Kyocera Corporation Motorola Mobility LLCv.Softview LLC

Patent Trial and Appeal Board

Mar 27, 2014

11045757 (P.T.A.B. Mar. 27, 2014)

Trials@uspto.gov
571-272-7822 
Paper No. 51
Date Entered: March 27, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

KYOCERA CORPORATION
MOTOROLA MOBILITY, INC
Petitioner

v.

SOFTVIEW LLC
Patent Owner
____________

Case IPR2013-00007
Case IPR2013-00256
Patent 7,461,353 B2
____________

Before BRYAN F. MOORE, BRIAN J. McNAMARA, and
STACEY G. WHITE, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

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

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BACKGROUND
On March 29, 2013, in Paper 11, the Board entered a Decision to Institute an
inter partes review on the following challenges raised by Kyocera Corporation to
the patentability of claims 1, 33, 36, 43, 48, 51, 52, 58, 59, 118, 138, 139, 149, 183,
252, 283, and 317 (“Challenged Claims”) of U.S. Patent No. 7,461,353 B2 (the
’353 Patent) owned by Softview LLC (“Patent Owner”):

Challenged Claims 1, 33, 36, 43, 48, 51, 52, 58, 59, 118, 138, 139, 149, 183,
252, 283, and 317as obvious under 35 U.S.C. § 103 over the combination of
Zaurus1, Pad++2;
Challenged Claim 66 as obvious over the combination of Zaurus, Pad++ and
SVG3;

1 Power Zaurus Personal Digital Assistant Documentation (“Zaurus”), Ex. 1004
2 Bederson, Benjamin B. and Hollan James D., Pad++: A Zoomable Graphical
Interface System, CHI ‘95 Mosaic of Creativity, May 1995; Bederson, Benjamin
B. and Furnas, George W, Space-Scale Diagrams: Understanding Multiscale
Interfaces, CHI ‘95 Proceedings, 1995; Bederson, Benjamin B., et al, A Zooming
Web Browser, SPIE, Vol. 2667, 260-71, May 1996; Bederson, Ben and Meyer,
Jon, Implementing a Zooming User Interface: Experience Building Pad ++,
Software-Practice and Experience, Vol. 28(1), 1101-35, Aug. 1998; Bederson,
Benjamin B., et al., Pad++: A Zoomable Graphical Sketchpad for Exploring
Alternate Interface Physics, Journal of Visual Languages and Computing, Vol. 7,
3-31, 1996; Pad++ Reference Manual Version 0.2.7, published July 9, 1996;
Pad++ Programmer’s Guide Version 0.2.7, published June 10, 1996 (collectively,
“Pad++”), Ex. 1006
3 Ferraiolo, Jon, Scalable Vector Graphics Requirements: W3C Working Group
Draft, Oct. 29, 1998. (“SVG”), Ex. 1007
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Challenged Claims 1, 33, 36, 43, 48, 51, 52, 58, 59, 118, 138, 139, 149, 183,
252, 283, and 317 as obvious over the combination of Zaurus,
Tsutsumitake4, and Hara5;
Challenged Claim 66 as obvious under 35 U.S.C. § 103 over the
combination of Zaurus, Tsutsumitake, Hara, and SVG.
IPR2013-00256, brought by Motorola Mobility LLC, raised the same
challenges and later was joined to this proceeding. IPR2013-00256, Paper 10.
Kyocera Corporation and Motorola Mobility are referred to collectively as
“Petitioner.”
On July 19, 2013, Patent Owner filed a response brief. (PO Resp., Paper
25). Petitioner filed a Consolidated Reply to Patent Owner’s Response. (Paper
28). Patent Owner filed a Motion to Exclude. (Mot. to Exclude, Paper 41) and
Petitioner replied (Reply to Mot. to Exclude, Paper 42). An oral hearing was held
on January 7, 2014, concurrent with the oral hearing in related consolidated
proceeding, IPR2013-00004/IPR2013-00257, between the same parties.
In this Final Written Decision, we determine pursuant to 35 U.S.C. § 318(a)
and 37 C.F.R. § 42.73 that Petitioner has shown, by a preponderance of the
evidence, that all challenged claims are unpatentable under 35 U.S.C. § 103.
THE ’353 PATENT (EXHIBIT 1001)
As indicated by its title, the ’353 patent is drawn to the scalable display of
Internet content, e.g., Hyper Text Markup Language (HTML)-based content,
cascade style sheet (CSS) content and XML content on mobile devices by enabling
the content to be rendered, zoomed, and panned for better viewing on small screens

4 Japanese Laid Open Patent Application H10-21224 (“Tsutsumitake”), Ex. 1005
5 Japanese Unexamined Patent Application Publication H10-326169 (“Hara”),
Ex. 1008
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and standard monitors. Ex. 1001, col. 2, ll. 22-39, col. 5, ll. 18-22. A client side
viewer receives the Internet content in an Internet browser, e.g., a micro-browser
or a browser plug-in, and uses the simple vector format (SVF) originally designed
to handle common computer aided design (CAD) file formats to describe the
current web content. Id. at col. 4, ll. 43-63. Translation of the content into a
scalable vector representation can be done by a third party proxy service (Fig. 1A),
the content provider’s web site (Fig. 1B) or at the client (Fig. 1C).
Figure 5 illustrates the logic used by the invention when translating content
into a scalable vector representation. Id. at col. 3, ll. 50-52. Pre-rendering parsing
of a received HTML document identifies elements such as tables, column
definitions, graphic images, paragraphs, and line breaks, and determines where to
place objects on a display. Id. at col. 15, ll. 45-52. When using frames, the display
page is divided into multiple frame areas, which enables a single displayed page to
include source code from several HTML documents. Id. at col. 15, ll. 33-36.
During pre-rendering, each frame is examined in the sequential order it appears in
the HTML document, and during further processing, actual objects are rendered in
their respective positions. Id. at col. 15, ll. 52-57. The content is separated into
objects based on logical groupings of content, and a page layout is built using
bounding boxes produced for each object. Id. at col. 16, ll. 19-38, col. 17, ll. 15-
29). The ’353 Patent admits that the above steps commonly are performed by
conventional browsers in the pre-rendering process, but indicates that the steps it
discloses to use layout data generated in the pre-rendering process to generate a
scalable vector representation of the original page content depart from the prior art.
Id. at col. 17, ll. 30-45.
The ’353 Patent discloses that generating a scalable vector representation
begins by defining a page datum point as an X,Y value and a datum point as an
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X,Y value for each object’s bounding box. Id. at col. 17, ll. 45-64, col. 18, ll. 1-5.
A vector between the page datum point and the datum point for each bounding box
is then generated and stored. Id. A frame datum can also be assigned and vectors
drawn from the page datum to the frame datum to establish the frame’s offset and
from the frame datum to each object in the frame. Id. at col. 18, ll. 5-16. The
scalable vector representation then is completed by a reference that links each
object’s contents, attributes such as type (image, text), and bounding box
parameters such as height and width to the object’s vector. Id. at col. 18, ll. 18-26.
A display list of vectors for the vectorized HTML content is built, as is
known from CAD arts, and a user selectable scale and offset are determined. Id. at
col. 19, ll. 14-25. The bounding boxes are processed using the scale and offset,
and a bounding box defining the limits of the display content is determined. Id. at
col. 19, ll. 32-35. Scaling and offset can be accomplished either (i) by mapping
vectors to a virtual display area in memory with much more resolution than the
actual display, and reducing the scaling of the objects in the virtual display to how
they will appear in the actual display, or (ii) by using a fixed reference frame
corresponding to the client’s screen resolution and scaling and offsetting the
vectors’s bounding boxes relative to the fixed frame. Id. at col. 19, ll. 39-56.
Using the latter approach, respective offsets in X and Y (-∆X and -∆Y) are applied
to the starting point and the vectors are scaled by an amount SF, producing a new
datum (starting point) for each bounding box relative to the rendered page datum,
which remains fixed, but may, or may not, be displayed depending on the offset
and scaling. Id. at col. 19, l. 58 - col. 20, l. 17. Once the bounding boxes are offset
and scaled, the content (e.g., image and text) corresponding to objects having at
least a part of their bounding boxes on the screen is retrieved from the client
device’s display list and scaled. Id. at col. 20, ll. 18-44. A display limit bounding
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box defines the portion of the display screen that actually will be used to display
content. Id. at col. 19, l. 58 - col. 20, l. 7. The portions of the scaled content
falling within the display limit bounding box are rendered on the client’s display
device. Id. at col. 20, ll. 45-47.
ILLUSTRATIVE CLAIMS
Apparatus claims 1 and 36, which are illustrative, are shown below.
1. A wireless device comprising:
processing means;
wireless communications means, to facilitate wireless communication with a
network that supports access to the Internet;
a display;
a memory; and
storage means, in which a plurality of instructions are stored that when
executed by the processing means enable the wireless device to perform
operations including,
rendering a browser interface via which a user is enabled to request
access to an original Web page, the Web page comprising HTML-
based Web content having an original format defining an original
width and height of the Web page and an original page layout,
functionality, and design of content on the Web page;
in response to a user request to access the Web page, retrieving the Web
page via the wireless communication means, and translating at least a
portion of the HTML-based Web content from its original format into
scalable content that supports a scalable resolution-independent
representation of the Web page that preserves the original page layout,
functionality and design of the content defined by its original format
when scaled and rendered; and
scaling the scalable content to render the Web page on the display such
that a width of the Web page is rendered to fit across the display.

Claim 33 further limits the scalable content of claim 1 to vector based
content. Claim 118 is a method claim limited to operations, which generally
correspond to the operations performed by the apparatus recited in claim 1.

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36. A mobile hand-held device, comprising:
a processor,
a wireless communications device, to facilitate wireless communication with
a network that supports access to the Internet;
a display; and
flash memory, operatively coupled to the processor, in which a plurality of
instructions are stored that when executed by the processor enable the
mobile hand-held device to perform operations including,
rendering a browser interface via which a user is enabled to request
access to a Web page comprising HTML based Web content defining
an original page layout, functionality, and design of content on the
Web page;
retrieving the Web page via the wireless communications device, and
processing HTML-based Web content to produce scalable content;
and
employing at least one of the scalable content or data derived therefrom
to,
render the Web page on the display; and
re-render the display in response to associated user inputs to enable
the Web page to be browsed at various zoom levels and panned
views while preserving the original page layout, functionality, and
design of the Web page content at each zoom level and panned
view.

Claim 43 limits the scalable content recited in claim 36 to vector-based
content. Claim 48 limits claim 36 to enabling a user to zoom on a column of the
web content, such that the display is re-rendered to fit across the display. Claim 51
similarly limits claim 36 when the selected content is an image. Claim 52 limits
claim 51 to selecting the image by tapping the display. Claim 66 limits claim 36 to
preserving aspects of the web page design that are defined by cascaded style
sheets.
Claim 149, which is drawn to a method, and claim 252, which is drawn to a
machine readable medium, both recite limitations which generally correspond to
the operations recited in claim 36. Claim 183 limits the method in claim 149 to
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vector-based content and claim 283 limits the machine readable medium in claim
252 to vector-based content.
Claim 58, which depends from apparatus claim 36, recites additional
operations including parsing HTML-based code and logically grouping selected
content into objects. Method claim 138, which depends from claim 118, recites
similar parsing and logical grouping features. Claim 59, which depends from
claim 58, and claim 139, which depends from method claim 138, recite generating
a bounding box.
Independent claim 317 recites a hand-held device comprising a variety of the
features recited in the claims discussed above.
CLAIM CONSTRUCTION
As discussed in our our Decision to Institute, we construed the claim terms
as the Petitioner represented they were construed by the district court in co-
pending litigation,SoftView LLC v. Apple Inc., Case No. 1:10-cv-00389-LPS (D.
Del.). Dec. to Institute, Paper 11, 20-22. A dispute concerning the meaning of
another term, i.e., “preserve[s] an original page layout, functionality and design,”
(“the preserving limitation”) emerged after the Patent Owner Response argued in
this proceeding and in IPR2013-00004 that this claim feature recites a major
distinction over the art cited in Petitioner’s challenges. PO Resp. 2.
We authorized briefing concerning the proper construction of the preserving
limitation in this proceeding and in IPR2013-00004, which concerns U.S. Patent
No. 7,831,926 B1 (the ’926 Patent) that has a common specification with the ’353
Patent. Petitioner filed the same claim construction brief in each proceeding.
Patent Owner filed essentially the same claim construction brief in each
proceeding. Neither party argued that the preserving limitation should be
construed differently in IPR2013-00004 and IPR2013-00007. We thoroughly
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addressed the construction of the preserving limitation in IPR2013-00004 and
determined that the preserving limitation should be construed to mean maintains
the features of the web page’s capabilities and appearances in a manner consistent
with the translated portion of HTML code defining those capabilities and
appearances. IPR2013-00004, Final Written Decision. Neither Petitioner nor
Patent Owner argued that the preserving limitation should be construed differently
in this proceeding. As discussed below, the construction we adopted in IPR2013-
00004 concerning the ’926 Patent applies to the claims of the ’353 Patent as well.
Patent Owner argues that the original page layout, functionality, and design
that must be preserved is the layout “as viewed on a conventional desktop
browser.” See, Patent Owner’s Supplemental Claim Construction Brief (Paper 37),
2-3. Petitioner argues that “what is being preserved is the layout of the webpage
after it has been processed by the browser.” See, Petitioner’s Supplemental Claim
Construction Brief (Paper 36). Petitioner’s proposed construction is consistent
with statements made by Patent Owner during prosecution of the’353 Patent, that:
With respect to the scope of the terminology “preserving the [overall
layout, functionality and] design” of the content, this refers to
preserving the design as interpreted by the browser while at different
zoom levels and panned views as opposed to rendering the content
identically to how it is rendered by a particular desktop browser that
may interpret the page design differently..
Id. at 4 (citing Ex. 1002, 233). In a footnote on page 233, Patent Owner noted that
differences in page interpretation generally will be a function of the browser’s
rendering engine (a.k.a. layout engine). Ex. 1002, 233 n.8.
We do not adopt either Petitioner’s or Patent Owner’s proposed
constructions. Patent Owner’s construction introduces uncertainty because the
claims do not refer to a conventional desktop browser, and the proposed
construction does not define a conventional desktop browser. Patent Owner agrees
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that, using the same HTML code, different browsers produce different displays,
Ex. 1002, p. 229-316, but argues that preserving the look and feel of the web site,
as rendered on a desktop browser, is sufficient. See, Tr. 51-61. At the oral
hearing, Patent Owner argued that “you need to preserve the look and feel so that a
person using the web page would understand that that was the same web page as
the one that they were using in connection with a desktop computer.” Id. at 60-61.
Due to uncertainty regarding the scope of differences that would be permissible on
the target device browser, while maintaining the look and feel as rendered by a
conventional desktop browser, we determine that Patent Owner’s proposed
construction provides no more insight than the current “preserving” claim
language.
Petitioner’s construction requires that the zoomed version reproduce the
layout of the page as initially displayed, but places no requirements on processing
performed by the browser’s initial rendering of the web page, and does not
recognize a relationship between the web page as displayed and the HTML
defining its format.

6 The ’353 and ’926 Patents have the same specification. During prosecution of
the ’353 Patent, Patent Owner noted that,
[e]ven when rendering the same Web page source content (i.e., the
HTML code definition of the web page), conventional web browsers
may not render the (non-scaled) Web page identically. Scaling Web
pages may also result in alteration of the page layout . . . [h]owever, . .
. the overall layout, functionality and appearance (design) of the
scaled Web pages defined by the HTML code for the Web page are
preserved . . . . Preserving functionality generally pertains to
preserving the interoperability of various HTML-based Web page
content, such as hyperlinks and UI [user interface] controls such as
input forms defined via corresponding HTML-based code. Ex. 1002,
231.
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As previously noted, the parties do not argue a different claim construction
should apply in the ’353 Patent and the ’926 Patent, which is the subject of
IPR2013-00004, and which we decide contemporaneously with this proceeding.
We explained our construction of the preserving limitation in detail in our Final
Written Decision in IPR2013-00004. We agree that the same construction should
apply to the preserving limitation in the ’353 Patent. The preserving limitation in
claim 1 recites:
a scalable resolution-independent representation of the Web page that
preserves the original page layout, functionality and design of the
content defined by its original format when scaled and rendered
As an antecedent to the disputed “preserving limitation,” claim 1 recites that
the claimed wireless device [mobile phone in the ’926 Patent] can render a browser
interface that enables a user to request access to a web page “comprising HTML-
based web content having an original format defining an original width and height
of the Web page and an original page layout, functionality and design of content on
the Web page.” Ex. 1001, claim 1. Claim 1 also recites “translating at least a
portion of the HTML-based Web content from its original format into scalable
content that supports a scalable resolution-independent representation of the Web
page that preserves the original page layout, functionality, and design of the
content defined by its original format when scaled and rendered.” Thus, claim 1
does not recite preserving the entire layout, functionality, and design, but only the
original layout, functionality, and design that corresponds to the translated portion
of the HTML-based web content.
Claim 1 is not limited to a vector based representation. Claim 1 recites only
a representation that preserves an original Web page layout, functionality and
design when scaled and rendered as defined by at least a portion of the HTML-
based web content. Claim 1 cannot be interpreted to preserve a particular
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conventional desktop layout because claim 1 does not recite what portion of the
HTML-based web content that defines the conventional desktop layout is scaled
and rendered. Construing the claim broadly, a portion of the HTML-based content
could be scaled and rendered that would preserve only some features of the
original layout, function, and design, as viewed on a conventional desktop.7 While
preserving the original layout, functionality, and design of the translated portion of
the HTML-based content, the web page rendered on the claimed device may, or
may not, appear as it would on a conventional desktop, depending upon what
portion of the HTML-based content is translated.
The “preserving limitation” in claim 36 recites:
employing at least one of the scalable content or data derived
therefrom to, render the Web page on the display; and re-render the
display . . . to enable the Web page to be browsed at various zoom
levels and panned views while preserving an original page layout,
functionality, and design of the Web page content at each zoom level
and panned view.
Thus, claim 36 recites two renderings. The first rendering of the Web page
on the display of the mobile device employs the scalable content, and is not limited
to one that preserves the original page layout, function, and design. Claim 36
includes a “retrieving limitation” that recites retrieving the web page, which
comprises HTML-based content defining an original page layout, functionality,
and design. Although the remainder of the retrieving limitation recites “processing
HTML-based Web content to produce scalable content,” it does not recite what
HTML-based Web content is processed. Specifically, the retrieving limitation
recites processing HTML based Web content generally, and does not recite

7 As discussed further herein, Patent Owner criticizes the prior art references as
primitive devices that implement only a portion of available HTML capabilities.
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processing the previously recited “HTML based Web content defining an original
page layout, functionality, and design of content on the Web page.”
The second rendering recited in claim 36 is a re-rendering of the display. As
discussed above, the display of the Web page in the first rendering is not limited to
one that preserves the original layout, functionality and design of the Web page.
The re-rendering provides zooming, while preserving the original page layout,
functionality, and design of the Web page content at each zoom level. This is
possible only to the extent that the scalable content was produced from HTML
based Web content that was processed, as recited in the retrieving limitation.
In consideration of the language of the claims of the ’353 Patent, the
language of the claim of the ’926 Patent, as discussed in our Final Written
Decision in IPR2013-00004, and the parties’ contentions that the preserving
limitation be construed to have the same meaning in the ’353 and ’926 Patents, we
apply the same construction in both patents. Thus, as previously noted, we
construe the preserving limitation to mean, maintains the features of the web
page’s capabilities and appearances in a manner consistent with the translated
portion of HTML code defining those capabilities and appearances.
ANALYSIS OF PETITIONER’S PRIOR ART CHALLENGES
Grounds Based on Zaurus and Pad++
Claims 1, 33, 36, 43, 58, 59, 66, 118, 138, 139, 149, 183, 252, and 283
Claim 1 is drawn to an apparatus, i.e., a wireless device. Patent Owner notes
that claim 118 is a method claim corresponding to apparatus claim 1. Claim 36 is
also drawn to an apparatus, i.e., a mobile hand-held device. PO Resp. 18. Patent
Owner notes that claims 149 and 252 are method and machine readable medium
claims that correspond to apparatus claim 36. Id. None of these claims is limited
to a vector-based system. Claim 33, which depends from claim 1, claim 183,
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which depends from claim 149, and claim 282, which depends from claim 252,
recite vector-based content. Patent Owner argues that claims 1, 33, 36, 43, 58, 59,
66, 118, 138, 139, 149, 183, 252, and 283 would not have been obvious over the
combination of Zaurus and Pad++ based on the preserving limitation.8
A 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
on the basis of 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) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
We analyze the instituted grounds of unpatentability in accordance with the
above-stated principles. We also recognize that prior art references must be
“considered together with the knowledge of one of ordinary skill in the pertinent
art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour,
571 F.2d 559, 562 (CCPA 1978)). Moreover, “it is proper to take into account not
only specific teachings of the reference, but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d
825, 826 (CCPA 1968). That is because an obviousness analysis “need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a

8 Patent owner does not present separate arguments concerning claim 66, for which
trial was instituted based on the combination of Zaurus, Pad++, and SVG.
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person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also
In re Translogic Tech., Inc., 504 F.3d, 1249, 1259 (Fed. Cir. 2007).
As we discussed above under Claim Construction, the ’353 Patent describes
as conventional the use of HTML to specify the layout, design, and function of a
web page. The ’353 Patent also describes the zoom and pan capabilities of the
simple vector format (SVF, also referred to as “vectorized content”) as known in
the CAD art and under consideration by the World Wide Web Consortium for
adoption as a standard for vector content on the web. Ex. 1001, col. 4, l. 57 – col.
5, l. 6. Patent Owner’s expert states that the invention claimed in the ’353 Patent
(and the ’926 Patent) is “directed toward a browser that extends the web to mobile
devices by supporting full-page browsing with zoom and pan, using for example,
SVF (Simple Vector Format) to describe web content. ’926 Patent, col. , ll. 35-
45.” Reinman Decl., Ex. 2003 ¶ 9. Although Patent Owner disputes whether the
evidence supports a combination of Bederson’s description of Pad++ with Zaurus,
there appears to be little dispute that Bederson discloses vectorized content. PO
Resp. 34.
In view of Patent Owner’s arguments, our analysis of the claims turns on
whether the Zaurus and Bederson references can be combined, and whether that
combination of references renders the “preserving limitation” obvious, i.e.,
whether it would have been obvious to maintain the features of the page’s
capabilities and appearances in a manner consistent with the translated portion of
HTML code defining those capabilities and appearances.
The Zaurus PDA
We begin our consideration of the scope and content of the prior art with
Zaurus. Zaurus discloses extending the web to a mobile, handheld device with a
small screen. Ex. 1004, 652 -54. As discussed in our Decision to Institute, Zaurus
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is a handheld PDA with a wireless communication means to access web content
(when used with a digital cellular phone adapter). Dec. to Institute, 23. Zaurus
includes a processor to render a browser (with limitations), and provides vertical
and horizontal scrolling and magnified and reduced views of web pages. Id.
Zaurus includes a touch sensitive screen and a browser that has the ability to
process HTML-based content up to HTML 3.2, but does not have the ability to
render multiple frames properly. Ex. 1004, 105, 127-8. The ’353 Patent notes that
web pages may be provided as a single frame or multiple frames. Ex. 1001, col.15,
ll. 33-36. Zaurus does not ignore multiple frames in web pages. In Zaurus, pages
composed of multiple frames are viewed by displaying them frame by frame. Ex.
1004, 105, 638. The frame is selected using a touch screen, so that the selected
frame is displayed. Ex. 1004, 647.
Patent Owner argues that HTML is limited to anything that preserves the
layout, functionality, and design and “excludes things like active scripting.” Tr.
67. Zaurus also discloses differences in the ways its browser processes certain
HTML content, for example using a smaller number of font sizes. Ex. 1004, 639.
Patent Owner recognized such browser font limitations during prosecution of the
related ’353 Patent stating “the Web page’s design is a matter of interpretation by
the particular browser . . . browsers may substitute fonts for fonts (as defined by
corresponding HTML code) that are not supported by the browser.” Ex. 1002,
233. Zaurus’s ability to default to a standard font size, if the HTML data does not
specify a size, further indicates that Zaurus incorporates a browser that recognizes
HTML-based information used to define web site design features. Ex. 1004, 640.
The inability of Zaurus to render properly web pages using certain plug-ins and
scripts, or to implement a full complement of HTML features, does not mean
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Zaurus cannot be applicable as prior art that teaches implementing HTML on a
handheld, mobile device, such as a phone.9
Zaurus discloses the ability to switch from a reduced view to a magnified
view, as well as a left and right scrolling control and a vertical scrolling bar, to
view material not currently on the screen. Ex. 1004, 641, 644-45. Zaurus provides
hyperlink functionality, Ex. 1004, 94, 608, but is silent on whether it maintains
hyperlink functionality in a magnified display. Zaurus also discloses that by
touching the screen one can display a list of web pages opened after connection to
the Internet and switching to a selected page. Ex. 1004, 644. Zaurus further
discloses compatibility with client side clickable maps, so that by clicking inside a
displayed map, one can jump to the page which corresponds to that portion. Ex.
1004, 638. Thus, Zaurus discloses a system that maintains the primary features of
a page’s appearance in a manner consistent with the portion of HTML code that
the Zaurus browser uses. To the extent that the browser in Zaurus provides a
limited implementation of HTML, Zaurus preserves the layout and design of the
web page defined by the translated portion of the HTML-based Web content
(claim 1) and that portion of the HTML content which is processed in the retrieved
Web page (claim 36).

9 The ’353 Patent defines an HTML document as any document that contains web
page content other than only graphic content. Ex. 1001, col. 8, ll. 1-4. This would
include documents with graphics and other contents, as well as scripts and
documents using extensible mark-up language (XML). During the oral hearing,
however, Patent Owner argued that HTML is limited to anything that preserves the
layout, functionality, and design and “excludes things like active scripting.” Tr.
67. Patent Owner noted that a box where plug-in content might appear is rendered,
but the content with the box is not rendered in the case of Microsoft Internet
Explorer because that is a plug in, although another browser might render that
content. Id. at 64-67.
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During the oral hearing, Patent Owner argued that under its proposed
construction, which we do not adopt, the “preserving limitation” in the claims
requires preserving “the look and feel so that a person using a web page would
understand that that was the same web page as the one they were using in
connection with a desktop computer.” Tr. 60-61. Zaurus does not implement a
desktop browser, nor does the specification or claims require implementing a
desktop browser in a mobile device. Zaurus discloses that due to its
implementation, its display is different from the home page as displayed by using a
PC; for example, Zaurus does not display background images of a home page. Ex.
1004, 639. Even with its limited implementation, however, a person using a
Zaurus PDA would understand that the same web page as the one being used in
connection with a desktop browser was being displayed. Thus, Zaurus falls within
the scope of Patent Owner’s stated understanding of its proposed claim
construction. Tr. 59-61.
Bederson and Pad++
Zaurus discloses only a limited ability to magnify a screen display. Ex.
1004, 645. Bederson, however, discloses a browser, referred to as Pad++ that
“allows [Web] pages to remain visible at varying scales while they are not
specifically being visited, so the viewer may examine many pages at once. In
addition, Pad++ allows users to zoom in and out of pages, enabling explicit control
of how much context is viewed at any time.” Ex. 1006, 106. Bederson notes that
Pad++ was being developed for use on platforms ranging from high-end graphics
workstations to PDAs and interactive set-top boxes. Id. at 155. Bederson further
discloses that using Pad++, one’s whole desktop could be zoomable and that this
feature “seems especially attractive for systems which have small screens, such as
handheld computers (i.e., PDAs).” Id. at 341. We are not persuaded by Patent
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Owner’s assertion that one would not be motivated to port Bederson’s Pad++
browser to Zaurus because of technical difficulties resulting from limited
computing capacity and system incompatibilities. PO Resp. 29-34.
Bederson discloses zooming primarily for navigation purposes, i.e., for
allowing users to identify the web pages they have visited. Patent Owner notes
that Pad++ was designed to provide users with a roadmap enabling them to trace
their paths from one hyperlink to another, Tr. 70-71, or to show the hierarchy of
relationships between web pages. Reinman Decl., Ex. 2003 ¶ 18. We agree. In
Bederson’s paradigm users navigate a single large information surface on which
documents can be placed at any position and scaled to any size with panning,
zooming, and hyperlinks. Ex. 1006, 117. One aspect of Pad++ described by
Bederson is the use of “dynamic objects” that restructure themselves in response to
users’ actions. When a user clicks on a link, Pad++ adds the new page to a tree
visible to the user and places the new page at the center of the screen as “the
current focus” at a size suitable for viewing. Id. at 106. A user can designate any
page as the current focus by clicking on it. Id. In this context, the motivation for
Pad++ to provide the ability to zoom in to a page in the roadmap is clear.
Patent Owner argues that Pad++, as described by Bederson, supports only a
small subset of HTML. PO Resp. 10, Reinman Decl., Ex. 2003 ¶¶ 29-34. Based
on Pad++’s implementation of only a subset of HTML, Patent Owner argues that
Pad++ does not disclose preserving the original layout, functionality, and design as
claimed. Patent Owner’s expert, Dr. Reinman, disagrees with the opinion of
Petitioner’s expert, Dr. Grimes, that Bederson preserves the original layout of a
single web page when zoomed and panned. Dr. Reinman states that Section 3 of
the Pad++ Brief Tour shows only how the web page looks after it has been
rendered by Pad++, not the original page before being rendered by Pad ++,
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precluding a determination of whether the original page layout, functionality, and
design is preserved. Reinman Decl., Ex, 2003 ¶ 23. This is true in the ’353 Patent
as well. The ’353 Patent includes a listing (with some omissions for clarity) of the
HTML corresponding to web page 210, which is shown as a drawing in Figure 4A,
rather than as a display produced by a browser as it would appear on a
conventional desktop computer. Ex. 1001, col. 12, ll. 48-54. Figures 7A, 7B, 8A,
8B, 9A, and 9B are representations of nominal and zoomed views on a Palm
device. The ’353 Patent does not illustrate how these nominal or zoomed views
would appear on a conventional desktop. Thus, in the ’353 patent, one cannot tell
how well the display on the Palm device preserves the original layout, function and
design of the HTML-based code as viewed on a conventional desktop.
Patent Owner admits that the claimed “functionality” in the preserving
limitation includes clicking on a hyperlink. Tr. 48. In Pad++, an object includes
an HTML page composed of many characters, line segments, and images. Ex.
1006, 120. Pad++ discloses reading HTML and following links across the Internet.
Id. at 89, 105, 161-62, 183. Thus, Bederson discloses preserving HTML
functionality, i.e., hyperlinking, associated with a Web page. Id.
Patent Owner’s argument appears to be that, in Pad++, Bederson does not
disclose preserving all the functionality of HTML. Patent Owner’s expert, Dr.
Reinman, provides a list of HTML features that are not implemented in Pad++.
Ex. 2003 ¶ 29. For example, Patent Owner argues that Bederson does not disclose
the specific functionality of creating forms. Only two lines in the ’353 Patent
mention forms as a feature of HTML. Ex. 1001, col. 15, ll. 30-31. Nevertheless,
according to Patent Owner, the ability to create forms is of particular importance to
e-commerce, and is not disclosed in Bederson. PO Resp. 24, Reinman Decl. Ex.
2003 ¶ 34. Referring to Figure 5 on page 163 of Exhibit 1006, Patent Owner
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states that the Pad++ reproduction of the Yahoo page does not include a search
term input box. PO Resp. 25. Patent Owner has not demonstrated that the original
Yahoo page included such a search box, but argues that the burden is on the
Petitioner to show how the Yahoo page would have appeared on a desktop.
According to Patent Owner, in the absence of such a showing, there is no evidence
of the original layout, functionality, and design of the Yahoo page in Bederson.
Tr. 72. As noted above, however, the ’353 Patent provides no evidence that the
Palm device screens illustrated in the ’353 Patent preserve the layout, functionality,
and design of a web page, as viewed on a conventional desktop.
During prosecution of the ’353 Patent, Patent Owner argued that in the
implementation of a browser, it may be desirable to change user interface behavior
based on a current use and/or context. Ex. 1002, 232. Patent Owner states it may
be advantageous to implement a context-based, user interface that may result in a
different action for the same user inputs, depending on a current use or zoom
context. Id. Patent Owner uses the example of tapping on a column which may
have the effect of zooming on the column or activating a hyperlink in the column,
depending upon the browser implementation. Patent Owner states that preserving
content functionality only means that the functionality defined by corresponding
HTML code is supported, without limiting the particular user interface for how that
activation is facilitated. Id.
Bederson describes objects in the Pad++ hierarchy, which include user
inputs, such as checkboxes, and choice menus. Ex. 1006, 144-45. The standard
objects supported by Pad ++ include colored text, graphics, portal and HTML, with
standard input widgets (buttons, sliders, etc.) supplied as extensions. Id. at 156.
Bederson’s disclosure of preserving hyperlinking capability demonstrates
preserving the functionality of HTML in a zoomed view. Bederson also notes that
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tools for interacting with documents, such World Wide Web browsers like Mosaic
and Netscape, all predefine interactive widgets within the client and provide hooks
so that documents may access those widgets. Id. at 179. Thus, Bederson provides
user input functionality.
As discussed above, claim 1 requires preserving the original layout,
function, and design of the translated portion of the HTML-based Web content.
Claim 36 recites rendering the Web page on the mobile, hand-held device display
using scalable content, based on retrieving the Web page, which comprises HTML
based Web content defining the original page layout, functionality, and design, and
processing unspecified HTML-based Web content into scalable content. Claim 36
does not recite processing all of the HTML-based Web content, or any particular
HTLM-based Web content that preserves the original layout, functionality, and
design, into scalable content. Claim 36 next recites re-rendering the display while
preserving the original page layout, functionality, and design of the Web page.
Thus, the original layout, functionality and design of the Web page content is
preserved to the extent it was displayed on the mobile device, i.e., to the extent that
the mobile device processed the HTML. Although neither Zaurus nor Bederson
implements each and every feature of HTML, as discussed above, both Zaurus and
Bederson disclose preserving the layout, functionality and design of the part of the
web page that is translated (claim 1) or processed (claim 36).
The underlying issue is not, as Patent Owner suggests, whether Zaurus
and/or Bederson disclose implementing all the features of HTML with zooming on
a device with a small screen. The issue is whether, in view of their disclosures, the
claims of the ’353 Patent would have been obvious under 35 U.S.C. § 103.
Bederson discloses that Pad++ is a primitive browser, but suggests that a zooming
version of the Netscape and Mosaic browser could be implemented using the
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techniques in Pad++. Ex. 1006, 286. Bederson then provides a screen shot of
Pad++ displaying Bederson’s home page (an HTML document), id. at 287, and a
zoomed view focusing on a portion of the document with “hotwords” that provide
hyperlinks. Id. at 289. The hyperlinks change color when scrolled over (one of
several possible ways a browser can display hyperlinks in an HTML document)
and can be followed to display the target of the link. Id. at 291. This display
shows the home page and the linked page side by side. The user can zoom in on
the linked page by clicking on it. Id. at 293. Bederson’s implementation of web
page zooming appears to be a proof of concept, rather than a mere suggestion. The
fact that Bederson did not implement all, or even many, of the known capabilities
of HTML does not alter the fact that Pad++ demonstrates the concept, suggests it
could be applied to the Netscape and Mosaic browsers, and states that it was being
designed for use on devices with small screens, such as PDAs. Thus, we are
persuaded that one of ordinary skill would have been motivated to combine the
teachings of these references.
Patent Owner does not provide arguments rebutting Petitioner’s challenges
to each individual claim. In consideration of the above, we conclude, by a
preponderance of the evidence, that claims 1, 33, 36, 43, 58, 59, 66, 118, 138, 139,
149, 183, 252, and 283 would have been obvious over the combination of Zaurus
and Pad++.
Patent Owner groups its arguments concerning claim 66, which is the
subject of a slightly different challenge, requiring a further combination with SVG,
with its arguments concerning claims 1, 33, 36, 43, 58, 59, 118, 138, 139, 149,
183, 252, and 283. Thus, Patent Owner’s response to the challenge to claim 66 is
based solely on its arguments concerning Zaurus and Pad++. Upon consideration
of claim 66, we determine by a preponderance of the evidence, that claim 66 would
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have been obvious to one of ordinary skill n the art over the combination of
Zaurus, Pad++ and SVG. .
Claims 48, 51, 52, and 317
Claim 48 depends from claim 36, and recites enabling a user to zoom on a
column of the web via a user input and rendering the display such that the content
of the column is displayed across the display. Claim 51 depends from claim 36,
and recites zooming on an image, such that the image is rendered to fit across the
screen. Claim 52 depends from claim 51, and recites the user input comprises
tapping on the image via the display. In addition to other features, independent
claim 317 recites implementing the above features, such that a user is enabled to
zoom and pan a view of the Web page, activate a displayed hyperlink while at a
given zoom level, zoom in on an image of the Web page by tapping on the image,
zoom on a column of the Web page by tapping the column via the display, and
zoom out to a previous view of the Web page.
Patent Owner argues that claim 317 is distinguished because it recites
enabling the user to zoom in on an image by tapping on the image via the display.
PO Resp. 40-41. Patent Owner further argues that claims 48, 51, and 52, are
similar in scope, with the further distinction that the column or image can be
rendered across the display. Id. at 41.
Admitting that zooming was known and is not part of the invention, Tr. 50,
Patent Owner argues that the subject matter claimed is “smart zooming” – a way to
tap or click on a column and zoom only to that column. The ’353 Patent mentions
this capability at column 20, lines 58-60. The ’353 Patent also mentions selecting
an image by tapping on it, Ex. 1001, col. 18, ll. 61-62, or zooming in on a
paragraph, id. at col. 18, ll. 62-63. In the context of selecting a paragraph, the
’353 Patent states that the display may be reformatted to fit the characteristics of
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the display, rather than following the original format in the zoom out view. Id. at
col. 18, ll. 64-67. The ’353 Patent does not discuss these features in detail.
Zaurus describes magnifying or reducing the entire display in response to
the user activation of the magnify key. Ex. 1004, 641, 644-45. The portion of the
screen that a user zooms in on or selects to view, however, is determined by the
user activating the horizontal scrolling keys and the vertical scrolling bar with the
touch screen. Id. at 641. Thus, applying the broadest reasonable construction,
Zaurus discloses executing instructions that perform operations that enable a user
to zoom on a column (claim 48) or image (claim 51) via a corresponding user
input, such that the display is re-rendered with the column or image fitting across
the display.
Pad ++ also provides extensive disclosure of zooming user interfaces. See,
e.g., Ex. 1006, 117-151. Pad++ discloses that a user can zoom out a little, pan a
little, and zoom in, with the result that the user has covered a wide expanse of
space. Id. at 148. Pad++ discloses that it provides support for zoomable, graphical
objects and navigation within a graphical workspace. Id. at 88. Pad++ includes a
renderer that performs all rendering to the screen, maintaining a stack of
transformations, including separate stacks of view transformations and object
transformations that specify translations and scale. Id. at 144, 148. Pad++
discloses a bounding box (Id. at 19) and commands such as “center” and
“centerbox” to center and scale items to fill a part of the screen (Id. at 24) as well
as the ability to specify the width of an item (Id. at 4). See Decision to Institute,
29-30; Ex. 1030 ¶¶ 132-135. Pad++ also provides for manipulating text items that
display a string of characters on the screen in one or more lines. Ex. 1006, 41-42,
77-79.
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As discussed above, Pad++ provides bounding boxes containing images and
commands that allow the images in the bounding boxes to be expanded so the
largest dimension fills the specified amount of the screen. Id. at 24, Dec. to
Institute, 12-14; Grimes Decl. Ex. 1030 ¶¶ 131-136.
Patent Owner argues that these features of Pad++ are not directed to
zooming on a portion of a web page, such as a column or image, but pertain to
moving objects as a whole, which in the case of an HTML item would be an entire
web page. PO Resp. 43; Reinman Decl. Ex. 2003 ¶¶ 75-76. Patent Owner also
argues that Pad++ does not implement HTML tags for columns. PO Resp. 43.
Patent Owner further argues that Pad++ lacks these features because Pad++ was
designed for navigating across multiple pages, and not for viewing of elements
within particular web pages. Id. at 43-44.
Bederson discloses an example of using Pad++ to zoom in on a portion of
Bederson’s home web page (an HTML document) selected by a user. Ex. 1006,
286, 289, 291, 293. Thus, Pad++ discloses zooming on a portion of a web page.
The ’353 Patent discloses that it is conventional to represent a web page using
frames and to render objects in their respective positions. Ex. 1001, col. 7, ll. 44-
48, col. 15, ll. 52-58. The ’353 Patent also discloses that it is conventional to
generate the page layout in conjunction with bounding boxes. Id. at col. 16, ll. 21-
41. As discussed above, Pad++ also defines and scales objects using bounding
boxes. See Dec. to Institute, 10-14.
As previously discussed, even if Pad++ does not implement all available
HTML tags, such as those defining columns, the selection of which tags to
implement is a matter that would be well within the knowledge and abilities of a
person of ordinary skill in the art and would be obvious under 35 U.S.C. § 103.
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Finally, we are not persuaded by arguments that the references do not
disclose tapping on a screen to designate material to be zoomed. As discussed
above, Zaurus discloses a touch screen to navigate an HTML document. Bederson
states that Pad++ could be designed for use on handheld devices with small screens
and the expedient of tapping the screen corresponds to clicking with a mouse on a
large screen device. Grimes Decl., Ex. 1030 ¶¶128-130 (citing Bederson
Deposition Testimony, Ex. 1032, 77-79).
In view of the evidence, we are persuaded that dependent claims 48, 51 and
52 would have been obvious over the combination of Zaurus and Pad++. As
discussed above, independent claim 317 recites zooming features similar to those
in claims 48, 51 and 52. As discussed above, Pad++ discloses a zooming interface
applicable to images, as well as other objects, such as columns. We are persuaded
that a person of ordinary skill in the art could choose to implement some or all of
these features in a single apparatus, such as that recited in claim 317. Thus, we
determine, by a preponderance of the evidence, that claims 48, 51, 52, and 317
would have been obvious over the combination of Zaurus and Pad++.
Obviousness Over Zaurus, Hara, Tsutsumitake and SVG
Claims 1, 33, 36, 43, 58, 59, 66, 118, 138, 139, 149, 183, 252, and 283
As previously discussed, Zaurus discloses a mobile touch-screen device,
with a limited HTML browser, on which a web page can be displayed, magnified
and scrolled to view portions of the web page. See Zaurus PDA, supra. Hara
discloses a client device receiving an HTML document from a server, analyzing
the HTML to determine whether image tags indicate there is image data to be
displayed and processing the images for display and magnification depending upon
the resolution of the client device. Ex. 1008 ¶¶ 0011-14, ¶¶ 0058-62. In
describing the display of WWW clickable data, id. at ¶ 0043, Hara discloses using
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(x,y) coordinates, vectors from an origin to the x-y coordinates, and tables for
shifting the display based on the magnification. Id. at ¶¶ 0063-68.
Tsutsumitake discloses a device that receives and stores a document in an
external format, such as HTML, and converts the document to an internal format
suitable for display on a screen of the device, e.g., using information blocks, such
that a tag, an X coordinate, and a Y coordinate to indicate the type of information
(e.g., text, image) and the display position of each block. Ex. 1005 ¶¶ 0010, 0025-
27, Figs. 2-5. When a document is to be displayed, the current scroll position is
determined, the document state information is retrieved and the current scroll
position is subtracted from the y coordinate value in the stored internal format, and
the cursor is moved to display the document. Id. ¶¶ 0035-38, Fig. 6.
The parties agree that Hara discloses resizing images on a web page. PO
Resp. 45, Pet. Reply 10. As we previously noted, during the oral hearing Patent
Owner admitted that zooming was known in the art and is not part of the invention.
Tr. 50. Thus, we agree with Petitioner’s expert that Hara’s disclosure of adapting
the display to the resolution of the target device motivates the combination of
Zaurus and Hara to provide zooming on the target device. Ex. 1030 ¶¶ 136-43.
Patent Owner argues that Tsutsumitake is cumulative of Hara because it is
cited as a reference that discloses translating HTML to x-y coordinate information.
PO Resp. 47. Patent Owner contends that Hara’s disclosure of image resizing does
not disclose resizing text and that Hara discloses moving objects to avoid
overlapping them after conversion. PO Resp. 45. Therefore, Patent Owner argues
that Hara does not preserve the original layout, functionality, and design of the web
page. However, as previously discussed, the claims recite that the original layout,
functionality and design is defined by the HTML content. Ex. 1001, claims 30, 52.
See also, Claim Construction, supra.
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Tsutsumitake discloses preserving the original layout, functionality, and
design of the document (web page), because it analyzes the syntax of the external
format, converts the external format (HTML) into an internal format, and uses tags,
X and Y coordinates, and scroll position, to generate the display. Ex. 1005
¶¶ 0025-29, Fig. 3. We are persuaded that extending Hara’s disclosure of resizing
an object tagged as an image to objects with other HTML tags is a routine matter
that produces predictable results.10 Therefore, we conclude that claims 1 and 36,
which are not limited to a vector based representation, and dependent claims 33
and 43 which recites that the scalable content is vector based, would have been
obvious to a person of ordinary skill in the art over the combination of Zaurus,
Hara, Tsutsumitake. Patent Owner does not argue the remaining claims separately.
Thus, we conclude that claims 1, 33, 36, 43, 58, 59, 118, 138, 139, 149, 183, 252,
and 283.
Claim 66, which is challenged on the basis of the combination of Zaurus,
Hara, Tsutsumitake, and SVG is not discussed separately. Therefore, Patent
Owner rebuts this challenge based solely on its arguments concerning Zaurus,
Hara, and Tsutsumitake. Upon consideration of Patent Owner’s arguments, we
conclude that claim 66 would have been obvious to one of ordinary skill in the art
over the combination of Zaurus, Hara, Tsutsumitake, and SVG.
Claims 48, 51, 52, and, 317
Patent Owner argues the subject matter of the invention is not zooming, but
instead is “smart zooming” – a way to tap or click on a column and zoom just to
that column. Tr. 50-51. Dependent claims 31 and 55 recite zooming on a user

10 In our earlier discussion of claims, we noted that, in the context of selecting a
paragraph, the ’353 Patent states that the display may be reformatted to fit the
characteristics of the device, rather than following the original format in the zoom
out view. Ex. 1001, col. 18, ll. 64-67.
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selectable portion of the display, but do not require that the user to select the
portion of the display before the zooming operation. Thus, as previously
discussed, these features are disclosed in Zaurus, which discloses magnifying an
entire display and allowing the user to scroll to the desired subject matter.
Claims 48 and 51 recite executing instructions that allow a user to view a
column (claim 48) or image (claim 51) at a higher resolution by tapping a touch
sensitive display and re-rendering the display such that the content corresponding
to the column or image is shown across the display. Claim 52 depends from claim
51 and recites that the user input comprises tapping on the image via the display.
In addition to other features, claim 317 recites implementing the above features
such that a user is enabled to zoom and pan a view of the web page, activate a
displayed hyperlink while at a given zoom level, zoom in on an image of the web
page by tapping on the image, zoom on a column of the web page by tapping the
column via the display and zoom out to a previous view of the web page.
The ’353 Patent discloses that it is conventional in HTML to group content
that should appear together into logical groupings. Ex. 1001, col. 16, ll. 19-38. As
discussed above, Tsutsumitake discloses converting a document from an external
format into an internal coordinate format to produce X-Y coordinates that define a
vector. Tsutsumitake specifically identifies HTML as one such external format.
Ex. 1005 ¶ 0026. Thus, Tsutsumitake discloses grouping content in the same
manner as it is grouped in a web page defined by HTML, whether such tags
indicate the presence of an image, a column, or some other display characteristic.
As discussed above Hara discloses resizing objects, specifically images, identified
by HTML tags. In Hara, the images can be resized to match the width or height of
the display screen or a user specified size. Ex. 1008 ¶¶ 0047-48. As previously
discussed, Zaurus discloses navigating a web page with a touch screen. Thus, we
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conclude the features recited in claims 48, 51, 52 and 317 would have been
obvious to one of ordinary skill in the art in view of the combination of Zaurus,
Hara, and Tsutsumitake.
Objective Indicia of Non-obviousness
Objective criteria constitute independent evidence of non-obviousness.
Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1378 (Fed. Cir. 2013). However, as
discussed below, the objective indicia argued in the Patent Owner Response, PO
Resp. 51-59, do not establish a nexus with the claimed subject matter.
Citing Power-One v. Artesyn Techs., Inc., 599 F.3d 1343, 1352 (Fed. Cir.
2010) and Gambro Lunda AB v.Baxter Healthcare Corp., 110 F.3d 1573, 1579
(Fed. Cir. 1997) Patent Owner argues that praise by others, particularly a
competitor, is evidence of non-obviousness. PO Resp. 51. However, the CIO
Magazine 2001 Venture OnStage recognition award cited by Patent Owner, id. at
52, is not praise by a competitor and states that it was based on the CEO’s
presentation of the company’s technology and vision. Ex. 2010. Patent Owner has
not demonstrated a specific nexus between that award and the claimed subject
matter.
Similarly, Patent Owner’s arguments concerning the success of the Apple
devices, such as the iPhone, do not establish the requisite nexus. Petitioner
contends that Patent Owner has not shown it ever sold a commercially successful
product, Pet. Reply 11. Patent Owner’s objective indicia arguments are predicated
on the assumption that the iPhone and Android products implement the features of
the subject claims. Patent Owner contends that high praise and commercial
success of iPhone and Android products can be mapped to the functionality of
claims 1 and 30 of the ’353 Patent. PO Resp. 51, Exs. 2034-35.
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Where the patent is said to cover a feature or component of a product, the
patent owner has the burden of showing that the commercial success derives from
the feature, in this case the Internet browser in a handheld device. Tokai Corp., v.
Easton Enters. Inc, 632 F. 3d 1358, 1369 (Fed. Cir. 2011). Where that feature is
found in the product of another there must be proof that the feature falls within the
claims. E.g., Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387,
1392 (Fed. Cir. 1988) (infringer’s counsel stated at trial that the patent had been
copied); Hughes Tool Co. v. Dresser Indus., Inc., 816 F.2d 1549, 1552 (Fed. Cir.
1987) (patented O-ring seal copied by defendant). In order to establish a proper
nexus, the patent owner must offer proof that the sales were a direct result of the
unique characteristics of the claimed invention – as opposed to other economic and
commercial factors unrelated to the quality of the patented subject matter.
Microsoft v. Proxyconn, Inc,. IPR2012-00026, slip op. at 4 (PTAB Mar. 8, 2013)
(Paper32). We have considered Patent Owner’s Exhibits 2034 and Ex. 2035,
which purport to show that the iPhone and Android devices include the features of
claims 1 and 317. However, Patent Owner has not shown that the sales of the
iPhone and Android devices are a result of the claimed invention.
Although Patent Owner cites comments lauding the Internet browsing
capabilities of the iPhone and Android devices, including a statement made in the
Wall Street Journal that the iPhone’s game changing feature is its Safari browser,
PO Resp. 54, Ex. 2022, the iPhone’s implementation of the Safari browser was just
one of its many features. Patent Owner does not address the numerous other
features cited as important to the iPhone device, including its use as a phone,
Apple’s representation that the iPhone is “the best iPod [media player] we ever
made,” and its e-mail capability. Ex. 2011, 4. Patent Owner also has not
established that the subject matter of the ’353 claims, rather than Apple’s extensive
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distribution network and marketing presence are the reason the iPhone and similar
devices have been a success. The same is true of Android based devices. In
contrast to the Declaration of Dr. Reinman, a computer science expert with
knowledge of computer technologies, Petitioner’s expert Dr. Lutz, an expert on
marketing and consumer behavior, states that the success of such devices can be
attributed to numerous factors, including product, promotion, price and place and
that the web browser in the iPhone was just one of the several important features
contributing to its success. Ex. 1049 ¶¶ 11-12, 41-55. Thus, the objective indicia
cited by the Patent Owner do not overcome the case of obviousness established by
Petitioner by a preponderance of the evidence.
MOTION TO EXCLUDE
A motion to exclude is required to preserve an objection to the admissibility
of evidence. 37 C.F.R. § 42.64(c). Patent Owner has moved to exclude the
following: (i) Grimes Declaration (Ex. 1030) on the basis that it improperly
addresses new prior art references, advances claim construction positions and
belatedly comments further on Zaurus, Mot. to Exclude 2-9; (ii) Bederson
Deposition Transcript (Ex. 1032) on the basis that it is not prior art or expert
testimony, Id. at 9; (iii) new prior art references (Exs. 1037-1041) on the basis that
they were submitted belatedly and constitute new challenges to patentability, Id. at
9-11; (iv) new invalidity claim charts which (Ex. 1043 -1044) as an attempt to
belatedly inject new invalidity arguments into the proceeding, Id. 11-12; (v) the
entirety of Petitioner’s Reply on the basis that it relies on improper evidence, Id.
12-13; (vi) transcripts of experts Gary Rohrbach and Robert Alan Burnett (Ex.
1047-1048) as irrelevant to any issue in the proceeding, Id. at 13; (vii) Grimes
Supplemental Declaration (Ex. 1052) as not correcting evidence, but advancing
new invalidity theories and belated opinions of Zaurus, obviousness and claim
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construction, id. at 13-15; and (viii) Lutz Declaration (Exhibit 1053) as
supplemental evidence rather than a correction in the form of supplemental
evidence, id. at 15.
A motion to exclude is neither a substantive sur-reply, nor a proper vehicle
for arguing whether a reply or supporting evidence is of appropriate scope. Zynga
Inc. v. Personalized Media Commc’ns, LLC, IPR2013-00162, slip op. at 3 (PTAB
Aug. 28, 2013) (Paper 16), Berk-Tek LLC v. Belden Tech., Inc., IPR2013-00057,
slip op. at 3 (PTAB Oct. 31, 2013) (Paper 39). In this case, the Patent Owner reply
raised several substantive issues that were not raised in the Petition. These
included the proper construction of the preserving limitation and non-obviousness
based on objective criteria of commercial success, both of which we have
discussed extensively.
A petitioner reply to a patent owner response may address only issues raised
in the corresponding opposition. Office Patent Trial Practice Guide, 77 Fed. Reg.
48,756, 48,767 (Aug. 14, 2012). Petitioner was entitled to rebut Patent Owner’s
arguments concerning the construction of the preserving limitation and the
objective criteria of non-obviousness. We agree with Petitioner that Dr. Grimes’
Declaration (Ex. 1030) was drawn to issues raised in Patent Owner Response that
Petitioner could not have addressed in the Petition. Petitioner’s Opposition to
Motion to Exclude, Paper 42, (Opp. To Motion to Exclude), 3. In addition, the
Board provided the parties an opportunity for additional claim construction
briefing. Thus, the parties were afforded an additional opportunity to respond to
each other concerning the construction of the preserving limitation.
Dr. Grimes’ Declaration (Ex. 1030) and Petitioner’s Reply cite additional
exhibits which, as noted above, are the subject of Patent Owner’s Motion to
Exclude. Dr. Grimes’ citation to the Bederson deposition transcript specifically
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addresses Patent Owner’s contentions concerning zooming and a touchscreen and
is consistent with Ex. 1006 in the Petition. Ex. 1030 ¶¶ 128, 131; Ex. 1032, 77-79.
The additional references noted by Dr. Grimes (Exs. 1037 - 1041) were not
presented as new challenges to the claims, but to support that tapping a touch
screen was well known in the art. Ex. 1030 ¶ 129. We recognize the possibility
that, in some circumstances, expert testimony concerning references other than
those cited in the Petition can operate effectively as new challenges to the claims.
However, in this case, the references are not applied specifically to the claims and
the grounds on which the Board instituted review did not change.
Exhibit 104411 is a modified version of Patent Owner’s Exhibits 2034 and
2035, which attempts to map claims 1 and 317to Apple and Android devices.
Patent Owner’s expert Dr. Reinman cited Exhibits 2034 and 2035, each of which
resembles an infringement chart, as evidence of the praise and commercial success
of Android devices incorporating the claims of the ’353 Patent. Reinman Decl., Ex.
2003 ¶ 100. Petitioner was entitled to respond to the assertions made in
conjunction with Patent Owner’s Exhibits 2034 and 2035. Petitioner responded by
adding a third column to the charts to show that the success of the Android devices
was not the result of the claimed subject matter, because the claimed subject matter
was disclosed in the prior art. Petitioner’s response did not propose new
challenges to the claims, but was merely responsive to the chart submitted by
Patent Owner. We also find no basis for excluding Exhibits 1047 and 1048, which
are citations from transcripts of testimony in the co-pending litigation establishing
that Patent Owner began investigating possible infringement by Apple at the time
Steve Jobs announced the iPhone.

11 Patent Owner also objects to Ex. 1044, which concerns IPR2013-
00004/IPR2013-000257 and similarly relates the challenged claims of ’926 Patent
to Apple and Android products and to prior art.
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Petitioner submitted Exhibits 1052 and 1053 in response to objections from
Patent Owner. Much of Dr. Grimes’ Declaration in Exhibit 1052 refers to his
earlier Declaration and attempts to address issues raised by Patent Owner. We are
not persuaded that Exhibit 1052 proposes new invalidity theories, as Patent Owner
contends. Exhibit 1053 by Dr. Lutz is responsive to Patent Owner’s objections that
Dr. Lutz’s previous Declaration was not supported by sufficient facts and data.
Exhibit 1053 points out references he relied upon in his earlier declaration and
confirms his opinion. It does not provide supplemental evidence.
In consideration of the above, we deny Patent Owner’s Motion to Exclude in
its entirety.
CONCLUSION
This is a final written decision of the Board under 35 U.S.C. § 318(a) and 37
C.F.R. § 42.73. We hold all of the challenged claims, i.e., claims 1, 33, 36, 43, 48,
51, 52, 58, 59, 66, 118, 138, 139, 149, 183, 252, 283, and 317 of the ’353 Patent,
are unpatentable under 35 U.S.C. §103(a). Specifically, the preponderance of the
evidence shows that claims 1, 33, 36, 43, 48, 51, 52, 58, 59, 118, 138, 139, 149,
183, 252, 283, and 317 of the ’353 Patent are unpatentable as obvious over the
combination of Zaurus and Pad++. We further hold that the preponderance of the
evidence shows that claim 66 of the ’353 Patent is unpatentable over Zaurus,
Pad++, and SVG.
We also hold that, under a preponderance of the evidence, claims 1, 33, 36,
43, 48, 51, 52, 58, 59, 118, 138, 139, 149, 183, 252, 283, and 317 of the ’353
Patent are unpatentable under 35 U.S.C. § 103(a) as obvious over the combination
of Zaurus, Hara, and Tsutsumitake and that claim 66 is unpatentable over the
combination of Zaurus, Hara, Tsutsumitake and SVG.

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ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 33, 36, 43, 48, 51, 52, 58, 59, 66, 118, 138, 139,
149, 183, 252, 283, and 317 of the ’353 Patent are held unpatentable;
FURTHER ORDRED that Patent Owner’s Motion to Exclude is DENIED;
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.

PETITIONER KYOCERA: (via electronic transmission)
Richard P. Bauer (richard.bauer@kattenlaw.com)
Michael Tomsa (michael.tomsa@kattenlaw.com)
Eric C. Cohen (eric.cohen@kattenlaw.com)

PETITIONER MOTOROLA MOBILITY LLC
John C. Alemanni (jalemanni@kilpatricktownsend.com)
Candice C. Decaire (CDecaire@kilpatricktownsend.com)
David A. Reed (DaReed@kilpatricktownsend.com)

PATENT OWNER: (via electronic transmission)
Ben Yorks (byorks@irell.com)
Babak Redjaian (bredjaian@irell.com)