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.
90/013,677 01/19/2016 5790793 2038695-0558 5557
20995 7590 02/28/2018
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
DESAI, RACHNA SINGH
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/28/2018 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 INTELLECTUAL VENTURES I, LLC,
Appellant and Patent Owner.
____________________
Appeal 2017-011415
Reexamination Control 90/013,677
Patent 5,790,793 B2
Technology Center 3900
____________________
Before STEPHEN C. SIU, JENNIFER L. McKEOWN, and KRISTINA M.
KALAN Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Intellectual Ventures I, LLC (“Patent Owner”) appeals from the decision in
the Examiner’s Final Action, mailed September 14, 2016, rejecting claims 19, 20,
and 41 of U.S. Patent No. 5,790,793 B2 (the “’739 patent”). App. Br. 1.1
1 Throughout this opinion, we refer to (1) the Final Action, mailed
September 14, 2016 (“Final Act.”); (2) Patent Owner’s Appeal Brief, filed
April 13, 2017 (“App. Br.”); (3) the Examiner’s Answer, mailed June 22,
2017 (“Ans.”), and (4) Patent Owner’s Reply Brief, filed August 22, 2017
(“Reply Br.”).
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I. STATEMENT OF CASE
This proceeding arose from an ex parte reexamination request (the
“Request”) of the ’739 patent, issued to Thomas Higley on August 4, 1998.
The ’739 was the subject of inter partes review proceeding, IPR2014-00500
(the “IPR”). The Final Written Decision, issued on September 9, 2015, found
claims 1, 4–6, 8, 10, 13–15, 17, 21, 24–26, 28, 30, 33–35, 37, 39, and 40
unpatentable. Motorola Mobility, LLC v. Intellectual Ventures I, LLC, IPR 2014–
00500, Final Written Decision (PTAB Sept. 10, 2014). The Federal Circuit
affirmed that Decision. See Intellectual Ventures I LLC v. Motorola Mobility LLC,
671 Fed.Appx. 787 (Fed. Cir. Dec. 9, 2016) (affirming under Fed. Cir. R. 36).
We have also been informed that the ’739 patent was the subject of a district
court proceedings Intellectual Ventures I LLC v. AT&T Mobility LLC, No. 12-cv-
00193 (D. Del.); Intellectual Ventures I LLC v. T-Mobile USA Inc., No. 13-cv-
01632-LPS (D. Del.); Intellectual Ventures I LLC v. Nextel Operations Inc., No.
13-cv-01636-LPS (D. Del.); and Intellectual Ventures I LLC v. Motorola Mobility
LLC, No. 13-cv-61358-DMM (S.D. Fla.). See App. Br. 6.
An oral hearing was conducted on January 24, 2018. The transcript of the
oral hearing will be made of record.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 315 (pre-AIA).
We affirm.
II. THE ’739 PATENT
The ’739 patent relates generally to a method and system for sending and
receiving Uniform Resource Locators (URLs) in electronic mail over the Internet.
’739 patent, Abstract. Figure 4, reproduced below, depicts one embodiment.
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Figure 4 Depicting an Exemplary Embodiment of the Claimed
Invention
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Claims 19 and 41 are illustrative and read as follows:
19. A computer implemented method for transmitting a message
to a receiving computer which examines a type of the message and
looks up an address to a predetermined location contained within the
message if the message is determined to be of a type which indicates
that the message contains an address, comprising the steps of:
encoding a message into a format which indicates that a type of
the message is of a format which contains an address to a predetermined
location and contains the address to the predetermined location without
including data corresponding to the predetermined location; and
transmitting the encoded message over a network to the receiving
computer.
41. A method of communicating between computers,
comprising the steps of:
sending a message over a network, said message includes at least
one reference to a predetermined location at a first computer system;
receiving said message at a second computer system; and
decoding said message by retrieving data from said predetermined
location automatically, without requiring user interaction.
App. Br., Claims App’x.
III. REJECTIONS
A. Evidence Relied Upon
The Examiner relies on the following as evidence of unpatentability:
Payne US 5,715,314 Feb. 3, 1998
(“Payne”)
Steve Putz, Interactive Information Services Using World-Wide Web
Hypertext, Xerox Palo Alto Research Center (April 20, 1994).
Steve Putz, Interactive Information Services Using World-Wide Web
Hypertext, Computer Networks and ISDN Systems 27 (1994) 273–280
(collectively, “Putz”).
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Patent Owner additionally relies on the Declaration of Mark. T Jones, Ph.D,
dated July 26, 2016 (“Jones Decl.”).
B. The Adopted Rejections
The Examiner maintains the following rejections:
1. Claims 19, 20, and 41 are rejected under 35 U.S.C. § 102 as anticipated
by Putz.
2. Claims 19, 20, and 41 are rejected under 35 U.S.C. § 102 as anticipated
by Payne.
IV. ANALYSIS
A. The Anticipation Rejections of Claim 19 and 20
Based on the record before us, we are not persuaded that the Examiner erred
in rejecting claims 19 and 20 under 35 U.S.C. § 102 as anticipated by each of
Payne and Putz.
Patent Owner contends that neither Payne nor Putz examine a type of
message or encode a message into a format which indicates that a type of the
message is of a format which contains an address to a predetermined location, as
required by claim 19. According to the Patent Owner, claim 19 implicitly requires
more than one message type because the claim recites examining a type of
message. See, e.g., App. Br. 27 (“The Examiner ostensibly interprets Payne and
Putz to examine a ‘type’ of the message, even though they can only transmit and
receive one type or format of message. This interpretation makes no sense.”); App.
Br. 28 (“[Payne’s] HTTP message with the access URL sent from the payment
computer to the buyer computer is always a response message following the HTTP
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protocol, so it is always the same type and always has the same format.”); App. Br.
30 (“[Putz’s] web client does not examiner [sic], and has no need to examine, a
type of the message because it is always the same type of message.”).
Patent Owner further supports this argument by relying on the exemplary
message types disclosed in the ’793 patent. See, e.g., App. Br. 24 (“In certain
embodiments of the ’793 patent, the type and format of the message can change.
Figures 6-8 show some examples.”). Patent Owner distinguishes the URL/pointer
message type of figure 6 from the html/text and text/plain message types of figures
7 and 8, respectively. App. Br. 24–25. Patent Owner contends that the html/text
and text/plain type messages may include a URL, but these message types do not
reveal that the message contains a URL. App. Br. 25; see also App. Br. 30 (citing
Jones Decl. ¶ 104) (“Like the examples of Figure 7 and 8 of the ’793 patent, a
response message may contain a URL or it may not, but the type of the message
would not reveal that because all response messages are the same type of message,
following the HTTP protocol.”).
Patent Owner also argues that the Examiner failed to properly consider the
Jones Declaration. App. Br. 26; Reply Br. 26–27.2 In particular, Patent Owner
asserts that the Jones Declaration
even more fully explained why ‘[t]he type and format of a response
message [in Payne and Putz] is always the same because it is defined
by the HTTP standard.’ Jones Decl. (Ex. 106) ¶ 62 (emphasis added);
see also id. ¶¶ 65, 83, 86, 102. In other words, Payne’s and Putz’s
computers absolutely do not include alternate types and formats.
2 Patent Owner asserts that the Examiner instead considered the Jones Declaration
from the IPR. There, Jones stated that Payne’s computers “‘need not and likely do
not’ include alternate types and formats.” App. Br. 26.
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App. Br. 26. As such, according to Patent Owner, “Payne and Putz have no need
to examine-and there is no evidence they do examine-the type of the message.”
App. Br. 28.
We find Patent Owner’s arguments unpersuasive. As explained in the
Request, Payne at least describes that the URL message may be a HTTP request
message or a redirection. Request 18 (quoting Payne, col. 9, ll. 51–63); Final Act.
5 (incorporating by reference Request pp. 11–35). Payne also describes sending a
success HTTP response message with a requested document within the body of the
message. Payne, col. 9, l. 64–col. 10, l. 1. Thus, contrary to Patent Owner’s
assertions, Payne describes and examines multiple message types. Similarly, as
the Examiner finds, Putz “discloses multiple document types (i.e. images, SGML)
that are examined / decoded.” Final Act. 14; see also Final Act. 15 (“The MIME-
type parameters used in Putz’s HTTP response message can specify document
types, such as images. Putz also discloses HTML, ‘which is a .... SGML document
type allowing structured text with links.’ Thus, multiple document types are
examined in Putz.”).
Patent Owner’s reliance on Figure 7 is also misplaced. The ’793 patent
identifies that the message using the HTML protocol is a URL type message. See
’793 patent, col. 3, ll. 59-61 (“FIG. 7 illustrates another example of an electronic
mail format in HTML used to transmit addresses (URL typed mail) by the present
invention”) (emphasis added); ’793 patent, col. 8, ll. 11–13 (“FIGS. 6 and 7 are
illustrative and should not be considered the only possible formats or URL typed
messages….”) (emphasis added). As such, a message in HTML format may also
be a URL type message according to the’793 patent. This is further supported by
the ’793 patent’s disclosure that the message type may be determined or assessed
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from the contents of the message itself. ’793 patent, col. 5, ll. 38–40. In other
words, the URL type message need not be identified by a header but can be
determined by the presence of a URL within the message. As such, a skilled
artisan would not interpret use of HTML, or other protocols such as Payne’s
HTTP, to limit messages to a single message type.
We are not persuaded then that Payne and Putz are limited to a single
message type. To the contrary, as discussed above, Payne at least discloses URL
messages, redirect messages, and success response messages. See Payne, col. 9, l.
64–col. 10, l. 1. Moreover, Exhibit 105, submitted by Patent Owner, also explains
that within the HTTP protocol there are request and response type messages, each
of which are disclosed and examined in Payne. See Exhibit 105, Network Working
Group, Request for Comments: 1945, p. 21. Putz likewise describes examining
multiple message types within the HTML protocol. See Final Act. 14–15.
Patent Owner’s argument with respect to the Jones Declaration is likewise
unavailing. While the Examiner inaccurately quotes the Jones Declaration, Payne
and Putz expressly describe multiple message types. For example, as discussed
above, Payne discloses URL messages, redirect messages, and success response
messages. See Payne, col. 9, l. 64–col. 10, l. 1; see also Final Act. 14–16 (finding
that Putz discloses examining multiple message types). As such, Jones’ statement
that Payne and Putz absolutely disclose only a single message type is
unconvincing.
Patent Owner also alleges that the Examiner identified the access URL and
payment URL as both the message and the reference to a predetermined location.
Reply Br. 22–26. We disagree. The Examiner finds that
Payne discloses a first embodiment: a payment computer
encodes a message containing an access URL (i.e.,,[sic] a message that
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includes at least one reference to a predetermined location), and then
transmits I sends to the receiving computer I a second computer system
(buyer computer).
Payne discloses a second embodiment, a merchant computer
encodes a message containing a payment URL (i.e., a message that
includes at least one reference to a predetermined location at a first
computer system); which is then transmitted I sent to the receiving
computer I a second computer system (i. e. the buyer computer).
Final Act. 7–8 (emphasis added).
Therefore, we are not persuaded that the Examiner erred in finding that
Payne and Putz each examine a type of message and encode a message into a
format which indicates that a type of the message is of a format which contains an
address to a predetermined location, as required by claim 19. See also IPR 18–19,
29–30 (rejecting Patent Owner’s arguments and finding that Payne and Putz
disclose the disputed limitations).
Accordingly, for the reasons discussed above and explained by the
Examiner, we sustain the rejections of claim 19 as well as dependent claim 20, not
argued with particularity, as anticipated by each of Payne and Putz.
B. The Anticipation Rejections of Claims 41
Based on the record before us, we are not persuaded that the Examiner erred
in rejecting claims 41 under 35 U.S.C. § 102 as anticipated by each of Payne and
Putz.
With respect to claim 41, Patent Owner alleges that the Specification and file
history distinguish decoding that is triggered by user interaction from decoding that
occurs without user interaction. App. Br. 18–19. Particularly, Patent Owner relies
on the description of Figure 7,
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When the file of FIG. 7 is received by a machine operating
according to the process of the present invention, the message is
received and if a user “clicks” when a pointing device such as a mouse
is pointing to the URL, the information relating to the URL would be
retrieved via the Internet and displayed (e.g., dereferenced).
Alternatively, the URL may automatically be displayed without user
intervention.
’793 patent (Ex. 1) 8:5–12. Additionally, Patent Owner identifies that the file
history distinguishes prior art on the basis of pushing information to the user rather
than manually browsing with user interaction. App. Br. 18–19.
Patent Owner then argues that neither Payne nor Putz teaches the decoding
limitation of claim 41. “To the extent Payne and Putz ‘decode’ anything, there is
no dispute they need user interaction to trigger the decoding.” App. Br. 22.
According to Patent Owner,
Payne discloses no mechanism for causing the fulfillment document to
be sent to the buyer computer —and certainly not an automatic
mechanism. Jones Decl. (Ex. 106) ¶ 74. Moreover, Payne requires
significant user action at the buyer computer to retrieve the fulfillment
document. Id. ¶ 75. The user at the buyer computer controls the
purchase process and repeatedly requests the merchant computer send
the fulfillment document to the buyer computer. First, the user enters
"a user request for purchasing a product" at the buyer computer. Payne
(Ex. 5) 1:55–59; see id., 5:26–29. Then, the user confirms the purchase
request by clicking the "continue" button in the confirmation document
displayed on the buyer computer (as well as entering any required
security information). Id.,
App. Br. 22. Patent Owner presents similar arguments regarding Putz. See App.
Br. 23 (“In Putz, the user at the web client computer explicitly requests the
retrieval of the map image associated with the image URL by clicking or selecting
a web page URL.”).
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We are not persuaded that the Examiner erred in finding that Payne and Putz
each disclose the decoding limitation. Rather, we agree with the Final Decision of
the IPR that directly and extensively addresses this argument. Namely,
With respect to the decoding step in the first embodiment [in
Payne], we find that the buyer computer of Payne decodes the message
without user interaction, sending the access URL to the merchant
computer to retrieve the fulfillment document. Ex. 1007, 7:46–50 (“the
merchant computer verifies that the buyer computer network address is
the same as the buyer network address in the access URL (step 101),
and if so, sends a fulfillment document to the buyer computer (step
102), which is displayed by the buyer computer (step 104)”), Figs. 2H,
10. With respect to the decoding step in the second embodiment, we
find that the buyer computer sends the payment URL to the payment
computer to automatically retrieve the confirmation document. Id. at
5:53–60 (“buyer computer then sends the payment URL A it has
received from the merchant computer to the payment computer.”), id.
at 6:5–14 (“payment computer sends a payment confirmation document
to the buyer computer,”), Fig. 6 (showing an example of the
confirmation document), id. at 4:7–9.
IPR 15–16; see also IPR 28 (finding that “Putz fetches or retrieves and
automatically decodes, without user interaction, the images identified by the
![]()
tag from the URL location.”).
As explained by the Examiner, the user actions in Payne and Putz
identified by Patent Owner are not performed in decoding the message by
retrieving data from the predetermined location. Ans. 43. Nothing in claim
41 precludes user interaction outside of this step. While Patent Owner
attempts to read in additional steps to decoding, the claim expressly recites
“decoding said message by retrieving data from said predetermined
location.” As such, we find Patent Owner’s arguments unpersuasive.
We also agree with the Examiner that Payne and Putz’s decoding is
automatic. Ans. 43–45. “Payne discloses ‘automatic (without user
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interaction) redirection of a web browser based on a standard HTTP request
message that includes a URL (such as the access URL).’[] The redirection of
a web browser based on a standard HTTP request message including a URL
disclosed in Payne is automatic.” Ans. 43. Similarly,
Putz discloses, as an example, a “web browser” on the client computer
automatically retrieves the map image from the image source without
user interaction and thus anticipates retrieving automatically and
without user interaction, notwithstanding any user interaction that may
be taken in an earlier step.
Final Act. 18–19. Therefore, we are unpersuaded that the Examiner erred in
finding that Payne and Putz each disclose the decoding limitation of claim
41.
Accordingly, for the reasons discussed above and by the Examiner, we
sustain the rejections of claim 41 as anticipated by each of Payne and Putz.
V. CONCLUSION
We affirm the Examiner’s decisions to reject claims 19, 20, and 41.
AFFIRMED
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PATENT OWNER:
KNOBBE, MARTENS, OLSON & BEAR LLP
2040 Main Street
14TH Floor
Irvine, CA 92614
FOR THIRD-PARTY REQUESTER:
JAMES W. MILLER, ATTORNEY
527 MARQUETTE A VENUE
SUITE 1960, RAND TOWER
MINNEAPOLIS, MN 55402
