831,926 7 et al.Download PDFPatent Trials and Appeals BoardMay 1, 20202019001127 (P.T.A.B. May. 1, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 90/009,995 05/29/2012 7,831,926 161539-0005(926PO-2) 3089 29000 7590 05/01/2020 Irell & Manella LLP 840 Newport Center Dr., Ste. 400 Newport Beach, CA 92677 EXAMINER BASEHOAR, ADAM L ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/01/2020 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SOFTVIEW L.L.C. Appellant and Patent Owner ____________ Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 Technology Center 3900 ____________ Before JOHN A. JEFFERY, ERIC B. CHEN, and BRIAN J. MCNAMARA, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 2 This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final rejection of claims 1–29, 32–39, 42, and 44–51. Claim 69 was cancelled during the reexamination proceeding. Claims 53, 54, 56–58, 60–68, 70, 71, 73, 74, and 76–88 were not subject to reexamination. Claims 30, 31, 40, 41, 43, 52, 55, 59, 72 and 75 were cancelled in a previous inter partes review proceeding. We have jurisdiction under §§ 134(b) and 306. We affirm-in-part. STATEMENT OF THE CASE Reexamination Proceedings A request for ex parte reexamination of U.S. Patent No. 7,831,926 B2 (“the ’926 patent”) was filed on April 13, 2012, and assigned Reexamination Control No. 90/009,995. The ’926 patent, entitled “Scalable Display of Internet Content on Mobile Devices,” issued November 9, 2010 to Gary B. Rohrabaugh and Scott A. Sherman, based on Application No. 11/738,486, filed April 21, 2007. The ’926 patent is said to be a continuation of Application No. 09/878,097, filed June 8, 2001, now U.S. Patent No. 7,210,099, which is a continuation-in-part of Application No. 09/828,511, filed April 7, 2001, now abandoned. The ’926 patent is also said to claim priority to U.S. Provisional Application No. 60/211,019, filed June 12, 2000, and U.S. Provisional Application No. 60/217,345, filed July 11, 2000. The ’926 patent is said to be assigned to SoftView, L.L.C., the real party in interest. (Appeal Br. 1.) Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 3 Patent Owner’s Invention Patent Owner’s invention relates to mobile devices that are enabled to support resolution-independent scalable display of Internet (Web) content, allowing Web pages to be scaled (zoomed) and panned for better viewing on smaller screen sizes. (Abstract.) Related Litigation The ’926 patent has been asserted in SoftView LLC v. Apple Inc., No. 1:10-cv-00389 (D. Del. May 10, 2010) and SoftView LLC v. HTC Corp., No. 1:12-cv-00984 (D. Del. July 26, 2012). (Appeal Br. 1.) The ’926 patent was also subject to inter partes review in Softview LLC v. Kyocera Corp. and Motorola Mobility LLC, Nos. IPR2013-00004 and IPR2013-00257 (PTAB Mar. 27, 2014), aff’d, No. 2014-1599 (Fed. Cir. Feb. 9, 2015). The Claimed Invention Claims 1, 2, and 29 are exemplary, with disputed limitations in italics: 1. A mobile device, comprising: a processor, a wireless communications device operatively coupled to the processor, to facilitate communication with a network via which Web content may be accessed; a touch-sensitive display; a memory, operatively coupled to the processor; and storage means, operatively coupled to the processor, in which a plurality of instructions are stored that when executed by the processor enable the mobile phone to perform operations including, Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 4 enabling a user 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 HTML-based Web content associated with the Web page; translating the HTML-based Web content to produce scalable vector-based page layout information; employing the scalable vector-based page layout information and/or data derived therefrom to, render a view of at least a portion of the Web page on the touch-sensitive display using a first scale factor; and re-render the Web page in response to associated user inputs to enable a user to iteratively zoom in and out views of the Web page on the display while preserving the original page layout, functionality, and design of the content on the Web page defined by the HTML based Web content, wherein preservation of the functionality defined by the HTML-based content includes preservation of hyperlink functionality. 2. The mobile device of claim 1, wherein the device comprises a mobile phone. 29. The mobile device of claim 1, wherein the HTML- based Web content includes cascading style sheet content defining layout and presentation attributes for the Web page. Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 5 The Rejections A. Claims 1 and 3–28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the Pad++1 and SVF.2 B. Claims 2, 32–39, 42, and 44–51 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Pad++, SVF, Nokia (Nokia Press Release, Nokia Unveils World’s First All-In-One Communicator for the Americas, (Sept. 19, 1996), and Palm (Palm Press Release, 3Com Announces the Palm VII Connected Organizer, the First Handheld Solution for Out-of-the-box Wireless Internet Access (Dec. 2, 1998)). C. Claims 2, 32–39, 42, and 44–51 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Pad++, SVF, and Newton (Apple Computer, Inc., News Release, Apple Outlines Plethora of Newton Wireless 1 “Pad ++” refers collectively to the following references: (i) Benjamin B. Bederson & James D. Hollan, Pad++: A Zoomable Graphical Interface System, CHI ‘95 MOSAIC OF CREATIVITY (1995); (ii) Benjamin B. Bederson & George W. Furnas, Space-Scale Diagrams: Understanding Multiscale Interfaces, CHI ‘95 PROCEEDINGS (1995); (iii) Benjamin B. Bederson et al., A Zooming Web Browser, 2667 SPIE 260–71 (1996); (iv) Ben Bederson & Jon Meyer, Implementing a Zooming User Interface: Experience Building Pad ++, 28 SOFTWARE–PRACTICE & EXPERIENCE 1101–35 (1998); (v) Benjamin B. Bederson et al., Pad++: A Zoomable Graphical Sketchpad for Exploring Alternate Interface Physics, 7 J. VISUAL LANGUAGES & COMPUTING 3–31 (1996); (vi) Pad++ Reference Manual Version 0.2.7 (1996); (vii) Pad++ Programmer’s Guide Version 0.2.7 (1996); and (viii) Jonathan Meyer, A Brief Tour Through Pad++, available at http://www.cs.umd.edu/hcil/pad++/tour/ (“Pad++ Tour”). 2 “SVF” (Simple Vector Format) refers collectively to: (i) Specification for the Simple Vector Format v. 1.1 (1995); (ii) “New CAD System Works With AutoCAD Drawings Without Translation” (1996); and (iii) “Bring New CAD Viewing Power to the Internet” (1996). Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 6 Communications Solutions at MessagePad 120 Launch (Jan. 30, 1995)). D. Claim 29 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Pad++, SVF, and Bray (Tim Bray, XML support in IE5, XLM.com (Mar. 18, 1999)). E. Claims 1 and 3–28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Pad++ and VML (Brian Matthews et al., Vector Markup Language (VML), World Wide Web Consortium Note, Note-VML- 19980513 (May 13, 1998)). F. Claims 2, 32–39, 42, and 44–51 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Pad++, VLM, Nokia, and Palm. G. Claims 2, 32–39, 42, and 44–51 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Pad++, VLM, and Newton. H. Claim 29 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Pad++, VML, and Bray. I. Claims 12, 14, 21, 42, and 51 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Pad++, SVF, and various combinations of Nokia, Palm, Newton, and VML. Patent Owner relied upon the following in rebuttal to the Examiner’s rejections: Declaration under 37 C.F.R. § 1.132 of Michael L. Howard, November 16, 2016 (Ex. A). Declaration under 37 C.F.R. § 1.132 of Wolf (formerly Scott Collins), dated July 15, 2017 (Ex. B). Declaration under 37 C.F.R. § 1.132 of Wolf (formerly Scott Collins), dated July 24, 2017 (Ex. D). Declaration under 37 C.F.R. § 1.132 of Glenn Reinman, Ph.D., dated July 17, 2013 (Ex. F). Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 7 Deposition of Scott Forstall, dated May 3, 2013, SoftView LLC v. Apple Inc., No. l:10-cv-00389 (D. Del. May 10, 2010) (Ex. H). Deposition of Benjamin B. Bederson, dated February 13, 2013, SoftView LLC v. Apple Inc., No. l:10-cv-00389 (D. Del. May 10, 2010) (Ex. G). ANALYSIS § 103 Rejection—Pad++ and SVF Claims 1 and 3–28 We are unpersuaded by Patent Owner’s arguments (Appeal Br. 17–20; see also Reply Br. 10–12) that the combination of Pad++ and SVF would not have rendered obvious independent claim 1, which includes the limitation “re-render the Web page . . . while preserving the original page layout, functionality, and design of the content on the Web page defined by the HTML based Web content.” The Examiner found that the zoomable HTML web browser of Pad++ Tour,3 which includes displaying HTML documents, corresponds to the limitation “re-render the Web page . . . while preserving the original page layout, functionality, and design of the content on the Web page defined by the HTML based Web content, wherein preservation of the functionality defined by the HTML-based content includes preservation of hyperlink functionality.” (Ans. 13.) We agree with the Examiner’s findings. Pad++ Tour relates to a computer screen having a zoomable surface, “[f]or example, several million pages of text could be fit on the surface by reducing it sufficiently in scale, making any number of on-line information 3 The Examiner cited to Jonathan Meyer, A Brief Tour Through Pad++. Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 8 services, encyclopedias, etc., directly available.” (P. 2.) In one example of zooming a user interface, entitled “An HTML browser,” Pad++ Tour explains the following: A zooming version of Mosaic and Netscape? This is not such a strange idea. The third example Pad++ application we will look at is a simple Pad++ web browser. Although the web browser we show here is still fairly primitive, you could imagine a much more advanced version. Does the idea of using a zoomable Web browser excite you? (P. 86.) In two unreferenced figures, reproduced below, Pad++ Tour depicts screen snapshots of: (i) a regularly sized HTML document entitled “Ben Bederson’s Home Page” (annotated with a dashed rectangle indicating the zoomed-in region); and (ii) the zoomed-in view of the same HTML document: Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 9 Moreover, Pad++ Tour explains the following: When you follow a link, the relevant document is loaded into Pad++ and placed on the surface to the right of the original document, at a smaller scale. Here you can see the ‘Pad++: Multiscale interfaces’ document loaded beside the home page. The Pad++ HTML browser will lay out sub-documents in two columns next to the parent document. Because Pad++ is zoomable, there is always enough space between those two columns for placing further documents reached from those sub- documents! (P. 91.) In a third unreferenced figure, reproduced below, Pad++ Tour depicts screen snapshots of the “Pad++: Multiscale interfaces” HTML document (annotated with a dashed rectangle) loaded next to the regularly sized HTML document entitled “Ben Bederson’s Home Page”: Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 10 Because the first and third unreferenced figures in Pad++ Tour depict a regularly sized HTML document entitled “Ben Bederson’s Home Page,” Pad++ Tour teaches the limitation “the original page layout, functionality, and design of the content on the Web page defined by the HTML based Web content.” Moreover, because the second unreferenced figure in Pad++ Tour depicts a zoomed-in view of the regularly sized HTML document entitled “Ben Bederson’s Home Page,” and the third unreferenced figure in Pad++ Tour depicts the HTML document associated with the “Pad++: Multiscale interfaces” link is displayed, Pad++ Tour teaches the limitation “re-render the Web page . . . while preserving the original page layout, functionality, and design of the content on the Web page defined by the HTML based Web content, wherein preservation of the functionality defined by the HTML- based content includes preservation of hyperlink functionality.” Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 11 Patent Owner argues that “[t]here is no evidence that the views shown in Figures 1 and 2 of Bederson preserves the HTML-based Web content defining the original page layout, functionality, and design of content on the Web page, as the HTML-based Web content for these pages is not available”4 and “what is known is Pad++ was not capable of rendering the vast majority of HTML elements, such as basic layout elements including tables, forms, divs and spans.” (Appeal Br. 13; see also Reply Br 10.) To support this argument, Patent Owner references paragraphs 25–34 of the Reinman Declaration (Ex. F). (Appeal Br. 13.) However, the Examiner also cited to Pad++ Tour for teaching the limitation “while preserving the original page layout, functionality, and design of the content on the Web page defined by the HTML based Web content.” Moreover, one relevant portion of the Reinman Declaration (Ex. F) states the following: Section 3 of the Brief Tour only shows how the web page looks like after it has been rendered by Pad++. The Brief Tour does not show the original web page before being rendered by Pad++ to determine whether the original page layout, functionality, and design was preserved. . . . One of ordinary skill in the art cannot determine the original page layout, functionality, and design of the original web page from the Brief Tour . . . . (¶ 23.) However, as discussed previously, the first and third unreferenced figures in Pad++ Tour depict a regularly sized HTML document entitled “Ben Bederson’s Home Page,” and accordingly, Pad++ Tour teaches the 4 Patent Owner references Figure 1 and 2 of Benjamin B. Bederson et al., A Zooming Web Browser, 2667 SPIE 260–71 (1996). Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 12 limitation “the original page layout, functionality, and design of the content on the Web page defined by the HTML based Web content.” Patent Owner further argues the following: Pad++ Tour suggests that a zooming version of Mosaic or Netscape is not a strange idea. This statement is a mere suggestion of possibly creating a zoomable browser using Mosaic or Netscape at the time the Tour Web pages were created. Based on the version v.0.1.8 shown in the Tour images, this predates the version of Pad++ used in Bederson-4 (v0.2.3), meaning the Tour Web pages (including the foregoing statement) were originally posted sometime in 1995 or earlier. Moreover, this statement is not a teaching that the Pad++ browser could be (or could have been) combined with an existing browser such as Netscape or Mosaic (in 1995), nor provides any detail on any level to how Pad++ could have been combined with Mosaic or Netscape. (Appeal Br. 17 (emphases omitted); see also Reply Br. 10–11.) In particular, Patent Owner argues the following: Patent Owner has introduced substantial evidence a PHOSITA would not have been able to implement a zoomable version of Netscape at the time of the invention without undue experimentation, there would have been no motivation to do so, and no reasonable expectation of success. The developers of Mozilla themselves, who had skill levels well beyond a PHOSITA, were not able to implement a zooming version of a desktop browser (Mozilla Firefox, which superseded Netscape Navigator) until 2007, even though this was initially identified as a feature in 1999 and Mozilla was motivated to implement the feature. With further respect to Mosaic at the time of the invention it had not been updated for approximately 4 years, and didn’t even support HTML 3 or 3.2, much less HTML 4 or CSS and had been superseded by Netscape and Internet Explorer; accordingly, there would have been no motivation at the time of the invention to implement a zoomable version of Mosaic. Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 13 (Appeal Br. 17 (citations and footnotes omitted); see also Reply Br. 10–11.) However, as discussed previously, Pad++ Tour explains that for “[t]he third example Pad++ application we will look at is a simple Pad++ web browser” and “[a]lthough the web browser we show here is still fairly primitive, you could imagine a much more advanced version.” (P. 86.) Even if Patent Owner is correct that a zoomable version of Netscape or Mosaic could not have been technically implemented, such evidence does not necessarily mean that one of ordinary skill in the art would have excluded all web browsers from the implementation of a zoomable browser. Therefore, we agree with the Examiner that the combination of Pad++ and SVF would have rendered obvious independent claim 1, which includes the limitation “while preserving the original page layout, functionality, and design of the content on the Web page defined by the HTML based Web content.” We are also unpersuaded by Patent Owner’s arguments (Appeal Br. 20; see also Reply Br. 10–11) that the combination of Pad++ and SVF would not have rendered obvious independent claim 1, which includes the limitation “translating the HTML-based Web content to product scalable vector-based page layout information.” The Examiner found that the multiple objects of Pad++ Tour, residing at specific x, y, zoom coordinates within a space, correspond to the limitation “translating the HTML-based Web content to product scalable vector-based page layout information.” (Final Act. 7–8 (citing Request for Reexamination 463–64, filed April 13, 2012).) Alternatively, the Examiner found the Simple Vector Format plug-ins feature for scalable vector graphics Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 14 of SVL corresponds to the limitation “translating the HTML-based Web content to product scalable vector-based page layout information.” (Ans. 17–18.) We agree with the Examiner’s findings with respect to Pad++ Tour. Pad++ Tour explains the following: The Pad++ surface as an infinite zoomable space, with objects residing at specific x, y, zoom coordinates within that space. Sometimes, however, you want to be able to compare two distant locations, or to look at a zoomed out view of a document together with a close up view. (P. 97.) In other words, Pad++ explains that: (i) an (x,y) coordinate is associated with an object for a “zoomed out view”; and (ii) an (x, y) zoom coordinate is associated with the object in “a close up view.” Because Pad++ explains that there are two sets of (x,y) coordinates (i.e., a vector), one set for the “zoomed out view” and one set for “a close up view,” Pad++ teaches the limitation “translating the HTML-based Web content to produce scalable vector-based page layout information.” Patent Owner argues that following: Pad++ uses vector-based drawings facilities in X Windows. The SVF plugin was designed to enable SVF content that was embedded in a Web page (such as a CAD drawings or vector graphic) to be rendered by a browser. . . . This combination makes no sense, and there is nothing in any of the Pad++ references or the SVF references that suggests it. (Appeal Br. 20.) However, even if Patent Owner is correct that the combination of Pad++ and SVF is improper, the Examiner cited SVF as a cumulative reference for teaching the limitation “translating the HTML- Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 15 based Web content to product scalable vector-based page layout information.” (Ans. 17–18.) Therefore, we agree with the Examiner that the combination of Pad++ and SVF would have rendered obvious independent claim 1, which includes the limitation “translating the HTML-based Web content to product scalable vector-based page layout information.” Accordingly, we sustain the rejection of independent claim 1 under 35 U.S.C. § 103(a). Claims 3–28 depend from independent claim 1, and Patent Owner had not presented any additional substantive arguments with respect to these claims. Therefore, we sustain the rejection of claims 3–28 under 35 U.S.C. § 103(a) for the same reasons discussed with respect to independent claim 1. § 103 Rejection—Pad++, SVF, Nokia, and Palm We are unpersuaded by Patent Owner’s arguments (Appeal Br. 25–41; see also Reply Br. 16–30) that the combination of Pad++, SVF, Nokia, and Palm would not have rendered obvious dependent claim 2, which includes the limitation “wherein the device comprises a mobile phone.” The Examiner found that the zoomable PDA (Personal Digital Assistants) of Pad++ Tour corresponds to the limitation “wherein the device comprises one of a handheld device or a palm-held device.” (Ans. 21–22.) We agree with the Examiner’s findings. Pad++ Tour explains the following: Pad++ could also be viewed as a way to implement an alternative windowing system based on zooming. Your whole desktop could be zoomable. This seems especially attractive Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 16 for systems which have small screens, such as handheld computers (i.e. PDA’s). (P. 141.) One relevant definition of a “PDA” is “[a] lightweight palmtop computer designed to provide specific functions like personal organization (calendar, note taking, database, calculator, and so on) as well as communications.”5 Accordingly, because a PDA is defined as a palmtop computer having communication functions, a mobile phone is an obvious variant. Moreover, because Pad++ Tour explains that the zoomable windowing system is attractive for systems having small screens, such as PDAs or mobile phones, Pad++ Tour teaches the limitation “wherein the device comprises a mobile phone.” First, Patent Owner argues that “the Examiner has not presented any evidence that the ‘the Pad++ references specifically teach wherein the Pad++ browser was designed to operate on PDAs’” and “[t]o the contrary, the Pad++ references provide a mountain of evidence that the Pad++ browser was specifically designed to operate on a desktop computer or workstation.” (Appeal Br. 25.) Contrary to Patent Owner’s arguments, Pad++ Tour expressly states that “[y]our whole desktop could be zoomable” and “[t]his seems especially attractive for systems which have small screens, such as handheld computers (i.e. PDA’s).” (P. 141.) Second, Patent Owner argues the following: Pad++ was never implemented on a mobile device, PDA, or mobile phone. . . . Ben Bederson acknowledged in his deposition, “I didn’t actually do it” (run Pad++ on a PDA), and, “Certainly the code itself didn’t run on PDAs.” The Examiner has presented no evidence that Pad++ was implemented on any 5 MICROSOFT® COMPUTER DICTIONARY 396 (5th ed. 2002). Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 17 PDA, nor any evidence of anyone ever attempting to implement Pad++ on a PDA, or that the references provide an implementation of the Pad++ browser on a mobile device. (Appeal Br. 25; see also Reply Br. 16–17.) Similarly, Patent Owner argues that: Ben Bederson testified that (1) he never implemented Pad++ on a PDA; (2) the Pad++ code did not run on a PDA; (3) he was not familiar with the technical capabilities and amount of memory available by PDAs at the time (1995 or 1999); and (4) the target platform was any computer that could run Linux and X graphics system . . . . (Appeal Br. 26.) However, the Bederson Deposition6 also states the following: Q. Could Pad++ have run on PDAs? A. At that time, in 1995? I think technically, it would have been a challenge to work well, that is with the smooth zooming one of the goals of Pad++, because that was a much slower processor that would be used in those PDAs. (Ex. G, 180:19–25 (emphasis added).) . . . So my answer would be conceptually, yes, it should run. It’s a general purpose computer system. Practically speaking, it could well be difficult to make it actually run because of limitations, limitations of those devices at the time, but I don’t have any more information to know how easy or hard it would have been to get it to run. (Ex. G, 181: 9–16 (emphasis added).) Accordingly, while Professor Bederson testifies that while “it would have been a challenge to work well,” 6 Professor Bederson, a computer science faculty member, is the lead author for five of the “Pad ++” prior art references, which are technical publications. See supra note 1. Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 18 he further testifies that “conceptually, yes, it [Pad++] should run” because “[i]t’s [the PDA] a general purpose computer system.” As recognized by the Supreme Court, “[a] person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Accordingly, one of ordinary skill in demonstrating “ordinary creativity” would experiment with the technical features, such that Pad++ could run on a PDA or mobile phone. Third, Patent Owner argues that “[t]he lack of motivation to combine Pad++ with a PDA or mobile phone is further supported by the testimony of Scott Forstall, who is the co-developer of the iPhone’s user interface and who worked closely with Steve Jobs during development of the iPhone user interface” and “Mr. Forstall testified in the litigation that there were challenges in designing a web browser that could bring the entire Internet to a mobile phone.” (Appeal Br. 27; see also Reply Br. 17.) The Forstall Deposition state that following: Q. So what challenges did you face in designing a web browser that could bring the entire real Internet to a mobile phone? A. The mobile phone is relatively small compared to a computer . . . . And so one challenge had to do with content that was created for a window size significantly different from a mobile phone. A second challenge we faced was designing a touch interface. We were designing the iPhone to work based on your finger touching, and that’s not what the Internet in general had been designed around. . . . There were challenges related to the performance of the processor on a mobile device. Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 19 The speed of the data connection on a mobile device was slower than the general speed on a computer, especially when the computer was plugged into the Internet. . . . The amount of memory we had had in the iPhone was less than the amount of memory in a computer. (Ex. H, 42:24 to 44:6 (emphases added).) Again, as recognized by the Supreme Court, “[a] person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. 398 at 421. Accordingly, one of ordinary skill in demonstrating “ordinary creativity” would experiment with the technical features (e.g., window size, touch interface, performance of processor, speed to data connection, and memory), such that Pad++ could run on a mobile device (e.g., iPhone). Moreover, Pad++ Tour expressly states that “[y]our whole desktop could be zoomable” and “[t]his seems especially attractive for systems which have small screens, such as handheld computers (i.e. PDA’s).” (P. 141.) As such, even if Patent Owner is correct there is a “lack of motivation” to combine Pad++ with a mobile phone (e.g. Apple iPhone), Apple, Nokia, and Palm are cumulative references. Fourth, Patent Owner argues that “[a] PHOSITA could not have implemented Pad++ on any PDA or mobile phone available by June, 2001, including the Nokia Communicator, Palm VII, or Apple Newton” and points to the Wolf Declaration for support. (Appeal Br. 29; see also Reply Br. 18.) The Wolf Declaration (Ex. B) states the following: The zooming interface requirements of Pad++ were to support real-time animations of at least 20,000 objects at a frame rate of 10 frames per second. Pad++ also used floating point coordinates to speedy a zoom range of 14 orders of Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 20 magnitude. Bederson further notes that scalable fonts such as Microsoft Window’s TrueType fonts were not suitable. (Ex. B, ¶ 40 (citations omitted).) Testing with the processor enabled also demonstrates how limited the HTML capabilities of the Pad++ browser were. The Pad++ browser would have been completely unusable on a desktop PC in 2000-2001. Rendering of commercial Web pages was abysmal. Without even considering that the animation frame rate would have been on the order of 100 times too slow on the fastest PDA, the browser itself would have been even more unusable on a PDA. (Ex. B, ¶ 46.) Similarly, Patent Owner also has performed testing to determine “performance for a text-only demo Web page” and “[t]esting of window zooms with Pad++,” using the “Requirements” and “Zooming interface requirements” as disclose in a Pad++ reference,7 and points to paragraphs 102–107 of the Howard Declaration for such test results, which are characterized by “changes in zoom levels [being] large and unpredictable and continued after the mouse button was released” and “large lags would make the window zooming option totally unusable.” (Appeal Br. 32.) Thus, Patent Owner argues, “[a]s supported by substantial fact-based evidence, the combined teachings of references would have suggested to a PHOSITA that the resulting combination would have been completely unusable.” (Id. at 34.) Again, as recognized by the Supreme Court, “[a] person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Accordingly, one of ordinary skill in demonstrating 7 Ben Bederson & Jon Meyer, Implementing a Zooming User Interface: Experience Building Pad ++, 28 SOFTWARE–PRACTICE & EXPERIENCE 1101–35 (1998). Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 21 “ordinary creativity” would experiment with the parameters listed in the “Requirements” or “Zooming interface requirements” in order to achieved optimal results, rather than strictly adhering to such requirement to achieve an “unusable” result. Moreover, Pad++ Tour expressly states that “[y]our whole desktop could be zoomable” and “[t]his seems especially attractive for systems which have small screens, such as handheld computers (i.e. PDA’s).” (P. 141.) As such, even if Patent Owner is correct that the Nokia Communicator 9000, Apple MessagePad, and Palm VII, are “unusable,” Apple, Nokia, and Palm are cumulative references. Fourth, Patent Owner agues the following: The rendered text using the text rendering techniques used by Pad++ would also be unreadable for many, if not most page views. Examples of the rendering of several popular Web pages using Pad++ and simulating a screen resolution of 320x240, which corresponds to the resolution of the Apple Newton . . . The text is clearly unreadable at a zoom level of 100%, and zooming in does not improve it much, as demonstrated on the following zoom in on a portion on aol.com . . . (Appeal Br. 35.) Similarly, Patent Owner agues that “[e]ven if Pad++ could have been implemented on the Nokia Communicator 9000, Apple MessagePad, and Palm VII, the text rendering speed would have been orders of magnitude too slow to be useable, and most of the text would have been unreadable, even when zoomed in at 300%.” (Id. at 36; see also Reply Br. 22–26.) Again, Pad++ Tour expressly states that “[y]our whole desktop could be zoomable” and “[t]his seems especially attractive for systems which have small screens, such as handheld computers (i.e. PDA’s).” (P. 141.) As such, even if Patent Owner is correct that the Nokia Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 22 Communicator 9000, Apple MessagePad, and Palm VII, are “unusable,” Apple, Nokia, and Palm are cumulative references. Fifth, Patent Owner argues In contrast to Pad++, which unequivocally was not designed to operate on a PDA, the PocketPiccolo.NET framework was designed specifically for PDAs and mobile phones running Microsoft’s Pocket PC operating system. These PDAs had processors that were approximately 27 times or more times faster than the Apple Newton processor. Even so, the performance of applications using the PocketPiccolo.NET were limited by the processor limitations of PDAs, as explicitly acknowledged by Bederson. (Appeal Br. 39; see also Reply Br. 26–30.) Accordingly, Patent Owner further argues the following: A PHOSITA with any experience whatsoever in developing software to operate on a PDA prior to June, 2001 would immediately recognize the impossibility of implementing a usable version of Pad++ on a PDA such as Nokia Communicator 9000, the Apple Newton, and the Palm VII following the principles and teachings of the Pad++ references, would have had no motivation to even attempt to implement Pad++ on any of these devices, nor have any expectation of success. (Id. at 41.) However, as discussed previously, Professor Bederson testified that “[s]o my answer would be conceptually, yes, it [Pad++] should run” because “[i]t’s [the PDA] a general purpose computer system.” (Ex. G, 181: 9–16.) Moreover, Pad++ Tour expressly states that “[y]our whole desktop could be zoomable” and “[t]his seems especially attractive for systems which have small screens, such as handheld computers (i.e. PDA’s).” (P. 141.) Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 23 Therefore, we agree with the Examiner that the combination of Pad++ and SVF would have rendered obvious dependent claim 2, which includes the limitation “wherein the device comprises a mobile phone.” Accordingly, we sustain the rejection of dependent claim 2 under 35 U.S.C. § 103(a). Independent claims 32 and 42 recite limitations similar to those discussed with respect to dependent claim 2. Claims 33–39 and 44–51 depend from claim 32, and Patent Owner had not presented any additional substantive arguments with respect to these claims. Therefore, we sustain the rejection of claims 32–39, 42, and 44–51 under 35 U.S.C. § 103(a) for the same reasons discussed with respect to dependent claim 2. § 103 Rejection—Pad++, SVF, and Bray We are persuaded by Patent Owner’s arguments (Appeal Br. 48–49; see also Reply Br. 31) that the combination of Pad++, SVF, and Bray would not have rendered obvious dependent claim 29, which includes the limitation “wherein the HTML-based Web content includes cascading style sheet content defining layout and presentation attributes for the Web page.” The Examiner found that that the XML (extensible markup language) delivery over the Web, using the cascading style sheet (CSS) of Bray, corresponds to the limitation “wherein the HTML-based Web content includes cascading style sheet content defining layout and presentation attributes for the Web page.” (Ans. 46–47.) The Examiner concluded that “one of ordinary skill in the art would have been motivated to modify the Pad++ zoomable Web browser to accommodate the newer extensible markup standard, XML, along with the formatting standard CSS.” (Id. at Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 24 47.) While the Examiner has established a prima facie case of obviousness, the Examiner has not properly considered Patent Owner’s rebuttal evidence. Bray relates to “Microsoft Internet Explorer 5’s promised and actual implementation of XML.” (P. 1.) Bray explains the following: There are a bunch of different ways to deliver XML over the Web. . . . The right thing to do is to send the XML to a browser with a stylesheet, today in in CSS and before too long, in XSL. This has a bunch of advantages . . . . (Id. (emphases omitted).) Bray explains that such advantages include “cutting[] down on the amount of data you have to transmit,” “offloading[] a lot of the formatting work to the browser that’s coasting along on your under-worked Pentium desktop,” and “allowing[] you to do cool things with the DOM [document object model].” (P. 2.) Initially, we agree with the Examiner that a person of ordinary skill in the art would have recognized that incorporating the known XML of Bray having a cascading style sheet (CSS) into the known Pad++ zoomable web browser, would improve Pad++ by providing the advantages of cutting down on the amount of data transmitted or offloading formatting to the browser. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way.”). However, to rebut the Examiner’s prima facie case, Patent Owner submitted a Declaration under 37 C.F.R. § 1.132 of Wolf (formerly Scott Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 25 Collins), dated July 24, 2017 (Ex. D).8 The relevant portions of the Wolf declaration are reproduced below: Adding support for CSS2 required a complete redesign of the rendering engine architecture . . . . This aspect alone required a tremendous amount of experimentation, with the results being anything but predictable, and well beyond what could have been implemented by a PHOSITA. Gecko had hundreds of classes, and thousands of methods. Modifying a method for one class often would “break” the code for another class or method. We had dozens of people working on the code at Mozilla, including those working including those working on Gecko, and many more working on other aspects of what would become the Netscape 6 browser. And these people were very skilled. (Ex. D, ¶ 29.) Neither of the HTML or CSS specs define what functions to implement. Rather, they define a complex set of interrelated rules that must be followed to comply with the standards. It took highly skilled teams for each of Microsoft, Mozilla, and Opera several years to implement HTML 4/4.01 and CSS2. To assert a PHOSITA could do the same without undue experimentation is just plain wrong. (Ex. D, ¶ 30.) Implementing HTML 4/4.01 was exceedingly difficult and frustrating, and required an extraordinary level of experimentation. It was made that much more difficult by the inclusion of CSS 2 and the CSS box model, which is inherently tied to a proper implementation of HTML 4/4.01. CSS was not 8 Wolf has “extensive experience working with HTML, Cascading Style Sheets (CSS), Web browser rendering engines and Web browsers gained from . . . work experience at Netscape, Mozilla.org, and SourceForge, Inc.” and “was a member of the core team that developed the Mozilla “Gecko” Rendering engine. (Ex. D, ¶ 1 (emphases in original).) Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 26 something you could merely add to an existing browser. In fact, when Netscape tried to implement CSS in Netscape 4 it did so by internally translating CSS rules into snippets of JavaScript. Needless to say, this was not a viable approach. Microsoft, even with its hordes of developers working on IE, also had difficulty with CSS, as evidenced by the Web Standards Project (WaSP), which published IE’s Top 10 CSS Problems in November 1998. (Ex. D, ¶ 66.) In view of Wolf’s statements that: (i) “[a]dding support for CSS2 required a complete redesign of the rendering engine architecture” and “[t]his aspect alone required a tremendous amount of experimentation”; (ii) “[i]t took highly skilled teams for each of Microsoft, Mozilla, and Opera several years to implement HTML 4/4.01 and CSS2”; (iii) “[i]t took highly skilled teams for each of Microsoft, Mozilla, and Opera several years to implement HTML 4/4.01 and CSS2”; and (iv) “[i]mplementing HTML 4/4.01 was exceedingly difficult and frustrating, and required an extraordinary level of experimentation” and “[i]t was made that much more difficult by the inclusion of CSS 2 and the CSS box model, which is inherently tied to a proper implementation of HTML 4/4.01,” one of ordinary skill in the art could not have combined the cascading style sheet (CSS) content of Bray with the Pad++ zoomable browser, due to technological difficulties. The Examiner has not provided any commentary with respect to adequacy of Patent Owner’s declaration evidence, which is legal error. See In re Alton, 76 F.3d 1168, 1174 (Fed. Cir. 1996) (“the summary dismissal of the declaration, without an adequate explanation” is error). Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 27 Accordingly, we are persuaded by Patent Owner’s argument as follows: It would have been well-outside the capabilities of a PHOSITA to add CSS support to Pad++, there would be no motivation to attempt to do so, and no expectation of success. Additionally, CSS could not merely be added to an existing browser. (Appeal Br. 48–49; see also Reply Br. 31.) Therefore, we do not agree with the Examiner that the combination of Pad++, SVF, and Bray would have rendered obvious dependent claim 29, which includes the limitation “wherein the HTML-based Web content includes cascading style sheet content defining layout and presentation attributes for the Web page.” Accordingly, we do not sustain the rejection of dependent claim 29 under 35 U.S.C. § 103(a). Other Pending Rejections We do not reach the rejections of claims 1–28, 32–39, 42, and 44–51 under 35 U.S.C. § 103(a) as unpatentable over various combinations of Pad++, SVF, VML, Nokia, Palm, and Newton. Affirmance of the rejections discussed previously renders it unnecessary to reach the remaining rejections, as all of pending claims have been addressed and found unpatentable. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching additional obviousness rejections). Moreover, for the rejection of claims 1–29 under 35 U.S.C. § 103(a), we do not reach the issue of whether claims 1–29 are patentably distinct over cancelled claims 30, 31, 40, 41, 43, 52, 55, 59, 72 and 75. Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 28 We do not sustain the rejections for claim 29 under 35 U.S.C. § 103(a) as being unpatentable over various combinations of Pad++, SVF, VML, Nokia, Palm, Newton, and Bray for the same reasons discussed previously with respect to the rejection of dependent claim 29 under 35 U.S.C. § 103(a) as being unpatentable over Pad++, VLM, Nokia, and Palm. DECISION The Examiner’s decision rejecting claims 1–28, 32–39, 42, and 44–51 under 35 U.S.C. § 103(a) is affirmed. The Examiner’s decision rejecting claim 29 under 35 U.S.C. § 103(a) is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART dm Appeal 2019-001127 Reexamination Control 90/009,995 Patent 7,831,926 B2 29 PATENT OWNER: Irell & Manella LLP 840 Newport Center Dr., Ste. 400 Newport Beach, CA 92660 THIRD PARTY REQUESTER: NOVAK DRUCE & QUIGG LLP 1000 Louisiana Street, 53rd Floor Houston, TX 77002 Copy with citationCopy as parenthetical citation