UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. KYOCERA CORPORATION, and MOTOROLA MOBILITY LLC Petitioners, v.

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1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD KYOCERA CORPORATION, and MOTOROLA MOBILITY LLC Petitioners, v. SOFTVIEW LLC Patent Owner. PETITIONERS CONSOLIDATED REPLY TO PATENT OWNER S RESPONSE CASE IPR CASE IPR Patent 7,831,926

2 TABLE OF CONTENTS I. Response To SoftView Statement Of Material Facts...1 II. III. Pad++ And Zaurus Teach Preserv[] The Original Page Layout Under The Broadest Reasonable Construction...2 Claims 30,31, 40, 41, 43, 52, 55, 59, 72 And 75 Are Obvious Based On A Combination Of Zaurus, Pad++ And Svf...5 A. Zaurus, Pad++ And SVF Teach All Of The Claim Limitations...5 B. The Skilled Person Would Combine Pad++, Zaurus And SVF...7 IV. Claims 30,31, 40, 41, 43, 52, 55, 59, 72 And 75 Are Obvious Based On A Combination Of Zaurus, Hara, Tsustumitake and SVG...10 V. SoftView s Proffered Secondary Considerations Do Not Overcome The Prima Facie Case Of Obviousness...11 VI. Conclusion i -

3 TABLE OF AUTHORITIES Cases Apple Inc. v. International Trade Comm n, F.3d, 2013 WL (Fed. Cir. 2013)...15 ArcelorMittal France v. AK Steel Corp., 700 F.3d 1314 (Fed. Cir. 2012)...11 Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547 (Fed. Cir. 1989)...9 Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387 (1988)...12 Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573 (Fed. Cir. 1997)...12 Hughes Tool Co. v. Dresser Industries, Inc., 816 F.2d 1549 (Fed. Cir. 1987)...12 Impax Labs. Inc. v. Aventis Pharm.Inc., 468 F.3d 1366 (Fed. Cir. 2006)...9 In re American Academy of Science-Tech Center, 367 F.3d 1359 (Fed. Cir. 2004)...4 In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012)...9 In re Buchner, 929 F.2d 660 (Fed. Cir. 1991)...9 In re Donohue, 766 F.2d 531 (Fed. Cir. 1985)...9 In re Sneed, 710 F.2d 1544 (Fed. Cir. 1983)...8 KSR Int l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ii -

4 McNeil-PPC, Inc. v. L. Perrigo Co., 337 F.3d 1362 (Fed. Cir. 2003)...13 Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299 (Fed. Cir. 2006) , 13 Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307 (Fed. Cir. 2007)...5 Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318 (Fed. Cir. 2005)...9 Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573 (Fed.Cir.1983)...15 Saffran v. Johnson& Johnson, 712 F.3d 549 (Fed. Cir. 2013)...4 Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569 (Fed. Cir. 1991)...9 Tokai Corp. v. Easton Enters., 632 F.3d 1358 (Fed. Cir. 2011) , 15 Winner Intern. Royalty Corp. v. Wang, 202 F.3d 1340 (Fed. Cir. 2000)...13 Other Authorities Microsoft Corp. v. Proxyconn, Inc., IPR , paper 32 (PTAB, March 8, 2013) iii -

5 TABLE OF EXHIBITS EXHIBIT RELEVANT PATENT MATERIALS **** PX 1001 PX 1002 PRIOR ART **** PX 1003 PX 1004 PX 1005 PX 1006 DESCRIPTION U.S. Patent No. 7,831,926 ( the 926 Patent ) Prosecution History for the 926 Patent Nokia Unveils World s First All-In-One Communicator for the Americas, Nokia Press Release, September 19, 1996 ( Nokia ) Watanabe, Mituyoshi, How to Make the Most of the Power Zaurus, Computing Communication Multimedia Mobile - Computing Communication Multimedia, April 14, 1998 ( Zaurus_1 ) (including partial English translation) Power Zaurus Specifications: User Manual - Mobile Business Tool Model MI-106 / MI-106M / MI-110M, November 1997 ( Zaurus_2 ) (including partial English translation) Power Zaurus MI-110 / M106 / M106 Brochure, December 1997 ( Zaurus_3 ) Power Zaurus MI-610/DC Brochure, June 1998 ( Zaurus_4 ) Power Zaurus MI-504/ MI-506/ MI-506DC Brochure, July 1997 ( Zaurus_5 ) Power Zaurus Article, PCWatch, November 18, 1997 ( Zaurus_6 ) Japanese Application No. H to Tsutsumitake et al., January 23, 1998 ( Tsutsumitake ) (including English translation) Bederson, Benjamin B. and Hollan James D., Pad++: A Zoomable Graphical Interface System, CHI 95 Mosaic of Creativity, May 1995 ( Bederson-1 ) Bederson, Benjamin B. and Furnas, George W, Space-Scale Diagrams: Understanding Multiscale Interfaces, CHI 95 Proceedings, 1995 ( Bederson-2 ) Bederson, Benjamin B., et al, A Zooming Web Browser, SPIE, Vol. 2667, , May 1996 ( Bederson-3 ) Bederson, Ben and Meyer, Jon, Implementing a Zooming User Interface: Experience Building Pad ++, Software-Practice and Experience, Vol. 28(1), , August 1998 ( Bederson-4 ) - iv -

6 EXHIBIT DESCRIPTION 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 ( Bederson-5 ) Pad++ Reference Manual Version 0.2.7, published July 9, 1996 ( Reference Manual ) Pad++ Programmer s Guide Version 0.2.7, published June 10, 1996 ( Programmer s Guide ) PX 1007 PX 1008 PX 1009 PX 1010 PX 1011 PX 1012 PX 1013 Ferraiolo, Jon, Scalable Vector Graphics Requirements: W3C Working Draft, October 29, 1998 ( SVG ) Japanese Application Publication H to Masao Hara, December 8, 1998 ( Hara ) (including English translation) Specification for the Simple Vector Format v. 1.1, January 16, 1995 ( SVF ) New CAD System Works With AutoCAD Drawings Without Translation, June 17, 1996, retrieved from: news.html, ( SVF Press 1 ) Bring New CAD Viewing Power to the Internet, March 4, 1996, retrieved from: news.html, ( SVF Press 2 ) Matthews, et al., Vector Markup Language, World Wide Web Consortium Note, Note-VML , May 13, 1998, retrieved from: ( VML ) Gessler, S., Kotulla, A., PDAs as mobile WWW browsers. Proc. of Mosaic and the Web Conference, Chicago, October 1994 Lauff, Markus, and Gellersen, Hans-Werner, Multimedia client implementation on Personal Digital Assistants, Interactive Distributed Multimedia Systems and Telecommunication Services, 1997 NetHopper 2.0 First true Web browser for Newton. PenComputing Magazine, 1996, retrieved from: - v -

7 EXHIBIT DESCRIPTION PX 1014 Kamada, Compact HTML for Small Information Appliances, February 9, 1998, retrieved from: OTHER MATERIALS **** PX 1015 Power of Attorney, dated September 21, 2012 PX 1016 PX 1017 PX 1018 PX 1019a PX 1019b PX 1020 PX 1021 PX 1022 Complaint for Patent Infringement filed May 10, 2010 in the case of SoftView LLC v. Apple Inc., and AT&T Mobility LLC, Case No LPS in the United States District court for the District of Delaware First Amended Complaint filed December 3, 2010 in the case of SoftView LLC v. Apple Inc., and AT&T Mobility LLC, Case No LPS in the United States District court for the District of Delaware Second Amended Complaint filed September 30, 2011 in the case of SoftView LLC v. Apple Inc., and AT&T Mobility LLC, Case No LPS in the United States District court for the District of Delaware Joint Claim Construction Chart (Volume 1 of 2) filed August 31, 2012 in the case of SoftView LLC v. Apple Inc., and AT&T Mobility LLC, Case No LPS in the United States District court for the District of Delaware Joint Claim Construction Chart (Volume 2 of 2) filed August 31, 2012 in the case of SoftView LLC v. Apple Inc., and AT&T Mobility LLC, Case No LPS in the United States District court for the District of Delaware SoftView LLC s Opening Claim Construction Brief filed September 21, 2012 in the case of SoftView LLC v. Apple Inc., and AT&T Mobility LLC, Case No LPS in the United States District court for the District of Delaware January 20, 2012 Declaration of Jack D, Grimes, Ph.D., submitted by Third Party Requester Apple in Inter Partes Reexamination Nos. 95/000,634 and 95/000,635 ( Grimes-1 ) April 2, 2012 Declaration of Jack D, Grimes, Ph.D., submitted by Third Party Requester Apple in Inter Partes Reexamination No. 95/000,634 and 95/000,635 ( Grimes-2 ) - vi -

8 EXHIBIT DESCRIPTION PX 1023 PX 1024 PX 1025 PX 1026 PX 1027 Declaration Of Craig Johnson In Support Of Plaintiff SoftView LLC's Opening Claim Construction Brief (including Exhibits 1-14) filed September 21, 2012 in the case of SoftView LLC v. Apple Inc., and AT&T Mobility LLC, Case No LPS in the United States District court for the District of Delaware Declaration Of Glenn Reinman In Support Of Plaintiff SoftView LLC's Opening Claim Construction Brief (including Exhibits A-D) filed September 21, 2012 in the case of SoftView LLC v. Apple Inc., and AT&T Mobility LLC, Case No LPS in the United States District court for the District of Delaware Plaintiff SoftView LLC's Technology Tutorial filed September 21, 2012 in the case of SoftView LLC v. Apple Inc., and AT&T Mobility LLC, Case No LPS in the United States District court for the District of Delaware Defendants Opening Claim Construction Brief (including Exhibits A- J) filed September 21, 2012 in the case of SoftView LLC v. Apple Inc., and AT&T Mobility LLC, Case No LPS in the United States District court for the District of Delaware Softview LLC's Responses To Kyocera Corp. And Kyocera Wireless Corp.'S First Set Of Interrogatories (NO. 1) with Exhibits, filed July 23, 2012 in the case of SoftView LLC v. Apple Inc., and AT&T Mobility LLC, Case No LPS in the United States District court for the District of Delaware PX 1028 Declaration of Hidekazu Takahashi, dated September 25, PX 1029 Declaration of Manabu Toda, dated September 28, PX 1030 PX 1031 PX 1032 PX 1033 PX 1034 September 13, 2013 Declaration of Jack D, Grimes, Ph.D. Opera Browser Documentation Submitted by SoftView during prosecution of the 926 Patent. Excerpts from the Deposition Transcript of Benjamin B. Bederson, dated February 13, 2012, in the Co-Pending Litigation, SoftView LLC v. Apple Inc., et al., Case No LPS. First iphone commercial (Video File) There s An App For That, iphone commercial (Video File) - vii -

9 EXHIBIT PX 1035 PX 1036 PX 1037 PX 1038 PX 1039 PX 1040 PX 1041 PX 1042 PX 1043 PX 1044 PX 1045 DESCRIPTION Watch every Apple iphone ad from the first Hello, available at: (accessed August 29, 2013) Apple's iphone TV Ads: The Complete Campaign - All 89 TBWA spots so far, beginning with the first teaser by Tim Nudd, available at: (accessed August 29, 2013) U.S. Patent No. 6,211,856 to Choi U.S. Patent No. 6,466,203 to Van Ee U.S. Patent No. 6,133,916 to Bukszar U.S. Patent No. 6,724,403 to Santoro Publication, WEST: A Web Browser for Small Terminals Descy, Don E., All Aboard the Internet, TechTrends, January/February 1997, pp Patent Claim Chart (Claims 1 and 317) - (Zaurus / Pad++) 926 Patent Claim Chart (Claim 30) - (Zaurus / Pad++) U.S. Patent No. 6,985,136 to Enmei PX 1046 Rossmann, Alain, The AT&T EO Travel Guide, (1993) PX 1047 PX 1048 PX 1049 PX 1050 Excerpts from the Deposition Transcript of Gary Rohrabaugh, dated February 16, 2013, in the Co-Pending Litigation, SoftView LLC v. Apple Inc., et al., Case No LPS. Excerpts from the Deposition Transcript of Robert Alan Burnett, dated May 3, 2013, in the Co-Pending Litigation, SoftView LLC v. Apple Inc., et al., Case No LPS. September 17, 2013 Declaration of Richard J. Lutz, Ph.D. Prosecution History for U.S. Patent No. 7,461,353 ( the 353 Patent ) PX 1051 U.S. Patent No. 7,461,353 - viii -

10 I. RESPONSE TO SOFTVIEW STATEMENT OF MATERIAL FACTS SoftView s primary argument that Pad++ does not scale a Web page while preserving the original page layout, functionality and design (the preserve limitation ) contradicts the inventors explicit definition of that limitation. PX 1050 at The broadest reasonable construction of this limitation must at least include the inventors definition, because (1) the limitation is not found in the specification, (2) the limitation was added and specifically defined during prosecution, and (3) the definition is consistent with the understanding of the skilled person. PX 1030, Reply Declaration of Jack D. Grimes Ph.D. ( Grimes Rep. Decl. ) at 36. In the words of the inventors, preserving the [overall layout, functionality, and] design of the content... refers to preserving the design as interpreted by the browser while at different zoom levels and panned views... rather than in comparison to how it is rendered by a particular desktop browser See PX 1050 at 233 ( 353 patent prosecution history). SoftView s arguments in paragraphs A and B (Opp. 2-3) fail under the correct construction of the preserve limitation. The combinations of (1) Zaurus, Pad++ and SVF and (2) Zaurus, Hara, Tsutsumitake and SVG under consideration in this proceeding teach all of the elements of the claimed inventions including preserving the original page layout, functionality and design. SoftView s arguments in paragraphs C E are misplaced because Pad++ specifically - 1 -

11 motivates combining Pad++ with a PDA such as the Zaurus. One skilled in the art would have combined the teachings of Pad++ with the teachings of Zaurus and SVF. Grimes Rep. Decl ; The skilled person would also have combined Zaurus with Hara and/or Tsutsumitake and/or SVG. Grimes Rep. Decl Finally, paragraph F of SoftView s statement (Opp. at 3-4) is meritless, because tapping to zoom on a touchscreen, as recited in the claims, would have been obvious to one skilled in the art who was familiar with clicking on an image with a mouse. Grimes Rep. Decl II. PAD++ AND ZAURUS TEACH PRESERV[] THE ORIGINAL PAGE LAYOUT UNDER THE BROADEST REASONABLE CONSTRUCTION The inventors added the preserve limitation by amendment in response to an office action in the prosecution of the 353 patent rejecting claims that had been added by a series of preliminary amendments following the introduction of the iphone. 1 E.g., Preliminary Amendment, PX 1050 at 661 (claim 71); see also id. at 773 ( ), 731 (6-6-07), 699 ( ), and 660 ( ). Those claims recited substantially retains the original page layout... The Examiner rejected the claims under section 112 because the word substantially rendered them indefinite. PX 1050 at 208 (remarks section referring to Examiner s action of 1 SoftView s principal owner (Opp. at 4) and his patent attorney became aware of the iphone in January 2007 (PX 1047, 290:13-18; PX 1048, 46:24-47:4)

12 10/23/2007); at 547 (Office Action of 10/23/2007). In response, on May 20, 2008, the inventors amended the claims as follows: substantially retains preserves the original page layout, functionality and attributes design of the content defined by its original format when scaled and rendered. PX 1050 at In a section spanning over 18 pages, the inventors explained the technology. PX 1050 at They represented that a Web browser might not retrieve all content associated with a Web page because the browser might not be capable of supporting content such as Flash, Active-X or TIFF images. Id. at Using several examples (id. at ), they pointed out that Internet Explorer displayed the same Web page differently from Netscape and Firefox, and 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. Id. at (emphasis added). In addition, they represented that each browser determines how a hyperlink is activated, and that hyperlinks may not work on a zoomed-out view. Id. at 232. Based on their explanation of the technology, the inventors defined the scope of the preserve limitation as follows: 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 - 3 -

13 identically to how it is rendered by a particular desktop browser that may interpret the page design differently.... [T]he page layout (to be preserved) is determined as interpreted by the browser, rather than as a comparison to how it is rendered by a particular desktop browser. Id. at 233 (emphasis added). They also represented that all the claims with variations of the preserve... original page layout should be construed to have the same scope. PX 1050 at In the prosecution of the 926 patent, the preserve limitation was added to the claims by Examiner s amendment. PX 1002 at In response, SoftView gave substantially the same explanation of the preserve limitation as set forth above. PX 1002 at When a claim limitation not found in the specification is added during prosecution and is defined by the inventors in the same amendment that added it, the broadest reasonable construction should include the inventors definition. This is especially true where, as here, there is evidence that the inventors definition is consistent with the understanding of a person skilled in the art. In re American Academy of Science-Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004) (broadest reasonable construction must be consistent with the one that those skilled in the art would reach. ); cf., Saffran v. Johnson& Johnson, 712 F.3d 549, 559 (Fed. Cir. 2013) (inventor s unqualified assertion during prosecution provided an affirmative definition for the disputed term ); E.g. Ormco Corp. v. Align Tech., - 4 -

14 Inc., 498 F.3d 1307, 1314 (Fed. Cir. 2007) (prosecution of familial patents). In this case, the prosecution history definition is consistent with how a person skilled in the art would understand the limitation. Grimes Rep. Decl III. CLAIMS 30,31, 40, 41, 43, 52, 55, 59, 72 AND 75 ARE OBVIOUS BASED ON A COMBINATION OF ZAURUS, PAD++ AND SVF A. Zaurus, Pad++ And SVF Teach All Of The Claim Limitations Under the correct construction, there can be no question that both Pad++ and Zaurus preserves the original page layout, functionality, and design. For example, section 3 of the Pad++ Tour describes an HTML browser that is capable of preserving a page layout when zooming. Compare, PX 1006 at 287 (full web page) with PX 1006 at 289 (zoomed web page). Grimes Rep. Decl Whether the Pad++ software downloaded by SoftView actually supported all HTML code (Opp. at 22-25) is not a factor in the obviousness calculation because the claims do not require it. Further, Pad++ discloses that its browser was primitive but that you could imagine a much more advanced version. PX 1006 at 286. One skilled in the art seeking to develop a zoomable commercial browser consistent with the teachings of Pad++ would have been capable of either adding code to other, existing browser software to create a vector-based zoomable browser, or by adding additional code for Pad++ to support the remainder of HTML tags. Grimes Rep. Decl

15 SoftView s other arguments also are divorced from the claims at issue. SoftView s unattractive fonts argument (Opp. at 25-27) is misplaced in view of the prosecution history, where Mr. Rohrabaugh explained that fonts are a function of the browser and underlying operating system, PX 1050 at , an explanation recognized by those skilled in the art. Grimes Rep. Decl The fact that Pad++ supports semantic zooming (Opp. at 26-29) is irrelevant because Pad++ also supports pure geometric zooming (PX1006 at 106) and further in view of SoftView s prosecution history explanation that hyperlinks might not work on a zoomed-out page. PX 1050 at 232. So, too, is the missing hyperlink argument concerning Fig. 5 of Bederson-5. SoftView s reliance on Dr. Grimes deposition testimony to support its argument is misplaced because this issue was not covered by Dr. Grimes prior declarations. Grimes Rep. Decl Thus, SoftView s cross-examination on this issue was improper under 37 C.F.R (d)(5)(D)(ii). There can be no dispute that Zaurus teaches a zoomable web browser. Grimes Rep. Decl Under SoftView s prosecution definition, the Zaurus web browser preserves the original page layout, contrary to SoftView s arguments at pages Grimes Rep. Decl It does not matter that the Zaurus web browser did not support certain plug-ins, because, as SoftView explained during prosecution, its alleged invention includes browsers that do not support plug-ins. PX 1050 at See Grimes Rep. Decl

16 B. The Skilled Person Would Combine Pad++, Zaurus And SVF SoftView s lack of motivation argument at pages fails as an initial matter because the claims are not limited to small screen devices. This Board properly recognized, based on statements in the 926 specification, that relevant references which teach zooming techniques are not limited to those which deal with small screens. Decision at Further, Pad++ indisputably suggests that it can be applied to PDAs. Grimes Rep. Decl Thus, there is no merit to SoftView s argument that Pad++ teaches away from implementation on a small screen (Opp. at 35-38). See generally, Grimes Rep. Decl Further, claims 52, 55, 59, 72 and 75 cover a mobile device, which could include, for example, a wireless notebook computer. Grimes Rep. Decl. 69. Only claims 30, 31, 40, 41, and 43 are limited to a mobile phone, and that limitation is in the preamble (and thus not limiting). But even a mobile phone does not necessarily have a small screen under the broadest reasonable construction; consider an ipad or a notebook computer capable of a voice over IP call over the Internet. Grimes Rep. Decl. 70. The skilled person would not have been deterred from applying the teachings of Pad++ to Zaurus. SoftView s argument is wrong on both the law and the facts when it assumes that the skilled person would have been deterred because Pad++ software was not optimized for Zaurus. [I]t is not necessary that the inventions of the references be physically combinable to render obvious the - 7 -

17 invention under review. In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). It is the teachings that are to be combined, not the specific devices disclosed in the prior art references. See also KSR Int l Co. v. Teleflex, Inc., 550 U.S. 398, (2007) (rejecting the argument that attaching a sensor to the prior art Asano pedal would not work because the Asano pedal was bulky, complex and expensive). The skilled person was capable of applying the teachings of Pad++ and developing a zoomable browser. Grimes Rep. Decl As this Board properly found, the motivation to combine the zooming features of Pad++ with Zaurus provided in part by Pad++, which mentions that it may be applied to PDAs. Decision at 23. Grimes Rep. Decl The disclosure in Pad++ about the usefulness of zooming techniques that might apply to PDAs, plus the zoomable browser in Zaurus provide ample motivation to combine these references. Grimes Rep. Decl SoftView s myopic focus on the Pad++ software ignores the fact that its own specification discloses no software for translating HTML into vector-based zoomable graphics. Because a patent need not teach, and preferably omits, what is well known in the art, the failure to disclose software in the specification must mean that the skilled person could have written code to apply the teachings of Pad++ to Zaurus. In re Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991); see also In re Antor Media Corp., 689 F.3d 1282, 1290 (Fed. Cir. 2012) ( undue experimentation - 8 -

18 is determined based on both the nature of the invention and the state of the art ). SoftView s arguments to the effect that Pad++ code written in Tcl/Tk script language would have run slowly on Zaurus is misplaced. "[P]roof of efficacy is not required. Impax Labs. Inc. v. Aventis Pharm.Inc., 468 F.3d 1366, 1383 (Fed. Cir. 2006). Neither is proof of utility. Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1326 (Fed. Cir. 2005); see also Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989) (applying teachings of reference even though device was inoperative); Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991). If the reference teaches every claimed element of the article, secondary evidence, such as other patents or publications, can be cited to show public possession of the method of making and/or using. In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985). Dr. Grimes Reply Declaration establishes that one skilled in the art would have been able, given the teachings of Zaurus and Pad++, to write software for a full-featured zoomable browser that used vector-based graphics. Grimes Rep. Decl Contrary to SoftView s arguments at 38-40, Zaurus does not teach away. Zaurus was cited for disclosing the hardware elements (which SoftView does not dispute) and for having a zoomable browser. Dr. Grimes opines that one skilled in 2 Petitioners will move to strike the Forstall deposition, taken in the litigation, because they were not permitted under the protective order to attend. Ex

19 the art would have been motivated to combine Pad++ and Zaurus. Grimes Rep. Decl IV. CLAIMS 30,31, 40, 41, 43, 52, 55, 59, 72 AND 75 ARE OBVIOUS BASED ON A COMBINATION OF ZAURUS, HARA, TSUSTUMITAKE AND SVG Hara discloses resizing images on a web page. Grimes Rep. Decl As discussed above, Zaurus discloses zooming on the entire web page. Id. at 136. One skilled in the art would have recognized that Hara disclosed additional functionality applicable to Zaurus. Id. at ; Tsutsumitake discloses conversion from HTML into a scalable vector representation. Id. at Specifically, one of skill in the art would have recognized that Zaurus combined with Hara or Tsutsumitake, as well as the SVG teachings of scalable vector content, renders obvious the claims at issue. Id. One skilled in the art would have combined those references because Zaurus, Hara, Tsutsumitake and SVG relate to zooming and panning, and the motivation to improve viewing of HTML content on a PDA existed in the prior art. Id. The combination would have yielded predictable results. Id. Contrary to SoftView s arguments at 40-44, Pad++ discloses tapping on individual elements to fill a page. Grimes Rep. Decl One skilled in the art would have been able to substitute tapping a touch screen for clicking with a mouse. Id Contrary to SoftView s arguments at pages 40-44, tap to zoom was disclosed in Pad++ and was also well known in the art, as evidenced by

20 several other prior art references. Id. Further, Zaurus teaches zooming on a user selectable portion of the web page. Id A skilled person would have been motivated to combine Pad++ with Zaurus. Id. at Moreover, at the time of the alleged invention, zooming on a part of a web page was well known in the art. Id. at V. SOFTVIEW S PROFFERED SECONDARY CONSIDERATIONS DO NOT OVERCOME THE PRIMA FACIE CASE OF OBVIOUSNESS There is no evidence that SoftView, itself, ever sold a commercially successful product covered by the claims of the 353 or 926 patents. Instead, SoftView incorrectly relies on the commercial success of the Apple iphone and to a lesser extent Android products, both of which are accused of infringement in the underlying litigation. Opp. at 51; Reinman Decl To establish commercial success, the patentee must show a nexus between the proven success and the claimed invention. E.g., ArcelorMittal France v. AK Steel Corp., 700 F.3d 1314, 1326 (Fed. Cir. 2012); Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, (Fed. Cir. 2006). In Microsoft Corp. v. Proxyconn, Inc. IPR , paper 32 at 4 (PTAB, March 8, 2013) (Giannetti, APJ), the Board recited the wellestablished standard: Where, as here, the patent is said to cover a feature or component of a product, the patent owner has the additional burden of showing that the commercial success derives from the feature. Tokai Corp. v. Easton Enters., 632 F.3d 1358, 1369 (Fed. Cir. 2011).. Further,

21 especially where the feature is found in the product of another, there must be proof that it falls within the claims. E.g., Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (1988) (infringer s counsel stated at trial that the patent had been copied); Hughes Tool Co. v. Dresser Industries, Inc., 816 F.2d 1549, 1552 (Fed. Cir. 1987) (patented O-ring seal copied by defendant). The only cases we have found in which an accused product was a basis for commercial success of the invention are those in which the accused product had been found to infringe by a court. See, e.g., Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1579, 1582 (Fed. Cir. 1997). SoftView cites no authority to support the proposition that commercial success can be attributed to an accused product, absent a finding of infringement. Here, there has been no finding that the iphone or any Android device infringes any claim of the 353 or 926 patents. The unverified claim charts SoftView submitted in this proceeding are nothing more than attorney argument. Where the purported secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention. Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed.Cir.2011) ( If commercial success is due to an element in the prior art, no nexus exists. ); Ormco Corp., 463 F.3d at 1312 ( [I]f the feature that creates the commercial success was known in the prior art, the success is not pertinent. )

22 There is ample evidence that the commercial success of the iphone and Android devices was not due to the Internet browser, but to other features, such as advertising or superior workmanship. See Grimes Rep. Decl ; PX 1049, Declaration of Richard J. Lutz Ph.D. ( Lutz Decl. ) at See e.g., Winner Intern. Royalty Corp. v. Wang, 202 F.3d 1340, 1351 (Fed. Cir. 2000). Commercial success due only to superior business acumen, or effective advertising, is of no relevance to a determination of whether the invention would have been obvious under 35 U.S.C McNeil-PPC, Inc. v. L. Perrigo Co., 337 F.3d 1362, 1370 (Fed. Cir. 2003) (observing that McNeil s massive marketing and advertising campaign in connection with the launch of the... product [obscured] any nexus that might have existed between the merits of the product and its commercial success ). The success of the iphone (and Android devices) was due to engineering excellence and brilliant marketing, not to the panning and zooming ability of its Web browser. Lutz Decl In 2007, Apple was ranked as the 33 rd most valuable global brand. Lutz Decl. 45. Apple leveraged the popularity of its highly successful ipod and itunes business, the ability to sync the iphone in a manner familiar to itunes users (id. at 46-54), and ran a multi-million dollar ad campaign to promote the iphone. Id. at 55. As a result, Apple generated hype in the form of over 11,000 print articles before the iphone was even introduced. Id. at 57. The iphone was distributed

23 both at Apple stores and AT&T outlets, giving it a massive distribution network. Id. at Web browsing was one of many features of the new iphone, and by far not the most important. Of Steve Jobs 80 minute presentation of the iphone, only a few minutes were spent discussing the Web browser. Id. at 25. The remainder of the presentation discussed the large screen user interface, multi-touch navigation on the phone in general, its ability to sync with itunes, its high resolution display, the 2 megapixel camera, ambient light sensor, accelerometer, album artwork, viewing movies and TV shows, the features of the phone, including visual voic , photo management, and texting, widgets, and push . Id. at Mr. Jobs presentation also prominently featured Google Maps. However, SoftView distinguished map viewers, such as Google Maps, from its invention. See Grimes Rep. Decl Thus, the success of the iphone was due to a substantial number of factors other than the Web browser. Those features are also found in the accused Android products. Id. at The Federal Circuit recently found a nexus between the commercial success of the iphone and Apple s patented multifunction touchscreen, a feature not covered by the claims in this case. Apple Inc. v. International Trade Comm n, F.3d, 2013 WL (Fed. Cir. 2013), slip op. at *

24 If commercial success is due to an element in the prior art, no nexus exists. Tokai Corp, 632 F.3d at ; Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 1580 (Fed.Cir.1983) (holding claimed invention obvious where patent holder failed to show that such commercial success... was due to anything disclosed in the patent in suit which was not readily available in the prior art ). SoftView s entire commercial success argument focuses on the zoomable browser. This argument fails because zoomable browsers were in the prior art. Grimes Rep. Decl , In this regard, the claim charts that SoftView provided in support of its argument (EX ) also read on the Zaurus and Pad++ prior art references. Id. at 182. VI. CONCLUSION For the reasons set forth above, and in the Petition, the declarations and exhibits filed by Petitioner in this proceeding, the claims at issue of the 926 patent should be cancelled. Respectfully submitted, KATTEN MUCHIN ROSENMAN LLP Date: September 23, 2013 BY: /Richard P. Bauer/ Richard P. Bauer (Reg. No. 31,588)

25 KATTEN MUCHIN ROSENMAN LLP 2900 K Street NW - Suite 200 Washington, DC Richard.Bauer@kattenlaw.com Eric C. Cohen (Reg. No. 27,429) Michael S. Dorfman (Reg. No. 46,669) Michael S. Tomsa (Reg. No. 64,264) KATTEN MUCHIN ROSENMAN LLP 525 W. Monroe Street Chicago, IL Eric.Cohen@kattenlaw.com Michael.Dorfman@kattenlaw.com Michael.Tomsa@kattenlaw.com Attorneys For Petitioner Kyocera Corp. John C. Alemanni (Reg. No. 47,384) KILPATRICK TOWNSEND & STOCKTON, LLP 1001 West Fourth Street Winston-Salem, NC JAlemanni@KilpatrickTownsend.com David A. Reed (Reg. No. 61,226) KILPATRICK TOWNSEND & STOCKTON, LLP Suite 2800, 1100 Peachtree Street NE Atlanta, GA, DAReed@KilpatrickTownsend.com Attorneys For Petitioner Motorola Mobility LLC

26 CERTIFICATE OF SERVICE Pursuant to 37 CFR 42.6, I hereby certify that on Monday, September 23, 2013, a true copy of the accompanying PETITIONERS CONSOLIDATED REPLY TO PATENT OWNER S RESPONSE was served by electronic mail, as agreed to by the parties, upon the following: Babak Redjaian bredjaian@irell.com Ben Yorks byorks@irell.com Morgan Chu mchu@irell.com Alan J. Heinrich aheinrich@irell.com IRELL & MANELLA LLP 840 Newport Center Drive, Suite 400 Newport Beach, CA Respectfully submitted, /Richard P. Bauer/ Katten Muchin Rosenman LLP Richard P. Bauer (Reg. No. 31,588)