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

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD KYOCERA CORPORATION MOTOROLA MOBILITY LLC Petitioners v. SOFTVIEW LLC Patent Owner CASE IPR CASE IPR Patent 7,831,926. PATENT OWNER'S CLAIM CONSTRUCTION BRIEF

2 Table of Exhibits Exhibit Description SoftView Ex Declaration of Morgan Chu in Support of SoftView's Unopposed Motions for Pro Hac Vice Admission in IPR and IPR SoftView Ex Declaration of Alan J. Heinrich in Support of SoftView's Unopposed Motions for Pro Hac Vice Admission in IPR and IPR SoftView Ex Declaration of Glenn Reinman, Ph.D., dated July 19, 2013 SoftView Ex html.cpp file distributed with version of Pad++ SoftView Ex Deposition Transcript of Jack Grimes in IPR & IPR , dated June 25, 2013 SoftView Ex Jazz: An Extensible 2D+Zooming Graphics Toolkit in Java, HCIL Technical Report No (May 1999); retrieved from SoftView Ex Karin Petersen, Tcl/Tk for a Personal Digital Assistant, In USENIX Symposium on Very High Level Languages, 1994, retrieved from SoftView Ex Wikipedia, User:Synthetik/Scratch/Sharp Zaurus, retrieved from aurus SoftView Ex (English translation) SoftView Ex SoftSource Press Release, Company Wins Venture OnStage Competition at CIO Perspectives Conference, May 8, 2001 SoftView Ex Steven Levy, At Last, the iphone, A First Look at the Most Eagerly Anticipated Gizmo Ever, Newsweek, June 26, 2007 SoftView Ex Jason Snell, Apple iphone, Groundbreaking Wireless Communicator Really Lives up to the Hype, Macworld, July 7, 2007, retrievable from SoftView Ex Walter S. Mossberg and Katherine Boehret, Testing Out the iphone, The Wall Street Journal, June 27, 2007 SoftView Ex Deposition Transcript of Scott Forstall, dated May 3, 2013in the Co-Pending Litigation, SoftView LLC v. Apple Inc., et al., Case No LPS i - Case IPR

3 SoftView Ex SoftView Ex Sean Michael Kerner, Interop: Mobile Browsing Grows Up, InternetNews.com, September 19, 2008, retrievable from MacWorld San Francisco 2007 Keynote Address by Steve Jobs Introducing the iphone, dated January 9, 2007 (Partial Video at 0:26:53 0:27:15), retrievable at (item 24) SoftView Ex Devin Coldewey, Apple Announces 100 Million iphones, 15 Million ipads Sold, Tech Crunch, March 2, 2011, retrievable from million-iphones-15-million-ipads-sold/ SoftView Ex AT&T: 95% of iphone Owners Surf the Mobile Web, Fierce Mobile Content, February 14, 2008, retrievable from SoftView Ex iphone User Guide, for iphone OS 3.1 Software, 2009 SoftView Ex SoftView Ex SoftView Ex SoftView Ex SoftView Ex SoftView Ex SoftView Ex Ben Worthen, iphones Take Over the World, The Wall Street Journal, December 4, 2007 Jenna Wortham, Customers Angered as iphones Overload AT&T, The New York Times, September 2, 2009, retrievable at 03att.html?_r=0 Ben Worthen, iphones Take Over the World, The Wall Street Journal, December 4, 2007 Nokia Press Release, Nokia Unveils Worlds First All-In-One Communicator For the Americas, September 19, 1996, retrievable from Apple Press Release, Apple Outlines Newton Wireless Comm Solutions, January 30, 1995, retrievable at nnounce/wkzog6h6bnw Jason Ankeny, The New Wave of Mobile Web surfing, FierceMobileContent, March 18, 2008, retrievable at Nate Mook, iphone and the Death of the Mobile Web, ii - Case IPR

4 BetaNews, July 6, 2007, retrievable at SoftView Ex Benjamin B. Bederson, The promise of zoomable user interfaces, Behaviour & Information Technology, Vol. 30, No. 6,853,855, November-December 2011 SoftView Ex WC3, HTML 4.01 Specification, December 24, 1999, retrievable at SoftView Ex Renesas Electronics, SH7708 Series, SH7708, SH7708S, SH7708R Hardware Manual, Rev , Renesas SuperH RISC engine (Hardware manual for SH-3 HD S (TF-60) chip of Zaurus MI-610) SoftView Ex MacWorld San Francisco 2007 Keynote Address by Steve Jobs Introducing the iphone, dated January 9, 2007 (Partial Video at 1:06:22 1:06:42), retrievable at (item 24) SoftView Ex Wikipedia Page, Scott Forstall, retrievable at SoftView Ex MacWorld San Francisco 2007 Keynote Address by Steve Jobs Introducing the iphone, dated January 9, 2007 (Partial Video at 0:28:00 0:28:20), retrievable at (item 24) SoftView Ex MacWorld San Francisco 2007 Keynote Address by Steve Jobs Introducing the iphone, dated January 9, 2007 (Partial Video at 1:08:40 1:09:00), retrievable at (item 24) SoftView Ex SoftView Ex SoftView Ex SoftView Ex Chart for Claim 30 (Android) Motorola Atrix 4G Page, retrievable at 4G/72112,en_US,pd.html?cgid=mobile-phones Motorola ATRIX 2 Dual Core 4G Android Smartphone, retrievable at EN/Consumer-Product-and-Services/Mobile- Phones/ci.MOTOROLA-ATRIX-2-US-EN.alt#anchor Motorola Atrix 4G Specifications, retrievable at 4G/72112,en_US,pd.html?selectedTab=tab-2&cgid=mobile iii - Case IPR

5 SoftView Ex SoftView Ex SoftView Ex SoftView Ex SoftView Ex SoftView Ex SoftView Ex SoftView Ex SoftView Ex SoftView Ex SoftView Ex SoftView Ex SoftView Ex phones#tab About Android, retrievable at Android 4.0 for Users, retrievable at highlights.html Navigating Across Webpages, Android User's Manual SV Jason Snell, The iphone: Complete Review, Macworld, July 3, 2007, retrievable at David Pogue, The iphone Matches Most of Its Hype, The New York Times, June 27, 2007, retrievable at ogue.html?pagewanted=all&_r=1& Android, ipad, BlackBerry and Windows tablet group test, Computer Active, August 13, 2011 Luis Collazo, Motorola DROID Review, Smartphone Nation, December 22, 2009, retrievable at Andrew Berg, Report: Android, Apple Top Mobile Web Page Requests, WirelessWeek, May 27, 2009 Jon Gold, Apple ios battles back in market share struggle, Network World, July 8, 2013, retrievable at ios-marketshare-apple-android html Michael Lev-Ram, RIM: What the hell happened?, Fortune, May 30, 2012, retrievable at Motorola ATRIX 2 Dual Core 4G Android Smartphone, retrievable at ATRIX-2/73912,en_US,pd.html?selectedTab=tab- 2&cgid=mobile-phones Motorola ATRIX 4G Dual Core Android Smartphone, retrievable at 4G/72112,en_US,pd.html?selectedTab=tab-4&cgid=mobilephones#tab Order on Claim Construction, dated September 4, 2013in the iv - Case IPR

6 Co-Pending Litigation, SoftView LLC v. Apple Inc., et al., Case No LPS SoftView Ex Memorandum Opinion Accompanying the Order on Claim Construction, dated September 4, 2013in the Co-Pending Litigation, SoftView LLC v. Apple Inc., et al., Case No LPS SoftView Ex SoftView's Agreed Claim Construction re "original", dated January 18, 2013 in the Co-Pending Litigation, SoftView LLC v. Apple Inc., et al., Case No LPS SoftView Ex Defendants' Agreed Claim Construction re "original", dated January 18, 2013 in the Co-Pending Litigation, SoftView LLC v. Apple Inc., et al., Case No LPS SoftView Ex Memorandum Order Staying Litigation, dated September 4, 2013in the Co-Pending Litigation, SoftView LLC v. Apple Inc., et al., Case No LPS SoftView Ex Provisional Application Serial No. 60/211,019 to which the '926 patent claims priority and which is incorporated by reference in the '926 patent, col. 1:6-27 SoftView Ex Excerpts of Defendants' Claim Construction Presentation, dated January 6, 2013, in the Co-Pending Litigation, SoftView LLC v. Apple Inc., et al., Case No LPS v - Case IPR

7 I. INTRODUCTION The Board has asked the parties to submit briefing regarding the claim term "preserving the original layout, functionality, and design." The key dispute between the parties is what, exactly, must be preserved. The intrinsic record makes clear that the "original layout, functionality, and design" that must be preserved refers to the web page "as designed for a desktop computer." 1 Thus, the claims require preserving, at multiple zoom levels and panned views, the original page layout, functionality, and design of the web page as viewed on a conventional desktop browser. In the district court, Petitioners agreed. PX This tracks the invention: bringing a desktop browsing experience to handheld devices. Here, however, Petitioners have belatedly advanced (in violation of 37 C.F.R (b)) a contrary construction that the claims merely require preserving the layout, functionality and design as initially rendered by the device, regardless of how much the device has altered the original layout, functionality and design of the web page as viewed on a conventional desktop browser. Petitioners' construction is unreasonably broad and reads out the term "original." II. "ORIGINAL LAYOUT, FUNCTIONALITY, AND DESIGN" REFERS TO A CONVENTIONAL DESKTOP BROWSER As stated in the Brief Summary of the Invention, the purpose of the patents is to enable "users of... handheld devices with small screens... to view and 1 Ex , Ex , Ex Case IPR

8 interact with Web pages in a manner independent of the screen resolution of such device's built-in or associated display, while maintaining the look and feel of browsing such pages with a conventional desktop browser." '353 patent, 2:50-56 (emphasis added). This technology enables "users to easily navigate to selected content and features of familiar Web pages," Id., at 2:33-34, instead of having to use web pages that are stripped of certain functionality, layout, and design, either by servers (e.g., WAP) or by a browser upon initial rendering (e.g., Pad++). Thus, "[c]ell phone users can see their favorite Internet Web sites in the same graphic layout they are use[d] to from their desktop computers." Ex The requirement of "maintaining the look and feel of browsing such pages with a conventional desktop browser" is captured by the limitation "preserving the original layout, functionality, and design" and variations thereof. In the district court, Petitioners agreed, stating that there is "[n]o dispute that 'original' refers to how the Web page was defined to be shown on a desktop browser." Ex This construction follows from the claim language itself. Exemplary claim 52 of the '926 patent recites: "request access to a Web page comprising HTMLbased Web content defining an original page layout, functionality, and design of content on the Web page." The claim then recites render and re-render the display at multiple zoom views "while preserving an original page layout, functionality, and design defined by the HTML-based Web content." Thus, the "original" layout, functionality and design refers to the layout, functionality and design as Case IPR

9 viewed on a conventional desktop browser, which is precisely what the previouslyrecited "HTML-based Web content" defines. Petitioners made this exact argument in the district court, submitting that "'original' must refer to layout as viewed on a conventional desktop browser, which is how the HTML is defined at the time of request i.e., before it is interpreted by the browser in question." PX to -29 (emphasis added). Petitioners went on to argue that "SoftView's prosecution statements also establish that 'original' refers to 'desktop browser.'" Ex The parties thus agreed that "original" means "as designed for a desktop computer." That construction is correct. III. PETITIONERS' CONSTRUCTION IS UNREASONABLY BROAD A. Petitioners Seek To Strike the Word "Original" From the Claims Petitioners now argue that how a web page appears on a desktop browser is irrelevant. Under Petitioners' new construction, a mobile device browser could strip out any (or even all) of the original layout, functionality, and design of a web page when it renders that web page on a mobile device, and yet still somehow meet the "preserving..." limitation. This is contrary to the intrinsic record, as explained above. The goal of the patents is to maintain the look and feel of a web page designed for a desktop computer when rendered on a small screen device. E.g., '353, 2:22-56, 3:31-32, 7:28-32, 12:21-47, 18:47-19:3; Abs, Figs 4A-F, 7A-B, 8A. Petitioners' construction is not a reasonable construction because it is contrary to the teachings of the patent and reads out the term "original" from the claims Case IPR

10 B. Petitioners' Construction Is Inconsistent With Prosecution History Petitioners' claim construction is based on a single passage from the prosecution history (PX (IPR )) that is taken out of context. Petitioners would have the Board believe that the cited prosecution history defines "preserving the original layout, functionality, and design" without reference to a conventional desktop browser. Reply, at 1 (Paper No. 28). Petitioners are wrong. In context, this portion of the prosecution history is merely noting that there may be some minor differences between commercially available browsers. PX ("Even when rendering the same Web page source content..., conventional Web browsers may not render the (non-scaled) Web page identically."). In other words, Safari may not render a web page exactly the same as Explorer. The applicant then notes that this is of no moment for the claims: [O]ne of ordinary skill in the browser art would not expect Web pages rendered using a browser in accordance with the teachings disclosed in the present application... to render pages as exact scaled replicas of the same page rendered by another browser, such as Internet Explorer or Safari, for example... While there are implementations that may produce this exact result, such results are not required by the scope of the terminology "preserving the overall layout... of the content." (PX ) The passage cited by Petitioners from the prosecution history does not define the "preserving " term and fails to overcome the clear teachings of the specification Case IPR

11 Indeed, the Federal Circuit has cautioned that the prosecution history "often lacks the clarity of the specification and thus is less useful for claim construction purposes." Philips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005). The balance of the prosecution history supports Patent Owner's construction, as well. PX to -207 ("Inventor Gary Rohrabaugh demonstrated the SoftView browser's ability to scale and render web pages" on a Toshiba Pocket PC "while preserving the layout, functionality, and design of the Web pages in a manner similar to desktop browser "); PX ("[U]sers of various devices, from handheld devices with small screens... are enabled to view and interact with Web pages... while preserving the look and feel (i.e., functionality) of browsing such pages with a conventional desktop browser."); PX (Discussion of figures comparing NY Times homepage on desktop computer and mobile device). 2 Similarly, the Examiner also understood the invention to relate to hand-held devices that allow users "to view and interact with Web pages... while maintaining the look and feel of browsing such pages with a conventional desktop browser." PX ; see also PX (The claimed invention "display[s] HTML Web pages, designed for desktop computers, on a 'small-screen' device."). IV. CONCLUSION The Petitioners' new and untimely construction is contrary to the intrinsic record and should be rejected. 2 E.g., PX , , ; '926 FH: PX , Case IPR

12 Respectfully submitted, Dated: October 18, 2013 By: /Ben Yorks/ Ben Yorks IRELL & MANELLA LLP Ben Yorks, Esq. PTO Reg. No. 33,609 Babak Redjaian, Esq. PTO Reg. No. 42, Newport Center Drive, Suite 400 Newport Beach, CA Telephone: (949) Fax: (949) Attorneys for Patent Owner SoftView LLC Case IPR

13 CERTIFICATE OF SERVICE Pursuant to 37 C.F.R. 42.6, the undersigned certifies that on October 18, 2013, a copy of the foregoing document PATENT OWNER'S CLAIM CONSTRUCTION BRIEF was served by electronic mail, as agreed to by the parties, upon the following: Richard P. Bauer (richard.bauer@kattenlaw.com) Michael Tomsa (michael.tomsa@kattenlaw.com) Eric C. Cohen (eric.cohen@kattenlaw.com) Katten Muchin Rosenman LLP 2900 K Street NW Suite 200 Washington, DC (202) (tel) (202) (fax) Counsel for Kyocera Corporation. John C. Alemanni (jalemanni@kilpatricktownsend.com) Candice C. Decaire (CDecaire@kilpatricktownsend.com) David A. Reed (DaReed@kilpatricktownsend.com) KILPATRICK TOWNSEND & STOCKTON LLP 1001 West Fourth Street Winston-Salem, NC (336) (tel) (336) (fax) Counsel for Motorola Mobility LLC. /Babak Redjaian/ Case IPR