DoDots Licensing Solutions, LLC

Patent Trials and Appeals Board

Jan 5, 2021

IPR2019-01279 (P.T.A.B. Jan. 5, 2021)

Trials@uspto.gov Paper 37
571-272-7822 Date: January 5, 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.

IPR2019-01279
Patent 8,510,407 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, 8–13, and 20–24 of U.S. Patent No.
8,510,407 B1 (Ex. 1001, “the ’407 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) (2016); 37 C.F.R.
§ 42.1(d). 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, 8–13, and 20–24
are unpatentable. Additionally, for the reasons discussed below, in
Section III.I, we grant-in-part Petitioner’s Motion to Strike (Paper 31).
II. BACKGROUND AND SUMMARY
A. 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, 8–13, and 20–24 (“the challenged claims”) of the ’407
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.
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Accordingly, we instituted an inter partes review of all the challenged
claims, on all of the asserted grounds. Paper 7 (“Inst. Dec.”).
Patent Owner filed its Response. Paper 18 (“PO Resp.”). Petitioner
filed a Reply. Paper 21 (“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 23; Paper 24. 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 25, 4–7.
Patent Owner filed a Sur-reply. Paper 27 (“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.I, and grant the motion with respect to the
supplemental declaration, but not 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.”).
B. 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. 67.
Patent Owner indicates that DoDots Licensing Solutions, LLC is the
real party-in-interest. Paper 4 (Patent Owner’s Mandatory Notices), 2.
C. Related Matters
According to Petitioner and Patent Owner, the ’407 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. 67–68; Paper 4 (Patent Owner’s Mandatory Notices), 2.
Petitioner notes that the related district court action also involves U.S. Patent
Nos. 9,369,545 and 8,020,083 (“the ’083 patent”), and that Petitioner filed a
petition for inter partes review of the patentability of certain claims in U.S.
Patent No. 9,369,545 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 U.S. Patent No. 8,020,083 (inter partes review instituted, see IPR2019-
01278, Paper 8 (Jan. 24, 2020); final written decision pending). Pet. 68.
D. The ’407 Patent
The title of the ʼ407 patent is “Displaying Time-Varying Internet
Based Data Using Application Media Packages.” Ex. 1001, code (54). The
’407 patent discloses, in part, a software component for accessing and
displaying network content. Id. at code (57). A Networked Information
Monitor (NIM) is a “fully configurable frame with one or more controls”
with content optionally presented through the frame. Id. at 2:61–63, 5:21–
24. When a NIM 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 19:63–20:30. The network content may be identified
via URLs included in the NIM definition. Id. at code (57), 20:24–27. The
network content is time-varying, e.g., as in an image that varies over time.
Id. at code (57). The Specification describes that the frame according to the
invention “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 5:24–28.
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E. Illustrative Claim
Claims 1 and 13 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 computing device configured to
access content over a network, the client computing device
comprising:
[1.A] electronic storage configured to store networked
information monitor template associated with a networked
information monitor, [1.B] the networked information monitor
template having therein a definition of a viewer graphical user
interface having a frame within which time-varying content in a
web browser-readable language may be presented on a display
associated with the client computing device, wherein the frame
of the viewer graphical user interface lacks controls for enabling
a user to specify a network location at which content for the
networked information monitor is available; and
[1.C] one or more processors configured to execute one or
more computer program modules, the one or more computer
program modules being configured to access the networked
information monitor defined by the networked information
monitor template, wherein accessing the networked information
monitor defined by the networked information monitor template
results in:
[1.D] transmission, over a network to a web server
at a network location, of a content request for content to
be displayed within the frame of the viewer graphical user
interface defined by the networked information monitor
template;
[1.E] reception, over the network from the web
server at the network location, of content transmitted from
the web server in response to the content request, the
content being time-varying;
[1.F] presentation, on the display, of the viewer
graphical user interface defined by the networked
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information monitor template outside of and separate from
any graphical user interface of any other application; and
[1.G] presentation, on the display within the frame
of the viewer graphical user interface defined by the
networked information monitor, of the time-varying
content received from the web server.
F. 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,
January 1, 1998
Jan. 1, 1998 Ex. 1009
Nazem US 5,983,227 Issued Nov.
9, 1999
Ex. 1007
Fortin et al.
(“Fortin”)
US Patent Application
Publication 2002/0023110 A1
Published
Feb. 21, 2002
Ex. 1008
Razavi et al.
(“Razavi”)
US 6,401,134 B1 Issued June 4,
2002
Ex. 1006
Andersen US 5,999,941 Issued Dec. 7,
1999
Ex. 1012

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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G. Asserted Grounds
Petitioner asserts that claims 1, 8–13, and 20–24 would have been
unpatentable on the following grounds:
Claim(s) Challenged 35 U.S.C. §2 Reference(s)/Basis
1, 9–13, 21–24 103 Hoff, Berg, Nazem or Admitted Prior Art (“APA”)3
8, 20 103 Hoff, Berg, Nazem or APA, Fortin
1, 9–13, 21–24 103 Razavi, Andersen
8, 20 103 Razavi, Andersen, Fortin

III. ANALYSIS
A. 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.,

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.
3 The Petition cites column 1, lines 56–67 of the ’407 patent as the APA.
Pet. 23–24, 26.
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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
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.
B. 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 experience” in the
field. Pet. 8 (citing Ex. 1003 (“Madisetti Decl.”) ¶ 44). 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.
C. 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
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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)
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).
1. “outside of and separate from any graphical user interface
of any other application”
In the Petition, Petitioner requests that we construe one term, found in
element 1.F of claim 1: that presentation of the viewer graphical user
interface (“GUI”) defined by the networked information monitor template be
“outside of and separate from any graphical user interface of any other
application.” Pet. 4–8. Petitioner argues that the correct construction should
be “so that the viewer [graphical user interface] is distinct from and not
presented within the frame of any other GUI generated by another
application.” Id. Because our ultimate decision does not rest on the
construction of this claim term, we do not construe it. 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).
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2. “network information monitor”
To resolve Petitioner’s challenge, the parties assert that two claim
terms need to be construed: “network information monitor” and “network
information monitor template” (or “NIM template”). PO Resp. 7–9;
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, 42:28–64, 43:61–44:31. We address “network
information monitor” first.
Patent Owner argues that “[t]he inventors defined NIMs in the
specification as follows: ‘As used herein, the term networked information
monitor or NIM refers to a fully configurable frame with one or more
controls; the frame through which content is optionally presented.’”
PO Resp. 8 (quoting Ex. 1001, 5:21–24); Ex. 2004 ¶ 22. Petitioner agrees
that “network information monitor” is defined in the Specification. Reply 2
(citing Ex. 1001, 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,
network information monitor or NIM, said it refers to a fully configurable
frame . . . with one or more controls.”); see Ex. 1003 ¶ 33.
The definition of NIM provided in the Specification describes a frame
“through which content is optionally presented.” Ex. 1001, 5:21–24. Claim
1 also describes the subject of the definition in a NIM template alternatively
as (a) a NIM (in 1.C), (b) “a viewer graphical user interface having a frame
within which time-varying content in a web browser-readable language may
be presented on a display associated with the client computing device” (in
1.B), or (c) a “viewer graphical user interface” (in 1.D, 1.F, 1.G). Id. at
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42:28–64. Thus 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, time-varying
content is recited as being presented on the display within a frame (element
1.G and the last element of claim 13). Id.; see also id. at 43:61–44:31.
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.
3. “network information monitor template”
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. 8–9. Petitioner, while not presenting a proposed
construction, argues that the Patent Owner’s construction should be rejected
as not supported by a definition in the ’407 patent, and specifically argues
that Patent Owner’s proposed definition is flawed because it excludes an
executable program from being a NIM template. Reply 1–9.
Patent Owner supports its proposed constructions with references to
the Specification. Patent Owner quotes the Specification’s description that
“[e]ach NIM template defines the characteristics of a specific NIM.”
PO Resp. 8 (quoting Ex. 1001, 21:48–50) (emphasis omitted). With respect
to “the definition of the NIM,” Patent Owner quotes the Specification’s
statement that “the definition of the NIM is content, rather than compiled
code” and cites additionally Figure 13, which “illustrates a data structure for
a NIM definition.” Id. (quoting Ex. 1001, 21:48–50, 3:63–65) (emphasis
omitted). Patent Owner additionally quotes the Specification’s description
of the NIM definition as “fairly small in size” and “easily distributable”
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because it “contains just enough information to define and initialize the
NIM’s components.” Id. at 9 (quoting Ex. 1001, 33:55–65).
Patent Owner additionally relies on the testimony of its expert,
Dr. Sacerdoti, regarding the plain and ordinary meaning of the word
“template,” and on Dr. Sacerdoti’s testimony that, according to the ’407
patent, a NIM template is not compiled code, and cannot be an executable
application or applet. Id. at 8–9 (citing Ex. 2004 ¶¶ 29–36, 47–53).
Petitioner argues that the plain and ordinary meaning of the term
should control, and that “nothing in the claims or specification limits a NIM
template to a data structure excluding an executable program.” Reply 1–3.
Petitioner argues that Figure 13 of the ’407 patent and the accompanying
disclosure, cited by Patent Owner, are merely directed to a non-limiting
example of a NIM template. Id. at 3–4. Petitioner also argues that Patent
Owner’s reliance on the language describing a NIM definition as “fairly
small in size” is also exemplary. Id. at 4 (quoting Ex. 1001, 33:60).
Petitioner notes that the “fairly small in size” NIM definition is further
described in this portion of the ’407 patent as “therefore easily distributable
as an XML file or Blob (binary large object).” Id. (quoting Ex. 1001, 33:60–
61). Petitioner contends that this binary large object “might contain any
binary content, including executable code.” Id. Thus, Petitioner argues,
rather than finding indications that the patentee acted as lexicographer,
Patent Owner improperly reads limitations from these examples, which the
Petitioner contends are non-limiting, into its definition of “NIM template.”
Id. at 2–5.
Additionally, Petitioner argues that the Patent Owner’s proposed
construction improperly excludes disclosed embodiments. Id. at 5.
Petitioner quotes the ’407 patent’s reference to “[a] second executable
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module” that “defines a NIM frame for the NIM using the definition.” Id.
(quoting Ex. 1001, 3:8–10) (emphasis omitted). Petitioner also discusses the
portion of the Specification that describes users sharing NIMS via 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. 1001, 34:4–15, Fig. 24
(discussed and quoted-in-part at Reply 5–6). 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 6 (quoting
Ex. 1019, 69:22–70:13).
Petitioner additionally argues that, in the related ’083 patent, the
claims describe one or more processors that “execute the first [NIM]
template such that the graphical user interface of the first [NIM] is presented
to a user.” Id. at 7 (emphasis omitted); see Tr. 63:19–64:5, 71:6–14 (Patent
Owner’s and Petitioner’s counsel each agreeing that “NIM template” in the
’407 patent should be construed the same way in this inter partes review as
it is in the inter partes review (IPR2019-01278) of claims of the ’083
patent). Additionally Petitioner 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 7–8 (citing Ex. 1016, 6–
7, 14; Ex. 1015, 6, 7, 10–12). 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 reviewing the parties’
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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, stored in
electronic storage of a client computing device (1.A), includes the definition
of a NIM (1.C) / “viewer graphical user interface having a frame . . .” (1.B,
1.D, 1.F). Ex. 1001, 42:28–64; see also id. at 43:61–44:31 (similar
limitations in claim 13). 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 ’407 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 ’407 patent does address the meaning of NIM
template. The Specification states the “NIMs allow a developer to provide
an application feel without developing custom client applications”
(Ex. 1001, 26:38–40), and the “NIM template defines the characteristics of a
specific NIM, including fully configurable frame characteristics, viewer and
control characteristics, and NIM content references” (id. at 6:66–7:2). See
also id. at 21:12–14 (“The NIM definitions, as discussed above, include[]
the NIM frame definition and the definition of the controls for filling the
viewer within the frame with content.”).
Figure 13 of the ’407 patent is reproduced below.
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Figure 13 “illustrates a data structure for a NIM definition.” Id. at
21:32, 3:63–65. According to the Specification, in the exemplary
embodiment of Figure 13 “the definition of a NIM includes tags that identify
the NIM 270, define and configure the NIM frame 271, specify and layout
the controls 273 in the NIM viewer, and specify parameters to initialize all
the NIM’s components with content or data.” Id. at 21:61–65. This
disclosure does not indicate that the data structure for the NIM template
contains compiled code.
The Specification states that “a NIM is defined as a frame that
contains a collection of controls, or functional units, such as a web rendering
control or a GIF rendering control,” and the NIM definitions “include all the
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information needed to build a NIM frame and fill the NIM with NIM
content.” Id. at 21:33–35; 21:41–43. The Specification further states:
In one embodiment, the NIM definitions are defined using
Extensible Markup Language (XML), so that the NIM as a
whole–the frame and the content within the viewer––is
advantageously as flexible as standard web content. NIMs are
extremely flexible, because the definition of the NIM is content,
rather than compiled code. The NIM definition defines the
structure of the NIM, and everything that is visible in a NIM is
based on standard Internet content, such as HTML, dHTML, or
GIFs, and is referenced or pointed to by the NIM definition. An
“application”–type NIM, such as a web calendar or web mail,
may be changed by the user, by the content provider, or by other
content, while advantageously avoiding the need to distribute
and support a hard-coded compiled application. The definition
of a NIM thus includes everything that is needed for the NIM to
be rendered and filled with Internet content.
Id. at 21:45–60 (emphases added). From this disclosure, we understand that
the Specification prohibits the NIM template from using compiled code or
an executable application. Our review of the Specification did not identify
disclosure of use of compiled code or an executable application by the NIM
template.
As discussed, Petitioner argues that the data structure illustrated in
Figure 13 and the related discussion of Figure 13 merely describe one non-
limiting embodiment, and that the Figure 13 embodiment merely describes
implementing a NIM template as XML rather than compiled code. Reply 3–
4 (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
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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 statement that a NIM
template is content, rather than compiled code or executable applications,
applies to all NIM templates, not just one particular embodiment. The
Specification does not describe any NIM template that uses compiled code
or executable applications.
With respect to Petitioner’s argument that a NIM template “might
contain any binary content, including executable code,” Petitioner’s
argument is not persuasive. Reply 4. The Specification refers to distribution
of an NIM definition “as an XML file or Blob (binary large object)” and
later, in the same context, to an “XML Blob.” Ex. 1001, 33:61, 34:28. In
addition, 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.”). Unlike Patent Owner, Petitioner
provided no declarant testimony probative to the issue of how the ordinary
artisan would have understood and interpreted the relevant passages from
the Specification and their bearing on the limitation in dispute.
With respect to the “second executable module” and “NIM definition
modules” described in the Specification, Petitioner’s arguments are again
not persuasive. Reply 5–6. Petitioner does not identify, and we do not find,
any portion of the Specification that discloses that the second executable
module contains compiled code. In the context of the Specification, the
“second executable module” described as acting to “define[] a NIM frame
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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. 1001, 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 5–6. 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. In re
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 “[e]ach NIM definition contains just enough
information to define and initialize the NIM’s components (NIM frame,
controls, etc.)” and “the definition of the NIM is content, rather than
compiled code.” Ex. 1001, 33:55–57; Ex. 2004 ¶ 46.
Petitioner’s argument regarding the claim term of the ’083 patent
describing “execut[ion of] the first networked information monitor template
such that the graphical user interface of the first networked information
monitor is presented to the user” amounts to one sentence, and does not
address the context of the phrase in the claims of that patent, or present any
testimony regarding whether one of ordinary skill in the art, reading those
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claims, would determine that, in the cited claim 1 of the ’083 patent, the
networked information monitor template is described as executable code.
Reply 7; Ex. 1013, 47:42–48:8. Petitioner’s contentions about the meaning
of the disputed terms in the context of the ’083 claims and the prosecution
history of a related application (Reply 6–7) 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. In re Geisler, 116 F.3d at 1470–71. As such,
Petitioner’s argument is not persuasive.
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 8–
9. Although Petitioner cites the Second Amended Complaint, that
document, with respect to the ’407 patent, describes generally that
“Yogabook, in connection with the weather app” satisfies the limitations,
and does not specifically describe what in that combination is mapped to the
NIM template. Ex. 1015, 10–12; see also id. at 8–10 (discussing generally
that “Lenovo’s YogaBook also infringes Claim 1 of the ’083 patent” without
specific mapping to the NIM template). 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 addition,
Petitioner’s contentions about the meaning of the disputed terms and apps
are attorney argument unsupported by persuasive evidence. In re 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.
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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.
D. Obviousness over Hoff, Berg, and Nazem or APA
Petitioner contends that the subject matter of claims 1, 9–13, and 21–24
would have been obvious over the combined teachings of Hoff, Berg, and
Nazem or APA. Pet. 20–37. 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.
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
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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. Berg4
Berg is an article by Clifford Berg titled “How Do I Create a Signed
Castanet Channel?” Ex. 1009, 1. Petitioner asserts that Berg was published
on January 1, 1998, and is prior art under 35 U.S.C. § 102(b). Pet. 9;
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. 1009,
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

4 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. 9
(citing Ex. 1005 ¶¶ 2–3); see also Papers 22–25 (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 PO Resp.);
PO Resp. 12–14; Reply 9–11. 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 Petitioner has not established the unpatentability of any challenged
patent claim.
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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
also includes an “X” window-close control, which allows a user to close the
frame. Id. at 4.
3. Nazem
Nazem is titled “Dynamic Page Generator” and issued on November
9, 1999. Ex. 1007, codes (54), (45). Petitioner contends Nazem is prior art
under 35 U.S.C. § 102(e). Pet. 13.
Nazem describes pages containing live data arranged according to
specific user preferences or recently used templates. Ex. 1007, code (57).
Nazem’s pages “[t]ypically” are “news pages.” Id. Nazem describes the
contents of such pages as “live data,” which, in the case of news pages,
might include “a custom selection of stock quotes, news headlines, sports
scores, weather, and the like.” Id.; see also id. at 1:61–2:14.
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4. APA
Appellant refers to a portion of the Specification of the ’407 patent as
the APA. This portion, included in the Background of the Invention portion
of the Specification, reads as follows:
A user operating a client computer typically accesses the
Internet by using a viewer application, such as a browser to view
web content provided at a destination address, typically a web
page. In this context, web content and web applications are
designed to fill the entire web page. It is known to divide the
web content into different regions of a single web page. For
example, personalized web pages can be specified, such that a
user views a variety of content sources in a single page, such as
stock information, weather information, and sports information,
which is aggregated at the server that delivers the web page to
the user, who then views the aggregated content in a single web
page.
Ex. 1001, 1:56–67 (cited at Pet. 23–24, 26).

5. Analysis of Claims 1, 9–13, and 21–24
In support of Petitioner’s contention that claims 1, 9–13, and 21–24
are obvious over the combined teachings of Hoff, Berg, and Nazem or APA,
Petitioner provides an element-by-element analysis showing where
Petitioner contends each element of the challenged claims is in Hoff, Berg,
or Nazem/APA. Pet. 20–37. 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 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
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success undermines Petitioner’s arguments of unpatentability.5 PO Resp. 1–
3, 10–13, 15–16. For reasons set forth below, we determine that Petitioner
has not shown that Hoff, Berg, and Nazem or APA teach or suggest the
limitations of claims 1, 9–13, and 21–24.
a) Claims 1 and 13 – “network information monitor template”
Claim 1 recites a NIM and a NIM template in several limitations,
including in limitations 1.A and 1.B:
[1.A] electronic storage configured to store networked
information monitor template associated with a networked
information monitor, [1.B] the networked information monitor
template having therein a definition of a viewer graphical user
interface having a frame within which time-varying content in a
web browser-readable language may be presented on a display
associated with the client computing device, wherein the frame
of the viewer graphical user interface lacks controls for enabling
a user to specify a network location at which content for the
networked information monitor is available[.]
Ex. 1001, 42:30–40. Claim 13 contains similar descriptions of a NIM and
NIM template. Id. at 43:61–44:31.
Petitioner asserts that Hoff teaches the NIM template of claims 1 and
13 in the code and data downloaded to local storage when a channel is

5 Patent Owner asserts that objective evidence of non-obviousness ––
commercial success –– supports a finding of non-obviousness of the ’407
patent. PO Resp. 15–16; 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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subscribed to. Pet. 21–22 (citing Ex. 1004, 2:45–48, 2:56–67, 3:1–5, 4:47–
49, Fig. 1B), 30–32. 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 22 (citing Ex. 1009, 2; Ex. 1003 ¶¶ 109–110). Petitioner
asserts that limitation 1.B and a substantially identical limitation of claim 13
are taught by the combination of Berg and Nazem or APA, and that
specifically, Berg discloses an application (Castanet channel) that includes a
definition of an interface with a frame in which content is presented, and that
the presented content may be rendered from HTML. Id. at 23 (citing
Ex. 1003 ¶ 112; Ex. 1009, 3–4), 31.
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.b (claim construction of
“network 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. 8–9 (citing Ex. 1004, code (54), 1:54–67, 2:38–41, 4:8–10, 4:19–24,
4:51–57); Reply 8–9 (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. 9–10 (citing Ex. 1009, 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
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template are separate and distinct elements. Reply 2; PO Resp. 8; 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. 23–24; Ex. 1003 ¶ 153
(“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
NIM and a NIM template that are separate and distinct elements. Ex. 2004
¶¶ 66 (“Even were a NIM template to be contained within the application
that the petition identifies is 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)), 72 (“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 13
would have been obvious over the combination of Hoff and Berg. Petitioner
does not rely on Nazem or APA in a manner that remedies the foregoing
deficiencies in Petitioner’s showing as to the combination of Hoff and Berg.
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b) Claims 9–12 and 21–24
Each of claims 9–12 and 21–24 depend, directly or indirectly, from
independent claim 1 or independent claim 13, and, therefore, require a “NIM
template.” Ex. 1001, 43:5–44:31. Thus, for the same reasons discussed
above with respect to Petitioner’s challenge of claims 1 and 13, we also
conclude that Petitioner has not demonstrated by a preponderance of the
evidence that claims 9–12 and 21–24 would have been obvious over Hoff,
Berg, and Nazem or APA.
c) Summary
For the reasons above, Petitioner has not shown that Hoff and Berg,
either singly or in combination with each other, disclose 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 code. As
also noted above, Petitioner does not rely on Nazem or APA in a manner
that remedies the foregoing deficiencies in Petitioner’s showing as to the
combination of Hoff and Berg. Thus, Petitioner has not shown by the
preponderance of the evidence that claims 1, 9–13, and 21–24 are
unpatentable over Hoff, Berg, and Nazem or APA.
E. Obviousness over Hoff, Berg, Nazem or APA, and Fortin
Petitioner also challenges the patentability of claims 8 and 20 over the
combination of Hoff, Berg, Nazem or APA, and Fortin. Pet. 37–41. Claim
8 depends from independent claim 1, and claim 20 from independent claim
13, and therefore, each of claims 8 and 20 requires a “NIM template.”
Petitioner does not argue that the asserted combination remedies the
deficiencies of Hoff and Berg discussed above. Thus, for the same reasons
discussed above with respect to Petitioner’s challenge of claims 1 and 13, we
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also conclude that Petitioner has not demonstrated by a preponderance of the
evidence that claims 8 and 13 would have been obvious over the asserted
combination of Hoff, Berg, Nazem or APA, and Fortin.
F. Obviousness over Razavi and Andersen
Petitioner contends that the subject matter of claims 1, 9–13, and 21–
24 would have been obvious over the combined teachings of Razavi and
Andersen. Pet. 41–64. 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. Razavi
Razavi is titled “Detachable Java Applets,” and issued on June 4,
2002. Ex. 1006, codes (54), (45). Petitioner contends Razavi is prior art
under 35 U.S.C. § 102(e). Pet. 10.
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. 1006, 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. 1012, codes (54), (45). Petitioner
contends Andersen is prior art under 35 U.S.C. § 102(e). Pet. 12. 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. 1012, 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, 9–13, and 21–24
In support of Petitioner’s contention that claims 1, 9–13, and 21–24
are 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. 41–
64. 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, 9–13, and 21–
24 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 have a NIM template, and (2) the combination of
Razavi and Andersen does not have a separate NIM and NIM template. PO
Resp. 1–3, 10–15. Patent Owner additionally argues that one of ordinary
skill would not have been motivated to combine Razavi and Andersen. Id. at
14. 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, 9–13, and 21–24.
a) Claims 1 and 13 – “network information monitor template”
Petitioner asserts that the client computing device of the preamble of
claims 1 and 13 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,
generates a GUI on a display, and presents the content within the GUI.” Pet.
41–42 (citing Ex. 1006, 1:1–41; Ex. 1012, 1:10–2:30; Ex. 1003 ¶ 241), 58.
Petitioner asserts that Razavi teaches the NIM template of claims 1 and 13 in
Razavi’s Java applets, downloaded in a pre-compiled state, and then
executed at a client device. Pet. 43–44 (citing Ex. 1006, 1:9–25, 5:51–56,
7:29–33; Ex. 1003 ¶¶ 246–248), 58–60.
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. 1006, 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. 44–45; Ex. 1003 ¶ 249. 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. 2001 ¶ 91; see id. ¶ 83 (“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 13 would have been
obvious over the asserted prior art.
b) Claims 9–12 and 21–24
Each of claims 9–12 and 21–24 depends, directly or indirectly, from
independent claim 1 or independent claim 13, and, therefore, requires a
“NIM template.” Ex. 1001, 43:5–44:31. Thus, for the same reasons
discussed above with respect to Petitioner’s challenge of claims 1 and 13, we
also conclude that Petitioner has not demonstrated by a preponderance of the
evidence that claims 9–12 and 21–24 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, disclose 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 1, 9–13, and 21–24
are unpatentable over Razavi and Andersen.
G. Obviousness over Razavi, Andersen, and Fortin
Petitioner also challenges the patentability of claims 8 and 20 over the
combination of Razavi, Andersen, and Fortin. Pet. 64–67. Claim 8 depends
from independent claim 1, and claim 20 from independent claim 13, and
therefore, each of claims 8 and 20 requires a “NIM template.” Petitioner
does not argue that the asserted combination remedies the deficiencies of
Razavi and Andersen discussed above. Thus, for the same reasons discussed
above with respect to Petitioner’s challenge of claims 1 and 13, we also
conclude that Petitioner has not demonstrated by a preponderance of the
evidence that claims 8 and 13 would have been obvious over the asserted
combination of Razavi, Andersen, and Fortin.
H. Patent Owner’s “‘Secret’ Prior Art” Argument
Patent Owner argues that, because Hoff and Razavi were published
after the critical date for the ’407 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. 16–17. 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.
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Because we must follow the law as it stands, we decline to address
Patent Owner’s arguments.
I. 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-
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
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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.
Thus, we grant-in-part and deny-in-part the Motion to Strike.
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, 8–13, and 20–24 of the ̓ 407 patent have not
been shown to be unpatentable;
ORDERED that Petitioner’s Motion to Strike (Paper 31) is granted-in-
part as discussed above; and
Claims

35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 9–13,
21–24
103 Hoff, Berg, Nazem
or APA
1, 9–13, 21–
24
8, 20 103 Hoff, Berg, Nazem
or APA, Fortin
8, 20
1, 9–13,
21–24
103 Razavi, Andersen 1, 9–13, 21–
24
8, 20 103 Razavi, Andersen,
Fortin
8, 20
Overall
Outcome
1, 8–13, 20–
24
IPR2019-01279
Patent 8,510,407 B1
36
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.

IPR2019-01279
Patent 8,510,407 B1
37
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