DoDots Licensing Solutions, LLC

Patent Trials and Appeals Board

Jan 19, 2021

IPR2019-01278 (P.T.A.B. Jan. 19, 2021)

Trials@uspto.gov Paper 37
571-272-7822 Entered: January 19, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

LENOVO HOLDING COMPANY, INC., LENOVO (UNITED STATES)
INC., and MOTOROLA MOBILITY LLC,
Petitioner,
v.
DODOTS LICENSING SOLUTIONS LLC,
Patent Owner.

IPR2019-01278
Patent 8,020,083 B1

Before JAMES A. WORTH, AMBER L. HAGY, and SHARON FENICK,
Administrative Patent Judges.
FENICK, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)
Granting-In-Part Petitioner’s Motion to Strike
37 C.F.R. 42.5

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I. INTRODUCTION
This is a Final Written Decision in this inter partes review
challenging the patentability of claims 1–16 of U.S. Patent No. 8,020,083 B1
(Ex. 1001, “the ’083 patent”). We have jurisdiction under 35 U.S.C.
§ 6(b)(4). This Final Written Decision is issued pursuant to 35 U.S.C.
§ 318(a) and 37 C.F.R. § 42.73.
Petitioner bears the burden of proving unpatentability of the
challenged claims, and the burden of persuasion never shifts to Patent
Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by
a preponderance of the evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R.
§ 42.1(d) (2018). Having reviewed the parties’ arguments and supporting
evidence, for the reasons discussed below, we find that Petitioner has not
demonstrated by a preponderance of the evidence that any of claims 1–16
are unpatentable. Additionally, for the reasons discussed below, in
Section III.G, we grant-in-part Petitioner’s Motion to Strike (Paper 31).
II. BACKGROUND AND SUMMARY
Procedural History
Lenovo Holding Company, Inc., Lenovo (United States) Inc., and
Motorola Mobility LLC (“Petitioner”) filed a Petition for an inter partes
review of claims 1–16 (“the challenged claims”) of the ’083 patent. Paper 2
(“Pet.”). DoDots Licensing Solutions LLC (“Patent Owner”) did not file a
Preliminary Response. In view of the preliminary record, we concluded that
Petitioner satisfied the burden, under 35 U.S.C. § 314(a), to show that there
was a reasonable likelihood that Petitioner would prevail with respect to at
least one of the challenged claims. Accordingly, we instituted an inter
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partes review of all the challenged claims, on all of the asserted grounds.
Paper 8 (“Inst. Dec.”).
Patent Owner filed its Response. Paper 20 (“PO Resp.”). Petitioner
filed a Reply. Paper 22 (“Reply”). After receiving authorization, Patent
Owner filed a motion to strike certain portions of the Reply and exhibits
referenced, and Petitioner filed an opposition. Paper 24; Paper 25. In an
order relating to this motion to strike, we granted Patent Owner’s motion and
determined that a certain portion of the Reply was untimely and, along with
certain exhibits, would not be considered. Paper 26, 4–7.
Patent Owner filed a Sur-reply. Paper 28 (“Sur-reply”). After
receiving authorization, Petitioner filed a motion to strike Patent Owner’s
Sur-reply and a supplemental declaration filed with the Sur-reply. Paper 31
(“Pet. Mot.” or “Petitioner’s Motion to Strike”). Patent Owner filed an
opposition. Paper 32 (“PO Opp.”). We address Petitioner’s Motion to
Strike, infra Section III.G, and grant the motion with respect to the
supplemental declaration, but deny the motion with respect to the Sur-reply.
On October 28, 2020, we held an oral hearing, the transcript of which
is of record. Paper 36 (“Tr.”).
Real Parties in Interest
Petitioner indicates that Lenovo Holding Company, Inc., Lenovo
(United States) Inc., and Motorola Mobility LLC are the real parties-in-
interest. Pet. 65.
Patent Owner indicates that DoDots Licensing Solutions, LLC is the
real party-in-interest. Paper 5 (Patent Owner’s Mandatory Notices), 2.
Related Matters
According to Petitioner and Patent Owner, the ’083 patent at issue
here is also asserted in DoDots Licensing Solutions LLC v. Lenovo Holding
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Company, Inc., et al., No. 18-098-MN (D. Del.) (“the related district court
action”). Pet. 65–66; Paper 5, 2. Petitioner notes that the related district
court action also involves U.S. Patent Nos. 9,369,545 (“the ’545 patent”)
and 8,510,407 (“the ’407 patent”), and that Petitioner filed a petition for
inter partes review of the patentability of certain claims in the ’545 patent in
IPR2019-00988 (final written decision finding no claims unpatentable
issued, see IPR2019-00988, Paper 37 (Sept. 9, 2020)) and a petition for an
inter partes review of the patentability of certain claims in the ’407 patent
(final written decision finding no claims unpatentable issued, see IPR2019-
01279, Paper 37 (Jan. 5, 2021)). Pet. 66.
The ’083 Patent
The title of the ʼ083 patent is “System and Methods for Creating and
Authoring Internet Content Using Application Media Packages.” Ex. 1001,
code (54). The ’083 patent discloses, in part, a software component for
accessing and displaying network content. Id. at code (57). This
component, termed an “Application Media Package” or “Dot,” is a “fully
configurable frame with one or more controls” with content optionally
presented through the frame. Id. at 3:57–59, 5:40–48. When a Dot is
opened by a user, the frame is presented in the user’s display, and network
content is retrieved and presented in a viewer enclosed by the frame. Id. at
23:5–17. The network content may be identified via URLs included in the
Dot. Id. at code (57), 13:47–52, 14:14–16. The Specification describes that
the Dot “stands in contrast to present web browsers, which are branded by
the browser vendor and which have limited means by which to alter the
controls associated with the browser.” Id. at 5:44–48.
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A server may store a number of Dots and provide a Dot to a client
system upon request. Id. at 7:5–23, 20:63–21:42, 22:53–23:19, Figs. 1, 6, 8.
A user at the client system may then store or use the Dot. Id. at 23:20–62.
Illustrative Claim
Claims 1 and 9 are the only independent claims among the challenged
claims. Claim 1 is reproduced below with Petitioner’s limitation
designations added in brackets for ease of reference:
1. [1.Preamble] A client device, the client device comprising:
[1.A] electronic storage having stored thereon a plurality of
networked information monitor templates defining a
plurality of networked information monitors, the plurality
of networked information monitor templates comprising a
first networked information monitor template defining a
first networked information monitor, wherein the first
networked information monitor template comprises:
[1.B] (1) a content reference that comprises a network
location at which content for the first networked
information monitor is accessible via a TCP/IP
protocol;
[1.C] (2) a definition of a graphical user interface of the
first networked information monitor that lacks
controls for manually navigating a network, and that
includes a frame within which content received
from the network location can be displayed, and
frame characteristics defining one or more a color,
a size, or a position on the electronic display of the
frame; and
[1.D] (3) instructions configured (i) to cause the first
networked information monitor to request content
from the network location in the content reference
via the TCP/IP protocol, and [1.E] (ii) to cause the
first networked information monitor to generate the
graphical user interface of the first networked
information monitor with the content received from
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the network location via the TCP/IP protocol within
the frame;
[1.F] an electronic display; and
[1.G] one or more processors configured to access the first
networked information monitor template, and to execute
the first networked information monitor template such that
the graphical user interface of the first networked
information monitor is presented to a user on the electronic
display having content received from the content reference
therein.
Evidence
Petitioner relies on the following references:
Reference Description Date Exhibit
Van Hoff et al.
(“Hoff”)1
US 5,919,247 Issued July 6, 1999 Ex. 1004
Berg Cliff Berg, How Do I
Create a Signed
Castanet Channel?, DR.
DOBB’S JOURNAL
Jan. 1, 1998 Ex. 1007
Razavi et al.
(“Razavi”)
US 6,401,134 B1 Issued June 4, 2002 Ex. 1009
Andersen US 5,999,941 Issued Dec. 7, 1999 Ex. 1006

1 The last name of the first-named inventor is Van Hoff, but, for consistency
with the Petition, we refer to this patent as “Hoff.”
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Asserted Grounds
Petitioner asserts that claims 1–16 would have been unpatentable on
the following grounds:
Claim(s) Challenged 35 U.S.C. §2 Reference(s)/Basis
1–16 103 Hoff, Berg
1–16 103 Razavi, Andersen

III. ANALYSIS
Legal Standards
It is a petitioner’s burden to demonstrate unpatentability.
See Dynamic Drinkware, 800 F.3d at 1378 (citing Tech. Licensing Corp. v.
Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)).
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are “such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved based on underlying factual
determinations, including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of skill in the art; and (4) objective evidence of nonobviousness, i.e.,
secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966). “To satisfy its burden of proving obviousness, a petitioner cannot
employ mere conclusory statements. The petitioner must instead articulate
specific reasoning, based on evidence of record, to support the legal

2 Because the claims at issue have an effective filing date prior to the
effective date of the AIA’s amendments to 35 U.S.C. § 103, we apply the
pre-AIA version of § 103 in this Decision.
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conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
1364, 1380 (Fed. Cir. 2016). We analyze the asserted grounds with the
principles stated above in mind.
Level of Ordinary Skill in the Art
Petitioner asserts that a person of ordinary skill in the art “would have
a bachelor’s degree in Electrical or Computer Engineering, Computer
Science, or a related field and have three or more years of corresponding
industry work experience.” Pet. 5 (citing Ex. 1003 ¶ 39). Patent Owner
does not provide an alternative description of the proper level of ordinary
skill or comment on Petitioner’s proposal.
Petitioner’s proposal appears to be consistent with the prior art of
record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
(explaining that specific findings regarding ordinary skill level are not
required where the prior art itself reflects an appropriate level and a need for
testimony is not shown). We adopt this proposal for this Final Written
Decision.
Claim Construction
In an inter partes review based on a petition filed after November 13,
2018, the claims are construed
using the same claim construction standard that would be used to
construe the claim in a civil action under 35 U.S.C. [§] 282(b),
including construing the claim in accordance with the ordinary
and customary meaning of such claim as understood by one of
ordinary skill in the art and the prosecution history pertaining to
the patent.
See Changes to the Claim Construction Standard for Interpreting Claims in
Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
51,340, 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b)
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effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b)
(2019)); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
2005) (setting forth claim construction standard in civil actions). Any
special definitions for claim terms must be set forth in the specification with
reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
To resolve Petitioner’s challenge, the parties assert that three claim
terms need to be construed: “networked information monitor,” “networked
information monitor template” (or “NIM template”), and “execute” or
“executing” (as used, for example, in the claim terms “execute the first
networked information monitor template” in claim 1, “executing the first
networked information monitor template” in claim 9, and similarly in
dependent claims 5, 8, 12, and 16). PO Resp. 6–8; Reply 2–9; Sur-reply 2–7
(“The heart of the dispute between the parties with respect to claim
construction relates to the term ‘template’ as used in the phrase ‘networked
information monitor . . . template.’”). Each term is introduced in each of the
two independent claims from among the challenged claims. Ex. 1001,
47:42–48:8, 48:64–49:33. We address these terms here.
1. “networked information monitor”
The claims use the term “networked information monitor,” which is
not found in the Specification. Petitioner and Patent Owner agree that the
term “application media package” appearing in the Specification is
synonymous with “networked information monitor.” Pet. 2 n.1; PO Resp. 7;
Reply 2 & n.1. Petitioner additionally argues that the term “Dot” used in the
Specification is synonymous with “networked information monitor,” and
Patent Owner appears to use the terms synonymously as well. Pet. 2 n.1;
PO Resp. 3, 4, 12; Reply 2 & n.1.
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Patent Owner argues that “[t]he inventors defined [a] NIM in the
specification” as “a fully configurable frame with one or more controls; the
frame through which content is optionally presented.” PO Resp. 7 (quoting
Ex. 1001, 5:40–43); Ex. 2004 ¶ 22. Petitioner agrees that “networked
information monitor” is defined. Reply 2–3 (citing Ex. 1010 (’407 patent),
2:59–61, 5:18–29); Tr. 14:20–23 (Petitioner’s counsel stating that “[t]he
patentee set out a clear and explicit definition of the term, networked
information monitor or NIM, said it refers to a fully configurable frame . . .
with one or more controls”); see Ex. 1003 ¶ 33.
The definition of Application Media Package provided in the
Specification describes it as including a frame “through which content is
optionally presented.” Ex. 1001, 5:41–44; see Ex. 1010, 5:21–24. Claim 1
describes a NIM as including “a graphical user interface . . . that lacks
controls for manually navigating a network, and that includes a frame within
which content received from [a] network location can be displayed.” Id. at
47:53–57. The definition of NIM provided in the Specification is consistent
with the use in the claim. With respect to the word “optionally” in the
Specification definition, we note that, in the claims, content is recited as
being presented on an electronic display within a NIM’s graphical user
interface (element 1.G and the last element of claim 9). Id. at 48:3–8;
see also id. at 49:28–33.
For these reasons, we determine that the correct construction of a NIM
is “a fully configurable frame, with one or more controls, through which
content is presented to the user,” and this is the interpretation we apply here.
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2. “networked information monitor template” and “execute”/”executing”
a) The Parties’ Contentions
Patent Owner asserts: “the NIM template is a data structure that
defines the NIM; it is not the NIM and it is not an executable program (i.e.,
compiled code).” PO Resp. 7. Petitioner, while not presenting a proposed
construction, argues that Patent Owner’s construction should be rejected as
not supported by a definition in the ’083 patent, and specifically argues that
Patent Owner’s proposed definition is flawed because it excludes an
executable program from being a NIM template. Reply 1–10.
Patent Owner additionally asserts that “‘execute’/‘executing’ as used
in the claims . . . means ‘use/using the information from the NIM template in
connection with specified operations.’” PO Resp. 8–9 (citing Ex. 2004
¶ 66). Petitioner argues that “execute” should be construed to have a plain
and ordinary meaning, “namely executing an ‘executable program’ or
‘executable application’ with a processor or through an emulator.” Reply 4–
5 (citing Ex. 1019, 15:8–16:23, 20:15–21:8, 59:5–7).
With respect to NIM template, Patent Owner supports its proposed
constructions with references to the Specification. Patent Owner references
the description in the Specification that “[e]ach Application Media Package
template defines the characteristics of a specific Application Media
Package.” Ex. 1001, 7:17–23 (quoted at Ex. 2004 ¶ 49); PO Resp. 8. With
respect to “the definition of the NIM,” Patent Owner cites the
Specification’s statement that the definition is “content, rather than compiled
code” and cites additionally Figure 8, which shows that a “Dot Frame” is
“buil[t]” on a client computer after the “Dot Definition” is retrieved from a
server. PO Resp. 5–6 (citing Ex. 2004 ¶¶ 61–62); Ex. 1001, 4:64–57,
14:34–35, 23:1–11. Patent Owner argues that “NIM templates are
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significantly smaller than the NIMs they define.” PO Resp. 7 (citing
Ex. 2004 ¶ 54 (quoting the Specification’s statement that “a Dot Definition
typically has a small file size (˜2 KB)” (Ex. 1001, 21:48–54))). Patent
Owner additionally relies on the testimony of its expert, Dr. Earl Sacerdoti,
regarding the plain and ordinary meaning of the word “template,” and on Dr.
Sacerdoti’s testimony that, according to the ’083 patent, a NIM template is
not compiled code, and cannot be an executable application or applet. Id. at
7–8 (citing Ex. 2004 ¶¶ 38–45, 55).
With respect to “NIM template,” Petitioner argues that the plain and
ordinary meaning of the term should control. Reply 1. Petitioner argues that
the language of the claims, in which NIM templates are “execut[ed],”
contradicts Patent Owner’s urged construction, which excludes executable
NIM templates. Id. at 4–5. Petitioner argues further that NIM templates are
claimed as comprising “instructions” and are therefore executable. Id. at 5;
see Ex. 1001, 47:48–49, 47:60–67, 49:6–7, 49:18–25. With respect to the
Specification, Petitioner argues that the portions cited by Patent Owner
relate to non-limiting examples of NIM templates, such as one in which
NIM definitions use Extensible Markup Language (XML) as opposed to
providing any specific general limitations. Reply 5–7 (citing Ex. 1010,
21:45–50, Fig. 13). Thus, Petitioner argues, Patent Owner improperly reads
limitations from the examples in the Specification, which Petitioner
contends are non-limiting, into its definition of “NIM template.” Id. at 5–7.
Petitioner argues that the Specification describes that a Dot definition is a
“software entity” and therefore cannot be limited to a data structure. Id. at 7
(referring to Ex. 1001, 10:11).
Petitioner additionally argues that Patent Owner’s proposed
construction improperly excludes disclosed embodiments. Id. at 7–9.
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Petitioner quotes the ’407 patent’s reference to “[a] second executable
module” that “defines a NIM frame for the NIM using the definition.” Id. at
8 (quoting Ex. 1010, 3:8–10) (emphasis omitted). Petitioner also discusses
the portion of the Specification of the ’407 patent that describes users
sharing NIMs via a database that stores “Share Module[s]” including
“multiple . . . individual [NIM] definition modules” or “multiple packs of
NIMs that have been shared . . . containing multiple NIM definition
modules.” Ex. 1010, 34:4–15, Fig. 24 (discussed and quoted-in-part at
Reply 8–9). Petitioner argues that Dr. Sacerdoti “confirmed that a person of
ordinary skill in the art would understand that ‘[a] module would be a chunk
of code’ and that an ‘executable module’ is ‘executable computer code.’”
Reply 9 (quoting Ex. 1019, 69:22–70:13). Petitioner also argues that Patent
Owner’s definition is contradicted by Patent Owner’s statements in the
prosecution history of other related patents and by Patent Owner’s
infringement allegations against Petitioner in the related district court action.
Id. at 9–10 (citing Ex. 1015, 6, 7, 9–10). As discussed in our analysis below,
Petitioner’s arguments are not persuasive.
b) Construction
After considering the usage of “NIM template” in the claims, the
Specification, and the prosecution history, and having reviewed the parties’
contentions and evidence, we determine that a NIM template is a data
structure that defines the characteristics of a NIM, including the NIM frame,
view, and control characteristics, and that excludes executable
applications/compiled code.
Turning to the usage of NIM template in the claims: from the
language of claim 1, we understand that the NIM template defines a NIM
and comprises a content reference, a definition of a graphical user interface
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including a frame, and instructions configured to cause the NIM to request
content from the network location in the content reference and to generate
the graphical user interface (“GUI”) with received content within the frame.
Ex. 1001, 47:42–48:8; see also id. at 48:64–49:33 (similar limitations in
claim 9). From our examination of the claims, we understand that the NIM
template defines the characteristics of the viewer and the content on the
viewer.
As to the prosecution history of the ’083 patent, the parties did not
identify, and we did not find, any portion of the prosecution history that is
helpful in determining the meaning of NIM template.
The Specification of the ’083 patent does address the meaning of NIM
template. The Specification states that the creation of a Dot “is
fundamentally different than rendering internet content in a viewer
application or alternatively, developing, distributing, and supporting a
custom client-side application.” Ex. 1001, 13:1–10. The Specification
states that “[e]ach Application Media Package template defines the
characteristics of a specific Application Media Package, including fully
configurable frame characteristics, viewer and control characteristics, and
Application Media Package content references.” Id. at 7:19–23; see also id.
at 24:12–14 (“The Dot Definition, as discussed above, includes the Dot
frame definition and the definition of the controls for filling the viewer
within the frame with content.”).
The Specification states that “[u]nlike a downloadable, custom, client-
application (e.g., for delivering custom web applications to users’ desktops),
an Application Media Package is entirely content. That is, the entirety of a
Dot package, referred to as its definition, is in a browser-readable language.”
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Id. at 8:53–57 (emphases added) (cited at Ex. 2004 ¶ 23). The Specification
further states:
As previously mentioned, Dot Definition 104 is typically
XML code. These definitions are quite simple to author, and to
edit if needed. The definition is content, rather than compiled
code, which provides additional flexibility at the client side
should it be desired to modify the definition (e.g., allow a user to
edit the network reference).
Id. at 14:45–60 (emphases added) (cited at Ex. 2004 ¶ 20). The
Specification describes that “[a] A Dot developer can . . . author a new Dot
application by developing web content (HTML, GIF files, etc.) and by
packaging that content in a Dot Definition, eliminating the need for
compilers and consequently, downloading executables.” Id. at 40:24–28.
From these disclosures, we understand that the Specification prohibits the
NIM template from using compiled code or being an executable application.
Our review of the Specification did not identify disclosure of use of
compiled code or an executable application as the NIM template.
As discussed, Petitioner argues that XML embodiments described are
exemplary rather than limiting. Reply 6–7 (citing Innova/Pure Water, Inc. v.
Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed. Cir. 2004)
(“[P]articular embodiments appearing in the written description will not be
used to limit claim language that has broader effect.”)). Petitioner’s
argument is not persuasive. Although we agree with Petitioner that the
XML embodiment is one possible embodiment of a NIM template, the
Specification distinguishes the XML embodiment from embodiments using
other languages for data structures, rather than distinguishing the XML
embodiment from embodiments in which the template is compiled code.
The Specification’s broad statements that a NIM template is content, rather
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than compiled code, and that using a Dot Definition eliminates the need for
downloading executables apply to all NIM templates, not just one particular
embodiment. The Specification does not describe any NIM template that
uses compiled code or executable applications. While Petitioner argues that
a NIM template “might contain any binary content, including executable
code,” Petitioner’s argument is not persuasive. Reply 7 (citing Ex. 1010,
33:59–61). Petitioner’s contention is attorney argument unsupported by
persuasive expert testimony. In re Geisler, 116 F.3d 1465, 1470–71 (Fed.
Cir. 1997) (argument by counsel cannot take the place of evidence); In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”).
With respect to the “second executable module” and “NIM definition
modules” described in the ’407 patent, Petitioner’s arguments are again not
persuasive. Reply 7–9. Petitioner does not identify, and we do not find, any
portion of the ’407 patent’s disclosure that describes that the second
executable module contains compiled code. Rather, the “second executable
module,” described as acting to “define[] a NIM frame for the NIM using
the definition,” is preceded by the description of a first executable module
that “identif[ies] a definition of a Networked Information Monitor.”
Ex. 1010, 3:6–9. Although Petitioner argues that the second executable
module is a NIM template, the second executable module is described in the
Specification as “using the definition” that was identified by the first
module. Id. (emphasis added). Petitioner only highlights the described
action of the second executable module to “define a NIM frame” but does
not explain the interaction with the first executable module, or support the
assertion that the second executable module is a NIM template or that the
discussed NIM definition modules are executable modules. See Reply 7.
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Although Petitioner cites Dr. Sacerdoti’s deposition testimony relating to the
word “module,” Petitioner’s contentions about the meaning of NIM
template, and whether the “second executable module” or “NIM definition
module” are NIM templates or executable modules, are attorney argument
unsupported by persuasive expert testimony. See Geisler, 116 F.3d at 1470–
71. The Specification does not describe any NIM template that uses
compiled code or executable applications. Rather, the Specification
provides that “[t]he Dot Definition 104 contains just enough information to
define, layout, and initialize a Dot’s components (frame, controls, etc.)” and
“[t]he definition is content, rather than compiled code.” Ex. 1001, 21:48–50,
14:34–35; Ex. 2004 ¶¶ 51, 54.
Petitioner’s argument regarding the claim terms “execute” or
“executing,” e.g., in claim 1’s “one or more processors configured to access
the first networked information monitor template, and to execute the first
networked information monitor template,” does not present any testimony
regarding whether one of ordinary skill in the art, reading these claims,
would determine that the networked information monitor template is
described as executable code. Reply 4; Ex. 1001, 48:2–8. Petitioner’s
contentions about the meaning of this term are attorney argument
unsupported by citations to persuasive intrinsic evidence or testimony from a
witness competent to opine about how an ordinarily skilled artisan would
understand the terms. See Geisler, 116 F.3d at 1470–71. Petitioner does not
explain how execution applies to portions of a NIM template such as “a
content reference that comprises a network location” (limitation 1.B) and “a
definition of a [GUI]” (limitation 1.C). As such, Petitioner’s argument is not
persuasive. Rather, we are persuaded, in determining the proper
construction of “NIM template,” by Patent Owner’s argument that “execute”
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as used with respect to a template has a different meaning than “execute” as
used with respect to an application. PO Resp. 8–9 (citing Ex. 2004 ¶ 66
(testifying that executing a template would mean using the information in
the template in connection with specified operations).
With respect to Petitioner’s argument that Dr. Sacerdoti’s construction
of NIM template is contradicted by the claim’s requirement that the NIM
template comprise “instructions,” we note again that this is attorney
argument, as Petitioner presents no testimony that the instructions referred to
in the claim are executable instructions. Reply 5 (quoting Ex. 2004 ¶ 25);
see also Ex. 2004 ¶ 64 (describing the NIM template as containing
instructions for downloading content). Dr. Sacerdoti describes that the NIM
template may include data specifying, e.g., the dimensions of a frame, but
that producing a specific user experience from data value “provides no
evidence concerning whether those characteristics were produced from data
or from operating executable code.” Ex. 2004 ¶ 25; see also Ex. 2004 ¶ 90
(contrasting instructions that are executable code with instructions in a data
structure).
Lastly, Petitioner’s argument with respect to the positions taken by
Patent Owner in the related district court action, in which, according to
Petitioner, “Patent Owner has contended that each step of Claim 1 is
performed by the use of” an “app,” is again attorney argument. See Reply
9–10. Although Petitioner cites the Second Amended Complaint, that
document, with respect to the ’083 patent, describes generally that
“Lenovo’s YogaBook . . . infringes Claim 1 of the ’083 patent” without
specific mapping to the NIM template. Ex. 1015, 8–10. Petitioner’s
argument is not persuasive because it does not present any evidence about
how these apps work and how they apply to the disputed NIM template. In
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addition, Petitioner’s contentions about the meaning of the disputed terms
and apps are attorney argument unsupported by persuasive evidence. See
Geisler, 116 F.3d at 1470–71. A party’s infringement allegations do not
override the meaning of the claims based on the intrinsic evidence.
For the reasons above, we determine that a NIM template is a data
structure that defines the characteristics of a NIM, including the NIM frame,
view and control characteristics, and that excludes executable
applications/compiled code. With respect to the claim terms “execute” and
“executing,” while we have discussed arguments relating to these terms with
respect to our construction of “NIM template,” because our ultimate decision
does not rest on the construction of these claim terms, we do not construe
them. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
controversy, and only to the extent necessary to resolve the controversy.”);
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes
review).
Obviousness over Hoff and Berg
Petitioner contends that the subject matter of claims 1–16 would have
been obvious over the combined teachings of Hoff and Berg. Pet. 18–37.
We first describe the prior art that Petitioner seeks to combine to show that
these claims are obvious, and then turn to the merits of the combination.
1. Hoff
Hoff is titled “Method for the Distribution of Code and Data
Updates,” and issued on July 6, 1999. Ex. 1004, codes (54), (45). Petitioner
contends Hoff is prior art under 35 U.S.C. § 102(e). Pet. 8. Patent Owner
does not dispute the prior-art status of Hoff.
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Hoff describes a system and method for distributing software
applications and data to thousands of clients over a network. Ex. 1004, code
(57). In Hoff, an application is called a “channel,” the server that distributes
the channel is called the “transmitter,” and the client receiving the channel is
called the “tuner.” Id. at code (57), 2:54–67. An end user, using a
client/tuner, “subscribes” to a channel, the associated code and data are
downloaded to the tuner, and then the channel can be executed many times
without requiring further network access. Id. at code (57), 3:1–9. Any
necessary software and data updates for the channel can be automatically
downloaded and installed in the background at regular intervals by the tuner;
the end user is not required to manually install software updates. Id. at
code (57), 3:10–14, 5:4–28. Hoff asserts that this method of automatic
downloading of updates achieves for the client the same result as the
broadcast distribution of software over a connection-based network, but
wherein the client initiates each update request without requiring any special
broadcast networking infrastructure. Id. at code (57).
2. Berg3
Berg is an article by Clifford Berg titled “How Do I Create a Signed
Castanet Channel?” Ex. 1007, 1. Petitioner asserts that Berg was published

3 The parties dispute whether Petitioner has met its burden of proof in the
Petition that Berg was publicly accessible as of the critical date (April 26,
1999), and, therefore, available as a prior art printed publication. Pet. 6
(citing Ex. 1005 ¶¶ 2–3); see also Papers 23–26 (relating to and granting a
motion to strike Petitioner’s arguments in the Reply concerning this issue as
not properly responsive to any argument or evidence in the Patent Owner
Response); Reply 12–14. We do not reach the dispute regarding the prior-
art status of Berg because it is not necessary to our ultimate decision. Even
if we accept Petitioner’s view that Berg qualifies as prior art, we find that
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on January 1, 1998, and is prior art under 35 U.S.C. § 102(b). Pet. 6;
see Ex. 1005 (Declaration of Clifford Berg).
Berg discloses using Marimba’s Castanet, the “Java-centric (but not
limited to Java) push technology,” to distribute content to users. Ex. 1007,
1. Castanet is “a technology for deploying highly scalable applications, with
centralized update and administration capabilities.” Id. at 2. Berg states:
Castanet consists of a client called the “tuner” and a server called
the “transmitter.” Channels are published by an administrator on
a transmitter. A workstation that has a tuner installed can
subscribe to any number of channels on any number of
transmitters. The tuner updates the channel’s content, which
may consist of Java code, media, and other files, including binary
code (signed channels can load native methods supported by
DLLs). The tuner presents a user interface for managing
channels. The tuner interface is set apart from the interface
constructed by any given channel (if the channel even has a user
interface). This is unlike a browser, which imposes a user
interface frame around any application that runs within it.
Channels construct their own frames if and when they need them.
Id.
Berg describes, as an example, “a Castanet channel that opens a
window on the screen, and allows a user to select from one of a small set of
web locations to view.” Id. at 3. The list of allowable locations is hard-
coded into the program. Id. at 4. Once the user selects a location from the
provided list, the application fetches data via the corresponding address and
displays the content within a web-viewing window, implemented with an
HTML renderer. Id. at 3, 4. The frame containing the choice selector (for
choosing the web location) and the window in which the content is viewed

Petitioner has not established the unpatentability of any challenged patent
claim.
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also includes an “X” window-close control, which allows a user to close the
frame. Id. at 4.
3. Analysis of Claims 1–16
In support of Petitioner’s contention that claims 1–16 would have
been obvious over the combined teachings of Hoff and Berg, Petitioner
provides an element-by-element analysis showing where Petitioner contends
each element of the challenged claims is in Hoff and Berg. Pet. 18–37.
Petitioner also provides supporting testimony by Dr. Vijay K. Madisetti
(Ex. 1003). Patent Owner, relying on supporting testimony by Dr. Sacerdoti
(Ex. 2004), argues that Petitioner does not show that the claims are
unpatentable because, in part: (1) Hoff and Berg do not have a NIM
template, (2) Hoff and Berg do not have a separate NIM and NIM template,
and (3) objective evidence of non-obviousness such as commercial success
undermines Petitioner’s arguments of unpatentability.4 PO Resp. 1–2, 9–12,
14–15. For reasons set forth below, we determine that Petitioner has not
shown that Hoff and Berg teach or suggest the limitations of claims 1–16.

4 Patent Owner asserts that objective evidence of non-obviousness ––
commercial success –– supports a finding of non-obviousness of the ’083
patent. PO Resp. 14–15; Ex. 2003. We do not assess the objective evidence
of non-obviousness because we find that Petitioner fails to carry its burden
of demonstrating the unpatentability of any challenged claim based on the
asserted prior art. See, e.g., Hamilton Beach Brands, Inc. v. f’real Foods,
LLC, 908 F.3d 1328, 1343 (Fed. Cir. 2018) (holding, in affirming Board
decision determining that petitioner had not shown unpatentability, that
“objective indicia of nonobviousness” “need not [be] address[ed]” because
the court “affirm[ed the] Board’s findings regarding the failure of the prior
art to teach or suggest all [claim] limitations”).
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a) Claims 1 and 9 – “networked information monitor template”
Claim 1 recites a NIM and a NIM template in several limitations,
including in limitation 1.A:
[1.A] electronic storage having stored thereon a plurality of
networked information monitor templates defining a plurality of
networked information monitors, the plurality of networked
information monitor templates comprising a first networked
information monitor template defining a first networked
information monitor, wherein the first networked information
monitor template comprises . . . .
Ex. 1001, 47:43–49. Limitations 1.B through 1.D describe that the first
NIM template of limitation 1.A comprises a content reference, a definition
of a GUI, and instructions configured to cause the first NIM to request
content and generate the GUI. Id. at 47:50–67. Claim 9 contains similar
descriptions of a NIM and NIM template. Id. at 49:1–25.
Petitioner asserts that Hoff teaches the first NIM template of claims 1
and 9 in the code and data downloaded to local storage when a channel is
subscribed to. Pet. 19–20 (citing Ex. 1004, 2:45–48, 2:56–67, 3:1–5, 4:47–
49, Fig. 1B), 32. Petitioner asserts that Berg also discloses a tuner that is
used to subscribe to channels, and that both Berg’s and Hoff’s channels
include instructions and data used to create a GUI and display content
therein, and that they therefore include a networked information monitor
template. Id. at 20 (citing Ex. 1007, 2; Ex. 1003 ¶ 96). Petitioner asserts
that both limitation 1.C, requiring that the first NIM template includes a
definition of a GUI and a substantially identical limitation of claim 9 are
taught by Berg, citing Berg’s disclosures of an application (Castanet
channel) that includes a definition of an interface with a frame in which
content is presented and of rendering that presented content from HTML.
Id. at 22–23 (citing Ex. 1003 ¶ 103; Ex. 1007, 3–4), 32.
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Petitioner’s arguments are not persuasive because Petitioner does not
show persuasively that Hoff’s and Berg’s channel application comprises a
data structure that defines the characteristics of a NIM, including the NIM
frame, view, and control characteristics, but that exclude executable
applications/compiled code. See supra III.C.2.b (claim construction of
“networked information monitor template”). Petitioner admits that Hoff
relates to distribution of software applications, such as Hoff’s channels that
are downloaded and installed and then executed as a “normal application.”
Pet. 5 (quoting Ex. 1004, 2:59; also citing Ex. 1004, code (54), 2:38–41,
2:54–67, 3:1–10, 4:8–10, 4:19–24, 4:37–47, 4:51–57); Reply 11 (describing
Hoff’s channel code and data as the NIM template). Petitioner describes
Berg’s Castanet channel as an application that is deployed via Castanet and
that can “do ‘all the things a traditional installed application would do.’”
Pet. 6–7 (citing Ex. 1007, 2–4, 6).
Petitioner’s showing is also deficient because it fails to account for the
fact that, as both Petitioner and Patent Owner agree, the NIM and the NIM
template are separate and distinct elements. Reply 2; PO Resp. 7; Tr. 16:14–
19, 63:10–13. Neither Petitioner nor Dr. Madisetti identify what in Hoff and
Berg might be a NIM template separate and distinct from the NIM. To the
contrary, Petitioner argues that the channel applications (i.e., the NIM)
contain the NIM template. See, e.g., Pet. 20; Ex. 1003 ¶ 162 (“Specifically,
the channel applications [disclosed in Hoff and Berg] contain instructions
and data used to create a GUI and display content therein. Therefore, the
‘channel’ applications in Hoff and Berg include the claimed NIM
template.”). We also credit Dr. Sacerdoti’s testimony that, under
Petitioner’s interpretation in which Hoff’s and Berg’s channel application
(NIM) contains the claimed NIM template, Hoff and Berg still do not teach a
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NIM and a NIM template that are separate and distinct elements. Ex. 2004
¶¶ 74 (“Even were a NIM template to be contained within the application
that the petition identifies as the channel, the petition does not identify any
data structure contained within the channel that could define the NIM. Not
having identified any particular data structure, neither the petition nor
Dr. Madisetti have identified a NIM definition that is disclosed by Hoff.”
(emphasis omitted)), 79 (“As with Hoff, neither Dr. Madisetti nor the
petition asserts what in Berg might be the NIM template (channel template)
that is distinct from the NIM (channel).” (emphasis omitted)).
Thus, for the reasons discussed above, we conclude that Petitioner has
not demonstrated by a preponderance of the evidence that claims 1 and 9
would have been obvious over the combination of Hoff and Berg.
b) Claims 2–8 and 10–16
Each of claims 2–8 and 10–16 depends, directly or indirectly, from
independent claim 1 or independent claim 9, and, therefore, requires a “NIM
template.” Ex. 1001, 48:9–63, 49:34–50:43. Thus, for the same reasons
discussed above with respect to Petitioner’s challenge of claims 1 and 9, we
also conclude that Petitioner has not demonstrated by a preponderance of the
evidence that claims 2–8 and 10–16 would have been obvious over Hoff and
Berg.
c) Summary
For the reasons above, Petitioner has not shown that Hoff and Berg,
either singly or in combination with each other, teach or suggest a NIM
template comprising a data structure separate and distinct from a NIM that
defines the characteristics of a NIM, including the NIM frame, view and
control characteristics, and that excludes executable applications/compiled
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code. Thus, Petitioner has not shown by a preponderance of the evidence
that claims 1–16 are unpatentable over Hoff and Berg.
Obviousness over Razavi and Andersen
Petitioner contends that the subject matter of claims 1–16 would have
been obvious over the combined teachings of Razavi and Andersen.
Pet. 37–65. We first describe the prior art that Petitioner seeks to combine
to show that these claims would have been obvious, and then turn to the
merits of the combination.
1. Razavi
Razavi is titled “Detachable Java Applets,” and issued on June 4,
2002. Ex. 1009, codes (54), (45). Petitioner contends Razavi is prior art
under 35 U.S.C. § 102(e). Pet. 7.
Razavi describes “detaching Java applets from the constraints of the
application such as a browser which provides the Java engine for executing
those applets.” Ex. 1009, code (57). In Razavi, a Java applet will be
detachable from the application in which it was spawned and have the
functionality of any ordinary application window running in the operating
environment, including modifying the interface to suit the peculiarities of the
applet. Id. at 4:41–56, 5:64–6:20. According to Razavi, the applet must be
launched in the virtual machine of the application, and is detached if the user
activates a detach user interface element. Id. at 5:48–63. Figure 4,
reproduced below, is Razavi’s illustration of a detached applet as rendered
on a display screen. Id. at 7:8–9.
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Figure 4 depicts application window 410 and detached applet 420 named
“Jukebox” displayed on display 400. Id. at 7:10–12, 7:29–33. Application
window 410 is running over an operating environment desktop 430, which
also controls the general look-and-feel of the window for detached applet
420. Id. at 7:17–19, 17:39–41. Detached applet 420 contains applet controls
“About,” “Stop,” and “Play,” and a control called “Attach,” which closes the
detached applet 420 and “collapse[s] the applet back into application
window 410.” Id. at 7:34–35, 8:10–14.
The exemplary detached applet described in Razavi, the Jukebox
applet, is a streaming audio applet that “creates VCR-type controls that
allow the user to stop, play, or rewind the audio stream or to jump to a
different selection” and optionally provides an image, such as a CD cover, to
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be displayed, associated with each audio selection. Id. at 4:25–26, App’x A
col. 1.
2. Andersen
Andersen is titled “Database Access Using Active Server Pages,” and
issued on December 7, 1999. Ex. 1006, codes (54), (45). Petitioner
contends Andersen is prior art under 35 U.S.C. § 102(e). Pet. 9. Andersen
describes an applet on a client computer that allows a database query to be
embedded in an URL in order to obtain query results in HTML form.
Ex. 1006, code (57), 3:5–29, 5:3–33. Andersen provides an example of a
stock price quoting system implemented using a Java applet. Id. at 1:62–63,
1:67–2:30. The applet requests one or more stock prices from a server and
the server responds with an HTML file into which data returned by the
database is inserted in response to the query. Id. at 5:34–7:5. This allows an
advantage over a system in which stock prices are available directly from an
HTML page rather than from a database, because “storing the stock price
data in static HTML pages can be quite inefficient, and data stored in this
manner is not amenable to incremental updates and easy and efficient ad hoc
searching and manipulation.” Id. at 2:59–3:4.
3. Analysis of Claims 1–16
In support of Petitioner’s contention that claims 1–16 would have
been obvious over the combined teachings of Razavi and Andersen,
Petitioner provides an element-by-element analysis showing where
Petitioner contends each element of the challenged claims is in Razavi and
Andersen. Pet. 37–65. Petitioner also provides supporting testimony by Dr.
Madisetti (Ex. 1003). Patent Owner, relying on supporting testimony by
Dr. Sacerdoti (Ex. 2004), argues that Petitioner does not show that claims 1–
16 are unpatentable because Razavi and Andersen teach accessing Java
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applets through a web browser, and thus, as with the ground involving Hoff
and Berg, Patent Owner therefore argues that: (1) the combination of Razavi
and Andersen does not teach a NIM template, and (2) the combination of
Razavi and Andersen does not teach a separate NIM and NIM template. PO
Resp. 1–2, 9–13. Patent Owner additionally argues that one of ordinary skill
would not have been motivated to combine Razavi and Andersen. Id. at 2,
13. For reasons set forth below, we determine that Petitioner has not shown
that Razavi and Andersen, either singly or in combination with each other,
teaches or suggests the limitations of claims 1–16.
a) Claims 1 and 9 – “networked information monitor template”
Petitioner asserts that the client device of the preamble of claims 1 and
9 is taught by Razavi’s and Andersen’s disclosure of “similar computer-
implemented methods in which an ‘applet’ is downloaded onto a client
computing device, retrieves content from a server over a network, such as
the internet, and presents the content within a GUI on a display.” Pet. 37
(citing Ex. 1009, 1:1–41; Ex. 1006, 1:10–2:30; Ex. 1003 ¶ 269), 59.
Petitioner asserts that Razavi teaches the NIM template of claims 1 and 9 in
Razavi’s Java applets, downloaded in a pre-compiled state, and then
executed at a client device. Pet. 38–39 (citing Ex. 1009, 1:9–25, 5:51–56,
7:29–33; Ex. 1003 ¶¶ 274–277), 59–60.
Petitioner’s arguments are not persuasive because Petitioner does not
show persuasively that Razavi’s and Andersen’s applets comprise a data
structure that defines the characteristics of a NIM, including the NIM frame,
view, and control characteristics, but that excludes executable
applications/compiled code. Razavi relates to distribution of executable
platform-independent Java applets. Ex. 1009, 1:13–16 (platform-
independent applets are downloaded as pre-compiled Java byte-codes),
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1:26–30 (applet runs on a platform’s virtual machine capable of executing
applet code), 3:13–15; Ex. 1003 ¶ 98; Ex. 2004 ¶ 83.
Petitioner’s showing is also deficient because it fails to account for the
fact that, as discussed previously, both Petitioner and Patent Owner agree
that the NIM and the NIM template are separate and distinct elements.
Reply 2; PO Resp. 8; Tr. 18:1–7, 56:18–19, 69:10–11. However, neither
Petitioner nor Dr. Madisetti identify what in Razavi or Andersen might be a
NIM template separate and distinct from the NIM. To the contrary,
Petitioner argues that the received applet in Razavi contains definitions for
the GUI generated by the applet. Pet. 42–43; Ex. 1003 ¶ 284. In addition,
Dr. Sacerdoti’s unrebutted testimony is that a person of ordinary skill in the
art would understand that Razavi’s and Andersen’s Java applets disclose no
separate definition of or template for applets that might teach or suggest a
distinct NIM template. Ex. 2004 ¶ 98; see id. ¶ 89 (“Applets and
applications were known in the art to be executable code.”). Thus, for the
reasons discussed above, we conclude that Petitioner has not demonstrated
by a preponderance of the evidence that claims 1 and 9 would have been
obvious over the asserted prior art.
b) Claims 2–8 and 10–16
Each of claims 2–8 and 10–16 depends, directly or indirectly, from
independent claim 1 or independent claim 9, and, therefore, requires a “NIM
template.” Ex. 1001, 47:9–48:63, 49:34–50:43. Thus, for the same reasons
discussed above with respect to Petitioner’s challenge of claims 1 and 9, we
also conclude that Petitioner has not demonstrated by a preponderance of the
evidence that claims 2–8 and 10–16 would have been obvious over Razavi
and Andersen.
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c) Summary
For the reasons above, Petitioner has not shown that Razavi and
Andersen, either singly or in combination with each other, teach or suggest a
NIM template comprising a data structure that defines the characteristics of a
NIM, including the NIM frame, view and control characteristics, and that
excludes executable applications/compiled code. Thus, Petitioner has not
shown by the preponderance of the evidence that claims 2–8 and 10–16 are
unpatentable over Razavi and Andersen.
Patent Owner’s “‘Secret’ Prior Art” Argument
Patent Owner argues that, because Hoff and Razavi were published
after the critical date for the ’083 patent (April 26, 1999), they are “‘secret’
prior art” because they were not available to one of ordinary skill in the art
as of the critical date. PO Resp. 15–16. Patent Owner acknowledges that,
under current Federal Circuit precedent, these patents are considered prior
art despite not being publicly accessible as of the critical date, but Patent
Owner contends that the law should be changed. Id.
Because we must follow the law as it stands, we decline to address
Patent Owner’s arguments. Additionally, we decline to address these
arguments because we have examined the unpatentability of the challenged
claims over Hoff and Berg (Section III.D) and over Razavi and Andersen
(Section III.E) and found, in each case, that the Petitioner has not established
the unpatentability of the claims over the asserted prior art. See, e.g.,
Hamilton Beach Brands, 908 F.3d at 1343.
Petitioner’s Motion to Strike
As discussed supra, Petitioner’s Motion to Strike requested that we
strike Patent Owner’s Sur-reply and a supplemental declaration of
Dr. Sacerdoti (Ex. 2007, “Supplemental Declaration”) filed with the Sur-
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reply. Pet. Mot. 1. Petitioner argues that filing of the Supplemental
Declaration contravenes our Practice Guide governing the conduct of this
proceeding that a sur-reply “may not be accompanied by new evidence other
than deposition transcripts of the cross-examination of any reply witness.”
Id. (quoting Patent Trial and Appeal Board Consolidated Trial Practice
Guide November 2019 (“Consolidated TPG”) 73). Patent Owner argues that
the Consolidated TPG is only a guide and that its statements are not
controlling or binding rules. PO Opp. 1. Patent Owner additionally argues,
generally, that the Supplemental Declaration was necessary to address
“arguments raised” in Petitioner’s Reply, providing only one general
example: that “Petitioners argued in their Reply that Patent Owner’s
Response was inconsistent with positions Patent Owner has taken in the
district court litigation.” Id. at 2–3. However, the Supplemental Declaration
only discusses this issue in one paragraph, its last one.
As we indicated during the hearing (Tr. 4:18–5:2), we grant-in-part
the Motion to Strike, with respect to striking the Supplemental Declaration,
which constitutes new evidence filed with the Sur-reply. With respect to the
Sur-reply itself, the Consolidated TPG notes that “[t]he Board is not required
to attempt to sort proper from improper portions of the reply or sur-reply”
and that a reply that raises a new issue might not be considered.
Consolidated TPG 74. However, “striking the entirety or a portion of a
party’s brief is an exceptional remedy that the Board expects will be granted
rarely,” and we are capable of disregarding any new issues exceeding the
proper scope of reply. Id. at 80. We determine that this is not a case
requiring that exceptional remedy, and that the Sur-reply need not be
stricken.
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Thus, we grant-in-part and deny-in-part the Motion to Strike.
Specifically, we grant the motion with respect to the Supplemental
Declaration but deny the motion with respect to the Sur-reply.
IV. CONCLUSION
For the reasons expressed above, we determine that Petitioner has not
proven by a preponderance of the evidence that the challenged claims are
unpatentable.
In summary:

V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–16 of the ʼ083 patent have not been shown
to be unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Strike (Paper 31)
is granted-in-part and denied-in-part as discussed above;
FURTHER ORDERED that the Supplemental Declaration of Dr. Earl
Sacerdoti (Ex. 2007) is stricken from the record; and
FURTHER ORDERED that, because 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.

Claims

35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–16 103 Hoff, Berg 1–16
1–16 103 Razavi, Andersen 1–16
Overall
Outcome
1–16
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FOR PETITIONER:
John C. Alemanni
Matthew J. Meyer
KILPATRICK TOWNSEND & STOCKTON LLP
jalemanni@kilpatricktownsend.com
mmeyer@kilpatricktownsend.com
FOR PATENT OWNER:
Lewis E. Hudnell, III
HUDNELL LAW GROUP P.C.
lewis@hudnellaw.com