During the trial, Patent Owner timely filed a Patent Owner Response
(Paper 20, “PO Resp.”), and Petitioner timely filed a Reply to the Patent
Owner Response (Paper 25, “Reply”). An oral hearing was held on
February 2, 2015 (Transcript, Paper 41).
On November 7, 2014, the proceeding was terminated with respect to
Google Inc. Paper 27. On February 26, 2015, the proceeding was
terminated with respect to Yahoo! Inc. Paper 40. Although the proceeding
thus was terminated with respect to all petitioners, the proceeding itself was
not terminated, and we indicated our intention to proceed to this Final
Written Decision. Id. at 2.
We have jurisdiction under 35 U.S.C. § 6(c). This is a Final Written
Decision under 35 U.S.C. § 318(a) as to the patentability of the challenged
claims. Based on the record before us, Petitioner has demonstrated by a
preponderance of the evidence that claims 1–20 are unpatentable.

B. Related Proceedings
The ’320 patent is involved as an asserted patent in the following
district-court lawsuits between Patent Owner and the original petitioners:
CreateAds LLC v. Google Inc., Case No. 12-1606-GMS (D. Del.) and
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CreateAds LLC v. Yahoo! Inc., Case No. 12-1613-GMS (D. Del.). Petitioner
represents that the ’320 patent is also involved in thirty-three other
copending lawsuits in the United States District Court for the District of
Delaware, identified in Exhibit 1004. Pet. 1.

C. Grounds of Unpatentability
Petitioner relies on the following prior-art references.
Sieber US 5,649,216 July 15, 1997 (Ex. 1005)
Sieber PCT WO 92/21097 Nov. 26, 1992 (Ex. 1006)
Powell US 4,873,643 Oct. 10, 1989 (Ex. 1010)

Amari Thomas R. Amari, Automating the Design of
Packaging Families Using PackIT, The Packager’s
Inferencing Tool, 1–131 (1987) (Ex. 1009)

Feiner Steven Feiner, A Grid-Based Approach to Automating
Display Layout, Proc. Graph. Int. 1988, 192–97
(1988) (Ex. 1011)

The grounds on which we instituted review are summarized by the
following chart.
References Basis Claim(s) Challenged
Sieber § 102(e) 1, 2, 4–8, 10–15, and 17–20
Sieber PCT § 102(b) 1, 2, 4–8, 10–15, and 17–20
Amari § 102(b) 1, 2, 4–8, 10–15, and 17–20
Sieber and Amari § 103(a) 9
Sieber PCT and Amari § 103(a) 9
Sieber and Feiner § 103(a) 3, 5, 16, and 18
Sieber PCT and Feiner § 103(a) 3, 5, 16, and 18

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D. The ’320 Patent
The ’320 patent, titled “Method of Generating a Visual Design,”
issued on July 9, 1996, based on Application 08/268,613, filed July 1, 1994,
and claims priority under 35 U.S.C. § 119(a) to GB 9313761, filed July 2,
1993. The ’320 patent “relates to a method of generating a visual design for
[an] application, for example, in the field of advertising, packaging or
creating corporate images.” Ex. 1001, col. 1, ll. 8–10. The ’320 patent
describes three databases that contain information used in generating the
visual design: (1) a first database that stores “visual design elements,”
described as “typically includ[ing] logos, logotypes, graphics or other
images, icons and custom wording in predetermined fonts,” id. at col. 2,
ll. 51–53; (2) a second database that stores required “text elements,”
described as “typically includ[ing] predetermined words, phrases, and blocks
of text which may be descriptive or promotional in nature,” id. at col. 2,
ll. 55–57; and (3) a third database that “stores data relating to predetermined
design parameters which vary according to the visual design application
which is selected,” id. at col. 2, ll. 59–61. Examples of “visual design
applications” provided in the patent “include stationery, livery, signage,
environmental items or structures, interior and exterior design, packaging,
promotions and advertising.” Id. at col. 2, ll. 61–64.
Software uses these databases to generate a visual design, with the
’320 patent illustrating four basic kinds of calculation through a series of
flow diagrams: a reading-distance calculation, a scaling calculation, a
positioning calculation, and an artwork-sizing calculation. Id. at col. 3,
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ll. 55–60. A user may input values for certain parameters, with the software
applying the calculations to determine values for other parameters used in
generating the visual design. For example, if a user inputs design
dimensions, the software may calculate the appropriate reading distance; if a
user inputs a desired reading distance, the software may calculate overall
dimensions of the design. Id. at col. 3, ll. 61–67. The various calculations
result in determining a size and position for visual design elements and/or
text elements in the visual design. Id. at col. 4, ll. 1–25.
Claim 1 is illustrative of the challenged claims:
1. A method of generating a representation of a visual design
comprising:
storing data defining a plurality of visual design
elements;
storing data defining a plurality of predetermined design
parameters;
selecting one of a plurality of predetermined visual
design applications, wherein each one of said plurality of
predetermined visual design applications is associated with one
or more of said plurality of predetermined design parameters;
selecting at least one visual design element for inclusion in the
visual design;
generating a visual design utilizing the selected visual
design element, the size and position of the element in the
visual design being determined by the predetermined design
parameters associated with the selected design application; and
generating a representation of the visual design.

Id. at 45–62.
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II. ANALYSIS
A. Claim Construction
The ’320 patent expired on July 1, 2014. See Paper 19, 2. The Board
interprets claims of an expired patent under principles similar to those used
during a district court’s review. See In re Rambus, Inc., 694 F.3d 42, 46
(Fed. Cir. 2012). We are guided by the principle that the words of a claim
“are generally given their ordinary and customary meaning,” as understood
by a person of ordinary skill in the art in question at the time of the
invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005)
(en banc). “In determining the meaning of the disputed claim language, we
look principally to the intrinsic evidence of record, examining the claim
language itself, the written description, and the prosecution history, if in
evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d
1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). There is
a “heavy presumption,” however, that a claim term carries its ordinary and
customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
1366 (Fed. Cir. 2002) (internal citation omitted).

1. Claim Terms Previously Construed
In the Institution Decision, entered before expiration of the ’320
patent, we construed claim terms as reproduced in the table below, using the
broadest reasonable construction in light of the specification of the patent in
which they appear. Dec. 6–11.

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Claim Term Construction in the Institution Decision
“visual design elements” logos, logotypes, graphics or other images,
and wording in predetermined fonts each
provide examples of “visual design
elements”
“text elements” words, phrases, and blocks of text each
provide examples of “text elements”
“predetermined design
parameters”
“predetermined parameters that affect the
appearance of the visual design”
“storing data defining . . .” “recording [specified] information”
“predetermined visual design
applications”
“predetermined implementations for a visual
design”
“livery” “an emblem, device, and/or distinctive color
on a vehicle, product, uniform, or other
clothing, etc., indicating its owner or
manufacturer”

After expiration of the ’320 patent, we reconsidered our initial claim
construction, concluding that construction under the principles applicable to
expired patents “does not change our construction.” Paper 19, 3. We have
reconsidered our construction again in light of further development of the
parties’ positions during the trial, and conclude that there is no compelling
reason to modify our constructions of “visual design elements,” “text
elements,” “predetermined design parameters,” “predetermined visual
design applications,” or “livery.” See, e.g., Facebook, Inc. v. Pragmatus AV,
LLC, 582 Fed.Appx. 864, 869 (Fed. Cir. 2014) (nonprecedential) (“The
broadest reasonable interpretation of a claim term may be the same as or
broader than the construction of a term under the Phillips standard”)
(emphasis added).
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“storing data defining . . .”
Patent Owner contends that, under the Phillips standard, a person of
ordinary skill in the art would construe each of “storing data defining a
plurality of visual design elements,” “storing data defining a plurality of
predetermined design parameters,” and “storing data defining a plurality of
text elements” as requiring organization of the recited data in a database.
PO Resp. 8–10, 12–14, 16–17. Patent Owner directs our attention to
Fotomedia Techs, LLC v. AOL, LLC, Civil Action Nos. 2:07-cv-255 and
2:07-cv-256, 2009 WL 2175845, at *16 (E.D. Tex. July 21, 2009), as
standing for the proposition that the claim term “storing” should be
construed to require database storage “when the specification expressly, and
solely, describes storage in a database.” See id. at 9–10. Patent Owner
observes that the specification of the ’320 patent “repeatedly and
consistently states that the visual design elements are stored in a database.”
Id. at 9; see id. at 13 (similar observation for storage of predetermined
design parameters), 16 (similar observation for storage of text elements).
Petitioner does not address the reasoning of the District Court Magistrate
Judge in Fotomedia in its Reply.
Patent Owner also supports its proposed construction with testimony
by Craig E. Wills, Ph.D.,1 who attests that
a person of ordinary skill in the art in 1993 would have
understood . . . that for visual design elements to be selected
from a storage medium for inclusion in a visual design

1 As discussed infra, we deny Petitioner’s motion to exclude the testimony
of Dr. Wills.
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application, one would have understood that the claimed visual
design elements must be organized and stored in a database to
be made available for selection.

Ex. 2000 ¶ 19; see id. ¶ 22 (similar opinion for storage of predetermined
design parameters), ¶ 25 (similar opinion for storage of text elements).
Notably, the claims recite “storing” the various forms of data in combination
with selection of at least one of the respective data. Although Petitioner
challenges Patent Owner’s proposed construction, it appears not to have
cross-examined Dr. Wills to explore further the basis for his opinion. See
Reply 2–4. Petitioner also does not direct us to any disclosure in the
specification of any other way of storing the recited forms of data.
We are persuaded that, under the construction afforded claims of an
expired patent, the reasoning of Fotomedia is applicable and the claimed
combination of selection of at least one of the respective data with “storing”
the different forms of data supports a construction of “storing data defining
. . .” as requiring storage in a database. But to the extent that Patent Owner’s
proposed constructions demand different databases for the different forms of
data, we disagree. Although the specification of the ’320 patent makes
reference to “first,” “second,” and “third” databases (see, e.g., Ex. 1001, col.
2, ll. 53–61), Patent Owner has not identified sufficient rationale for
incorporating such a distinction into the claims. “Although the claims are
interpreted in light of the specification, limitations from the specification are
not read into the claims.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993).
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We also disagree with Patent Owner’s contentions that (1) the “data
defining” a “visual design element” must include its height and width; and
(2) the “data defining” a “plurality of predetermined design parameters”
must include parameters identifying size and position of the elements in a
visual design. Both of these contentions improperly attempt to import
limitations from the specification by imposing constraints on data storage
that are neither recited explicitly in the claims nor demanded by the
relationship with other elements recited in the claims.
Accordingly, we construe “storing data defining . . .” as “recording, in
a database, information defining . . . .”

2. “entering data corresponding to a
permitted range of variables in the selected design application”

Each of claims 4 and 17 recites “entering data corresponding to a
permitted range of variables in the selected design application.” Patent
Owner proposes that this limitation be construed as “entering a value within
a predetermined range of values associated with the selected design
application.” PO Resp. 17–18. Patent Owner reasons that one of ordinary
skill in the art would understand that a “permitted” range must be
determined in advance of entering a value within the range, and supports its
reasoning with testimony by Dr. Wills. Id. at 18 (citing Ex. 2000 ¶ 26).
Patent Owner also observes that the abstract of the ’320 patent explains that
“[t]hese parameters, together with user-entered variables within a
predetermined range adjust the relative size of each element and the
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juxtaposition in the elements in the final design.” Id. (citing Ex. 1001,
Abst.).
Petitioner disagrees with Patent Owner’s proposed construction,
contending that “range of variables” would have been understood by one of
ordinary skill in the art to mean a “list of variables,” not “the values of the
variables,” supporting its proposal with testimony by Dr. Arthur M. Keller.
Reply 4–5 (citing Ex. 1023 ¶¶ 23–25). Petitioner contends that its proposed
construction is supported by the specification of the ’320 patent by
describing several variables. Id. at 5.
We find that Petitioner’s proposed construction requires a less natural
reading of the limitation, particularly in light of the language identified by
Patent Owner in the patent’s abstract. In addition, Dr. Keller acknowledged
at his deposition that “there are two alternative interpretations of the phrase
‘corresponding to a permitted range of variables,’” including the one
advanced by Patent Owner. Ex. 1022, 68:23–69:8.
We construe the limitation as proposed by Patent Owner, i.e., as
“entering a value within a predetermined range of values associated with the
selected design application.”

B. Petitioner’s Motion to Exclude
Petitioner moves to exclude the declaration testimony of Patent
Owner’s witness, Dr. Wills (Ex. 2000). Paper 30. Petitioner contends that
Patent Owner has not qualified Dr. Wills as an expert and that his
declaration is conclusory in nature because he fails to state what materials he
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considered and what methodology he used in creating his declaration. Id. at
1. Petitioner timely objected to Dr. Wills’s declaration. Ex. 1024.
“A witness who is qualified as an expert by knowledge, skill,
experience, training, or education may testify in the form of an opinion or
otherwise if” certain conditions are met. Fed. R. Evid. 702. Although
Patent Owner did not provide a copy of Dr. Wills’s curriculum vitae (Ex.
2003) with his declaration, the summary description of Dr. Wills’s education
and experience in the declaration itself qualifies him as an expert on the
issues addressed in his declaration. Dr. Wills declares under penalty of
perjury that he holds baccalaureate and advanced degrees in computer
science and has taught courses on “User Interface Design, in which visual
design was one of the topics of the course.” Ex. 2000 ¶¶ 1–4.
In considering whether Dr. Wills’s opinions are deficient for failing to
articulate sufficiently what materials he considered and what methodology
he sued, we observe that his declaration is limited in scope. It provides
some background description of the technology at issue (id. ¶¶ 6–10), a brief
overview of the ’320 patent (id. ¶¶ 11–12), an evaluation of the level of
ordinary skill in the art (id. ¶¶ 13–16), and an expression of his opinion of
how a person of ordinary skill in the art would understand certain terms
appearing in the claims (id. ¶¶ 17–30). This information is helpful in
developing appropriate claim constructions and requires no unusual or
elaborate methodology. Notably, Dr. Wills does not testify to any opinion
whether the claim elements are taught or suggested by any of the prior art
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applied in any of the grounds upon which we instituted this inter partes
review.
For these reasons, we decline to exclude the testimony of Dr. Wills.

C. Anticipation of Claims 1, 2, 4–8, 10–15, and 17–20
by Sieber and Sieber PCT

Sieber and Sieber PCT both developed from the same original
application filed in the United States and share much of the same
specification. They “relate[] to electronic publishing, and more particularly,
to a system for automatically generating the page layout of a printed
document from use-defined text and graphic elements.” Ex. 1005, col. 1, ll.
16–19; Ex. 1006, 2.2 Petitioner contends that claims 1, 2, 4–8, 10–15, and
17–20 are anticipated by Sieber and are anticipated by Sieber PCT. Pet. 11–
28.
Figure 2 of Sieber and Sieber PCT is reproduced below.

2 Exhibit 1006 has two sets of pagination, the original pagination of the
reference and pagination added by Petitioner. We cite to the original
pagination of the reference.
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Figure 2 illustrates an example of a document to which Sieber and Sieber
PCT may be applied, in the form of a business card. Ex. 1005, col. 5, ll. 3–
6; Ex. 1006, 8. A database of page specifications is stored, with each page
specification generically describing the page layout of the document. Ex.
1005, col. 4, ll. 61–65; Ex. 1006, 8. The page layout corresponding to the
example of Figure 2 includes (1) graphic element G1, which is “represented
by a data structure . . . having the user-definable attributes of location, size,
and actual graphic data,” Ex. 1005, col. 5, ll. 21–23, Ex. 1006, 9; and (2) text
elements T1–T6, which are represented by data structures that “have the
user-definable attributes of font style, character string, size, and location,”
Ex. 1005, col. 5, ll. 17–20; Ex. 1006, 9. Other data structures define
unchangeable aspects of the page, and various constraints comprised by the
page specifications “describe various aspects of page 28 as well as the size
and placement of the text and graphic elements of document 30 and their
relationship to each other and to page 28.” Ex. 1005, col. 5, ll. 23–29; Ex.
1006, 9.
The principal difference between Sieber and Sieber PCT is the
disclosure of a second embodiment in Sieber, shown in Figures 5–8 and
described at column 8, line 41 – column 11, line 38, that does not appear in
Sieber PCT. Figure 6 of Sieber is reproduced below.
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Figure 6 illustrates a second example of a document to which Sieber may be
applied (but which does not appear in Sieber PCT), in the form of a greeting
card. Ex. 1005, col. 9, ll. 3–5. Sieber describes an artwork specification:
[A]rtwork specification 118 comprises a plurality of data
structures representing the graphic elements of the artwork, as
well as a plurality of constraints that dictate the relationships of
the graphic elements to one another as well as to any text
elements or other elements that might be incorporated into
greeting card 120 . . . . The significant feature is that each
artwork specification 118 describes how the other elements,
such as text or graphic elements should interact with the
placement of the artwork on the greeting card.

Ex. 1005, col. 9, ll. 10–46.
Graphic element G1 of Figure 2 and artwork A1 and A2 of Figure 6
are “visual design elements” as we have construed the term. Text elements
T1–T6 of Figure 2 and the text that may be placed within area T1 of
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Figure 6 are “text elements” as we have construed the term. The constraints
on size and placement of text and graphic elements described separately for
the first embodiment (see Ex. 1005, col. 5, ll. 23–29 and Ex. 1006, 9) and for
the second embodiment (see Ex. 1005, col. 9, ll. 10–48) disclose
“predetermined designed parameters” as we have construed the term. In
addition, each of the business-card and greeting-card applications are
stationery implementations for the visual design that correspond to
“predetermined visual design applications” as we have construed the term.
We have reviewed the evidence presented by Petitioner, including the
claim charts in the Petition (Pet. 13–28) and the Declarations of Dr. Keller
(Exs. 1012, 1023). Notwithstanding Patent Owner’s arguments, we are
persuaded that Petitioner has proved by a preponderance of the evidence that
Sieber and Sieber PCT each anticipate claims 1, 2, 4–8, 10–15, and 17–20.
We address specific arguments below.

1. “selecting one of a plurality of
predetermined visual design applications”

Patent Owner contends that neither Sieber nor Sieber PCT discloses
“selecting one of a plurality of predetermined visual design applications”
(emphasis added), as recited in independent claims 1 and 14, because Sieber
and Sieber PCT “are limited to a single implementation – stationery.” PO
Resp. 24–27. This contention introduces a further level of abstraction absent
from our construction of “predetermined visual design applications” as
“predetermined implementations for a visual design.” Nothing in our
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construction precludes multiple stationery implementations from
corresponding to “a plurality of predetermined visual design applications.”
Indeed, Petitioner identifies passages in the specification of the ’320 patent
inconsistent with Patent Owner’s position:
[I]n describing the purported problem to be solved, the
specification notes that confusion or brand dilution may arise
when “a particular trade mark may be applied to a number of
different products, with a number of different forms of
packaging, as well as being applied in advertising, signage, and
on letterheads.” These passages teach that visual design
“applications” may exist within a single subject matter category
(e.g., “packaging”), and may also span multiple subject matter
categories (e.g., “packaging,” “advertising,” “signage,” and
“letterheads.”) In addition, the fact that a given “application”
may fall within two or more subject matter categories—e.g., a
product package may be “packaging,” “promotions,” and
“advertising”—further confirms that the ’320 patent does not
contemplate a hard division between subject matter categories.

Reply 7 (citing Ex. 1001, col. 1, ll. 15–18 (emphases by Petitioner)) (other
citations omitted). Petitioner also supports its opposition to Patent Owner’s
introduction of a higher level of abstraction in discussing “subject matter
categories” with declaration testimony by Dr. Keller. Ex. 1023 ¶ 30.
Sieber and Sieber PCT disclose a “database [that] may contain
numerous page specifications.” Ex. 1005, col. 6, l. 19; Ex. 1006, 11. Each
such page specification “comprises a plurality of data structures representing
the text and graphic elements of [a] document 30.” Ex. 1005, col. 5, ll. 12–
14; Ex. 1006, 9. We find that the disclosure of such multiple page
specifications discloses “a plurality of predetermined visual design
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applications.” In addition, we find that Sieber and Sieber PCT’s disclosure
of “user interface subroutines which allow the user to select one of the page
specifications in [the] database 25” (Ex. 1005, col. 6, ll. 35–37; Ex. 1006,
12) discloses “selecting one of a plurality of predetermined visual design
applications.”

2. “entering data corresponding to a permitted range of variables
in the selected design application”

Each of dependent claims 4 and 17 recites “entering data
corresponding to a permitted range of variables in the selected design
application,” which we construe as “entering a value within a predetermined
range of values associated with the selected design application.” Patent
Owner contends that Petitioner’s identification of entering page dimensions,
aspect ratios, text, font styles, locations and sizes of elements is insufficient
to demonstrate that the limitation is disclosed by Sieber or Sieber PCT
because “[s]imply entering information . . . does not indicate that there is a
‘permitted range.’” PO Resp. 29.
Patent Owner identifies aspect ratio as a choice “which may be
limited.” Id. Sieber and Sieber PCT disclose that, in some instances, “the
user will be prompted to enter the desired dimensions of the page 28, as well
as the desired aspect ratio, i.e., portrait or landscape format, if applicable.”
Ex. 1005, col. 7, ll. 56–58; Ex. 1006, 15. Patent Owner’s argument that
“there is no indication from these vague statements as to whether Sieber
provides a predetermined range of values or whether it is limited to a single
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value” does not impugn that the states of “portrait” and “landscape” define a
“predetermined range of values.” See PO Resp. 30. Rather, Patent Owner
suggests that Sieber and Sieber PCT’s assertion that prompting the user to
enter a desired aspect ratio “if applicable” does not rule out possibilities
when no such choice is afforded to the user. See id. This is unpersuasive.
Sieber and Sieber PCT clearly contemplate circumstances in which the user
enters a value (“portrait” or “landscape”) within a predetermined range of
values (“portrait” and “landscape”) associated with the selected design
application.
We also note that Dr. Keller opines that Sieber and Sieber PCT’s
disclosure of design constraints effectively imposes limits on the variables
for which a user is prompted to enter values. See Ex. 1023 ¶ 41. Patent
Owner does not identify adequately controverting evidence. Petitioner’s
argument that the Petition’s identification of “page dimensions, object
locations, previously stored graphics, and font options as other variables in
Sieber and Sieber PCT, for which the user can enter data corresponding to
each variable” (Reply 11) thus is supported by sufficient evidence.

3. “text elements include predetermined words,
phrases, and blocks of text”

Claim 6 recites that “the text elements include predetermined words,
phrases and blocks of text.” Patent Owner contends that this limitation is
not directed to nonfunctional descriptive material and that it is not disclosed
by Sieber or Sieber PCT. PO Resp. 31–34. We need not decide the former
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contention because we are persuaded by Petitioner that the limitation, in any
event, is disclosed by Sieber and Sieber PCT.
Petitioner identifies Sieber and Sieber PCT’s disclosure of storing
“user-defined character strings,” and Sieber PCT’s disclosure of a database
that “contains a plurality of pre-written message texts that are not associated
with any particular type of artwork,” examples of which include generic
holiday greetings and famous quotations. Pet. 20 (citing Ex. 1005, col. 10,
ll. 15–29); see Ex. 1006, 5. Patent Owner’s contention that “‘user-defined
character strings’ are not ‘predetermined’” because they are determined at
the instant the user creates them is not persuasive. See PO Resp. 33.
Although they may be “determined” in the first instance at that time, Sieber
and Sieber PCT teach storing them so that their subsequent use thereafter is
“predetermined.” See Ex. 1005, col. 3, ll. 7–8; Ex. 1006, 5. And Patent
Owner’s argument that “the Petition does not specify which, if any, of the
joke, holiday greeting or famous quotation anticipate the ‘predetermined
words, phrases and blocks of text’ limitation” is also unpersuasive because
each of those message texts includes predetermined words, phrases, and
blocks of text. See PO Resp. 33–34.

4. “visual design elements include . . .
wording in predetermined fonts”

Claims 7 and 8 recite that “the visual design elements include logos,
logotypes, graphics or other images, and wording in predetermined fonts.”
The Petition identifies a graphic element “such as a corporate logo or other
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symbols associated with the card holder’s business or trade” as a visual
design element that includes wording in predetermined fonts. Pet. 20–21
(citing Ex. 1005, col. 5, ll. 45–48; Ex. 1006, 10). We disagree with Patent
Owner’s assertion that “[t]he Petition does not state or suggest that the
corporate logo or symbol for the graphic element G1 is ‘wording in
predetermined fonts.’” PO Resp. 35. The Petition includes a chart to
illustrate that “[e]ach and every element of claims 1-20 is disclosed in each
of Sieber and Sieber PCT” (Pet. 13), with the text of claim 7 reproduced
beside the disclosure of Sieber and Sieber PCT describing a corporate logo
or other symbol as an example of graphic element G1. We determine that
the cited portions of the references adequately disclose what Patent Owner
contends is absent from the Petition.

5. “each of the plurality of predetermined visual design applications
has its own predetermined design parameters, which are related to the
predetermined design parameters of one or more of the other visual design
applications”

Claims 10 and 19 each recite that “the plurality of predetermined
visual design applications has its own predetermined design parameters,
which are related to the predetermined design parameters of one or more of
the other visual design applications.” In considering this limitation, we note
that “related” is a broad term that may be satisfied in a variety of different
ways. Although Patent Owner contends that it is “unclear” how the portions
of Sieber and Sieber PCT cited by Petitioner meet the limitation (PO Resp.
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36–37), Petitioner’s observation that page specifications contain common
elements is sufficient to show relatedness. See Pet. 22, 27–28; Reply 14.

6. Summary
Based on our consideration of the evidence presented by Petitioner
and the arguments detailed above, we are persuaded that Petitioner has
proved by a preponderance of the evidence that claims 1, 2, 4–8, 10–15, and
17–20 are anticipated by Sieber and that claims 1, 2, 4–8, 10–15, and 17–20
are anticipated by Sieber PCT.

D. Anticipation of Claims 1, 2, 4–8, 10–15, and 17–20 by Amari
Amari is a thesis that Petitioner represents “was catalogued and
publicly accessible in the library of the Massachusetts Institute of
Technology in December 1987.” Pet. 28 (citing Exs. 1007–1009, 1014
¶¶ 10–13). Patent Owner does not contest the availability of Amari as prior
art to the ’320 patent. Petitioner contends that claims 1, 2, 4–8, 10–15, and
17–20 are anticipated by Amari. Pet. 28–41.
Amari describes PackIT, The Packager’s Inferencing Tool
(“PackIT”), “a rule-based expert system . . . to assist designers in the layout
of package families or product lines.” Ex. 1009, 6–7. A workstation
“incorporates two and three dimensional design facilities, knowledge-based
graphics, sound as a user interface, and a high-quality output.” Id. at 9. A
user of the workstation has access to computerized “paintbox” tools, which
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are a set of programs that enable the user “to create and edit individual
graphic objects which are to appear on the package layout.” Id.
Individual graphic objects to appear on the package are created, and
may be “digitized images, text objects, or objects painted using the paintbox
system.” Id. at 89. A “knowledge base contains a number of graphic design
rules [that] serve as a filter and a source of guidance for PackIT’s
user[, who] may then specify the particular package characteristics . . . such
as size, shape, marketing area, etc.” Id. at 15. PackIT applies the rules to
lay out the graphic objects, perhaps including resizing, reshaping, cropping,
exchanging, or eliminating some of them, after which the user may manually
reposition the elements. Id.
In its claim charts at pages 30–54, Petitioner maps several elements
disclosed by Amari to recitations in the claims, including the following:

Amari

Claim recitations
“layout” “visual design”
“graphic objects” “plurality of visual design elements”
“design rules” “plurality of predetermined design
parameters”
“package types” “plurality of predetermined visual design
applications”
“computer display” “representation”
“text objects” “data defining a plurality of text elements”

Such mappings are consistent with our claim construction. We note
that Amari discloses that PackIT may be implemented on a computer
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(“Bobcat”) that “provides a Starbase graphics library with hardware support
of 2D and 3D graphics primitives,” i.e., records, in a database, information
defining a plurality of visual design elements. See Pet. 30 (citing Ex. 1009,
81). In addition, PackIT’s knowledge base functions as a database that
records information defining a plurality of predetermined design parameters.
See Pet. 30 (citing Ex. 1009, 89).
We have reviewed the evidence presented by Petitioner, including the
claim charts in the Petition (Pet. 30–54) and the declarations of Dr. Keller
(Exs. 1012, 1023). Patent Owner presents arguments that generally parallel
those made in response to the Sieber and Sieber PCT anticipation grounds.
PO Resp. 40–49. We are persuaded, notwithstanding Patent Owner’s
arguments, that Petitioner has proved by a preponderance of the evidence
that Amari anticipates claims 1, 2, 4–8, 10–15, and 17–20. We address
specific arguments below.

1. “selecting one of a plurality of
predetermined visual design applications”

Patent Owner contends that the portions of Amari cited by Petitioner
“do not describe a step of ‘selecting.’” Id. at 41. Patent Owner
acknowledges that the portions of Amari cited by Petitioner “state[] that a
package family may consist of multiple types of packages which are
design[ed] according to rules.” Id. Such a characterization of the portions
of Amari cited by Petitioner is too narrow because Amari explains that the
design of “each package in a family . . . is subject to a number of strict
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rules.” Ex. 1009, 2 (emphasis added). It reasonably follows that use of the
method described by Amari to design a package requires “selecting” the
design rules for the package from among the rules for the family.
Similar to its argument directed at Sieber and Sieber PCT, Patent
Owner also contends that Amari “only discusses a single visual design
implementation – packaging.” PO Resp. 41. As explained in our analysis of
Sieber and Sieber PCT, this argument introduces a further level of
abstraction absent from the claim construction we adopt, which does not
preclude multiple packaging implementations from corresponding to “a
plurality of predetermined visual design applications.” See supra § C.1.
For these reasons, we find that Amari discloses “selecting one of a
plurality of predetermined visual design applications.”

2. “entering data corresponding to a permitted range of variables
in the selected design application”

Similar to its argument directed at Sieber and Sieber PCT, Patent
Owner contends that Amari does not disclose “entering data corresponding
to a permitted range of variables in the selected design application,” as
recited in dependent claims 4 and 17. PO Resp. 42–44. Patent Owner
argues that the portions of Amari cited by Petitioner “do[] not discuss any
limits on size imposed by the paintbox module, or any limits imposed on
positions defined when building a position tree.” Id. at 43. But Petitioner’s
analysis is supported by the uncontroverted testimony of Dr. Keller, which
we credit, that modifications to the appearance and position of objects
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created using the “paintbox” tool of Amari require the entry of data
corresponding to a value within a predetermined range of values. See Ex.
1023 ¶ 42.
We find that Petitioner has shown that Amari discloses “entering data
corresponding to a permitted range of variables in the selected design
application.”

3. “text elements include predetermined words,
phrases, and blocks of text”

Similar to its argument directed at Sieber and Sieber PCT, Patent
Owner contends that Amari does not disclose that the “text elements include
predetermined words, phrases, and blocks of text,” as recited in dependent
claim 6. PO Resp. 44–46. Patent Owner focuses on one of the examples
provided by Petitioner in its claim chart, namely the creation of text shown
in Figure 10.1 of Amari. Id.; see Ex. 1009, 90. Patent Owner contends that
“there is no indication . . . that ‘Vittles’ is a ‘predetermined’ word . . . , and,
at best, this is a single word, not predetermined ‘words’ (plural) or ‘phrases
and blocks of text.’” PO Resp. 45.
Patent Owner’s focus on this example is selective and does not
address other examples provided in Petitioner’s claim chart, including
examples shown in Figures 1.1 and 4.6 of Amari. See Pet. 35. Those
figures show packages amenable to design by the PackIT system that include
multiple words and phrases organized as blocks of text. As Petitioner and
Dr. Keller assert, company names (such as “Polaroid,” which appears in the
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example of Figure 4.6) are “predetermined words.” See id.; see Ex. 1012
¶ 76. Accordingly, we find that Petitioner has shown that Amari discloses
that the “text elements include predetermined words, phrases, and blocks of
text.”

4. “visual design elements include . . . logotypes,
graphics or other images, and wording in predetermined fonts”

Patent Owner contends that Petitioner has not established adequately
that Amari discloses that “visual design elements include . . . logotypes,
graphics or other images, and wording in predetermined fonts,” as recited in
dependent claim 7. PO Resp. 46–47. First, we are not persuaded by Patent
Owner’s argument that the portions of Amari cited by Petitioner “are
generalized discussions of package design, not the capabilities of the PackIT
system.” Id. at 47. Even if the identified disclosures are “generalized
discussions of package design,” they are made in the context of the types of
designs that may be generated with the PackIT system (“PackIT’s rule base
contains general rules of graphic design as well as the packaging rules of a
hypothetical company” (Ex. 1009, 8)).
Second, we are not persuaded by Patent Owner’s distinction between
the “predetermined fonts” recited in the claim and the “typefaces” described
by Amari. See PO Resp. 47. Patent Owner has proffered no claim
construction of “predetermined fonts” inconsistent with the use of typefaces
described by Amari, and has provided no explanation of the distinction it
wishes to draw beyond a vague assertion that “[a]lthough a typeface may
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relate to a font, the quoted portions of Amari do not discuss any ‘wording’ in
such typefaces.” See id.
Accordingly, we find that Petitioner has shown that Amari discloses
that “visual design elements include . . . logotypes, graphics or other images,
and wording in predetermined fonts.”

5. “each of the plurality of predetermined visual design applications
has its own predetermined design parameters, which are related to the
predetermined design parameters of one or more of the other visual
design applications”

Similar to its argument directed at Sieber and Sieber PCT, Patent
Owner contends that Amari does not disclose that “each of the plurality of
predetermined visual design applications has its own predetermined design
parameters, which are related to the predetermined design parameters of one
or more of the other visual design applications,” as recited in dependent
claims 10 and 19. PO Resp. 47–49. First, we are not persuaded by Patent
Owner’s argument that the portions of Amari cited by Petitioner “are
generalized discussions of package design, not the capabilities of the PackIT
system” because of the broad context in which Amari describes the types of
designs that may be generated with the PackIT system. See supra § D.4.
Second, we are not persuaded by Patent Owner’s argument that
Petitioner has failed to show that Amari discloses that predetermined design
parameters are “related” among multiple visual design applications. See PO
Resp. 48. As we explain supra, § C.5, “related” is a broad term that may be
satisfied in a variety of ways, and Amari specifically discloses its objective
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of maintaining consistency through a product line (“In developing PackIT,
the relationships that may exist throughout the members of a typical product
line or package family have been formally defined and incorporated as rules
within the knowledge base,” Ex. 1009, 8).

6. Summary
Based on our consideration of the evidence presented by Petitioner
and the arguments detailed above, we are persuaded that Petitioner has
proved by a preponderance of the evidence that claims 1, 2, 4–8, 10–15, and
17–20 are anticipated by Amari.

E. Claim 9
Claim 9 recites that “the predetermined visual design applications
include stationery, livery, signage, packaging, promotions and advertising
applications.” Petitioner contends that claim 9 is unpatentable under 35
U.S.C. § 103(a) over Sieber and Amari and over Sieber PCT and Amari.
Pet. 56.
Petitioner contends that “the subject matter of claim 9 would have
been obvious in view of the teachings of [Sieber or Sieber PCT and] Amari
. . . , which . . . disclose[s] stationery, livery, signage, packaging,
promotions, and advertising applications.” Id. Patent Owner does not make
any specific argument for claim 9, but instead relies on its arguments that
neither Sieber nor Sieber PCT anticipates independent claim 1, from which
claim 9 depends. PO Resp. 49.
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Amari’s suggestion to use rule-based systems like PackIT in
generating designs is provided in the context of maintaining design
consistency over multiple products: “If a company has a number of related
products, it is of great importance that the designs project the company
identity throughout the line of product packages.” Ex. 1009, 7 (emphasis
added). Amari’s suggestion of extending PackIT to “the design of
letterheads, envelopes, business cards, and the like,” and to “advertising,
signs for corporate offices, and graphics displayed on company vehicles”
embraces each of the individual implementations recited in the claim. See
id., 58.
We conclude that Petitioner has proved by a preponderance of the
evidence that claim 9 is unpatentable under 35 U.S.C. § 103(a) over Sieber
and Amari and over Sieber PCT and Amari.

F. Claims 3, 5, 16, and 18
Claims 3 and 16 recite that “the predetermined design parameters
include an intended viewing distance for the visual design”; claims 5 and 18
recite a similar limitation. Petitioner contends that these claims are
unpatentable under 35 U.S.C. § 103(a) over Sieber and Feiner and over
Sieber PCT and Feiner. Pet. 56–60. We agree with Petitioner’s contentions.
Feiner describes automated layout of graphical displays. Ex. 1011,
192. In this context of graphical design, Feiner teaches a grid-based
approach to determining the size and position of objects displayed to a user,
explicitly disclosing consideration of intended viewing distance as a
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parameter for setting text and determining the size for graphical images. Id.
at 193. Specifically, Feiner teaches that the “normalized size [of a picture]
specifies the minimum width and height that the picture must have in order
to be understandable when viewed at a set distance. In conjunction with the
viewer’s distance[,] it determines the actual minimum size at which the
picture must be reproduced.” Id. As Petitioner asserts, Feiner is related to
the same field of endeavor as Sieber and Sieber PCT, i.e., graphic design.
Pet. 57. Petitioner reasons that, because each of Sieber, Sieber PCT, and
Feiner “expressly discloses generating visual designs for predetermined
applications with associated predetermined design parameters,” it would
have been obvious for a person of ordinary skill in the art to combine the
teachings of Sieber or Sieber PCT with well-known designer skills, as
exemplified by Feiner, to create visual designs based on intended viewing
distance. Id. (citing Ex. 1012 ¶¶ 45, 46, 106, 107).
Patent Owner does not make any specific argument directed at claims
3, 5, 16, and 18, but instead relies on its arguments that neither Sieber nor
Sieber PCT anticipates claims 2, 4, 15, or 17, from which those claims
respectively depend. PO Resp. 49.
We conclude that Petitioner has proved by a preponderance of the
evidence that claims 3, 5, 16, and 18 are unpatentable under 35 U.S.C.
§ 103(a) over Sieber and Feiner and over Sieber PCT and Feiner.

III. CONCLUSION
Petitioner has demonstrated by a preponderance of the evidence that:
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(1) claims 1, 2, 4–8, 10–15, and 17–20 are unpatentable under 35
U.S.C. § 102(e) as anticipated by Sieber;
(2) claims 1, 2, 4–8, 10–15, and 17–20 are unpatentable under 35
U.S.C. § 102(b) as anticipated by Sieber PCT;
(3) claims 1, 2, 4–8, 10–15, and 17–20 are unpatentable under 35
U.S.C. § 102(b) as anticipated by Amari;
(4) claim 9 is unpatentable under 35 U.S.C. § 103(a) over Sieber and
Amari;
(5) claim 9 is unpatentable under 35 U.S.C. § 103(a) over Sieber PCT
and Amari;
(6) claims 3, 5, 16, and 18 are unpatentable under 35 U.S.C. § 103(a)
over Sieber and Feiner; and
(7 ) claims 3, 5, 16, and 18 are unpatentable under 35 U.S.C. § 103(a)
over Sieber PCT and Feiner;

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, based on a preponderance of the evidence, claims 1–
20 of U.S. Patent No. 5,535,320 are held to be unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude the
declaration testimony of Craig E. Wills, Ph.D. (Ex. 2000) is denied; and
FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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PETITIONER:

C. Gregory Gramenopoulos
Richard L. Stroup
FINNEGAN, HENDERSON, FARABOW, GARRETT AND DUNNER,
LLP
gramenoc@finnegan.com
richard.stroup@finnegan.com

PATENT OWNER:

John R. Kasha
Kelly L. Kasha
KASHA LAW LLC
john.kasha@kashalaw.com
kelly.kasha@kashalaw.com