Sony Mobile Communications (USA) Inc.v.B.E. Technology, L.L.C.

Patent Trials and Appeals Board

Apr 6, 2015

09744033 - (D) (P.T.A.B. Apr. 6, 2015)

Trials@uspto.gov Paper 31
571-272-7822 Entered: April 6, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SONY MOBILE COMMUNICATIONS (USA) INC.,
Petitioner,

v.

B.E. TECHNOLOGY, L.L.C.,
Patent Owner.
____________

Case IPR2014-00029
Patent 6,771,290 B1
____________

Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

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

I. INTRODUCTION
We have jurisdiction to hear this inter partes review under 35 U.S.C.
§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
shown by a preponderance of the evidence that claims 2 and 3 of U.S. Patent
No. 6,771,290 B1 (Ex. 1001, “the ’290 patent”) are unpatentable.
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A. Procedural History
Petitioner, Sony Mobile Communications (USA) Inc., filed a Petition
for inter partes review of claims 2 and 3 of the ’290 patent. Paper 2 (“Pet.”).
Patent Owner, B.E. Technology, L.L.C., did not file a Preliminary Response.
On April 9, 2014, pursuant to 35 U.S.C. § 314, we instituted an inter partes
review for claims 2 and 3 of the ’290 patent on the ground of anticipation by
Kikinis1 under 35 U.S.C. § 102(b). Paper 7.
Subsequent to institution, Patent Owner filed a Patent Owner
Response (Paper 21, “PO Resp.”), and Petitioner filed a Reply to the Patent
Owner Response (Paper 24, “Reply”). On December 11, 2014, we held a
consolidated hearing for five inter partes reviews involving the ’290 patent.2
A transcript of the oral hearing is included in the record. Paper 30 (“Tr.”).
B. Related Proceedings
The parties indicate that the ’290 patent is at issue in B.E. Technology,
L.L.C. v. Sony Mobile Communications (USA), Inc., No. 2:12-cv-02827
(W.D. Tenn.), and numerous other district court cases filed by Patent Owner
against other defendants. Pet. 1–2; Paper 4, 1–2 (Patent Owner’s Mandatory
Notices). As noted, the ’290 patent is the subject of four other inter partes
reviews: IPR2014-00031, IPR2014-00033, IPR2014-00040, and IPR2014-
00044.

1 PCT International Publication Number WO 97/09682, published Mar. 13,
1997 (Ex. 1008) (“Kikinis”).
2 Sony Mobile Commc’ns (USA) Inc. v. B.E. Tech., L.L.C., Case IPR2014-
00029; Google Inc. v. B.E. Tech., L.L.C., Case IPR2014-00031; Google Inc.
v. B.E. Tech., L.L.C., Case IPR2014-00033; Microsoft Corp. v. B.E. Tech.,
L.L.C., Case IPR2014-00040; Samsung Elecs. Am., Inc. v. B.E. Tech.,
L.L.C., Case IPR2014-00044.
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C. The ’290 Patent
The ’290 patent describes a system that provides remote storage of
user-specific files and resources that can be accessed over a network, such as
the Internet. Ex. 1001, 5:43–50, 12:45–50. The disclosed system includes
client computers, each running a client software application that provides
access via a network to an advertising and data management (ADM) server.
Id. at 11:42–49. The server includes a user database that stores a user profile
and a user library for each user. Id. at 12:45–13:12. The user profile is
accessed by the client software application using a unique identifier for the
user via a login. Id. at 12:52–56. The user profile may contain user-specific
customized settings for the operating system used by the client computer.
Id. at 12:56–58. Additionally, the user profile may contain “bookmarks,
shortcuts, and other such links to files and information resources accessible
via” the network. Id. at 12:67–13:3. The user library “enables the user to
store files (documents, executable programs, email messages, audio clips,
video clip, or other files) that can then be accessed from any client
computer.” Id. at 13:4–7. By storing user profiles and user libraries on the
server, users “can have world-wide access to their preferences, addresses,
bookmarks, email, and files without having to physically transport them
from one place to another.” Id. at 13:9–12.
The ’290 patent further describes a user interface on a client
computer, provided by a graphical user interface (GUI) module. Id.
at 13:41–43. The user interface comprises an application window with
selectable items such as icons. Id. at 13:43–53. As shown in Figure 5b, the
application window may include “icons that represent various files and links
to information resources.” Id. at 15:48–53.
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Figure 5b of the ’290 patent is reproduced below:

Figure 5b illustrates an application window with icons
representing files and links to information resources.
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The application window in Figure 5b includes a library icon, which,
when selected, provides a display as shown in Figure 5c, reproduced below.

Figure 5c illustrates an application window
displaying files in a user library.
The display in Figure 5c provides a list of all files contained in a user
library. Id. at 15:55–56. From this window, “the user can access any of the
files contained in his or her user library.” Id. at 15:56–57.
D. Claims
Petitioner challenges claims 2 and 3, which read:
2. A computer-readable memory for use by a client
computer in conjunction with a server that is accessible by the
client computer via a network, the server storing a user profile
and user library for each of a number of different users, with the
user library containing one or more files and the user profile
containing at least one user link that provides a[] link to one of
the files in the user library, the computer-readable memory
comprising:
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a non-volatile data storage device;
a program stored on said non-volatile data storage device
in a computer-readable format;
said program being operable upon execution to display a
graphical user interface comprising an application window
having a number of user-selectable items displayed therein,
wherein each of said items has associated with it a link to an
information resource accessible via the network and wherein
said program is operable upon execution and in response to
selection by a user of one of said items to access the associated
information resource over the network;
said program being operable upon execution to receive
from [the] server one of the user profiles and to display a user-
selectable item for user links contained within the user profile,
said program further being operable in response to selection by
a user of one of the user links to access the file associated with
the selected user link from the user library associated with the
received user profile.
3. A computer-readable memory as defined in claim
2, wherein said program is operable upon execution and in
response to selection by a user of one of said items to access the
associated information resource over the network using a
browser.
Id. at 39:1–40:16.
II. ANALYSIS
A. Claim Construction
In an inter partes review, we construe claim terms in an unexpired
patent according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
Patent Owner contends the Board’s adoption of the “broadest reasonable
construction” standard exceeded the Office’s rulemaking authority and
requests that we construe the claims in this case in a manner consistent with
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claim construction that would be applied in the district court. PO Resp. 24–
25. Recently, however, the United States Court of Appeals for the Federal
Circuit held that “Congress implicitly adopted the broadest reasonable
interpretation standard in enacting the [America Invents Act].” In re Cuozzo
Speed Techs., LLC, 778 F.3d 1271, 1281 (Fed. Cir. 2015). The court further
held that even if the broadest reasonable interpretation standard were not
incorporated into the inter partes statutory provisions, the Office properly
adopted the standard by regulation under the rulemaking authority provided
by 35 U.S.C. § 316. Id. at 1282. Accordingly, we construe the claims in this
proceeding using the broadest reasonable construction standard.
Consistent with the broadest reasonable construction standard, claim
terms are presumed to have their ordinary and customary meaning, as
understood by a person of ordinary skill in the art, in the context of the entire
patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). An inventor may provide a meaning for a term that is different
from its ordinary meaning by defining the term in the specification with
reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
1. Claim Terms Defined in the ’290 Patent
The ’290 patent recites explicit definitions for many terms. In the
table below, we construe claim terms relevant to our decision in accordance
with the definitions provided in the ’290 patent, which are set forth in the
written description with reasonable clarity, deliberateness, and precision.
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Claim Term Construction
data set
“A group of data items; for example, links,
keywords, or entries in an address book.”
Ex. 1001, 4:18–19.
file
“Any digital item, including information,
documents, applications, audio/video
components, and the like, that is stored in
memory and is accessible via a file
allocation table or other pointing or
indexing structure.” Ex. 1001, 4:25–28.
information resource
“A source of information stored on a
server or other computer that is accessible
to other computers over a network.”
Ex. 1001, 4:33–35.
link
“A data item that identifies the location or
address of a program or information
resource.” Ex. 1001, 4:39–40.3
non-volatile data storage
device
“A memory device that retains computer-
readable data or programming code in the
absence of externally-supplied power,
including such things as a hard disk or a
floppy disk, a compact disk read-only
memory (CDROM), digital versatile disk
[(]DVD), magneto-optical disk, and so
forth.” Ex. 1001, 4:46–51.
profile
“User-specific information relating to an
individual using a computer.” Ex. 1001,
4:52–53.
2. User library
Claim 2 recites a “server storing a . . . user library for each of a
number of different users, with the user library containing one or more

3 The ’290 patent further provides: “A URL [i.e., a uniform resource
locator] is a link, as is a path and filename of an information resource.”
Ex. 1001, 4:40–41. We consider these to be examples of a “link,” not part of
the definition, and, therefore, not part of our construction of the claim term.
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files.” Ex. 1001, 39:3–5 (emphasis added). Claim 2 further provides that
files in the user library are accessed via user links in a user profile.
Id. at 39:6–7, 40:8–11. Although the ’290 patent does not provide an
explicit definition of “user library,” it provides the following description:
“[T]he User Database 46 of ADM server 22 can include a user library that
enables the user to store files (documents, executable programs, email
messages, audio clips, video clips, or other files) that can then be accessed
from any client computer 40.” Id. at 13:3–7 (emphasis added). The written
description of the ’290 patent further explains that a user library is “used to
store [a user’s] individual files and resources that the user wishes to be able
to access from anywhere on the network.” Id. at 5:56–58.
An ordinary meaning of “library” in the context of electronic
document storage is a “collection of software or data files,”4 and, thus, a
“user library” is a “collection of a user’s software or data files.” In view of
this ordinary meaning and the claims and written description of the
’290 patent, the broadest reasonable construction of “user library” consistent
with its use in the ’290 patent is “a collection of an individual’s stored files.”
B. Asserted Ground of Anticipation by Kikinis
Petitioner contends that claims 2 and 3 are unpatentable under
35 U.S.C. § 102(b) as anticipated by Kikinis, relying on declaration
testimony of Dr. Eric Burger. Pet. 17–22 (citing Ex. 1006). Patent Owner
responds, relying on declaration testimony of Dr. Cory Plock. PO Resp. 8–
24 (citing Ex. 2001). Having considered the parties’ contentions and

4 See MICROSOFT COMPUTER DICTIONARY 309 (5th ed. 2002).
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supporting evidence, we determine that Petitioner has demonstrated by a
preponderance of the evidence that claims 2 and 3 are anticipated by Kikinis.
1. Summary of Kikinis
Kikinis describes a document management system that provides for
remote storage and retrieval of electronic documents. Ex. 1008, Abstract,
1:7–9. Figure 2, reproduced below, illustrates Kikinis’s electronic document
system.

As shown in Figure 2, Kikinis discloses user station 53 with a web browser
that allows a user to access, via the Internet, servers provided by a remote
Internet service provider (ISP), labeled “User’s Provider” in the figure.
Id. at 6:11–14, 6:24–26. In the embodiment shown in Figure 2, the remote
ISP includes web server 67 and a set of electronic document servers 69, all
of which have access to the Internet. Id. at 6:24–27.
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Each electronic document server 69 runs software that supports a
specific application. Id. at 6:27–29. As shown in Figure 2, examples
include e-mail program 79, fax program 81, voice-mail program 85, and
other programs 87, which provide access to other electronic documents.
Id. at 6:29–31. Web server 67 stores a set of databases 71, each of which is
associated with a different user. Id. at 6:32–35. Each database set 71
includes home page 73 that is individualized to a specific user and provides
links to various lower-order databases maintained by electronic document
server 69 for each user, such as e-mail database 89, fax database 91, voice-
mail database 93, and other electronic documents in database 95. Id. at
6:35–7:4. A user may be required to provide a password and user name to
gain access to home page 73 of an electronic document database. Id. at
8:21–24.
A user who wishes to access electronic documents stored on an
electronic document server invokes the web browser at a user station. Id. at
7:17–29. Figure 3 of Kikinis, reproduced below, illustrates a series of web
browser windows for accessing electronic documents.
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As shown in Figure 3, a user enters a URL for his home page in
field 113. Id. at 7:29–31. Home page 73 is retrieved from the remote server
and displayed as a graphical user interface to data and other web
destinations, with on-screen links to the user’s electronic documents stored
on the electronic document server. Id. at 7:31–8:1. For example, as shown
in Figure 3, home page 73 provides links to the user’s voice-mail
(button 117), e-mail (button 118), faxes (button 120), and other electronic
documents (button 122). Id. at 8:2–13. A user also may use home page 73
to link to other databases, “such as a personal multi-lingual dictionary
featuring pronunciation, a spelling checker, or a thesaurus; or indeed, almost
any other sort of digital data or control routines.” Id. at 8:14–18.
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2. Claims 2 and 3
Independent claim 2 of the ’290 patent is directed to a computer-
readable memory for use by a client computer in conjunction with a server
that is accessible by the client via a network and stores a user profile and a
user library containing one or more files. Ex. 1001, 39:1–5. The computer-
readable memory on the client includes a “program stored on [a] non-
volatile data storage device.” Id. at 39:10–11. The program is, among other
things, “operable upon execution to receive from [the] server one of the user
profiles and to display a user-selectable item for user links contained within
the user profile,” and “operable in response to selection by a user of one of
the user links to access the file associated with the selected user link from
the user library associated with the received user profile.” Id. at 40:3–11.
Claim 3 depends from claim 2 and specifies that the program uses a browser.
Id. at 40:13–17.
Petitioner provides detailed analysis showing where Kikinis describes
each limitation of claims 2 and 3. Pet. 17–22. In particular, Petitioner
asserts that Kikinis discloses the recited “program” (a web browser on a user
station), “user library” (user-specific databases, such as an e-mail database, a
fax database, a voice-mail database, and an electronic document database, all
of which contain user-specific files), and “user profile” (home page) with
links to the user’s files. Id. at 18–22 (citing Ex. 1006 ¶¶ 17–19). Patent
Owner argues that Kikinis fails to describe (a) a program stored on a non-
volatile data storage device that performs the functions recited in claim 2,
(b) a file associated with a selected user link, and (c) a user profile.
PO Resp. 8–23. Patent Owner contends that Kikinis does not anticipate
claim 3 for the same reasons provided for claim 2. Id. at 23–24.
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Having considered the parties’ contentions and supporting evidence,
we determine that Petitioner has demonstrated by a preponderance of the
evidence that Kikinis anticipates claims 2 and 3 of the ’290 patent. For the
reasons discussed below, we are not persuaded by Patent Owner’s
contentions.
a. Program stored on a non-volatile data storage device
Patent Owner contends that Kikinis does not disclose a program
stored on a client that performs the functions of a “program” as recited in
claim 2. PO Resp. 8–15. Specifically, Patent Owner argues that Kikinis
discloses a system that provides indirect access to electronic documents
because it requires programs remotely stored on a server to access remotely
stored electronic documents. Id. at 9. For example, each electronic
document server shown in Figure 2 of Kikinis runs software that supports a
specific application, such as an e-mail program or a voice-mail program.
Id. at 9–10 (citing Ex. 1008, 6:27–31). Patent Owner further submits that
Kikinis’s web browser, although stored on a non-volatile storage device on a
client, does not perform the claimed functions of a “program” because it
cannot access electronic documents by itself without additional software
programs stored on a remote server. Id. at 13–15 (citing Ex. 2001 ¶ 21). In
other words, Patent Owner essentially contends that the client program
recited in claim 2 must provide direct access to a file stored in a user library
on the server, without the assistance of any program on the server.
See id. at 9; see also Ex. 2003, 24:3–24 (Dr. Plock testifying that Kikinis’s
browser cannot correspond to the claimed “program” because it must use a
server-side program to access databases, and thus “cannot directly access”
the databases).
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We are not persuaded by Patent Owner’s argument, which improperly
reads “direct” access into the claim. Claim 2 simply requires the program to
“access the file,” without precluding the involvement of software on the
server to facilitate that access. The broadest reasonable interpretation of
“access,” as used in the claim without any modifiers, encompasses the type
of file access performed by the browser in the Kikinis system. Moreover,
Patent Owner’s own expert admits that in any client-server system, such as
the system described and claimed in the ’290 patent, software on a server
necessarily is required for the server to respond to a request from a client
program, such as a browser. See Ex. 2004, 53:14–19, 54:13–18. Thus, we
find that Kikinis’s web browser is a program stored on a client that is
operable to perform the functions of the “program” recited in claim 2,
including accessing a file on the server.
b. File associated with a selected user link
Patent Owner contends that Kikinis does not disclose “selection by a
user of one of the user links to access the file associated with the selected
user link from the user library,” as recited in claim 2. PO Resp. 15–21.
According to Patent Owner, Kikinis describes links to software programs
and databases, but not links to specific files. Id. at 17. As part of its
argument, Patent Owner submits that the ’290 patent describes a “one-click”
system that provides a “direct link” from an item in the user profile to a
specific file in the user library. Id. at 16–17 (citing Ex. 1001, 15:12–13
(“The user has the ability to subscribe the channel by making a direct link to
a file . . . .”)).
As an initial matter, the plain language of claim 2 does not require
“one-click” access or a “direct link” to files. Although the ’290 patent
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describes direct links to files, it also describes other means for accessing
files. See, e.g., Ex. 1001, 15:12–15 (“The user has the ability to subscribe
the channel by making a direct link to a file, or by combining various files
under some category, or by providing a drop down list to a subscribed
channel.” (emphases added)); id. at 15:53–57 (“[A] library icon . . . , when
selected, provides a display as shown in FIG. 5c which contains a list of all
of the files contained in the user library. From here, the user can access any
of the files contained in his or her user library . . . .” (emphasis added)).
Patent Owner does not present persuasive evidence or argument for
importing a “one-click” limitation into claim 2.
Turning to Kikinis, we find that, contrary to Patent Owner’s
arguments, Kikinis discloses the selection of a user link to access the file
associated with the selected user link from the user library. Kikinis
specifically states that its home page, which corresponds to the claimed user
profile, has “on-screen links to electronic documents reserved for the home
page ‘owner’, such as e-mail and faxes.” Ex. 1008, 7:35–8:1. Patent
Owner’s expert, Dr. Plock, agrees that this passage from Kikinis discloses
links to electronic documents. Ex. 2004, 66:6–20. Thus, Kikinis clearly
discloses links on a user’s home page to individual, electronic documents,
which are “files” as that term is defined in the ’290 patent. See supra II.A.1.
In addition, it is undisputed that Kikinis discloses a home page with
links to databases. See, e.g., Pet. 18; PO Resp. 19. As described in Kikinis,
in connection with Figure 2, web server 67 stores a set of databases 71, each
of which “belongs to (or is assigned to or is associated with) a different
client.” Ex. 1008, 6:32–35. Each database set 71 includes home page 73
that is individualized to a specific user and provides links to various lower-
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order databases maintained by electronic document server 69 for each user,
such as e-mail database 89, fax database 91, voice-mail database 93, and
database 95 containing other electronic documents. Id. at 6:35–7:4;
see id. at Fig. 2 (showing client-specific databases 89, 91, 93, and 95).
Patent Owner agrees that Kikinis describes links to databases, but
argues that databases are not files. PO Resp. 15–17, 19; Ex. 2001 ¶¶ 24–25.
The ’290 patent, however, defines “file” as “[a]ny digital item, including
information, documents, applications, audio/video components, and the like,
that is stored in memory and is accessible via a file allocation table or other
pointing or indexing structure.” Ex. 1001, 4:25–28; see supra II.A.1. At his
deposition, Patent Owner’s expert, Dr. Plock, admitted that the databases for
e-mail, fax, voice-mail, and other electronic documents in Kikinis meet the
requirements of a file, as that term is used in the ’290 patent. See Ex. 2004,
59:21–63:20. Specifically, Dr. Plock agreed that the databases are stored in
digital form, id. at 63:15–20, are stored in memory, id. at 59:21–23, 62:21–
24, and can be accessed using a pointing or indexing structure, id. at 59:24–
60:1, 60:9–11, 62:25–63:7. Dr. Plock further agreed that a user accesses the
databases in Kikinis via links on the home page, which corresponds to the
claimed user profile. Id. at 71:19–72:8. The databases disclosed in Kikinis,
therefore, are files associated with selected user links, as recited in claim 2.
Patent Owner and its expert contend that Kikinis’s lower-order
databases (e-mail database 89, fax database 91, voice-mail database 93, and
database 95 for other electronic documents) do not comprise a “user
library,” as required by claim 2, because the databases contain e-mails,
voice-mails, and faxes for multiple users. See Tr. 32:11–25; Ex. 2003, 36:3–
14; Ex. 2004, 56:20–57:1. This argument, however, is inconsistent with the
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disclosures in Kikinis, including the client-specific databases shown in
Figure 2. See Ex. 1008, 8:30–31 (describing electronic document databases
as belonging to a user). Kikinis, therefore, discloses a user library (i.e., a
collection of databases stored for a user) containing one or more files (i.e.,
databases 89, 91, 93, and 95), which may be selected by a user link in a user
profile (i.e., home page).
Thus, Kikinis discloses selection of a link to access a file associated
with the selected link from a user library in at least two ways—via a link to
an electronic document stored in a user’s database of electronic documents,
which corresponds to the recited “user library,” and via a link to one of the
user’s databases, e.g., the user’s e-mail database, which is a “file” as that
term is defined in the ’290 patent and which, together with other databases,
comprise a “user library.”
c. User profile
Patent Owner contends that the home page disclosed in Kikinis is not
a “user profile” as recited in claim 2 because Kikinis contains no mention of
any “user-specific information relating to an individual using a computer”
found within the home page. PO Resp. 22. Kikinis, however, describes a
home page as “a graphical interface unique to an individual user” that
“functions in part as a table of contents.” Ex. 1008, 2:3–5. Further, Kikinis
specifically indicates the home page has “indicia identifying the home page
owner” and is “individualized to a specific client.” Id. at 3:3–4, 6:34–35.
Patent Owner’s argument fails to account for these express disclosures of
“user-specific information” in Kikinis.
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III. CONCLUSION
Based on the evidence and arguments, Petitioner has demonstrated by
a preponderance of the evidence that claims 2 and 3 of the ’290 patent are
anticipated by Kikinis under 35 U.S.C. § 102(b).
IV. ORDER
Accordingly, it is:
ORDERED that claims 2 and 3 of U.S. Patent No. 6,771,290 B1 are
unpatentable.
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.

FOR PETITIONER:
John Flock
Paul Qualey
KENYON & KENYON LLP
jflock@kenyon.com
pqualey@kenyon.com

FOR PATENT OWNER:

Jason S. Angell
Robert E. Freitas
FREITAS TSENG & KAUFMAN LLP
jangell@ftklaw.com
rfreitas@ftklaw.com