Lupercal LLC v. CitiBank, N.A.

Western District of Texas, txwd-6:2019-cv-00201

Exhibit PC07

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4 EXHIBIT PC07 4 UNITED STATES PATENT AND TRADEMARK OFFICE ____________________________________________________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ GOOGLE INC. Petitioner v. SUMMIT 6 LLC Patent Owner ____________________ Case: IPR2015-00807 Patent No. 8,612,515 Title: System, Method and Apparatus for Media Submission PATENT OWNER'S RESPONSE UNDER 37 C.F.R. § 42.120 4 IPR2015-00807 U.S. Pat. No. 8,612,515 TABLE OF CONTENTS I. Introduction......................................................................................................1 II. Procedural History ...........................................................................................2 A. Patenting of the Inventions ....................................................................2 B. Litigation of the Patents ........................................................................5 III. Level of Ordinary Skill in the Art ...................................................................6 IV. Claim Construction ..........................................................................................7 V. Petitioner Has Not Shown a Reasonable Likelihood of Prevailing ...............8 A. Overview Of Asserted Prior Art............................................................8 1. Creamer .......................................................................................8 2. Aihara ........................................................................................10 3. Mayle.........................................................................................10 4. Narayen .....................................................................................11 B. Petitioner Has Not Shown a Reason To Combine Asserted References. ..........................................................................................12 1. There Is No Motivation to Combine Creamer with Aihara. .....12 2. There is No Motivation to Combine Mayle with Narayen. ......19 C. Petitioner Has Not Shown That Claims 1, 2, 6, 10, 11, 18–20, 23, 26, 28–30, 38, and 39 are obvious in view of Creamer and Aihara..........25 1. Claims 1 and 23 are Not Obvious in View of Creamer and Aihara. .......................................................................................25 a. Neither Creamer nor Aihara nor their combination teaches or suggests "receiving an identification of one or image files, video files or audio files to associate with said account." (claims 1 and 23).....................................25 i 4 IPR2015-00807 U.S. Pat. No. 8,612,515 b. Neither Creamer nor Aihara nor their combination teaches or suggests "receiving, by said client device, a confirmation of an intent to associate. . . files with said account." (claims 1 and 23) ...........................................27 c. Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing said identified. . . files using pre-processing parameters." (claims 1 and 23) ........................................................................................29 d. Neither Creamer nor Aihara nor their combination teaches or suggests "preprocessing. . . in a manner specified by a distributing party for transfer of content." (claims 1 and 23) ............................................................31 2. Claims 20 and 39 Are Not Obvious in View of Creamer and Aihara. .......................................................................................33 a. Neither Creamer nor Aihara nor their combination teaches or suggests "receipt of an identification of one or image files, video files or audio files to associate with said account." (claims 20 and 39)..................................33 b. Neither Creamer nor Aihara nor their combination teaches or suggests pre-processing "said identified. . . files using pre-processing parameters." (claims 20 and 39) ...................................................................................33 c. Neither Creamer nor Aihara nor their combination teaches or suggests "preprocessing. . . in a manner specified by a distributing party." (claims 20 and 39) ..34 d. Neither Creamer nor Aihara nor their combination teaches or suggests "a pre-processor that pre-processes said identified. . . files in preparation for transmission." (claims 20 and 39) ..........................................................34 3. Dependent Claims 2, 6, 10, 11, 18, 19, 26, 28–30, and 38 Are Not Obvious Over Creamer and Aihara. ..................................34 ii 4 IPR2015-00807 U.S. Pat. No. 8,612,515 D. Petitioner Has Not Shown That Claims 1, 2, 6, 10, 11, 18–20, 23, 26, 28–30, 38, and 39 are obvious in view of Mayle and Narayen. .........35 1. Claims 1 and 23 are Not Obvious in View of Mayle and Narayen. ....................................................................................35 a. Neither Mayle nor Narayen nor their combination teaches or suggests "receiving an identification of one or image files, video files or audio files to associate with said account." (claims 1 and 23) ............................................35 b. Neither Mayle nor Narayen nor their combination teaches or suggests "pre-processing said identified. . . files using pre-processing parameters. . . enabling said client device to pre-process said identified. . . files." (claims 1 and 23) ...................................................................................36 c. Neither Mayle nor Narayen nor their combination teaches or suggests "pre-processing parameters received from a remote server." (claims 1 and 23)..................................39 d. Neither Mayle nor Narayen teaches or suggests "preprocessing. . . in a manner specified by a distributing party for transfer of content." (claims 1 and 23) ...........41 e. Neither Mayle nor Narayen teaches or suggests "transmitting said pre-processed. . . files." (claims 1 and 23) ...................................................................................42 2. Claims 20 and 39 are Not Rendered Obvious In View of Mayle and Narayen. .............................................................................43 a. Neither Mayle nor Narayen nor their combination teaches or suggests "receipt of an identification of one or image files, video files or audio files to associate with said account." (claims 20 and 39) ..........................................43 iii 4 IPR2015-00807 U.S. Pat. No. 8,612,515 b. Neither Mayle nor Narayen nor their combination teaches or suggests pre-processing "pre-processing said identified. . . files using pre-processing parameters. . . enabling said client device to pre-process said identified. . . files." (claims 20 and 39) ..........................................................43 c. Neither Mayle nor Narayen nor their combination teaches or suggests pre-processing "preprocessing. . . in a manner specified by a distributing party." (claims 20 and 39) ...................................................................................43 d. Neither Mayle nor Narayen nor their combination teaches or suggests "a pre-processor that pre-processes said identified. . . files in preparation for transmission." (claims 20 and 39) ..........................................................43 3. Dependent Claims 2, 6, 10, 11, 18, 19, 26, 28–30, and 38 Are Not Obvious Over Mayle and Narayen. ...................................44 E. The Objective Secondary Factors Confirm that the Challenged Claims are Not Obvious...................................................................................44 1. Prepare & Post and Rimfire Solved a Long-Felt but Unresolved Need ..........................................................................................47 2. Commercial Success and Licensing .........................................51 a. Substantial Evidence of Commercial Success and Licensing Supports a Finding of Non-Obviousness. ......52 b. The Commercial Success is Attributable to the Technology and Inventions Disclosed in Summit 6's Patented Technology. .....................................................55 3. Relevant Industries Praise Rimfire and the Prepare & Post Tools..........................................................................................58 VI. Conclusion .....................................................................................................60 iv 4 IPR2015-00807 U.S. Pat. No. 8,612,515 EXHIBIT LIST Exhibit 2001 [PROTECTIVE ORDER MATERIAL] RIM–Summit 6 License and Settlement Agreement (executed October 17, 2012). Exhibit 2002 [PROTECTIVE ORDER MATERIAL] Facebook–Summit 6 License and Settlement Agreement (February 8, 2013). Exhibit 2003 Jury Charge and Verdict Form, Summit 6 LLC v. Research in Motion Corp. et al., Civil Action No. 3:11-cv-00367-O (N.D.Tex., April 5, 2013). Exhibit 2004 Excerpts of Trial Testimony of Dr. Mark Jones, Summit 6 LLC v. Research in Motion Corp. et al., Civil Action No. 3:11-cv-00367-O, N.D.Tex. (April 4, 2013). Exhibit 2005 Summit6-1876—Correspondence, T. Anderson to H. Latham of Moore Data Management Services (September 15, 1998). Exhibit 2006 Summit6-4346—Correspondence, T. Anderson to J. Graff of RealSelect, Inc., Proposal to integrate Rimfire system with Realtor.com (April 26, 1999). Exhibit 2007 Summit6-1606—Press Release, "New Prepare and Post Technology from PictureWorks Technology, Inc. Revolutionizes Use of Photos in Internet Marketing of Real Estate," (November 7, 1998). Exhibit 2008 Summit6-1962—Press Release, "Moore Data Management Services and PictureWorks Technology, Inc., Announce Partnership to Revolutionize Use of Real Estate Photos on the Internet," (Business Wire, November 6, 1998). Exhibit 2009 Excerpts of Trial Testimony of Lisa Wood, Summit 6 LLC v. Research in Motion Corp. et al., Civil Action No. 3:11-cv- 00367-O, N.D.Tex. (March 29, 2013). Exhibit 2010 Rimfire Functional Specification Version 1.0 Core Feature Set, revision 4 (April 12, 1999). Exhibit 2011 Summit6-4341—Press Release, "PictureWorks Technology's PictureBay Solves #1 Frustration of eBay Members, Adding Pictures to Auctions," (April 12, 1999). v 4 IPR2015-00807 U.S. Pat. No. 8,612,515 Exhibit 2012 Summit6-2415—pbay Marketing Plan (PictureWorks Technology, Inc., March 24, 1999). Exhibit 2013 Summit6-5246—Press Release "PictureWorks Technology's Auction Photo Service, Picturebay, Serves Over Two Million Images to eBay, Amazon.com and Auction Universe," (August 3, 1999). Exhibit 2014 White Paper, "Rimfire: The End-to-End Imaging Solution for Content Capture and Delivery," (Internet Pictures Corporation, 2000). Exhibit 2015 Market Study, "Image Servers - Early Adopter Case Studies," (Tony Henning and Future Image, Inc., 2001). Exhibit 2016 Summit6-5178—Excerpts of Woerner et al., "eBay for Dummies," (IDG Books Worldwide, Inc., 1999). Exhibit 2017 Press Release, "iPIX Acquisition Locks up Internet Picture Market," (March 9, 2000). Exhibit 2018 Press Release, "iPIX to Acquire PictureWorks Technology, Inc. to form End-to-End Internet Imaging Solutions Company," (PictureWorks Technology, Inc., March 8, 2000 [Exhibit 99.1 to 8-k filing]). Exhibit 2019 iPIX Presentation, "Enhancing Classified Advertising with Visual Data," (Don Strickland and Sarah Pate, October 2, 2003). Exhibit 2020 [PROTECTIVE ORDER MATERIAL] Confidential Information Memorandum, "AdMission" (Swiftsure Capital LLC, December 13, 2004). Exhibit 2021 [PROTECTIVE ORDER MATERIAL] Amendment No. 3 to the Visual Content Services Agreement Between eBay and iPIX (June 27, 2003). Exhibit 2022 Excerpts of Trial Testimony of Scott Lewis, Summit 6 LLC v. Research in Motion Corp. et al., Civil Action No. 3:11- cv-00367-O, N.D.Tex. (April 1, 2013). Exhibit 2023 Summit6-4732—Press Release, "PictureWorks Technology Streamlines Posting of Photos to Internet," (Business Wire, November 6, 1998). vi 4 IPR2015-00807 U.S. Pat. No. 8,612,515 Exhibit 2024 Summit6-4770—"Product Picks" at realtor.org web site (February 1, 1999). Exhibit 2025 PX-0937—Excerpts of Collier et al., "eBay for Dummies" (Hungry Minds, Inc., 2nd Edition 2001). Exhibit 2026 Press Release, "AdMission Corp. Granted Web-Based Media Submission Patent," (AdMission Corporation, June 2, 2005). Exhibit 2027 Press Release, "AdMission Directories Wins Gold at Yellow Pages Association Annual Industry Excellence Awards; Enhanced, Interactive Ads for IYP Recognized as Marketing Innovation," (Business Wire, March 14, 2005). Exhibit 2028 U.S. Patent No. 7,765,482, titled "Web-Based Media Submission Tool," to Wood et al. ("the '482 patent" or "'482 pat."). Exhibit 2029 U.S. Patent No. 8,612,515, titled "System, Method and Apparatus for Media Submission," to Wood et al. ("the '515 patent" or "'515 pat."). Exhibit 2030 Claim Construction Order, Summit 6 LLC v. HTC Corp. et al., Civil Action No. 7:14-cv-00014-O (N.D.Tex., May 21, 2015). Exhibit 2031 Excerpts of the prosecution file history of U.S. Patent No. 6,895,557. Exhibit 2032 U.S. Patent No. 6,035,323, titled "Methods and Apparatuses for Distributing a Collection of Digital Media Over a Network with Automatic Generation of Presentable Media," to Narayen et al. ("Narayen"). Exhibit 2033 [PROTECTIVE ORDER MATERIAL] Visual Content Services Agreement Between eBay and iPIX (April 19, 2000). Exhibit 2034 Summit6-1686—Overview of Enterprise Solutions, Executive Summary (PictureWorks, August 18, 1998). Exhibit 2035 Claim Construction Order, Summit 6 LLC v. Research in Motion Corp., et al., Civil Action No. 3:11-cv-00367-O (N.D.Tex., May 21, 2012). vii 4 IPR2015-00807 U.S. Pat. No. 8,612,515 Exhibit 2044 iPIX Presentation, "eBay Picture Services Stats." Exhibit 2045 eBay Presentation (Jeff Jordan, Senior Vice President, eBay U.S). Exhibit 2046 Press Release, "AdMission Wins Far-reaching Patent," (Kevin Newcomb, ClickZ News, June 3, 2005). Exhibit 2047 [PROTECTIVE ORDER MATERIAL] LG Electronics– Summit 6 License and Settlement Agreement (effective February 17, 2015). Exhibit 2048 Summit6-2436—Prepare & Post Product Overview (1997). Exhibit 2049 Summit6-1955—Correspondence, S. Lewis to G. Dillabough with attached proposal to eBay Inc. (October 20, 1998). Exhibit 2050 [PROTECTIVE ORDER MATERIAL] Declaration of Scott Lewis. Exhibit 2051 Declaration of Sarah Pate. Exhibit 2052 Correspondence, E-mail from J. Townsend, [ClassIntell ALERT] Far-reaching patent for AdMission; EBay to buy Shopping.com; Monster sells off YP ad-placement unit, Moving.com (June 1, 2005). Exhibit 2053 Classified Intelligence Report, "AdMission's patent: What's it mean?" (Jim Townsend, in Consulting Services to the Classified Advertising Industry, Vol. 6, No. 11, June 8, 2005). Exhibit 2054 eBay—How do I put pictures in my listings? Exhibit 2055 Mandate, Summit 6, LLC v. Samsung Electronics Co., LTd., et al., No. 13-1648, -1651 (Fed. Cir., September 21, 2015). Exhibit 2056 Affidavit of Christopher Butler attaching certified copies of Internet Archive HTML records (November 16, 2015). Exhibit 2057 Deposition Transcript of Paul Clark (November 18, 2015). Exhibit 2058 Declaration of Martin Kaliski. Exhibit 2059 U.S. Patent No. 6,895,557, titled "Web-Based Media Submission Tool," to IPIX Corporation. Exhibit 2060 Declaration of Reference Publication Date signed by Scott Lewis (January 1, 2009). viii 4 IPR2015-00807 U.S. Pat. No. 8,612,515 TABLE OF AUTHORITIES Cases Page(s) Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362 (Fed. Cir. 2012) .......................................................................... 55 Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120 (Fed. Cir. 2000) .......................................................................... 47 Geo. M. Martin Company v. Alliance Machine Systems International, LLC, 618 F.3d 1294 (Fed. Cir. 2010) .......................................................................... 58 In re Gershon, 372 F.2d 535 (CCPA 1967) ................................................................................ 47 InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327 (Fed. Cir. 2014) .......................................................................... 12 Intri-Plex Technologies, Inc. v. Saint-Gobain Performance Plastics Rencol Ltd., IPR2014-00309, Paper 83, 36 (March 23, 2014) ............................................... 54 KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) ............................................................................................ 12 Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) .......................................................................... 47 Omron Oilfield & Marine, Inc. v. MD/TOTCO, A Division of Varco, L.P., IPR2013-00265, Paper 11 .................................................................51, 54, 56, 57 Rambus Inc. v. Rea, 731 F.3d 1248 (Fed. Cir. 2013) ..............................................................46, 47, 51 Summit 6 LLC v. HTC Corp., et al., No. 7:14-cv-00014-O (N.D. Tex. Feb. 18, 2014) ................................................. 6 Summit 6, LLC v. Samsung Electronic Co., 802 F.3d 1283 (Fed. Cir. 2015) ........................................................................ 1, 6 ix 4 IPR2015-00807 U.S. Pat. No. 8,612,515 Tandus Flooring, Inc. v. Interface, Inc., IPR2013-00527, Paper 48 .............................................................................47, 52 Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340 (Fed. Cir. 2012) .......................................................................... 60 Statutes 35 U.S.C. § 102(e) ..................................................................................................... 8 35 U.S.C. § 103 ..............................................................................................8, 25, 35 x 4 IPR2015-00807 U.S. Pat. No. 8,612,515 I. INTRODUCTION Summit 6 LLC files this Patent Owner response to one of two petitions1 for inter partes review Google filed against two of Summit 6's related patents. Google's Petition should be denied because Google has failed to carry its burden to show that the challenged claims are unpatentable. As an intitial matter, much of the art relied upon by Google has been previously considered, both by the Patent Examiner during prosecution and a jury. In both cases, the validity of the claims were upheld over these same challenges. The latter resulted in a $15M verdict against Google's Android partner, Samsung, which was recently affirmed by the Federal Circuit. See Summit 6, LLC v. Samsung Electronic Co., 802 F.3d 1283 (Fed. Cir. 2015). This result is not surprising given the differences between the claimed inventions and the prior art, as discussed in detail below. To the extent there is any doubt, and there should be none, the objective evidence of overwhelming commercial success of and industry praise for Summit 6's patent invention, resolves it in Summit 6's favor. As a result, the Board should reject Petitioner's attack on Summit 6's inventions. 1 Google and HTC filed two petitions, the first seeking inter partes review of U.S. Pat. No. 7,765,482 (IPR2015-00806, Paper 1) and the second seeking inter partes review of U.S. Pat. No. 8,612,515 (IPR2015-00807, Paper 1). 1 4 IPR2015-00807 U.S. Pat. No. 8,612,515 As described in detail below, none of the prior art, either alone or in combination, renders the challenged claims unpatentable. All of the combinations relied upon by Google lack at least one material limitation of the challenged claims. As a result, Google if forced to rely solely on conclusory expert witness statements wholly devoid of any supporting evidence to try and bridge the gap in the references. Additionally, Summit 6 has come forward with considerable objective evidence of non-obviousness—including a strong nexus between that evidence and the claimed inventions—that demonstrates that Summit 6's inventions are valid in light of Petitioner's hindsight-based, prior art combinations. II. PROCEDURAL HISTORY A. Patenting of the Inventions The two Summit 6 patents in these proceedings—U.S. Pat. Nos. 7,765,482 ("the '482 Patent") and 8,612,515 ("the '515 Patent")—along with a third patent, No. 6,895,557 ("the '557 Patent"), stem from a common specification filed on July 21, 1999. (Ex. 1001.) The original application issued nearly six years later as the '557 Patent on May 17, 2005 (Ex. 2059.) On October 8, 2004, the inventors filed a continuation of the '557 patent application. That application also went through nearly six years of prosecution before ultimately issuing as the '482 Patent on July 27, 2010. (Ex. 2028.) Finally, on April 29, 2011, Summit 6 filed for a third patent, which issued on December 17, 2013 as the '515 Patent. (Ex. 1001.) 2 4 IPR2015-00807 U.S. Pat. No. 8,612,515 Before the Summit 6 inventions, uploading a digital image to a web site was cumbersome. "[T]ransferring a digital image may require first downloading a FTP program, then installing it, then running it and connecting to an FTP server by typing the server name in the connection dialog, then navigating to the proper subdirectory, selecting the files to be uploaded, making sure that the program is in binary transfer mode, then sending the files." ('482 pat., 1:26–32.) In addition, each publishing application had its own unique formatting requirements, requiring the user to know and be able to prepare the image in the appropriate technical format. For example, Summit 6's inventions solved these problems by allowing users with minimal technical understanding to select and submit "media objects" (which include, for example, images, videos, graphics, sound clips) to a third-party website. ('482 pat., 2:52–59.) The "Prepare and Post" tools described in Summit 6's patents are browser- side components that prepare and submit media objects from inside a standard browser to a web site or server. ('482 pat., 2:44–48.) Each of Summit 6's patents claim different embodiments of the "Prepare and Post Media Submission Tool." A diagram of an exemplary web page providing the media object acquisition functionality of the Prepare and Post tools is shown in Fig. 1 of the '482 patent (below). 3 4 IPR2015-00807 U.S. Pat. No. 8,612,515 In operation, a user selects a media object (e.g., a digital image) to upload either through a "drag and drop" functionality ('482 pat., 3:20– 26) or a file browse functionality ('482 pat., 3:31–34). A user can add identification information to the selected image such as an MLS listing number to the selected image in the context of a real estate application. ('482 pat., 3:60–62.) The user can then upload the selected images to another location using the sender functionality of the Prepare and Post tools. ('482 pat., 3:17–19.) A user of Summit 6's inventions need not understand (or even be aware of) the underlying technology of the image selection and upload process because the patented tools transparently ensure that any selected media object will be submitted in a form acceptable to the receiving location such as a web site. To do so, the Prepare and Post tools utilize configuration parameters. ('482 pat., 5:26–33.) Before transmitting images to the second location, the Prepare and Post tools preprocess images according to requirements of the second location, as specified by the parameters. ('482 pat., 5:1–4.) This client-side intelligence allows a user to "submit media objects to web pages 'as is' without making modifications to the media 4 4 IPR2015-00807 U.S. Pat. No. 8,612,515 objects prior to sending." ('482 pat., 2:65–67.) These tools provide a user to an intuitive platform for facilitating image selection and uploading. The Prepare and Post provide the web site partner access to media objects that "meet[] their imaging specifications every time without human intervention." ('482 pat., 3:4–6.) The client-side, transparent preprocessing automatically prepares the images to meet requirements for the second location allowing a user to submit images "as is." ('482 pat., 4:46–5:4.) The prior art failed to provide all of this useful functionality. B. Litigation of the Patents Summit 6 has a long history of licensing its technology to others, either voluntarily or, in the case of Samsung, involuntarily. On February 23, 2011, Summit 6 filed a Complaint against Samsung, RIM, Facebook, and others for infringing the '557 and '482 Patents. After much discovery, RIM took a license to the '557 and ʼ482 Patents on October 17, 2012. (Ex. 2001.) Shortly thereafter, Facebook took a license to the '557 and ʼ482 Patents. (Ex. 2002.) Recalcitrant, Samsung proceeded to trial for infringing the '482 patent and lost. (Ex. 2003.) The jury awarded Summit 6 $15 M for Samsung's infringement of claims 40, 44–46, and 49 of the '482 patent. (Ex. 2003, 46, 47.) The jury also found that Samsung did not prove that these claims were invalid over the prior art, including the Mattes reference. (Id.) The Federal Circuit affirmed the judgment on September 5 4 IPR2015-00807 U.S. Pat. No. 8,612,515 21, 2015, Summit 6, 802 F3d at 1299, and, on December 2, 2015, entered a mandate on the September 21, 2015 affirmance. (Ex. 2055.) On February 18, 2014, Summit 6 filed a Complaint against HTC Corporation and seven other co-defendants for infringing three of Summit 6's patents. See Summit 6 LLC v. HTC Corp., et al., No. 7:14-cv-00014-O (N.D. Tex. Feb. 18, 2014) (Dkt. 1). Summit 6 has since settled with the Defendants. (See, e.g. Ex. 2047 (License and Settlement Agreement with LG Electronics, Inc.)) Even though Google is not and has not been a defendant in any case, it persists on challenging Summit 6's patents. III. LEVEL OF ORDINARY SKILL IN THE ART Petitioner has proposed that a person of ordinary skill in the art ("POSITA") with respect to the teachings in the Summit 6 patents would be a person having (a) an undergraduate, graduate or doctoral degree in computer science (or similar field, e.g., electrical engineering), or (b) 3 to 5 years of industry experience in the general field of software engineering and web implementation. (Pet., 17–18.) Patent Owner acknowledges the similarity between the technical fields of computer science and electrical engineering, but requiring 3 to 5 years of industry experience in "web implementation" by July 1999 is unreasonable. It is unreasonable to suggest that a POSITA would have an advanced degree in computer science. Patent Owner proposes that the teachings in the '515 patent is directed to a person 6 4 IPR2015-00807 U.S. Pat. No. 8,612,515 with at least a Bachelor of Science degree in computer science or electrical engineering or with 2–3 years of experience in software engineering. (Ex. 2050 ("Kaliski Dec."), ¶15.) IV. CLAIM CONSTRUCTION The PTAB employs the "broadest reasonable interpretation" (BRI) in post- grant review proceedings. Petitioner proposes that "distributing" means "making available to at least one person other than the user." (Pet., 18–19.) Adoption of Petitioner's construction would improperly limit the distributing in claim 1 to a person, rather than more broadly including devices or entities such as a companies, websites, or service providers as recipients of distributing parties. To remove any confusion, Patent Owner proposes to construe the term "distributing" according to its plain and ordinary meaning, which is not limited to people. (Kaliski Dec., ¶312.) Patent Owner proposes that term "pre-processing" be construed consistent with the district court's construction of this term, namely "modifying the [media object data/digital content data/one or more image files, video files, or audio files], as opposed to data merely associated with the [media object/digital content/image files, vide files, audio files], at the client or local device prior to transmission to a remote device. (Ex. 2030, 12–13.) (Kaliski Dec., ¶313.) 7 4 IPR2015-00807 U.S. Pat. No. 8,612,515 V. PETITIONER HAS NOT SHOWN A REASONABLE LIKELIHOOD OF PREVAILING Petitioner contends that U.S. Pat. No. 6,930,709 ("Creamer") in combination with U.S. Pat. No. 6,223,190 ("Aihara") and also U.S. Pat. No. 6,018,774 ("Mayle") in combination with U.S. Pat. No. 6,035,323 ("Narayen") render obvious claims 1, 2, 6, 10, 11, 18–20, 23, 26, 29–30, 38, and 39. (Pet., 19–53.) As shown below, the challenged claims are not obvious under 35 U.S.C. § 103. A. Overview Of Asserted Prior Art 1. Creamer Creamer was filed on December 3, 1998 and issued on August 16, 2005. (Ex. 1003.) Creamer claims priority to provisional application No. 60/067,310, filed on December 4, 1997 ("Creamer '97"). Creamer is alleged to be prior art under 35 U.S.C. § 102(e). (Pet., 5.) For purposes of this proceeding, Patent Owner does not dispute this. Creamer discloses a digital camera that captures and automatically uploads each captured image to a website. The collected images are digitized, processed, and stored in general purpose memory in the camera. "Upon capturing the digital image, the camera initiates a connection to the Internet, connects to the destination user directory, and uploads the digital images" stored in general purpose memory to the destination user directory. (Creamer, Abstract.) The digital images are uploaded 8 4 IPR2015-00807 U.S. Pat. No. 8,612,515 from general-purpose memory either (i) immediately as they are created, or (ii) in a batch process executed at a later time. Fig. 3 (right) is a block diagram of the Creamer camera system. An image is captured by charge-coupled device ("CCD") 248, digitized, and stored in image memory 220, which is a "RAM capable of storing at least one high resolution color image." (Creamer, 11:16–17.) Compression engine 224, under microcontroller control, compresses an image stored in the image memory using JPEG compression. (Id., 11:28–31.) The microcontroller can also adjust the resolution of the raw image data in image memory before storage in general purpose memory. (Id., 11:33–43.) The processing of the raw image data in image memory creates a digital image that is stored in an image slot in general purpose memory. (See Fig. 8 (showing an image capture routine beginning with a triggering event / timer (S26) and ending with a JPEG compressed image in general purpose memory (S38)).) Creamer discloses a menu and parameter structure that is stored in NVRAM 242 or shadowed in GP memory 228. (Creamer, 12:48–50, Fig. 5.) The parameter 9 4 IPR2015-00807 U.S. Pat. No. 8,612,515 structure includes an IMAGE FILES menu/storage area that "allows the setting of flags, attributes, and parameters for a plurality of images to be captured, adjusted, and uploaded by the camera." (Id., 13:1–3.) Creamer discloses an embodiment having 9 image slots (FILE 1 through FILE 9) stored in general purpose memory and available for individual control. (Id., 12:48–50, 13:3–5.) The camera captures images via a release button 214e (Id., 6:56–58), or based on trigger settings or the expiration of a timer (Id., 13:48–56). 2. Aihara Aihara was filed April 13, 1998 and issued April 24, 2001. (Ex. 1005.) Aihara discloses creating an HTML file that includes digital images captured by a digital imaging device. (Aihara, Abstract.) Aihara also discusses a prior art digital camera system that included a "play mode" in which an LCD display screen "is used as playback screen for allowing the user to review previously captured images either individually or in arrays of for, nine, or sixteen images." (Id., 1:23–35.) 3. Mayle U.S. Patent No. 6,018,774 to Mayle ("Mayle") was filed July 3, 1997 and issued January 25, 2000. (Ex. 1006.) Mayle is directed to a "system for creation of an image display such as electronic postcard." (Mayle, Abstract.) Mayle describes a system to "allow the creation of [an] electronic postcard composed of the user's digital photograph," which "mimics aspects of a conventional postcard." (Id., 2:32– 10 4 IPR2015-00807 U.S. Pat. No. 8,612,515 37.) The heart of the system is a "server" that "processes the electronic image data" to create that electronic postcard. (Id., 2:52–54.) While this processing can take many different forms including "cropping, flipping," and so forth, this processing is performed "on the server." (Id., 2:64–3:2.) While the electronic postcard is being created, its textual data and graphical data "are stored in the file system of the server in a directory specifically created to store the temporary image files." (Id., 5:20–22). Once the postcard is completed and "sent," the associated data are stored in two other server databases. (Id., 5:32–37). 4. Narayen U.S. Patent No. 6,035,323 to Narayen et al. ("Narayen") was filed October 24, 1997 and issued March 7, 2000. (Ex. 2032.) Narayen describes photo-album- composition software installed on a client with corresponding software installed on a server. The user operating the client selects an album format and layout, and manually composes digital photos on each album page. (Narayen, 8:60–9:64, 9:21– 22 (Fig. 6B is the process for creating a "media container, such as a picture album.").) The album authoring software assembles the format data and picture data into a stored album. After completing the album, the client logs onto the server's dedicated database and uploads the data to the server. (Id., 10:36–39, Fig. 7 step 291.) When a user at a different client requests to view the album, the server software authors HTML pages depicting the album format, acquires from a server database 11 4 IPR2015-00807 U.S. Pat. No. 8,612,515 HTML viewable image copies, joins the images to the album pages, and serves the requesting client the completed page. (Narayen, 11:7–40, Fig. 9.) The Narayen reference was cited during prosecution of the '557 and '482 patents. B. Petitioner Has Not Shown a Reason To Combine Asserted References. Petitioner fails to meet its burden to show that a POSITA would make the proposed combinations of prior art references. Petitioner implicitly concedes that there is no explicit teaching or even suggestion to make the proposed combinations. Instead, Petitioner is left to argue that one would be "motivated" to make them. As discussed below, Petitioner relies almost exclusively on the unsupported statements of its expert to make its case. Such conclusory statements, made with the benefit of hindsight, lack the "rational underpinning" required to carry its burden. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); InTouch Techs., Inc. v. VGO Commc'ns., Inc., 751 F.3d 1327, 1348 (Fed. Cir. 2014) (Petitioner bears the burden of identifying "sufficient reasons or motivations to combine the asserted prior art references."). 1. There Is No Motivation to Combine Creamer with Aihara. Petitioner argues that a POSITA would be motivated to combine the teachings of Creamer with Aihara. (Pet., 11–14.) Petitioner contends that Creamer discloses a "base" system, whereas Aihara is the "comparable" system: "Aihara discloses a digital camera with a LCD screen that could be used with the Internet-integrated 12 4 IPR2015-00807 U.S. Pat. No. 8,612,515 digital camera described in Creamer." (Pet., 12.) Petitioner argues that combining Aihara's ability to display stored images and arrays of thumbnail preview images with Creamer would "achieve the predictable result of displaying an array of thumbnail preview images representing the digital images stored on the camera." (Pet., 12.) Not so. As confirmed by Petitioner's expert deposition testimony, a POSITA would not have been motivated to make that combination. Petitioner argues that Creamer and Aihara have three common features: (1) digital cameras that process and transmit captured images over a network connection, (2) processing images on a network-connected camera allows for faster transmission of images and facilitate image uploading, and (3) display screens that allow for viewing of captured images. (Pet., 12–13.) But Creamer describes a digital camera that processes raw image data into a stored digital image, not a camera that processes captured images. (See Fig. 8 (showing JPEG compression of raw image data as part of the image capture routine); Kaliski Dec. ¶47.) Moreover, Creamer discloses a display screen for viewing of images to be captured, not "viewing of captured images" as asserted by Petitioner in its obviousness theory. (Id., ¶¶42, 46; see also Pet., 12 citing Creamer, 26:43–57; 27:1–54 (noting that "display 218 shows a more accurate representation of the scene at which camera 1 is directed that the viewfindinder, and a more accurate preview of image that will be captured").) 13 4 IPR2015-00807 U.S. Pat. No. 8,612,515 Petitioner also argues that a POSITA would "look to Aihara's use of thumbnail images to improve the ability of a relatively small LCD display [of Creamer] to display multiple images," (Pet. at 13), and further that a POSITA "would be motivated to make this modification to provide the user with the benefit of faster and more accurate review of captured images." (Pet., 13.) This is incorrect. (Kaliski Dec., ¶43.) As discussed above, Creamer does not disclose reviewing captured images. Moreover, displaying multiple images on a display screen having a "relatively small LCD display" would not improve the ability of the screen to display images, nor improve the ability of a user to review such images faster and more accurately. Reviewing arrays of captured images would reduce the resolution of each image by an amount related to the number of images concurrently displayed, further degrading the quality of displayed images leading to a slower and less accurate review. (Kaliski Dec., ¶43.) The resulting image degration undermines, rather than supports, a motivation to combine these references. (Id.) Petitioner provides no support for its allegation that combining Creamer and Aihara would lead to faster and more accurate review of captured images. Immediately uploading images to an Internet-accessible device, as does Creamer, facilitates display of those images on a computer or other device with a larger screen having a higher resolution than the display screen of Creamer. (Kaliski Dec., ¶44.) Displaying images on a larger screen allows a user to more accurately and quickly 14 4 IPR2015-00807 U.S. Pat. No. 8,612,515 view the images. (Id.) Creamer discloses a "thumbnail grid 'collage' image in the thumbnail grid 'collage' slot [that] may be separately sent as any other image, which provides an easy way to preview or check all the images currently stored in the camera." (Creamer, 14:18–21.) Combining Creamer and Aihara as proposed by Petitioner would result in a very inefficient and cumbersome image review system. (Kaliski Dec., ¶44.) Accordingly, a POSITA would not be motivated to combine Creamer with Aihara. (Id.) At his deposition, Petitioner's expert confirmed that a POSITA would not conclude that the "combination [of Aihara and Creamer] would allow a user to review captured images faster and more accurately," contrary to his declaration. (Clark Dec., ¶31.) Petitioner's expert testified that the accurate display of an image is a subjective analysis based on the application that created the image and the view of the image: Q: How does one in the ordinary skill of the art know if the image is displayed accurately? A: It's a subjective analysis. Q: What does it mean to display an image accurately? A: It means to display it with sufficient clarity so that it is useful for the application. 15 4 IPR2015-00807 U.S. Pat. No. 8,612,515 Q: And whether or not an image is displayed accurately is a subjective analysis? A: I think so. Q: So it depends upon the user -- or the viewer, I mean? A: The application, the customer, those sorts of things. (Clark Dep., 36:8–21.) Reviewing a less accurate representation of an image would be more time consuming than reviewing a more accurate representation of an image. (Kaliski Dec., ¶45.) The accuracy of image representation is subjective, and based on a number of unknown factors, including (i) an unknown user, (ii) an unknown application, (iii) an unknown image, and (iv) an unknown display screen size. (Clark Dep., 36:8–21; Kaliski Dec., ¶45.) A POSITA would not have a reasonable expectation of success in combining Aihara and Creamer to "improve the ability of the screen to display multiple images" because the accuracy of the image display is subjective based on numerous unknown factors, and therefore, a POSITA would not have combined Aihara and Creamer. (Kaliski Dec. ¶45.) Furthermore, a POSITA would not be motivated to "writ[e] code executed by the microcontroller disclosed in Creamer to enable it to display arrays of preview images on the display screen like the processor and LCD screen disclosed in Aihara" (Pet., 13–14). (Kaliski Dec., ¶46.) The LCD display in Creamer can preview only a single image—the current scene. (Creamer, 29:50–53 ("the display 218 shows a 16 4 IPR2015-00807 U.S. Pat. No. 8,612,515 more accurate representation of the scene at which the camera 1 is directed than the viewfinder, and a more accurate preview of the image that will be captured").) Indeed a POSTA would understand that the Creamer LCD screen could preview only a single image since only one image scene exists (and can be displayed on the LCD screen of Creamer) at any point in time. (Id.) Creamer discloses a camera that is pre-programmed to perform certain functions, including capturing and transferring images from a camera to a web site. (Id., ¶47.) A POSITA would not have been motivated to modify Creamer to display multiple stored images in memory on the LCD screen. (Kaliski Dec., ¶48.) Petitioner's unsupported expert testimony notwithstanding, Creamer does not permit a user to review previously stored images on the viewfinder. (Creamer, 29:50–53 ("the display 218 shows a more accurate representation of the scene at which the camera 1 is directed than the viewfinder, and a more accurate preview of the image that will be captured").) The camera in Creamer captures and transmits images to a remote server immediately or in a future batch operation. (Creamer, 13:29–32 ("An UPLOAD variable group stores a parameter defining whether the file should be uploaded immediately (e.g., immediately after a release signal is acted upon and the image file stored), or at the next batch upload operation.").) Creamer uploads every captured image, and the LCD screen of Creamer previews images to be captured— Creamer does not review images that have been captured. (Kaliski Dec., ¶¶47, 48.) 17 4 IPR2015-00807 U.S. Pat. No. 8,612,515 Creamer captures images and updates configuration settings for future images, but does not allow a user to display any previously captured image. (Id., ¶48.) A POSITA would not be motivated to combine Creamer with Aihara. During his deposition, Petitioner's expert suggested that because the LCD display 218 of Fig. 3 in Creamer (or 218' of Fig. 17) is coupled to the image memory, the camera in Creamer reviews previously captured images. That is incorrect. (Kaliski Dec., ¶49.) Just because (1) LCD display is coupled to integrated microcontroller 206, (2) integrated microcontroller 206 is coupled to the parallel control / data bus, (3) parallel control / data bus is coupled to the compression engine, and (4) the compression engine is coupled to the image memory does not suggest that images captured and stored in GP memory can be displayed on an LCD display. (Id.) The LCD controller 206 of Creamer controls the "display functions of the display 218 connected thereto." (Creamer, 7:7–8.) "The display 218 is an inexpensive multi-line display capable of displaying character or text information and of responding to the control of the display controller 206." (Creamer, 7:49–52.) The LCD screen in the Fig. 17 embodiment can "show images formed on the image pickup 248" and shows "a more accurate preview of the image that will be captured." (Creamer, 29:47–53.) Creamer does not suggest to a POSITA that captured images could be accessed and displayed on the LCD screen without adversely affecting the picturing capture and uploading functionality of Creamer. (Kaliski Dec. ¶49.) 18 4 IPR2015-00807 U.S. Pat. No. 8,612,515 Petitioner's obviousness theory is nothing but improper hindsight. Petitioner provides no motivation that would lead a POSITA to modify Creamer to review captured images on a display screen. The mere ability to simultaneously display multiple images on a screen and review images uploaded to a web server would not motivate a POSITA to combine Creamer and Aihara. Instead, a POSITA would recognize that image review and analysis is performed faster and more efficiently using the images uploaded from the camera, rather than reviewing captured images directly on the LCD screen of the camera. (Kaliski Dec., ¶50.) For this reason, Petitioner's obviousness theory based on Creamer and Aihara fails. 2. There is No Motivation to Combine Mayle with Narayen. Petitioner argues that a POSITA would be motivated to combine the teachings of Mayle with those of Narayen. (Pet., 14.) Petitioner contends that Mayle is a "base" system and Narayen a "comparable" system, asserting that "Narayen could be used with the client-device digital imaging processing system described in Mayle." (Pet., 15.) Neither Mayle nor Narayen, nor their combination teaches each limitation of the asserted claims, and it would not have been obvious to combine the teachings of Mayle and Narayen. (Kaliski Dec., ¶¶77–86.) Petitioner argues that because Mayle and Narayen describe examples touching on displaying photographs in an album, "[o]ne of skill in the art would be able to write a Java program accessible to Mayle's browser-based system that would 19 4 IPR2015-00807 U.S. Pat. No. 8,612,515 implement Narayen's digital album authoring tools." (Pet., 15.) Not so. Mayle is a server-based system, while the digital authoring tools of Narayen are integral to a client application in Narayen. The vast differences between the server-based architecture of Mayle and the client-based architecture of Narayen counsels against Petitioner's proposed combination. (Kaliski Decl., ¶79.) Mayle and Narayen are directed toward different types of albums that solve different problems. (Kaliski Decl., ¶¶77, 78.) Mayle's family album allows related users to upload images to a server that imposes a structure and creates an album, and once uploaded, users specify a limited number of recipients to receive notice of the album. (Mayle, 13:29–46 ("one or more related users can upload an [sic] electronic images. . . [and] the users can specify one or more recipients to receive notice of the new images, thus inviting them to view the display").) Narayen allows a user to select the format of a web page having one or more images and places the images into a media container, which is sent to as server for processing into an HTML page. (Narayen, 6:67–7:2.) (Kaliski Decl., ¶77.) For this reason, Petitioner's assumption that Mayle and Narayen are "similar devices" (Pet., 15) is incorrect. (Kaliski Decl., ¶78.) Petitioner's allegation that Mayle "expressly teaches" that it should be combined with Narayen (Pet., 4) is erroneous because Mayle does not teach that it can be combined with any reference that discloses a "photo album." (Kaliski Dec., ¶¶77–78.) 20 4 IPR2015-00807 U.S. Pat. No. 8,612,515 In Mayle, the server creates both the structure for the album and the album. (Kaliski Decl., ¶79.) (Mayle, 10:63–12:35 ("When a photograph is received on the server the Electronic postcard server software processes the photo using several steps as illustrated in Fig. 3a."), 2:52–54 ("server [that] processes the electronic image data and creates a display containing at least a portion of the processed electronic image data.").) Narayen discloses a "picture management system" client application that allows a user to select images for a media container and sends the media container to a server, while the server generates the pages upon request. (Narayen, 7:15–28 (a picture management system that allows selection of "a layout and the pictures for the album and then the picture management system transmits the necessary information to another computer system, such as a server computer system, which then automatically generates the viewable pages"), 7:23–26 ("the picture management system transmits the necessary information to another computer system, such as a server computer system, which then automatically generates the viewable pages"), 7:41–44 ("media container information and the digital media are supplied from the client computer system to the server computer system which then automatically generates the viewable pages, such as viewable HTML pages"), 8:64– 65 ("picture management software on the client system").) Because Narayen and Mayle are based on fundamentally different architectures, a POSITA would not be motivated to combine these references. (Kaliski Dec. ¶79.) 21 4 IPR2015-00807 U.S. Pat. No. 8,612,515 Instead of articulating the alleged "improved features" or "improvements" of Narayen that are to be combined with Mayle, Petitioner concludes that a "skilled artisan could have applied the improvement of Narayen to the system of Mayle to achieve the predictable result of publishing processed digital images to the Internet in a photo album." (Pet., 15 (emphasis added).) Even Petitioner's expert failed to identify even one such improvement in his declaration or during his deposition. (Clark Dep., 7:6–8 ("Q. What improvements are described from Narayen, in your opinion? A. I don't know from memory."), 7:22–25 ("Q. But -- so it's your testimony that the improvements that you identified in Paragraph 52 are not described in Paragraph 52 of your expert report? A. No, it's--they are not explicitly listed."), 8:8– 16 ("Q. But just to be clear, so in your declaration, you didn't identify any improvements described in Narayen in your expert – in your declaration? A. I did not list them. Q. Okay. Can you identify any improvements described in Narayen, as you sit here today? A. I'm not prepared to do that from memory, no.").) Petitioner also contends without support that unstated "improvements" provide "additional image processing tools to the album publishing system." (Pet., 15–16.) But Petitioner cannot meet its obviousness burden without articulating the teachings of Narayen and Mayle that are to be combined. Unknown "improvements" and "additional image processing tools" would not motivate a POSITA to combine these references. (Kaliski Dec., ¶81.) And Narayen does not improve or provide additional 22 4 IPR2015-00807 U.S. Pat. No. 8,612,515 image processing tools beyond the image processing functions of the server in Mayle. (Kaliski Dec., ¶80.) A POSITA would not be motivated to combine Mayle and Narayen. Petitioner assumes that a skilled artisan would implement the formatting and style selection of all digital images on a browser in Mayle through Java functionality. (Pet., 14–15 ("One of skill in the art would be able to write a Java program accessible by Mayle's browser-based system that would implement Narayen's digital album authoring tools.").) Petitioner's asserts that a POSITA would implement the server functionality, including the formatting and creation of postcards and digital albums in the client, rather than server. But transforming the server-based system of Mayle to a client-based one counsels against the proposed modification. (Kaliski Dec., ¶83.) Google's reliance on Java programming to re- architecture the server-based system of Mayle into a client-based one to implement the album authoring software of Narayen is nothing but improper hindsight. (Id., ¶83.) Petitioner assumes that a Java-enabled browser can implement any functionality. (Pet., 14–15, citing Mayle, 6:62–65.) But nowhere does Mayle so teach—let alone teach that a Java-enabled browser could create the structure for the album, perform all image processing for the album, and create the album as alleged by Petitioner. (Kaliski Dec., ¶¶82, 83.) Mayle is silent on whether the Java-enabled browser processing includes pre-processing of any images, or other types of 23 4 IPR2015-00807 U.S. Pat. No. 8,612,515 processing. (Id., ¶82.) The single sentence disclosure about Java programming in Mayle is not an enabling disclosure permitting one of ordinary skill in the art to implement the Mayle authoring tools in a Java enabled browser. (Id., ¶82.) Moreover, a POSITA would not have pursued Petitioner's proposed combination. Browsers in 1999 were limited, in part, by the processing speed of the computer on which it is installed, by the complexity and efficiency of the browser code, and by network bandwidth limitations. (Kaliski Dec., ¶84.) A POSITA would have recognized that the picture management software disclosed in Narayen is an application installed on the client system. (Narayen, 8:64–65.) (Kaliski Dec., ¶84.) The album authoring tools disclosed in Narayen are part of a client application that includes a graphical user interface. (Narayen, Figs. 12A–14E, Block 642 of Fig. 10.) The album authoring tools of Narayen are included in the album authoring and publishing software (Narayen, Block 605 of Fig. 10). The album authoring tools require a dedicated database for album authoring/publishing software (Narayen, block 607) and create data objects for each digital image. (Narayen, Fig. 4, Block 607 of Fig. 10.) (Kaliski Dec., ¶84.) Implementing the digital album authoring tools of Narayen in Mayle according to Petitioner's theory would require at least the following client functionalities: (1) a Java-enabled browser programmed to allow a user to select from among a sets of styles and layouts for photo albums, (2) process all digital 24 4 IPR2015-00807 U.S. Pat. No. 8,612,515 images and create a photo album using the selected style and layout, and (3) create and link image objects. A POSITA would not be motivated to redesign Mayle by incorporating the album authoring tools of Narayen in light of the state of browser functionalities and network limitations in 1999. (Kaliski Dec., ¶85.) Petitioner's suggestion to the contrary is nothing but rank, hindsight reconstruction. Accordingly, Petitioner's proposed combination of Mayle and Narayen should be rejected. C. Petitioner Has Not Shown That Claims 1, 2, 6, 10, 11, 18–20, 23, 26, 28– 30, 38, and 39 are obvious in view of Creamer and Aihara. As discussed above, a POSITA would not be motivated to combine Creamer and Aihara as Petitioner proposes. Even if a POSITA were to do so, however, it would not result in the inventions as claimed. As a result, the Board should find that the challenged claims are not obvious under §103. 1. Claims 1 and 23 are Not Obvious in View of Creamer and Aihara. a. Neither Creamer nor Aihara nor their combination teaches or suggests "receiving an identification of one or image files, video files or audio files to associate with said account." (claims 1 and 23) Independent claims 1 and 23 require "receiving an identification of one or image files, video files or audio files to associate with said account." Creamer teaches no image identification because its system automatically transfers every picture taken either immediately or in a batch operation at a future time. Petitioner 25 4 IPR2015-00807 U.S. Pat. No. 8,612,515 has not met its burden to show that Aihara discloses this limitation. Nor could it because Aihara does not associate image files with an account. Petitioner alleges that "Creamer discloses receiving an identification of one or more images to associate with the account on the host server through an 'image pickup. . . to store an image,' whereupon the image is converted into digital format and stored in 'the image memory (at this point, without compression.).'" (Pet., 22.) But collecting and then processing the collected raw image data in image memory to create and store an image in general purpose memory does not identify an image to associate with an account. (Kaliski Dec., ¶146.) Before the image data is stored as an addressable file in general purpose memory, the data is merely raw data indicative of photons captured by the CCD sensor. (Creamer, 18:49–54.) Because no digital image files exists until after the image pickup unit captures light photons and the raw data is processed and stored as an image file in S38, functions performed by the image pickup unit and the resultant storage of the digital image as a file cannot meet this limitation. (Kaliski Dec., ¶146; See also Figure 8 (describing image manipulation and compression as part of the image capture process).) Petitioner further alleges that the "shell account is where 'JPEG image files may be stored.'" (Pet., 22.) Yet a shell account does not identify any images to associate with an account. (Kaliski Dec., ¶146.) 26 4 IPR2015-00807 U.S. Pat. No. 8,612,515 Next, Petitioner alleges that Aihara discloses that users can identify media objects where "the user could be prompted to select pictures from a set stored in the memory of the camera." (Pet., 22.) But Aihara does not disclose associating any images with an account. (Kaliski Dec., ¶147.) Furthermore, Google's expert fails to provide any supporting testimony. (Clark Dec., ¶38.) Finally, Google alleges that a POSITA "would be motivated to combine the identifications of digital content disclosed in Creamer and Aihara." (Pet., 22.) Petitioner is wrong. As discussed above, a POSITA would not have been motivated to combine Creamer and Aihara. (Kaliski Dec., ¶148.) b. Neither Creamer nor Aihara nor their combination teaches or suggests "receiving, by said client device, a confirmation of an intent to associate. . . files with said account." (claims 1 and 23) Independent claims 1 and 23 recite "receiving, by said client device, a confirmation of an intent to associate said one or more image files, video files or audio files with said account." ('515 patent, 6:62–64, 9:6–8.) Creamer does not teach this limitation because all image files in Creamer are automatically uploaded to a destination server—no intent or confirmation step is performed or required. Further, as discussed above, Creamer does not receive any type of identification of media files to associate with an account. Aihara discusses the generation of a web page 27 4 IPR2015-00807 U.S. Pat. No. 8,612,515 with references to images, but does not provide a confirmation of intent to associate with an account. Petitioner has not shown that Creamer teaches this element. Petitioner states that this limitation is met "when the image is converted into digital format and stored in 'the image memory (at this point without compression.)'" (Pet., 23 (citing Creamer, 18:46–56).) Petitioner points to the immediate upload parameter in the IMAGE FILES: UPLOAD variable group as "confirm[ing] an intent to associate the image with the shell account." (Pet., 23.) But Petitioner has identified no steps that relate to a client device receiving an intent to associate an image file with an account. The processing steps performed on each set of collected raw image data (see Creamer, 11:32–35) are not an intent to associate an image file with an account. (Kaliski Dec., ¶150.) Nor does the immediate upload of an image file in accordance with stored parameters evidence an intent to associate an image file with an account because no such image file exists when the UPLOAD variable group is transferred to camera in Creamer. (Id.) Nor does the disclosure in Aihara that "the user could be prompted to select pictures from a set stored in the memory of the camera" teach this limitation. (Kaliski Dec., ¶151; Pet., 23 (citing Aihara, 8:26–27).) Selecting images for an HTML page does not show a confirmation of intent to associate image files with an account. (Kaliski Dec., ¶151.) Instead, Aihara merely teaches the generation of a 28 4 IPR2015-00807 U.S. Pat. No. 8,612,515 web page that includes references to collected digital images, rather than evidencing a confirmation of an intent to associate image files with an account. (Id.) And as discussed previously, a POSITA would not have been motivated to combine Creamer and Aihara. Neither Creamer nor Aihara or their combination teaches this element. (Id.) c. Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing said identified. . . files using pre- processing parameters." (claims 1 and 23) Independent claims 1 and 23 recite "pre-processing parameters enabling said client device to pre-process one or more. . . files in a manner specified by a distributing party." ('515 pat., 6:66–7:4, 9:12–16.) Creamer does not teach or suggest this limitation. Instead, Creamer's image adjustment and compression parameters control how a raw image is manipulated and saved during an image capture process, rather than modifying an existing image that has already been saved in a storage media. (Creamer, Fig. 8.) Nor does Aihara disclose this element because reference to a captured image by a formatted HTML file is not pre-processing identified files. Petitioner incorrectly cites the setup/configuration file of Creamer as allegedly teaching this limitation: The setup/configuration file may specify an amount of media data through 'settings for (e.g., JPEG) compression level, resolution, 29 4 IPR2015-00807 U.S. Pat. No. 8,612,515 whether an image is stored as a greyscale or a color image, as well as any cropping of the image specified, e.g., coordinates of opposite corners of the region to be cropped.' (Pet., 25.) But "specifying an amount of media data" is not at issue in this "pre- processing" claim limitation. And as discussed below, the configuration parameters relate to image generation, not image processing. Next, Petitioner cites the compression engine in Creamer performing JPEG, TIFF, GIF, or other compression schemes and that "[c]aptured images are stored in 'image slots.'" (Pet., 26 (citing Creamer, 19:23–26).) Because Creamer compresses raw image data, not identified image files (Creamer, Fig. 8 (showing that image compression is part of the image capture process)), Creamer does not teach or disclose pre-processing identified files. (Kaliski Dec., ¶153.) The parameters identified by Petitioner in Creamer do not control processing of existing files prior to transmission, as required by the claim limitation. (Kaliski Dec., ¶154.) Rather, Creamer's variables and parameters define how raw image data is manipulated before initially being saved in general purpose memory—the variables of Creamer tell the camera how to package the raw pixel data collected by a camera's lens and sensor into a digital image file saved in general purpose memory, but not how to process an existing image file prior to or in preparation for transfer. (Id.) Importantly, Fig. 8 of Creamer defines the image adjustment step (S36) and 30 4 IPR2015-00807 U.S. Pat. No. 8,612,515 JPEG compression step (S38) as part of the image capture routine. (Creamer, Fig. 8; Kaliski Dec. ¶154.) Creamer does not teach further modifying these image files after they are created. Moreover, parameters are applicable only to a particular image slot, which does not identify any unique image. (Kaliski Dec., ¶154.) Because the compression and adjustment steps identified by Petitioner are performed on raw image data, not on identified image files, Creamer does not teach or disclose pre- processing identified files. (Id.) Petitioner argues that "Aihara discloses pre-processing images by 'capturing images and generating a formatted electronic document which includes or references those images.'" (Pet., 26 (citing Aihara, 4:35–37).) But a reference to a captured image by a formatted HTML file is not pre-processing identified files. (Kaliski Dec., ¶155.) Indeed, the image file remains untouched: Aihara generates "a page description file such as HTML. . . that references images captured by a digital camera." (Aihara, 3:1–4.) Aihara does not disclose pre-processing identified images. (Kaliski Dec., ¶155.) d. Neither Creamer nor Aihara nor their combination teaches or suggests "preprocessing. . . in a manner specified by a distributing party for transfer of content." (claims 1 and 23) Neither Creamer nor Aihara teaches or suggests "preprocess[ing] . . . in a manner specified by a distributing party for transfer of content" because Petitioner fails to identify any distributing party that meets this limitation. Petitioner's 31 4 IPR2015-00807 U.S. Pat. No. 8,612,515 argument, focused "on the nature of the distribution," rather than identifying a distributing party that provides pre-processing parameters for the "pre-processing" limitation recited by the claim language, should be rejected. Because Petitioner fails to articulate any theory as to how the "distributing party" limitation is taught or suggested by Creamer or Aihara, or their combination, Petitioner cannot meet its burden to show this claim element is met by the asserted prior art. Petitioner fails to identify any distributing party taught or suggested by Creamer. Instead, Petitioner contends that "the 'manner specified' by the parameters would be a form of digital content suitable for Internet distribution [such as] . . . HTML, JPEG, or similar encoding." (Pet., 27.) But as discussed previously, neither Mayle nor Aihara teach or suggest the "pre-processing said identified. . . files using pre-processing parameters." (Section V(C)(1)(c).) The JPEG settings in Creamer are not pre-processing parameters, and therefore Creamer does not teach or disclose this limitation. (Section V(C)(1)(c).) Petitioner also fails to identify a distributing party taught or disclosed by Aihara. The script file identified by Petitioner (Pet., 26–27) in Aihara determines how (e.g., where) an image file appears on a web page, and does not modify or pre- process the image. (Kaliski Dec., ¶158.) "[T]he HTML commands which determine the appearance, hereafter referred to as the format, of the resulting web page, are 32 4 IPR2015-00807 U.S. Pat. No. 8,612,515 generated in script in accordance with the predefined model." (Aihara, 7:48–51.) Thus, Aihara does not meet this limitation. (Kaliski Dec., ¶158.) Petitioner nakedly states that "one of skill in the art would be motivated to combine the preprocessing according to the received parameters disclosed in Creamer and Aihara." (Pet., 27.) Yet, Petitioner fails to articulate what aspects, if any, of the alleged "received parameters" in Creamer and Aihara would have been selected, or how to modify Creamer in view of Aihara. And as discussed previously, a POSITA would not be motivated to combine Creamer and Aihara. Neither Creamer nor Aihara nor their combination renders claims 1 or 23 obvious. 2. Claims 20 and 39 Are Not Obvious in View of Creamer and Aihara. a. Neither Creamer nor Aihara nor their combination teaches or suggests "receipt of an identification of one or image files, video files or audio files to associate with said account." (claims 20 and 39). Petitioner's invalidity theory refers to the discussion of Claim 1, elements b, c. (Pet., 29.) As discussed in Section V(C)(1)(a), neither Creamer nor Aihara nor their combination disclose this element for the same reasons. (Kaliski Dec., ¶160.) b. Neither Creamer nor Aihara nor their combination teaches or suggests pre-processing "said identified. . . files using pre- processing parameters." (claims 20 and 39) Petitioner's invalidity theory refers to the discussion of Claim 1, elements d, e. (Pet., 30.) As discussed in Section V(C)(1)(c), neither Creamer nor Aihara nor their combination disclose this element for the same reasons. (Kaliski Dec., ¶161.) 33 4 IPR2015-00807 U.S. Pat. No. 8,612,515 c. Neither Creamer nor Aihara nor their combination teaches or suggests "preprocessing. . . in a manner specified by a distributing party." (claims 20 and 39) Petitioner's invalidity theory refers to the discussion of Claim 1, elements d, e. (Pet., 30.) As discussed in Section V(C)(1)(d), neither Creamer nor Aihara nor their combination disclose this element for the same reasons. (Kaliski Dec., ¶162.) d. Neither Creamer nor Aihara nor their combination teaches or suggests "a pre-processor that pre-processes said identified. . . files in preparation for transmission." (claims 20 and 39) Petitioner fails to specifically discuss Creamer's or Aihara's alleged disclosure of "a pre-processor that pre-processes said identified files. . . in preparation for transmission," instead equating this limitation to Claim 1, elements d, e. (Pet., 30.) But claim 1 does not recite the limitation "in preparation for transmission." (See '515 pat., claim 1.) Petitioner does not cite any teaching in Creamer or Aihara for this limitation or provide reasoning to support its assertion of equivalence to the cited limitation of claim 1. Moreover, as discussed in Section V(C)(2)(c), neither Creamer nor Aihara discloses pre-processing identified files. Consequently, neither Creamer nor Aihara nor their combination renders claims 20 and 39 obvious. (Kaliski Dec., ¶163.) 3. Dependent Claims 2, 6, 10, 11, 18, 19, 26, 28–30, and 38 Are Not Obvious Over Creamer and Aihara. 34 4 IPR2015-00807 U.S. Pat. No. 8,612,515 Each of the challenged dependent claims depends on an independent claim, each of which as discussed above, has not been shown invalid by the combination of Creamer and Aihara. Accordingly, neither Creamer nor Aihara nor their combination discloses these dependent claims for the same reasons. (Kaliski Dec., ¶164–166.) D. Petitioner Has Not Shown That Claims 1, 2, 6, 10, 11, 18–20, 23, 26, 28– 30, 38, and 39 are obvious in view of Mayle and Narayen. As discussed below, Mayle and Narayen fail to teach or suggest several limitations in the challenged claims, and furthermore, a POSITA would not be motivated to combine Mayle and Narayen. The Board should find that Petitioner has not shown that the challenged claims are obvious under §103. 1. Claims 1 and 23 are Not Obvious in View of Mayle and Narayen. a. Neither Mayle nor Narayen nor their combination teaches or suggests "receiving an identification of one or image files, video files or audio files to associate with said account." (claims 1 and 23) Independent claims 1 and 23 require "receiving an identification of one or image files, video files or audio files to associate with said account." ('515 patent, 6:60–61, 9:4–5.) Neither Mayle nor Narayen teaches or suggests this limitation. Mayle teaches a server computer that manipulates an image file uploaded from a user computer. (Mayle, 10:37–39, 10:63–11:35.) Mayle is silent as to an account; and indeed, Mayle does not associate any image files with an account. Narayen, on 35 4 IPR2015-00807 U.S. Pat. No. 8,612,515 the other hand, refers to media containers, not the image files themselves. (Narayen, 7:49–56 ("the user of the client computer system can cause a media container with its associated digital media to be published to the Internet").) Petitioner erroneously alleges "Mayle discloses a system which receives an identification of images to associate with an account." (Pet., 38.) But Petitioner does not cite to any excerpt of Mayle that discloses an account. "[S]pecif[ying] a file on the local client computer that holds the image data he or she wants to use on their card" (Pet., 38) does not refer to relate to any "account" to which files are to be associated. (Kaliski Dec., ¶169.) Petitioner's remaining arguments regarding Mayle relate to alleged preprocessing parameters rather than the "receiving an identification" limitation at issue. Next, Petitioner alleges that Narayen discloses user selection of a media container with its associated image data. (Pet., 39.) Yet user selection of a media container is not an identification of image data; instead, a media container is capable of holding various types of media. (Kaliski Dec., ¶170.) Though a media container includes references to image files, selection of that container does not identify the files referenced by that container. (Id.) Neither Mayle or Narayen or their combination discloses this element. (Id.) b. Neither Mayle nor Narayen nor their combination teaches or suggests "pre-processing said identified. . . files using pre- processing parameters. . . enabling said client device to pre- process said identified. . . files." (claims 1 and 23) 36 4 IPR2015-00807 U.S. Pat. No. 8,612,515 Claims 1 and 23 recite "pre-processing said identified. . . files using pre- processing parameters. . . enabling said client device to pre-process said identified. . . files." Petitioner's argument relies on selective quotations applied out-of-context to misrepresent Mayle as a client-side processing system, when it is based on server- side processing. As to Narayen, Petitioner merely cites two excerpts of Narayen without analysis regarding how Narayen allegedly meets this claim limitation. (Pet., 45.) This is improper. Absent any analysis, Petitioner has not met its burden to show that Narayen discloses this limitation. Petitioner argues that the client in Mayle performs pre-processing: "For example, these parameters determine the pre-processing that is performed on the client device." (Pet., p. 43 (citing Mayle, 3:2–4, 10:66–11:25, 12:3–33, 13:47– 14:19).) Yet in each of these excerpts, the server, not the client computer, performs the processing. (Mayle, 10:64–65 ("the Electronic postcard server software processes the photo").) Mayle discusses only two ways to augment the client, neither of which is pre-processing image data: (1) re-positioning a picture (Id., 13:52–57) and (2) performing data processing such as scaling, filtering, color correction, and the like to "preview the result of various other types of image data processing. . . at the same [or lower quality] resolution as created by the server computer. . . allowing the server to actually produce the final processed information." (Id., 3:2–4, 13:59– 14:7.) In either case, however, the transmitted image is processed by the server, not 37 4 IPR2015-00807 U.S. Pat. No. 8,612,515 by the client. (Kaliski Dec., ¶172.) The client provides a preview of the image as it will appear after processing by the server; the client device does not pre-process the image before transmitting it to the server. The digital image transmitted by the client to the server is never pre-processed. (Id.) Petitioner also alleges that the "pre-processing occurs within the web browser on the client device." (Pet., 43 (citing Mayle, 4:40–45, 6:66–7:6, Fig. 2).) Petitioner's characterization is wrong. Rather than describing pre-processing, this passage of Mayle describes a "web browser running on a client computer 10 to access the hypertext documents stored on one or more server computers." (Mayle, 4:41–43, 6:66–7:6.) Mayle is clear: all image processing occurs on the server, not the client. (Id., 10:63–65, 13:46–14:7; Kaliski Dec., ¶173.) Petitioner does not articulate how Narayen meets this limitation. (Pet., 45.) Nor could it because Narayen discloses processing of the picture album at the server (Narayen, 10:51–11:6). (Narayen, 8:40–45 ("The images are converted into a web- viewable format before any requests to view the images are made by other client computer systems. In this manner, the web-viewable format images are pre- generated prior to "publication" or distribution to other client computer systems."); see also Narayen, 10:60–66).) Thus, it is not surprising that Google's expert failed to opine that Narayen meets this limitation. (Clark Dec., ¶55.) Narayen's discussion relating to the "album authoring software scal[ing] each picture if necessary to cause 38 4 IPR2015-00807 U.S. Pat. No. 8,612,515 it to fit into the corresponding slot on the album page" is not an example of "pre- processing." (Narayen, 9:45–47; Kaliski Dec., ¶174.) Narayen scales an image for preview on the client display, not modifying the underlying data for that identified image as required by pre-processing. Furthermore, Narayen does not teach that the scaled image is actually transmitted to a computer. (Kaliski Dec., ¶¶171–174.) Neither Mayle nor Narayen nor their combination teaches or suggests this element, and as discussed previously, a POSITA would not be motivated to combine Mayle and Narayen. (Id.) c. Neither Mayle nor Narayen nor their combination teaches or suggests "pre-processing parameters received from a remote server." (claims 1 and 23) Claims 1 and 23 recite "pre-processing parameters received from a remote server." Petitioner further mischaracterizes Mayle by contending that the local client receives pre-processing parameters. (Pet., 42 ("Preprocessing parameters received at the client"; "The parameters specifying the amount of media data are received and implemented by the local device").) Mayle does not receive pre-processing parameters from a remote server because the remote server, not the local client, performs the processing steps on the image data. Petitioner did not articulate a theory as to Narayen with respect to this limitation. Petitioner points to the file size check performed by the server on the received image data as a processing parameter received by the client: 39 4 IPR2015-00807 U.S. Pat. No. 8,612,515 Pre-processing parameters received at the client device require that '[t]he image data that is POSTed to the server must be in a size and format that the electronic postcard software can handle. The first step is to check the byte count of the data sent to the server. If the byte count exceeds some limit then the image is ignored and the user is redirected to an error page.' (Pet., 42 (citing Mayle, 10:66–11:4).) Petitioner is wrong for two reasons. First, this file-size checking functionality does not process the image, but is merely an error check to prevent the server from processing large image files. (Kaliski Dec., ¶178.) The file size limit is not used to process the image in a different size. (Id.) Second, the server performs file size functionality and the client device does not receive any file size parameter. (Id.; Mayle, 10:63–67 (disclosing that the electronic postcard server software processes performs the file size and byte check); Kaliski Dec., ¶176).) Petitioner further compounds its mischaracterization of Mayle by stating that "[t]he parameters specifying the amount of media data are received and implemented by the local device such that '[t]he resulting image is finally compressed and converted into an image format viewable in a web browser (such as GIF or JPEG).'" (Pet., 43 (citing Mayle, 12:30–33).) Yet this particular passage in Mayle refers to server, not client image compression. (Kaliski Dec., ¶177.) Recognizing that Mayle describes only server-side processing, Petitioner contends that "[i]t would be 40 4 IPR2015-00807 U.S. Pat. No. 8,612,515 obvious. . . to send the parameters specifying maximum byte count, maximum scale, and compression format from the server hosting the web site comprising the system to the client device." (Pet., 43.) But Petitioner's contention is nothing more than improper hindsight, and as discussed previously, a POSITA would not be motivated to modify Mayle so that it receives parameters to perform functions that will be performed by the server. (Kaliski Dec., ¶177.) Narayen does not disclose any pre- processing using parameters received from a remote device (Id.) Finally, as discussed previously, a POSITA would not have been motivated to combine Mayle and Narayen. d. Neither Mayle nor Narayen teaches or suggests "preprocessing. . . in a manner specified by a distributing party for transfer of content." (claims 1 and 23) Claims 1 and 23 recite "preprocessing. . . in a manner specified by a distributing party." Petitioner fails to identify any distributing party in Mayle or Narayen or their combination that meets this limitation. Instead Petitioner states generally that "one of ordinary skill in the art would know that the 'manner specified' by the parameters would be a form of digital content suitable for Internet distribution," and further that HTML and JPEG are well known "form[s] of digital content suitable for Internet distribution." (Pet., 45.) Petitioner focused "on the nature of the distribution," rather than identifying a distributing party that provides pre-processing parameters for the "pre-processing" limitation recited by the claim 41 4 IPR2015-00807 U.S. Pat. No. 8,612,515 language, should be rejected. Furthermore, the preview images discussed in Mayle (Mayle, 13:59–14:8) and the scaled images discussed in Narayen (Narayen, 9:45– 47) are for viewing by the user on the client, not for distribution to others, and accordingly, this limitation is not met by Mayle and Narayen. (Kaliski Dec., ¶178.) Petitioner makes the wholly conclusory statement that "one of skill in the art would be motivated to combine the preprocessing according to the received parameters disclosed in Mayle and Narayen. (Pet., 45.) Yet, Petitioner fails to articulate what aspects of the alleged "received parameters" in Mayle and Narayen would have been selected, and how to modify Mayle in view of Narayen to render this limitation obvious. (Kaliski Dec., ¶178.) As discussed above, a POSITA would not have been motivated to combine Mayle and Narayen. Neither Mayle nor Narayen nor their combination renders claims 1 and 23 obvious. (Id.) e. Neither Mayle nor Narayen teaches or suggests "transmitting said pre-processed. . . files." (claims 1 and 23) As discussed previously in Section V(D)(1)(b), because the server performs all image processing in Mayle and Narayen, neither Mayle or Narayen pre-processes images files. Furthermore, the image that is previewed in Mayle (Mayle, 13:59– 15:7) on the client nor the image that is scaled in Narayen (Narayen, 9:45–47) is not transmitted to any device. Accordingly, neither Mayle nor Narayen disclose this element. (Kaliski Dec. ¶179.) 42 4 IPR2015-00807 U.S. Pat. No. 8,612,515 2. Claims 20 and 39 are Not Rendered Obvious In View of Mayle and Narayen. a. Neither Mayle nor Narayen nor their combination teaches or suggests "receipt of an identification of one or image files, video files or audio files to associate with said account." (claims 20 and 39) Petitioner's invalidity theory refers to the discussion of Claim 1, elements b, c. (Pet., 47.) As discussed in Section V(D)(1)(a), neither Mayle nor Narayen nor their combination disclose this element for the same reasons. (Kaliski Dec. ¶180.) b. Neither Mayle nor Narayen nor their combination teaches or suggests pre-processing "pre-processing said identified. . . files using pre-processing parameters. . . enabling said client device to pre-process said identified. . . files." (claims 20 and 39) Petitioner's invalidity theory refers to Claim 1, elements d, e. (Pet., 48.) As discussed in Section V(D)(1)(b), neither Mayle nor Narayen nor their combination disclose this element for the same reasons. (Kaliski Dec. ¶181.) c. Neither Mayle nor Narayen nor their combination teaches or suggests pre-processing "preprocessing. . . in a manner specified by a distributing party." (claims 20 and 39) Petitioner's invalidity theory refers to the discussion of Claim 1, elements d, e. (Pet., 48.) As discussed in Section V(D)(1)(d), neither Mayle nor Narayen nor their combination disclose this element for the same reasons. (Kaliski Dec. ¶82.) d. Neither Mayle nor Narayen nor their combination teaches or suggests "a pre-processor that pre-processes said identified. . . files in preparation for transmission." (claims 20 and 39) 43 4 IPR2015-00807 U.S. Pat. No. 8,612,515 Petitioner fails to specifically discuss Mayle's or Narayen's alleged disclosure of "a pre-processor that pre-processes said identified files. . . in preparation for transmission," instead equating this limitation to Claim 1, elements d, e. (Pet., p. 48.) Furthermore, the preview images discussed in Mayle (Mayle, 13:59–14:8) and the scaled images discussed in Narayen (Narayen, 9:45–47) are for viewing by the user on the client, not for distribution to others, and accordingly, this limitation is not met by Mayle and Narayen. (Kaliski Dec. ¶183.) 3. Dependent Claims 2, 6, 10, 11, 18, 19, 26, 28–30, and 38 Are Not Obvious Over Mayle and Narayen. Each of the challenged dependent claims depends on an independent claim, each of which as discussed above, have not been shown invalid by the combination of Mayle and Narayen. Accordingly, neither Mayle nor Narayen nor their combination discloses these claims for the same reasons. (Kaliski Dec. ¶184.) E. The Objective Secondary Factors Confirm that the Challenged Claims are Not Obvious. Even assuming, arguendo, that Petitioner had made a prima facie case of obviousness, ample evidence of secondary considerations of non-obviousness exists to rebut any such notion. Summit 6 and its predecessors solved a long-felt but unresolved need for a web-based media submission tool that conveniently pre- processes media prior to submission in an intuitive manner, achieved significant commercial success in its products embodying the technology claimed in the '482 44 4 IPR2015-00807 U.S. Pat. No. 8,612,515 and '515 Patents, obtained licenses, and received wide industry recognition. This continued success repudiates any showing of obviousness. As discussed in Dr. Kaliski's declaration, Rimfire's Prepare & PostTM ("Prepare & Post") Tools were specifically referenced in the specification of the 'Patent and are part of the browser-based system that embodies the challenged claims. Rimfire, including the Prepare & Post Tools, performs each limitation of the challenged claims, for example:  Pre-processing images such as sizing, cropping, rotating, and reformating images to customer specifications before uploading. (Ex. 2010, 13, 22, 26; Ex. 2014, 7, 10, 11). These features are present in each independent claim challenged ('515 pat. at Claims 1, 20 23, and 39). (See Kaliski Dec., ¶¶260– 271, 284–295, 307–310.)  Uploading image files to servers for distribution. (Ex. 2010, 5, 23, 28; Ex. 2014, 3–11, 16). This feature is present in each independent claim challenged ('515 pat. at Claims 1, 20, 23, and 39). (See Kaliski Dec., ¶¶260–271, 284– 295, 307–310.)  Preparation of thumbnail images. (Ex. 2010, 7, 10; Ex. 2015, 6). This feature is present in dependent claims 6 and 28 of the '515 patent. (See Kaliski Dec., ¶¶275, 300.)  Server receipt and validation of Rimfire account information for the customer. (Ex. 2014, 6). This feature is present in each independent claim challenged ('515 pat. at Claims 1, 20, 23, and 39). (See Kaliski Dec., ¶¶260–271, 284– 295, 307–310.) 45 4 IPR2015-00807 U.S. Pat. No. 8,612,515  Server transmission of an identifier associated with the user. (Ex. 2010, 23– 24, 43). This feature is found in dependent claims 2, 26 of the '515 patent. (See Kaliski Dec., ¶¶272–73, 296–298.)  Reporting status of the transmission of pre-processed files. (Ex. 2010, 17–18). This feature is present in dependent claims 19 and 38 of the '515 patent. (See Kaliski Dec., ¶¶283–83, 305–306.) As one example, Dr. Kaliski opines that Rimfire, including the Prepare & Post Tools,meets the limitations of claim 1. (Id., 260-271.)Rimfire allows users to pre- process selected images to a specified height and width thereby meeting the "receiving an identification," and "pre-processing using received pre-processing parameters" limitations of claim 1. (Id., ¶¶264–268.) Additionally, Rimfire allows a user to submit an image to a remote device, via, e.g., a "submission button," and thereby meeting the "receiving a confirmation of intent" and "transmitting" limitation of claim 12. (Id., ¶¶266–267.) Rimfire also sends user identification and password information for access to an account. (Id., ¶¶261–263.) Dr. Kaliski also opines that Rimfire, including its Prepare and Post Tools,also meets the limitations of the remaining challenged claims. (Id., ¶¶272–306.) Rimfire, including the Prepare & Post Tools, contains each component of the challenged claims and therefore is at least "reasonably commensurate with the scope" of the challenged claims. Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013). Because Rimfireembodies the claimed features and is coextensive with them, 46 4 IPR2015-00807 U.S. Pat. No. 8,612,515 the secondary considerations of non-obviousness are presumed to be attributable to the patented invention. Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1328 (Fed. Cir. 2008); Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). 1. Prepare & Post and Rimfire Solved a Long-Felt but Unresolved Need A long-felt need is a factor the Board must consider in an obviousness analysis. See, e.g., Rambus, 731 F.3d at 1257–58. To establish evidence of a long- felt but unresolved need, the patent owner must show that there was a persistent problem recognized by those of ordinary skill in the art and the problem cannot be solved by another. See In re Gershon, 372 F.2d 535, 533–39 (CCPA 1967); Tandus Flooring, Inc. v. Interface, Inc., IPR2013-00527, Paper 48, p. 47 (Feb. 12, 2015). The claimed invention resolved the long-felt need for a web-based media submission tool that pre-processes media prior to submission for both online real estate listing websites and major online auction websites. PictureWorks Technology, Inc. ("PictureWorks"), Summit 6's predecessor, identified the need for this pre- processing tool to solve the "Chain of Pain" faced by Realtors. (Lewis Dec., Ex. 2050, ¶¶11–13; Ex. 2014, 6.) There was no tool to help Realtors process images prior to uploading them to the Internet to meet various websites' requirements for file format, resolution, compression, file size, etc. (Lewis Dec., ¶11.) Realtors also 47 4 IPR2015-00807 U.S. Pat. No. 8,612,515 lacked the knowledge and patience to complete this process and often hired digital imaging professionals to scan and manipulate photos to meet the websites' requirements. (Id., ¶¶12–13.) PictureWorks made multiple attempts to solve this "Chain of Pain." (Id., ¶¶13–16; Ex. 2051 ("Pate Dec."), ¶¶9–11; Ex. 2034, p. 4 ("primary assumptions".)) PictureWorks ultimately created a solution to the "Chain of Pain" using a client-side image uploader that could pre-process images and upload them to websites according to the website's requirements. (Lewis Dec., ¶¶17–19; Pate Dec., ¶11; Kaliski Dec., ¶¶17, 185.) PictureWorks initially called it "Prepare & Post." (See, e.g., Ex. 2048; Pate Dec., ¶12; Lewis Dec., ¶19.) PictureWorks began pitching the Prepare & Post technology to potential clients shortly after its conception. (See, e.g., Exs. 2005, 2006, 2005, 2049, Lewis Dec., ¶¶20–21.) Moore Data Management Services ("Moore"), the largest multiple listing service (MLS) provider, first agreed to integrate Prepare & Post into its MLS/Xplorer software for its real estate listings. (Exs. 2008, Lewis Dec., ¶¶21–22.) On November 6, 1998, after its successful development, PictureWorks publicly demonstrated Prepare & Post for the first time at the National Association of Realtors Convention ("NARC"), and Moore jointly announced it would be the first MLS provider to integrate Prepare & Post. (Exs. 2007, 2008, 2048, Lewis Dec., ¶¶24–25; Pate Dec., ¶16.) 48 4 IPR2015-00807 U.S. Pat. No. 8,612,515 PictureWorks then developed a commercial product embodying the new invention, incorporating the Prepare & Post tools, and called it Rimfire. (Lewis Dec., ¶40; Ex. 2010, 2014.) Rimfire is a client/server imaging service that provides browser-based media acquisition, custom processing, and rapid distribution. (Lewis Dec., ¶40.) PictureWorks incorporated the Prepare & Post Tools into the media acquisition service, which allowed users to "drag and drop" their images into the standard browser. (Id.) Rimfire automatically compresses, sizes, and formats images to customer specifications before uploading to Rimfire servers for additional transformation. Rimfire's browser-based acquisition system reduced upload times significantly. Following image upload, Rimfire's media processing servers perform additional processing to the specifications of the customer. The image is then distributed by Rimfire's high performance servers to the requester in real time. The claims of the '482 and '515 Patents are embodied in the Rimfire product, which PictureWorks launched in April 1999. (Id.; Ex. 2010, 4; Kaliski Dec., ¶¶185–187.) With respect to eBay, in 1999 roughly 80–90% of listings did not contain pictures, and eBay's main technical support complaint related to its imaging infrastructure. (Lewis Dec., ¶27; Pate Dec., ¶29.) Like most websites at the time, eBay required its users to meet stringent image specifications. (Lewis Dec., ¶28; Exhibit 2016, 10–11.) From 1995 to 1998, eBay did not host any images on its servers or have software in place that allowed the user to upload them directly to 49 4 IPR2015-00807 U.S. Pat. No. 8,612,515 eBay from their own computers. (Lewis Dec., ¶29.) eBay forced sellers to find server space on the Internet to host and serve the photographs. (Id., ¶¶28–29; Ex. 2016, 10– 11.) eBay's Director or eBay Services, Randy Ching, described its sellers' ability to add pictures to their listings as requiring "an Electrical Engineering degree" to complete. (Ex. 2015, 10 "Reason for Image Server Purchase.") eBay needed the invention to allow users to directly upload pre-processed images to their listings according to eBay's image requirements. (Lewis Dec., ¶30.) To solve this problem, eBay issued an open request for bids to major software providers. (Id., ¶41; Ex. 2015, 10; Pate Dec., ¶26.) During the bid process, another company involved, iPIX, acquired PictureWorks through a stock-for-stock transaction valued at $175 million. (Lewis Dec., ¶41; Pate Dec., ¶27; Ex. 2017; Ex. 2018.) One month later, eBay executed an agreement with iPIX for its newly acquired Rimfire technology. (Ex. 2033.) The chief asset driving the value of the purchase was the invention embodied in the '482 and '515 Patents. (Lewis Dec., ¶41.) eBay ultimately chose Rimfire because of its "killer. . . drag and drop picture submission feature" and executed an agreement in April, 2000 for Rimfire services. (Ex 2015, 10; Ex. 2033; see also Lewis Dec., ¶42; Pate Dec., ¶¶29, 30.) iPIX then integrated Rimfire into eBay's website and offered built-in image uploading and hosting to sellers, a necessary service eBay struggled to provide since its inception. (Lewis Dec., ¶42; Ex. 2025 at 15–16.) 50 4 IPR2015-00807 U.S. Pat. No. 8,612,515 This evidence illustrates the long-felt need for a web-based submission tool that pre-processes media prior to submission in two industries. (See also Kaliski Dec., ¶¶17, 185.) PictureWorks identified this need and performed specific market research to confirm the need prior to development. Major players in target markets immediately embraced PictureWorks' Prepare & Post tool and the Rimfire technology because they solved major problems in their respective markets. (Ex. 2008, 2015.) Not only did PictureWorks solve the long-felt needs of real estate listing websites and online auction sites such as eBay, (Lewis Dec., ¶¶11–19.), but iPIX experienced rapid commercial success in both industries. 2. Commercial Success and Licensing A patented invention is presumed commercially successful when the patentee demonstrates commercial success through significant sales in a relevant market, and that the successful product is in the invention disclosed and claimed in the patent. See Omron Oilfield & Marine, Inc. v. MD/TOTCO, A Div. of Varco, L.P., IPR2013- 00265, Paper 11, p. 13 (October 31, 2013) (Denying institution because evidence of commercial success overcame the prima facie case of obviousness). The patent owner need not sell every conceivable embodiment of the claim to rely on evidence of commercial success. Rambus, 731 F.3d at 1257 (quoting In re Glatt Air Techniques, Inc., 630 F.3d 1026, 1030 (Fed. Cir. 2011)). Evidence of licensing 51 4 IPR2015-00807 U.S. Pat. No. 8,612,515 efforts can also overcome a case of obviousness. See Tandus Flooring, IPR2013- 00527, Paper 48, p. 46. Summit 6 has both. a. Substantial Evidence of Commercial Success and Licensing Supports a Finding of Non-Obviousness. From the invention's conception, Summit 6 and its predecessors achieved success in every commercial embodiment. Each product experienced immediate and unparalleled growth, was licensed to major players within its targeted industries, and garnered a dominant market share in the online newspaper classified industry. The history of these successes demonstrates the immediate and longstanding impact on the relevant industries, belying any claim of obviousness. PictureWorks immediately advertised the benefits of the '482 Patent during the NARC. (Lewis Dec., ¶25; Ex. 2007; Ex. 2048.) Prepare & Post's "Product Overview" brochure focused on the "drag and drop" feature and emphasizes the removal of the user's obligation to deal with "file formats, resizing, color depth, and transfer protocols." (Ex. 2048, 1.) It also advertises the technical details and process overview in Figure 2, which correlates with the claimed features in the '482 Patent. (Id., 2.) In April 1999 PictureWorks developed Picturebay.com, also known as "pBay," an image-hosting website that relied on Rimfire and allowed users to upload images and insert them into online auctions such as eBay.com. (Ex. 2011, Ex. 2012; 52 4 IPR2015-00807 U.S. Pat. No. 8,612,515 Lewis Dec., ¶36–37; Pate Dec., ¶¶22–24.) PictureWorks' goal was to integrate the "pbay service into eBay and eventually other auction sites[.]" (Ex. 2012, 2.) Picturebay achieved immediate commercial success. pBay was not the only image hosting website on the Internet, (Ex. 2016, 15–16; Ex. 2012, 3), but it was the only one with the drag and drop pre-processing functionality, (Lewis Dec., ¶¶37– 38). Picturebay reached one million image views by July 6, 1999, and exceeded two million views by August, demonstrating its "unparalleled" growth rate. (Ex. 2013; Lewis Dec., ¶37.) By November, pBay became the largest image hosting and distributing site for eBay users. (Pate Dec., ¶24.) After one year, Rimfire processed "over 250 million image views" for businesses and grew rapidly as its image views increased by over 3.5 million each week. (Ex. 2014, 3.) However, PictureWorks' subsequent agreement with eBay demonstrates the true impact of the invention. (Ex. 2033.) Their relationship added significant value and revenue for both parties. The number of listings with images and the revenue from eBay's Picture Services increased exponentially, while costs also reduced. (See Ex. 2044, 4, 8; Ex. 2045, 7–12, 21.) By 2003, eBay listings with photos had a 19% higher average sale price, received 10% more bids, had a 4% higher conversion rate, created millions of dollars through image transfer fees, and listings with photos increased from 8% to 80%. (Ex. 2019, 4; Ex. 2020, 12.) 53 4 IPR2015-00807 U.S. Pat. No. 8,612,515 For iPIX, the eBay contract generated more than $44 million in revenue over three years, which constituted about 80% of iPIX's revenue. (Pate Dec., ¶¶37–39.) In 2003, eBay decided to bring the service in-house and paid iPIX a one-time $8 million license fee for the Rimfire technology. (Ex. 2021, ¶5.9; Ex. 2020, 12; Pate Dec., ¶39.) This license represents a clear example of Rimfire's success. After licensing its technology to its largest client, iPIX set its sights on the online newspaper classified websites. (Pate Dec., ¶¶41–42; Ex. 2020, 12.) iPIX targeted online newspaper classified publishers and by 2004 secured several major clients such as Cars.com, Seattle Times, Knight-Ridder, Tribune Corp., Washington Post, Boston Globe, L.A. Times, New York Times, and many others. (Ex. 2020, 12.) The L.A. Times, for example, used Rimfire and achieved 225% growth in photo revenue year-over-year and its profits increased 36%. (Ex. 2019, 7, 10.) These licenses included 50% of top newspaper publishing groups, 40% of "showcase" newspapers, and 70% of ad-order entry system providers. (Ex. 2020, 24–26.) Such dramatic growth in market share proves its commercial success. See Omron Oilfield, IPR2013-00265, Paper 11 at 15 (finding commercial success based on strong growth rate and evidence oil rig technology being used in 55% of Canadian and 50% of U.S. land rigs operating with that system); Intri-Plex Technologies, Inc. v. Saint-Gobain Performance Plastics Rencol Ltd., IPR2014-00309, Paper 83, 36 (March 23, 2014) (finding commercial success after achieving a dominant position in the relevant 54 4 IPR2015-00807 U.S. Pat. No. 8,612,515 market within about six years); Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1371 (Fed. Cir. 2012) (ruling that Alcon's drug was a commercial success after "achieving 70% market share within two years of its launch"). Rimfire experienced commercial success at every phase. It obtained instant success when supporting Picturebay.com with exponential growth in the number of images processed for online websites. (Ex. 2013; Lewis Dec., ¶37; Pate Dec., ¶24; Ex. 2014, 7.) This success prompted iPIX to orchestrate a $175 million buyout less than one year after Rimfire's launch. (Lewis Dec., ¶41; Pate Dec., ¶26.) iPIX then generated significant revenue from eBay, its primary client, before obtaining an $8 million license. (Pate Dec., ¶¶37–39.) eBay similarly benefitted from its use of Rimfire. (Ex. 2044, 4, 8; Ex. 2045, 7–12, 21.) Finally, after diversifying its customer base, iPIX again achieved a dominant position in the online newspaper classified market by 2004. (Ex. 2020, 24–26.) This evidence proves the widespread success of the Rimfire technology. b. The Commercial Success is Attributable to the Technology and Inventions Disclosed in Summit 6's Patented Technology. Rimfire embodies the claims in the '482 and '515 Patents and it's commercial success is directly linked to the'482 and '515 Patent technology. PictureWorks' advertising, industry publications, and witness testimony prove that Rimfire's success is based on the patented technology. 55 4 IPR2015-00807 U.S. Pat. No. 8,612,515 When PictureWorks began sending proposals to potential clients, it relied on Rimfire technology—including the Prepare & Post Tools described in the patents— as its primary selling point and listed the benefit of the claimed invention in each proposal. (See, e.g., Ex. 2005; Ex. 2006, Ex. 2005, Ex. 2049.) PictureWorks then advertised the benefits of Prepare & Post at the NARC. Omron Oilfield, IPR2013- 00265, Paper 11 at 14 ("Advertising the benefits of the claimed invention links the invention to commercial success."). In addition, after pBay reached two million images processed, the press directly linked the endeavor to the pre-processing feature. One article includes testimonials regarding Rimfire's ease of use and describes the technology encompassed in the common specification of the'482 and '515 patents: Register, select a photo, preview the photo in a web page, click the send button, and you're finished. The image is automatically sized and formatted to eBay recommendations and stored on Picturebay's Rimfire servers. A URL is provided to the auctioneer to include in their auction information and the photo is displayed inside their auction page viewed by every potential buyer. (Ex. 2013, 1.) The Auto Size and Auto Formatting features were "Key Benefits" of pBay. (Ex. 2012, 2.) The "unparalleled" growth rate achieved through pBay.com was a direct consequence of the patented technology. (Ex. 2013, 1.) 56 4 IPR2015-00807 U.S. Pat. No. 8,612,515 Furthermore, testimony from inventor Scott Lewis confirms that the driving force behind the sale of PictureWorks to iPIX was the patented technology. See Omron Oilfield, IPR2013-00265, Paper 11 at 14 ("Testimony that a product was successful due to the patented features supports a finding of nexus."). Inventor Scott Lewis, who was involved in the negotiation and sale of PictureWorks, testified that at the time of the sale to iPIX "the chief asset driving the value was the invention embodied in the '482 Patent." (Ex. 2050 ("Lewis Dec."), ¶41.) The primary value driving the sale to iPIX again were the inventions disclosed in the application that led to the issuance of Summit 6's patents. The chief value for iPIX's relationship with eBay continued to be Rimfire's technology. For example, as demonstrated in the Future Image Report's market research study, the "[r]eason for [eBay's] image server purchase" was "the drag and drop picture submission feature of Rimfire." (Ex. 2015, 10.) The study also outlined the benefits derived from Rimfire's drag and drop feature and preprocessing technology. (Id., 10–12.) The eBay contract contained a separate $8 million payment solely for the use of the claimed invention. (Ex. 2021, ¶5.9; Ex. 2020, 12; Pate Dec., ¶39.) Thus, the value to eBay was directly correlated with the inventions that ultimately issued as the '482 and '515 Patents. Finally, perhaps the most direct evidence of nexus between the patented technology and its commercial value is the Samsung jury verdict. In that case, the 57 4 IPR2015-00807 U.S. Pat. No. 8,612,515 jury awarded Summit 6 $15 million solely for the use of the patented technology embodied in its infringing cell phones. (Ex. 2003, 47.) This evidence proves the commercial success of Rimfire is a direct result of the '482 Patent. 3. Relevant Industries Praise Rimfire and the Prepare & Post Tools Industry praise also may provide evidence of non-obviousness, so long as it is linked to the patented invention. See Geo. M. Martin Co. v. Alliance Mach. Sys. Int'l LLC, 618 F.3d 1294, 1305 (Fed. Cir. 2010). At every milestone, Rimfire received industry praise that specifically described the patented technology. Since Prepare & Post's initial demonstration, news outlets have praised the technology. In November, 1998, two news articles touted the simplicity of Prepare & Post's ability to eliminate the costly labor and design expertise required to format, size and match photos. (See Ex. 2007; Ex. 2023.) Realtor magazine also listed Prepare & Post as a "Product Pick" as early as November 12, 1998. (Ex. 2024.) This early press demonstrates Prepare & Post's immediate impact. The online auction industry also reacted when PictureWorks announced Picturebay.com. One publication provided a testimonial describing the time saved by using Rimfire's pre-processing technology. (See Ex. 2011.) Another article outlined Picturebay.com's surging growth as it surpassed two million auction images processed. (See Ex. 2013.) 58 4 IPR2015-00807 U.S. Pat. No. 8,612,515 Rimfire's impact on eBay also was recognized both before and after its agreement with iPIX. Before the agreement, the book, eBay for Dummies, summarized the tedious tasks required to post images. (Ex. 2016, 10–11.) The book outlined problems users faced but noted, "one promising development. . . caught our attention recently—image-hosting Websites." (Id. at 255.) Picturebay is specifically referenced and described as "an easy-to-use, three-step procedure for sending images." (Id.) After the eBay agreement, Future Image, Inc.'s market study of eBay's installation of Rimfire outlined eBay's extreme need for an imaging solution and articulated the benefits it obtained by installing Rimfire. (Ex. 2015.) The second version of eBay for Dummies included a new section describing eBay's new image posting feature after it implemented Rimfire. (Ex. 2025.) These articles exemplify the early impact Rimfire had on the online auction market. Finally, in 2005, several businesses and experts in web-based imaging and classified advertising industries described Rimfire's success. (Ex. 2026; 2046; Ex. 2052; Ex. 2053.) They labeled the technology as "invaluable," a "fundamental building block for the future of the Web" and "crucial for many websites, including classified advertising." (Ex. 2026, 1, 6.) iPIX AdMission also received the "Gold Award in Marketing Innovation" from the Yellow Pages Association. (Ex. 2027; Pate Dec., ¶54.) Thus, when the patent issued, industry writers and associations 59 4 IPR2015-00807 U.S. Pat. No. 8,612,515 touted Rimfire's success and presented an award for the product built upon the technology that led to the issue of the '557, '482, and '515 patents. This evidence taken together proves that Summit 6's '515 Patent was not obvious. The significant level of commercial success within the industry, the licensing opportunity within that industry, and the praise received all prove the invention's impact on the web-based imaging markets. This contemporaneous evidence objectively demonstrates the technology embodied in the '515 patent was anything but obvious at the time. Petitioner's litigation-inspired attempt to reconstruct the inventors' technology using the '515 patent claims as a roadmap constitutes impermissible hindsight that is easily rebutted by the objective evidence of nonobviousness. See Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349–50 (Fed. Cir. 2012). VI. CONCLUSION Petitioner has failed to show that the challenged claims are unpatentable. The prior art does not teach or suggest one or more of the claimed limitations. Patent Owner has come forward with considerable objective evidence of non-obviousness that confirms that the challenged claims are not obvious. As a result, the Board should find each challenged claim valid. 60 4 IPR2015-00807 U.S. Pat. No. 8,612,515 Dated: December 9, 2015 /Peter J. Ayers/ Peter J. Ayers, Reg. No. 38,374 Email: peter@leehayes.com Lead Counsel John Shumaker, Reg No. 52,223 Email: jshumaker@leehayes.com Brian Mangum, Reg. No. 64,224 Email: brianm@leehayes.com Back-Up Counsel LEE & HAYES, PLLC 11501 Alterra Parkway, Suite 450 Austin, TX 78758 Phone: (512) 605-0252 Facsimile: (512) 605-0252 Robert J. Carlson, No. 35,472 Back-Up Counsel Email: bob@leehayes.com LEE & HAYES, PLLC 401 Pike Street Suite 1600 Seattle, WA 98101 Phone: (206) 876–6029 Facsimile: (206) 876–6029 Attorneys for Patent Owner Summit 6 LLC 61 4 IPR2015-00807 U.S. Pat. No. 8,612,515 CERTIFICATE OF SERVICE I hereby certify that on this 9th day of December, 2015, the foregoing PATENT OWNER'S RESPONSE UNDER 37 C.F.R. § 42.120 and Exhibits 2044-2060 were served on lead and back-up counsel for Google, Inc. by sending the same by electronic means to the address provided by the Petitioner: John Alemanni, Reg. No. 47,384 Lead Counsel Kilpatrick Townsend & Stockton LLP 1001 West Fourth Street Winston-Salem, NC 27101-2400 JAlemanni@kilpatricktownsend.com Michael Morlock, Reg. No. 62,245 Back-up Counsel Kilpatrick Townsend & Stockton LLP 1001 West Fourth Street Winston-Salem, NC 27101-2400 MMorlock@kilpatricktownsend.com /Peter J. Ayers/ Peter J. Ayers Reg. No. 38,374 Attorney for Patent Owner Summit 6 LLC 62