Kyocera PX 1052_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. SUPPLEMENTAL REPLY DECLARATION OF JACK D. GRIMES, PH.D. CASES: IPR2013-00004 / IPR2013-00007 CASES: IPR2013-00257 / IPR2013-00256 Patent Nos.: 7,831,926 / 7,461,353
Kyocera PX 1052_2 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In re Patent of: Rohrabaugh et al. U.S. Patent No.: 7,831,926 Issue Date: November 9, 2010 Serial No.: 11/738,486 Filing Date: April 21, 2007 Title: Scalable Display Of Internet Content On Mobile Devices Inter Partes Review Trial No.: IPR2013-00004 / IPR2013-00257 In re Patent of: Rohrabaugh et al. U.S. Patent No.: 7,461,353 Issue Date: December 2, 2008 Serial No.: 11/045,757 Filing Date: January 28, 2005 Title: Scalable Display Of Internet Content On Mobile Devices Inter Partes Review Trial No.: IPR2013-00007 / IPR2013-00256 SUPPLEMENTAL REPLY DECLARATION OF JACK D. GRIMES, PH.D. I, Jack D. Grimes, Ph.D., declare as follows: I. INTRODUCTION 1. My name is Jack D. Grimes and I reside at 5025 Wine Cellar Drive, Sparks, NV. I am an independent consultant. I have prepared this Declaration for consideration by the Patent Trial and Appeal Board ( PTAB ). I am over 18 years of age and I would otherwise be competent to testify as to the matters set forth herein if I am called upon to do so. 2. I have written this Declaration at the request of Kyocera Corporation and Motorola Mobility (hereinafter Petitioners ). This Declaration supplements - 1 -
Kyocera PX 1052_3 my September 13, 2013 Declaration that was submitted as exhibit Kyocera PX1031 ( Grimes Reply Declaration, or Reply Declaration ) in the above-referenced PTAB proceedings, and is further rebuttal to the Declaration of Dr. Glenn Reinman, dated July 19, 2013, submitted as Exhibit-2003 ( Reinman Declaration ). 3. I have reviewed Section II.A of the Patent Owner s Notices of Objections to Evidence Pursuant to 37 C.F.R. 42.64 ( SoftView s Objections ) that were submitted on September 30, 2013, in each of the above-referenced PTAB proceedings. 4. I understand that the Patent Owner objects to my September 13, 2013 Declaration ( Reply Declaration ) as purportedly rais[ing] new theories and invalidity arguments and as includ[ing] whole sections that are neither responsive to arguments made by way of the Patent Owner s Response, nor even cited or referenced by Petitioner s Reply. The Patent Owner further suggests that I could have characterized the cited art in an earlier submission (e.g., as part of the Petition or an opening declaration). 5. I disagree with the Patent Owner s objections. As I stated in my Reply Declaration, in forming my opinions, I relied on my knowledge and experience in the field. I responded to the Declaration of Dr. Reinman ( Reinman Declaration ) and to a statement in the Patent Owner s Opposition characterizing how the prior art would be understood by a person of ordinary skill in the art. - 2 -
Kyocera PX 1052_4 II. SUPPLEMENT TO PARAGRAPHS 25-55 OF MY REPLY DECLARATION A. Discussion of Prior Art 6. At Section II.A.1 of SoftView s Objections, Patent Owner alleges that I belatedly advance new claim construction positions (Reply Declaration, VI, 25-55). My opinion in those paragraphs is in direct response to arguments presented by Patent Owner through the Opposition and/or the Reinman Declaration. Those paragraphs also reflect my opinion that a person skilled in the art would have understood that Pad++ and Zaurus preserve the original page layout given the known manner in which different browsers processed HTML web pages. 7. In 25-55 of my Reply Declaration, I explained that a person of ordinary skill in the art would understand the phrase preserv[] the original page layout... as that term was defined by the inventors in the prosecution history. See PX 1030 at 27. 8. For the purposes of this Declaration, I will explain why a person skilled in the art at the time of the invention would have understood that Pad++ and Zaurus preserve the original page layout when zoomed and panned, apart from claim construction. 9. As is accurately reflected in the May 20, 2008 prosecution history, and as I discussed in my Reply Declaration at 28, one skilled in the art would have understood that HTML code has no layout until it is processed by a rendering - 3 -
Kyocera PX 1052_5 engine. [See 926 Patent, PX 1001 at Col. 17:16-30, which explains that the page layout is defined by the bounding boxes, which are defined during pre-rendering (block 154)]. This is explained in detail in the prosecution history of the 353 patent. See PX 1002 at 218-236 ( 353 Petition); PX 1050 at 218-236). I understand that the prosecution history of the 353 patent has been filed as PX 1002 in IPR2013-00007, and as PX 1050 in IPR 2013-00004. For purposes of this Supplemental Declaration, when I refer to PX 1002, I am referring to the prosecution history of the 353 patent. 10. I also explained in 34 of my Reply Declaration that it was well known in the art, circa 2000, that the popular browsers of the time (Netscape Navigator, etc.) would render the same HTML-based pages differently. In fact, Netscape Navigator for DOS and for the Macintosh used different default text fonts, Times Roman and Helvetica, respectively. This fact is recited in the May 20, 2008 amendment in which SoftView amended its claims to add the preserve the original page layout limitation. PX 1002 at 218-236. As I pointed out in 36 of my Reply Declaration, the prosecution history defines this phrase in view of the state of the art as it existed at the time of the invention. In the amendment, the inventors provided examples of how different web browsers would not render the same HTML-based web pages identically. PX 1002 at 218-236. Their definition was as follows: - 4 -
Kyocera PX 1052_6 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 identically to how it is rendered by a particular desktop browser that may interpret the page design differently. PX 1002 at 233. The inventors also concluded that one 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 (e.g., the SoftView browser) to render pages as exact scaled replicas of the same page rendered by another browser, such as Internet Explorer or Safari, for example. PX 1002 at 234. 11. In my earlier Declaration of January 20, 2012, I articulated reasons why Pad++ preserved the original page layout when panned and zoomed. PX 1021. In 30-70, I explained in detail why the Pad++ references teach vector-based graphics. I also explained that Pad++ teaches a zoomable web browser where hyperlinks preserve their functionality. PX 1021 at 71-82. In response to a declaration of Dr. Reinman that was filed in the reexaminations, I stated, as detailed above, the Pad++ references disclose zooming and panning while maintaining page layout. This was further explained in 112-114, referring - 5 -
Kyocera PX 1052_7 specifically to the Brief Tour reference, submitted in this proceeding as PX 1006 at 287-291, and discussed in 75-82 of PX 1021. 12. A person of ordinary skill in the art at the time of the invention would have understood that when vector-graphics are scaled or zoomed, the layout is preserved by operation of mathematics, except, for example, certain fonts that do not exactly scale or certain plug-ins that may not scale. Because Pad++ disclosed that it was based upon vector graphics, one skilled in the art would have understood that the layout of the web page would have necessarily been preserved when scaled, in addition to the specific examples shown in the Brief Tour. PX 1030 at 56 and Reinman Declaration, PX 2003 at 14-40. 13. In 21-23 of his Declaration, PX 2003, Dr. Reinman states his opinion that the Bederson References (referred to herein as Pad++) do not teach preserving the original page layout, functionality and design. In support of his opinion, he states in 23 that Section 3 of the Brief Tour only shows how the web page looks like after it has been rendered by Pad++. The Brief Tour does not show the original web page before being rendered by Pad++ to determine whether the original page layout, functionality and design is preserved. (Emphasis added.) Dr. Reinman does not explain anywhere in his Declaration how he would show what the original web page looks like before being rendered by Pad++. As I explained - 6 -
Kyocera PX 1052_8 in my Reply Declaration at 24-49, 55, the way one would show the layout of a web page is by using a browser to render it. 14. Dr. Reinman s statements in 23 are contradicted by the inventors explanation in PX 1002 at 218-236, which Dr. Reinman does not discuss. B. Application of District Court s Construction of Preserve and Original to Pad++ In Rebuttal to Dr. Reinman 15. As noted above, Dr. Reinman s Declaration states none of the Bederson References show the original web page before being rendered by Pad++ to determine whether the original page layout, functionality and design was preserved. PX 2003 at 23. I understand that Patent Owner filed as Exhibits 2071 and 2072 the District Court s claim construction Order and Memorandum Opinion regarding claim construction. The Order sets forth the definition of two words in the phrase, preserves the original page layout.... DX 2071 at 2, 4-5. The District Court defined preserv(s)/preserved/ preserving/ preservation as having a plain and ordinary meaning and does not need to be construed. DX 2071 at 4-5. The District Court defined original as designed for a desktop computer. DX 2071 at 2. The District Court s Opinion reflects that it adopted SoftView s proposed construction of preserved. Exhibit 2072 at 19. I understand that in the District Court litigation, the parties stipulated to the meaning of original. The District Court s definitions of the words preserv[] and original do not define the phrase in the context of other language in the claim. Thus, in my opinion, the - 7 -
Kyocera PX 1052_9 District Court s definitions do not support Dr. Reinman s testimony in 23 of his Declaration. However, if the District Court s definitions were applied to the entire phrase, it would appear to be even broader than the definition provided by the inventors in the prosecution history. PX 1002 at 233 (IPR2013-00007 - prosecution history of 353 patent); PX1050 at 233 (IPR2013-00004 prosecution history of 353 patent). 16. With respect to the definition of original as designed for a desktop computer, the primitive browser disclosed in the Brief Tour of Pad++ was a desktop browser. Thus, the web page displayed in Brief Tour, PX 1006 at 287-291, was displayed on the Pad++ desktop browser. There is nothing in the Pad++ Brief Tour article to indicate that the web page shown was not designed for a desktop computer. Thus, one skilled in the art would have interpreted the web page shown in PX 1006 at 287-291 as being designed for a desktop computer. For these reasons, one skilled in the art, even applying the definitions of preserv[] and original adopted by the District Court, would conclude that the Pad++ browser depicted in the Brief Tour (PX 1006 at 287-291) preserves the original page layout. 17. In my opinion, one of ordinary skill in the art at the time of the invention, applying the District Court s interpretation of preserv[] and original, would conclude that the Pad++ articles disclose preserv[] the original page layout. In my opinion, the District Court s construction of preserv[] and - 8 -
Kyocera PX 1052_10 original, as applied to the phrase preserv[] the original page layout, functionality and design renders that phrase at least as broad as the definition of that phrase provided by the applicant in the prosecution history. Thus, the District Court s definitions do not support Dr. Reinman s testimony in 23 of his Declaration. 18. In addition, applying the District Court s construction, the context in which the preserv[] the original page layout phrase appears in the claims also demonstrates why Pad++ discloses this limitation. 19. Dr. Reinman sets forth phrases from the claims in 20 of his Declaration that are found in the independent claims at issue in the 926 patent. Claims 30 and 52 of the 926 patent recite preserv[]... original page layout, functionality and designed, either when scaled and rendered (claim 30), or as interpreted by the rendering engine while zooming (claim 52). Thus, both claims 30 and 52 of the 926 patent recite the preserv[]... limitation in the context of scaling or zooming, either when scaled and rendered, or as interpreted by a rendering engine. In this context, a person skilled in the art would conclude that what is being preserved is the layout of the web page after it has been processed by the browser s rendering engine. 20. Dr. Reinman sets forth phrases from the claims in 20 of his Declaration that are found in the independent claims at issue in the 353 patent. Claims 1 and 118 recite the preserv[] the original page layout... phrase defined - 9 -
Kyocera PX 1052_11 by its original format when scaled and rendered. Similarly, claims 36, 149, and 252 recite re-render the display... to enable the Web page to be browsed at various zoom levels while preserving the original page layout.... In this context, a person skilled in the art would conclude that what is being preserved is the layout of the web page after it has been processed by the browser s rendering engine. 21. All of the claims thus recite the preserv[] limitation in the context of the Web page being scaled (or zoomed, which means the same thing) and rendered, which would be interpreted by one skilled in the art as meaning after the web page is rendered by the browser. Although Dr. Reinman recited the relevant claim language in 20 of his Declaration, he made no attempt to apply it in 23, and his conclusions in 23 are contrary to the language of the claims. 22. As a result, under the District Court s construction, the Pad++ Brief Tour shows that the layout is preserved when the web page is scaled (or zoomed) and rendered, as set forth in my earlier declaration, PX 1021, 30-82, 112-114. III. ZAURUS COMBINATIONS 23. At Section II.A.2 of SoftView s Objections, Patent Owner submits that I proposed new theories of obviousness based on combinations of references with the Zaurus references (PX 1004). This is incorrect. As discussed below, each of my opinions responds to, and rebuts, arguments presented by Patent Owner through the Opposition and/or the Reinman Declaration. - 10 -
Kyocera PX 1052_12 24. First, my opinions regarding the disclosures of the Zaurus references (Grimes Reply Declaration, VI, 99-109) were submitted in response to Dr. Reinman s erroneous characterization of the Zaurus references. See Reinman Declaration at IV, 41-53. 25. Second, my opinions regarding the obviousness of combinations of the Zaurus references with the Bederson references (Grimes Reply Declaration, V, VII, XIII, 60, 110-117, 182) were submitted to rebut Dr. Reinman s proposition that the Bederson references teach away from implementation of Pad++ on a mobile device, such as the Sharp Zaurus device, and that one of ordinary skill in the art would not have combined the Bederson and Zaurus references. See Reinman Declaration at V, 52-72. 26. Third, my opinions regarding the combinations of the Zaurus references with the Bederson and/or Hara references disclosing the claimed zooming features (Grimes Reply Declaration, VIII.A-B, 118-141) were submitted to rebut Dr. Reinman s proposition that the Bederson, Hara, and Zaurus references do not disclose Zooming On A Column, Image, Or Paragraph. See Reinman Declaration at VI, 73-80 (discussing Zaurus and the Bederson references) and VII, 81-93 (discussing Hara). 27. Fourth, my opinions regarding the obviousness of combinations of the Zaurus references with the Tsutsumitake reference (Grimes Reply Declaration, - 11 -
Kyocera PX 1052_13 X.B, 173) were submitted to rebut Dr. Reinman s proposition that Tsutsumitake was not relevant to the teaching of the 926 and 353 patents. See Reinman Declaration at VIII, 94-96. 28. Fifth, my opinions regarding the obviousness of combinations of the Zaurus references with the Bederson and SVF references (Grimes Reply Declaration, XI, 174-176) were submitted to rebut Dr. Reinman s proposition that: (1) SVF does not disclose, teach, or suggest preserving the original page layout, functionality, and design of the web content; (2) SVF does not cure the deficiencies of the proposal to combine the Bederson and Zaurus references; and (3) the combination of the Zaurus, Bederson, and SVF references would not have enabled one of ordinary skill in the art to make and use the claimed inventions. See Reinman Declaration at V(B), 71. 29. Finally, my opinions regarding the obviousness of combinations of the Zaurus references with the SVG, Hara and Tsutsumitake references (Grimes Reply Declaration, XII, 177-178) were submitted to rebut Dr. Reinman s proposition that SVG does not disclose, teach, or suggest preserving the original page layout, functionality, and design of the web content and that SVG does not cure the alleged deficiencies of the Zaurus, Hara, and Tsutsumitake references. See Reinman Declaration at VIII, 94-96. - 12 -
Kyocera PX 1052_14 IV. STATE OF THE ART 30. Patent Owner also submits that my State of the Art Section ( 142-165) purportedly cites new prior art references and new invalidity theories. This is also incorrect. Nowhere do I suggest that the Board consider additional prior art combinations or that the combinations before the Board be altered in any fashion. 31. Rather, my State of the Art Section is intended to be indicative of what would have actually been known or understood by one of ordinary skill in the art. It is intended to rebut Dr. Reinman s proposition that the Bederson, Hara and Zaurus references do not disclose zoom on a column, image, or paragraph, or tapping to zoom. See Reinman Declaration at VI, 73-80 (discussing Zaurus & the Bederson references) and VII, 81-93 (discussing Hara). That is, the alleged new prior art references are simply exemplary of the state of the art at the time of the invention and provide context to the references under consideration by the Board in this proceeding. They are not intended to be combined with the cited references as part of any new combinations. V. ALLEGEDLY NEW AND BELATED EVIDENCE 32. Towards the end of Section II.A.2 of SoftView s Objections, Patent Owner identifies examples in my Declaration that allegedly raise new issues and belatedly present evidence. Again, this is incorrect. As discussed below, each of my - 13 -
Kyocera PX 1052_15 opinions responds to, and rebuts, arguments presented by Patent Owner through the Opposition and/or the Reinman Declaration. 33. First, my opinions regarding the general discussion of the 926 and 353 patents disclosures ( 16-21) were submitted to rebut and clarify Dr. Reinman s characterization of the 926 and 353 patents. See Reinman Declaration at II, 8-13. 34. Second, my opinions regarding the relevance of the Bederson references to the problem of building a zooming web browser for one of ordinary skill in the art ( 59) were submitted to rebut Dr. Reinman s proposition that the Bederson references teach away from being combined with the Zaurus device. See Reinman Declaration at V, 56-72. 35. Third, my opinions regarding the Opera browser ( 85-88) were submitted to rebut Dr. Reinman s proposition that one of skill in the art would not have combined the cited references with the Bederson references because the HTML functionality supported by Pad++ was very limited. See Reinman Declaration at III(C), 25-37. 36. Finally, my opinions regarding the tap-to-zoom features in Pad++ ( 120-122, 130-135) were submitted to rebut Dr. Reinman s proposition that the Bederson references and Zaurus did not discloses zooming on a column, image, or paragraph. See Reinman Declaration at VI, 73-80. - 14 -
VI. ALLEGEDLY IRRELEVANT TESTIMONY 37. At Section 11.A.3 of SoftView's Objections, Patent Owner submits that I purportedly advance irrelevant testimony that is neither responsive to Patent Owner's arguments nor cited i.1;1 Petitioners' Reply. This is also incorrect. In support I of their allegation, Patent Owner identifies~~ 1-23, 56-64, 91-98, 170-173, and 179-181 of my declaration as being non-responsive and not cited in Petitioners' Reply. Those paragraphs provide background information and discussion that formed at least part of the basis for my opinions. VII. CONCLUSION 38. I hereby declare that statements made herein of my own knowledge are true and that all statements made on information and belief are believed to be true. -f. Should further information become available to me as this matter proceeds, I may revise my opinions accordingly as necessary. I declare under penalty of perjury that the foregoing Declaration is true and correct. Dated: October 14, 2013-15 - Kyocera PX 1052_16