Lupercal LLC v. CitiBank, N.A.

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

Exhibit PC08

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6 EXHIBIT PC08 6 UNITED STATES PATENT AND TRADEMARK OFFICE ____________________________________________________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ GOOGLE INC. Petitioner v. SUMMIT 6 LLC Patent Owner ____________________ Case: IPR2015-00806 Patent No. 7,765,482 Title: Web-Based Media Submission Tool PATENT OWNER'S RESPONSE UNDER 37 C.F.R. § 42.120 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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 A. "an amount of media data" and "an amount of digital content" ...........7 B. "publication / publishing" and "distributing / distribution" ..................7 C. "said identification"...............................................................................8 D. "digital content" ....................................................................................8 E. "local device / client device" .................................................................8 F. "electronic publishing / distribution" ....................................................8 G. "encoding or otherwise converting"......................................................9 H. "pre-processing" ....................................................................................9 V. Petitioner has not shown a reasonable likelihood of prevailing. .....................9 A. Overview Of Asserted Prior Art..........................................................10 1. Creamer .....................................................................................10 2. Aihara ........................................................................................12 3. Mayle.........................................................................................12 4. Narayen .....................................................................................13 i 6 IPR2015-00806 U.S. Pat. No. 7,765,482 B. Petitioner Has Not Shown A Reason To Combine Asserted References. ..........................................................................................14 1. There Is No Motivation to Combine Creamer with Aihara. .....14 2. There is No Motivation to Combine Mayle with Narayen. ......21 C. Petitioner Has Not Shown That Claims 12, 13, 16, 18, 19, 21–25, 35– 38, 40–42, 44–46, and 49 are Obvious in View of Creamer and Aihara. .................................................................................................27 1. Claim 12 is Not Obvious in View of Creamer and Aihara. ......28 Neither Creamer nor Aihara nor their combination teaches or suggests "receiving an identification of a group of one or more media objects for transmission." .28 Neither Creamer nor Aihara nor their combination teaches or suggests "receiving pre-processing parameters from a remote device, pre-processing parameters including a specification of an amount of media data." .29 Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing said identified group of one or more media objects using said received pre- processing parameters." ..................................................31 2. Claims 13, 24, and 25 Are Not Obvious in View of Creamer and Aihara. ................................................................................32 Neither Creamer nor Aihara nor their combination teaches or suggests "receiving an identification of digital content" (claim 13) or "receiving an identification of a media object for transmission." (claims 24, 25) .............32 ii 6 IPR2015-00806 U.S. Pat. No. 7,765,482 Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing said identified [digital content / media object] at said [client / local] device in accordance with one or more pre-processing parameters." (claims 13, 24, 25) .....................................33 Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing parameters controlling said client device in a placement of said digital content into a specified form in preparation for publication." (claim 13) ..................................................33 3. Claims 35–38 Are Not Obvious Over Creamer and Aihara. ....35 Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing said selected digital content [at said client device] in accordance with one or more pre-processing parameters" that are received from a remote or separate device or "receiving pre-processed" digital content "in accordance with pre-processing parameters" received from a separate device (claims 35– 38) ...................................................................................35 Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing parameters [enabling/controlling] said client device in a placement of" said" [identified group of] "digital content into a specified form in preparation for publication." (claims 35–38) .............................................................................36 4. Dependent Claims 16, 18, 19, 21–23, 40–42, 44–46, and 49 Are Not Obvious Over Creamer and Aihara. ..................................36 D. Petitioner Has Not Shown That Claims 12, 13, 16, 18, 19, 21–25, 35– 38, 40–42, 44–46, and 49 are Obvious in View of Mayle and Narayen. .............................................................................................................36 1. Claim 12 is Not Obvious in View of Mayle and Narayen........37 iii 6 IPR2015-00806 U.S. Pat. No. 7,765,482 Neither Mayle nor Narayen teaches or suggests "receiving pre-processing parameters from a remote device. . . including a specification of an amount of media data." (claim 12) ..................................................37 Neither Mayle Nor Narayen teaches or suggests "pre- processing. . . media objects using. . . pre-processing parameters." (claim 12) ..................................................39 Neither Mayle nor Narayen teaches or suggests "transmitting said pre-processed group of one or more media objects to the remote device." (claim 12) ............40 2. Claims 13, 24, and 25 are Not Obvious in View of Mayle and Narayen. ....................................................................................41 Neither Mayle nor Narayen nor their combination teaches or suggests "pre-processing said identified content/media object with [or in accordance with] one or more pre- processing parameters that are received from a device separate from said client device." (claims 13, 24, and 25) ........................................................................................41 Neither Mayle nor Narayen nor their combination teaches or suggests "placement of said digital content into a specified form in preparation for publication," or "changing the file format of said media object," or "encoding or otherwise converting said media object." (claims 13, 24, and 25) ...................................................42 Neither Mayle nor Narayen nor their combination teaches or suggests "said transmitted message including said pre- processed digital content/media object and said retrieved information." (claims 13, 24, and 25).............................42 3. Claims 35–38 are Not Obvious in View of Mayle and Narayen. ...................................................................................................43 iv 6 IPR2015-00806 U.S. Pat. No. 7,765,482 4. Dependent Claims 16, 18, 19, 21, 22, 23, 40, 41, 42, 44, 45, 46 and 49 are Not Obvious in View of Mayle and Narayen. ........43 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 ..........................................................................................46 2. Commercial Success and Licensing .........................................51 a. Substantial Evidence of Commercial Success and Licensing Supports a Finding of Non-Obviousness. ......51 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 v 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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). vi 6 IPR2015-00806 U.S. Pat. No. 7,765,482 Exhibit 2011 Summit6-4341—Press Release, "PictureWorks Technology's PictureBay Solves #1 Frustration of eBay Members, Adding Pictures to Auctions," (April 12, 1999). 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). vii 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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). 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"). viii 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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). Exhibit 2036 Attachment to Samsung's Request for Ex-Parte Reexamination of U.S. Patent No. 7,765,482 (September 10, 2013). Exhibit 2037 U.S. Patent No. 6,038,295, titled "Apparatus and Method for Recording, Communicating and Administering Digital Images," to Mattes ("Mattes"). Exhibit 2038 Report on the Filing or Determination of an Action Regarding a Patent or Trademark, Summit 6 LLC v. HTC Corp., Civil Action No. 7:14-cv-00014-O (N.D.Tex., June 17, 2015). Exhibit 2039 Ex Parte Reexamination Decision, Reexamination Control Number 90/012,987 (U.S. Pat. & Trademark Office, November 6, 2013). Exhibit 2040 Final Office Action, Reexamination Control Number 90/012,987 (U.S. Pat. & Trademark Office, May 21, 2014). Exhibit 2041 Patent Owner's Appeal Brief Pursuant to 37 C.F.R. § 41.37, Reexamination Control Number 90/012,987 (November 24, 2014). Exhibit 2042 Examiner's Answer, Reexamination Control Number 90/012,987 (U.S. Pat. & Trademark Office, January 20, 2015). Exhibit 2043 Notice of Hearing, Reexamination Control Number 90/012,987 (U.S. Pat. & Trademark Office, September 18, 2015). Exhibit 2044 iPIX Presentation, "eBay Picture Services Stats." ix 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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). x 6 IPR2015-00806 U.S. Pat. No. 7,765,482 TABLE OF AUTHORITIES Cases Page(s) Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362 (Fed. Cir. 2012) .......................................................................... 54 Arlington Industries, Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246 (Fed. Cir. 2011) ............................................................................ 7 Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120 (Fed. Cir. 2000) .......................................................................... 46 Geo. M. Martin Co. v. Alliance Machine Systems International LLC, 618 F.3d 1294 (Fed. Cir. 2010) .......................................................................... 58 In re Gershon, 372 F.2d 535 (CCPA 1967) ................................................................................ 47 In re Glatt Air Techniques, Inc., 630 F.3d 1026 (Fed. Cir. 2011) .......................................................................... 51 InTouch Techs., Inc. v. VGO Communications, Inc., 751 F.3d 1327 (Fed. Cir. 2014) .......................................................................... 14 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) ............................................................................................ 14 Muniauction, Inc. v. Thomson Corporation, 532 F.3d 1318 (Fed. Cir. 2008) .......................................................................... 46 Omron Oilfield & Marine, Inc. v. MD/TOTCO, A Div. of Varco, L.P., IPR2013-00265, Paper 11 .......................................................................51, 54, 56 Rambus Inc. v. Rea, 731 F.3d 1248 (Fed. Cir. 2013) ....................................................................46, 51 Summit 6 LLC v. HTC Corp., et al., No. 7:14-cv-00014-O (N.D. Tex. Feb. 18, 2014) ................................................. 6 xi 6 IPR2015-00806 U.S. Pat. No. 7,765,482 Summit 6, LLC v. Samsung Electronic Co., 802 F.3d 1283 (Fed. Cir. 2015) ........................................................................ 1, 6 Tandus Flooring, Inc. v. Interface, Inc., IPR2013-00527, Paper 48 .............................................................................47, 51 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) ................................................................................................... 10 35 U.S.C. § 103 ............................................................................................10, 27, 37 xii 6 IPR2015-00806 U.S. Pat. No. 7,765,482 I. INTRODUCTION Summit 6 LLC files this Patent Owner response to one of two petitions for inter partes review Google filed against two of Summit 6's related patents.1 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 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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 is 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 4, 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 2 6 IPR2015-00806 U.S. Pat. No. 7,765,482 July 27, 2010. (Ex. 1001.) Finally, on April 29, 2011, Summit 6 filed for a third patent, which issued on December 17, 2013 as the '515 Patent. (Ex. 2029.) 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 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 3 6 IPR2015-00806 U.S. Pat. No. 7,765,482 (right). 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 an image such as a MLS listing number 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 6 IPR2015-00806 U.S. Pat. No. 7,765,482 objects prior to sending." ('482 pat., 2:65–67.) These tools provide a user an intuitive platform for facilitating image selection and uploading. The Prepare and Post tools 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 the 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 also 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 $15M for Samsung's infringement of claims 40, 44–46, and 49 of the '482 patent. (Ex. 2003 at 46, 47.) The jury also found that Samsung did not prove that these claims were invalid over the prior art. (Id.) The 5 6 IPR2015-00806 U.S. Pat. No. 7,765,482 Federal Circuit affirmed that judgment on September 21, 2015, Summit 6, 802 F.3d at 1299, and entered a mandate on its affirmance on December 2, 2015, (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.)) While Google has not been a defendant, 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) three to five years of industry experience in the general field of software engineering and web implementation. (Pet., 17.) Patent Owner acknowledges the similarity between the technical fields of computer science and electrical engineering, but requiring three to five 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 '482 patent is directed to a 6 6 IPR2015-00806 U.S. Pat. No. 7,765,482 person 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. 2058 ("Kaliski Dec."), ¶15.) IV. CLAIM CONSTRUCTION The PTAB employs the "broadest reasonable interpretation" (BRI) in post- grant proceedings. A. "an amount of media data" and "an amount of digital content" To the extent construction is required, Patent Owner proposes that this term be construed to mean a "quantity or size of digital content." Petitioner's construction is incorrect to the extent that it requires "as defined by one or more of physical dimensions, pixel count, or kilobytes." Petitioner's proposed construction would exclude identifying a number of items of digital content from the scope of this term and thus would be inconsistent with claims 2 and 3. Petitioner's proposed construction for this term should be rejected. (Kaliski Dec., ¶314.) B. "publication / publishing" and "distributing / distribution" Petitioner's proposed construction is incorrect because it ignores claim scope differences between these terms. The intrinsic record does not support construing these terms identically. (See, e.g., claim 51 of the '482 patent, which recites both "distribution" and "publication"). Different words used in a claim are presumed to have different claim scope. Arlington Industries, Inc. v. Bridgeport Fittings, Inc., 7 6 IPR2015-00806 U.S. Pat. No. 7,765,482 632 F.3d 1246, 1254 (Fed. Cir. 2011). And Google recognizes that publication and distribution have different claim scopes. (Pet., 19.) Patent Owner proposes that these terms be construed according to their plain and ordinary meanings, which for "publishing" is "making publicly available" and "distribution" is "sharing." These constructions comport with the Claim Construction Orders in the two U.S. district court matters that have construed the '482 and '515 patents. (See Ex. 2035, p. 66; Ex. 2030, p. 58.) (Kaliski Dec., ¶315.) C. "said identification" Patent Owner agrees that the broadest reasonable construction for this term is "said identification of digital content." (Id., ¶316.) D. "digital content" The term "digital content" is commonly understood by a POSITA such that no construction is necessary. (Id., ¶317.) E. "local device / client device" Petitioner asserts that the terms "local device" and "client device" are interchangeable (Pet., 21), but then suggests that "'client device' refers to a range of devices that includes local devices." (Id., 22.) Patent Owner proposes that these terms are commonly understood by a POSITA, and require no construction. (Kaliski Dec., ¶318.) F. "electronic publishing / distribution" 8 6 IPR2015-00806 U.S. Pat. No. 7,765,482 Petitioner had previously proposed a construction of the terms publishing and distribution (see Section B above), yet offers no explanation or justification for returning to these terms. In particular, the terms "electronic publishing" and "electronic distribution" do not appear in the claims, and require no construction. (Kaliski Dec., ¶319.) G. "encoding or otherwise converting" Patent Owner submits that this term should be construed according to its plain and ordinary meaning. (Id., ¶320.) H. "pre-processing" 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, p. 12–13.) (Kaliski Dec., ¶313.) 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 12, 9 6 IPR2015-00806 U.S. Pat. No. 7,765,482 13, 16, 18, 19, 21–25, 35–38, 40–42, 44–46, 49. (Pet., 23–58.) As shown below, the challenged claims are not obvious under 35 U.S.C. § 103. A. Overview Of Asserted Prior Art 1. Creamer U.S. Pat. No. 6,930,709 ("Creamer") was filed on December 3, 1998, issued on August 16, 2005, and is assigned to the camera company Pentax. (Ex. 1004.) Creamer claims priority to provisional application No. 60/067,310, filed on December 4, 1997 ("Creamer '97"). (Id.) 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 from general purpose memory either (i) immediately as they are created, or (ii) in a batch process executed at a later time. (Id.) 10 6 IPR2015-00806 U.S. Pat. No. 7,765,482 Fig. 3 depicts the Creamer camera system. The image is captured by 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.) The 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 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 11 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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., 1:27–35.) 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– 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 12 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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. 1007.) 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– 23 (Fig. 6B is a 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 the album, the server authors HTML pages depicting the album format, acquires from a server database HTML viewable image copies, joins the images to the album pages, and serves the requesting client the 13 6 IPR2015-00806 U.S. Pat. No. 7,765,482 completed page. (Id., 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 14 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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 ("display 218 shows a more accurate representation of the scene at which camera 1 is directed than the viewfinder, and a more accurate preview of image that will be captured").) 15 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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., 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., at 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 less efficient and less accurate review. (Id.) The resulting image degradation undermines 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.) 16 6 IPR2015-00806 U.S. Pat. No. 7,765,482 Displaying images on a larger screen allows a user to more accurately and quickly 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 accurate image display is subjective based on the application that created the image and the viewer: 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. Q: And whether or not an image is displayed accurately is a subjective analysis? 17 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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 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").) 18 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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. (Kaliski Dec., ¶46.) Creamer discloses a camera that is programmed to capture and transfer images from a camera to a third party 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.) Creamer captures images and updates configuration settings for future images, but 19 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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.) 20 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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 Cramer 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, 78.) 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 21 6 IPR2015-00806 U.S. Pat. No. 7,765,482 write a Java program accessible to Mayle's browser-based system that would 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., ¶77.) Petitioner's allegation that Mayle "expressly teaches" that it should be combined with Narayen (Pet., 14) is erroneous because Mayle does not teach that it 22 6 IPR2015-00806 U.S. Pat. No. 7,765,482 can be combined with any reference that discloses a "photo album." (Kaliski Dec., ¶¶77, 78.) 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– 23 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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.) 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. at 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 24 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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 image processing tools beyond the image processing functions of the server in Mayle. (Id., ¶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 improper hindsight. (Id., ¶83.) 25 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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 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 26 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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 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 12, 13, 16, 18, 19, 21–25, 35–38, 40–42, 44–46, and 49 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. 27 6 IPR2015-00806 U.S. Pat. No. 7,765,482 1. Claim 12 is Not Obvious in View of Creamer and Aihara. Neither Creamer nor Aihara nor their combination teaches or suggests "receiving an identification of a group of one or more media objects for transmission." Independent claim 12 requires "receiving an identification of a group of one or more media objects for transmission." Creamer teaches no image identification because its system automatically transfers every picture taken either immediately or in a batch operation at a future time. Furthermore, Petitioner has not met its burden to show that Aihara discloses this limitation. Petitioner alleges that "Creamer discloses a means to identify media objects for transmission 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., 25.) 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 for transmission. (Kaliski Dec., ¶¶110.) 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; Kaliski Dec., ¶110.) 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 28 6 IPR2015-00806 U.S. Pat. No. 7,765,482 storage of the digital image as a file cannot meet this limitation. (See also Figure 8 (describing image manipulation and compression as part of the image capture process).) Petitioner further alleges that the "[c]aptured images (e.g., media objects) are limited by the received pre-processing parameters in that the parameters define a level of compression that will limit (e.g., reduce) the file sizes of those images when the preprocessing occurs." (Id., 25–26.) Petitioner is wrong because Creamer does not pre-process any image, it generates captured images. (Kaliski Dec., ¶110.) Next Petitioner alleges that Aihara "discloses 'select[ing] pictures from a set stored in the memory of the camera.'" (Pet., 26, citing (Aihara, 8:26–28).) But the recited claim language does not merely recite "selecting pictures." Instead, it recites "receiving an identification" of "media objects for transmission." Because Petitioner did not attempt to articulate a theory showing that Aihara discloses this limitation, including identification for transmission, Petitioner has failed to meet its burden with respect to this claim limitation. (Kaliski Dec., ¶111.) Neither Creamer nor Aihara nor their combination teaches or suggests "receiving pre-processing parameters from a remote device, pre-processing parameters including a specification of an amount of media data." Independent claim 12 recites "receiving pre-processing parameters from a remote device, pre-processing parameters including a specification of an amount of media data." Neither Creamer nor Aihara teaches or suggests these limitations. 29 6 IPR2015-00806 U.S. Pat. No. 7,765,482 Creamer never specifies an amount of digital content; it discusses the use of an optional parameter that changes the compression level of a captured image based on the rate of data transmission. (Creamer, 19:9–22 ("the compression engine 226 is then set to increase the compression level by a predetermined amount if the data rate is lower than a predetermined rate, or decrease the compression level by a predetermined amount if the date rate is higher than a predetermined rate").) Petitioner contends that the setup/configuration parameters relating to JPEG compression level, resolution, grey-scale or color image, and cropping of specified image "specify an amount of media data." (Pet., 24–25.) Petitioner alleges that "[t]hese parameters all control quantity or size of digital content, as defined by one or more of physical dimensions, pixel count, or kilobytes." (Id., 25.) Regardless, rather than specifying an amount of data, modifying the compression level merely changes the amount of data. (Kaliski Dec., ¶113.) Even Google's expert admitted that JPEG compression does not specify an amount of data. (Clark Dep., 66:20–67:4 ("Q: So if I have a JPEG compression algorithm specified as a compression level, what is the discrete quantity of data that would be associated with that JPEG compression algorithm? A: The amount of data would be the output. Q: So what is the output of the JPEG compression function? A: Again there's parameters that can be set, but it would be dependent upon the input size and also the content.") 30 6 IPR2015-00806 U.S. Pat. No. 7,765,482 (emphasis added).) Petitioner has failed to meet its burden with respect to this claim limitation. (Kaliski Dec., ¶¶113–14.) Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing said identified group of one or more media objects using said received pre-processing parameters." Independent claim 12 recites "pre-processing said identified group of one or more media objects using said received pre-processing parameters." Creamer does not pre-process any "identified" items of digital content. Nor has Petitioner shown that Aihara discloses this limitation. The parameters identified by Petitioner (See generally Pet., 26–27) do not control processing of image files before transmission, as required by the claim language. (Kaliski Dec., ¶116.) Rather, Creamer's parameters define how raw image data is manipulated before initially being saved in general purpose memory—the parameters 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. Importantly, Fig. 8 of Creamer defines the image capture routine as including the image adjustment (S36) and JPEG compression steps (S38). (Creamer, Fig. 8; Kaliski Dec., ¶116.) Creamer does not teach further modifying these image files after they are created. The variables and parameters are applicable to a particular image 31 6 IPR2015-00806 U.S. Pat. No. 7,765,482 slot, which does not identify any unique image. Because the compression and adjustment steps are performed on raw image data, not on identified image files, and because Creamer does not teach identifying files (see previous section), Creamer does not teach or disclose this limitation. Petitioner does not articulate how Aihara discloses this element other than stating that "Aihara also discloses 'images [that] are located and scaled. . . in accordance with the script's predefined model.'" (Pet., 27 (citing Aihara, 13:19– 23).) But this excerpt describes how an image is placed in a web page, not how the image is pre-processed in accordance with received pre-processing parameters as recited by the claim language. Aihara does not disclose processing using received parameters. Petitioner has failed to meet its burden with respect to this claim limitation. (Kaliski Dec., ¶117.) 2. Claims 13, 24, and 25 Are Not Obvious in View of Creamer and Aihara. Neither Creamer nor Aihara nor their combination teaches or suggests "receiving an identification of digital content" (claim 13) or "receiving an identification of a media object for transmission." (claims 24, 25) Petitioner refers to the discussion of claim element 12[B]. (Pet., 28.) As discussed previously in Section V(C)(1)(a), neither Creamer nor Aihara nor their combination disclose this element for the same reasons. (Kaliski Dec., ¶118.) 32 6 IPR2015-00806 U.S. Pat. No. 7,765,482 Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing said identified [digital content / media object] at said [client / local] device in accordance with one or more pre-processing parameters." (claims 13, 24, 25) Petitioner's refers to the discussion of claim 12 elements a and c (Pet., 28– 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., ¶119.) Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing parameters controlling said client device in a placement of said digital content into a specified form in preparation for publication." (claim 13) Independent claim 13 requires "pre-processing parameters controlling said client device in a placement of said digital content into a specified form in preparation for publication." Petitioner argues that generation of data in a form suitable for Internet publishing meets this element. (Pet., 29.) But Petitioner ignores that neither Creamer nor Aihara teaches pre-processing parameters that place digital content into a specified form in "preparation for publication." Petitioner's argument that JPEG compression is performed in preparation for publication [or distribution] (Pet., 29) is unsupported by evidence other than a conclusory expert testimony. Just because an image is JPEG compressed does not mean that the JPEG compression was performed in preparation for publication. (Kaliski Dec., ¶121.) JPEG compression predates the asserted prior art, and was 33 6 IPR2015-00806 U.S. Pat. No. 7,765,482 developed to compress a stream of bytes of image data. (Id.) Moreover, the visual detail of a decoded JPEG compressed image depends on a quality factor. (Id.) Many images that have been compressed using low quality JPEG would not reproduce without substantial loss of color and detail in the image, and such images may not be appropriate for publication. (Id.) Accordingly, a POSITA would recognize that JPEG compression is performed as convenient way to reduce the size of an image to facilitate storage and transfer of that image, and not performed in preparation for publication. (Id.) Creamer does not teach or suggest that these functions are performed "in preparation for publication [or distribution]" as recited by the claims. Instead, Creamer teaches that compression is performed in preparation for transmission, not publication of the image data. (Creamer, 19:9–20.) Creamer modulates the compression rate based on the transmission rate between the camera and the image host, not based on the transmission rate (or any other characteristic) of the channel between that host and any end downstream recipient to which the item is "published." (Kaliski Dec., ¶122.) Creamer does not teach that compression is performed for the purpose of publication. (Id.) Petitioner fails to articulate an obviousness theory based on Creamer or Aihara for this element, and instead makes an unsupported, conclusory statement: "Each of 34 6 IPR2015-00806 U.S. Pat. No. 7,765,482 these could be used by the systems disclosed in Creamer and Aihara, and is a specified form in preparation for publication." (Pet., 29.) Petitioner's obviousness theory is incorrect. To the extent that the script file identified by Petitioner in Aihara determines how (e.g., where) an image file appears on a web page, it does not modify the image. (Kaliski Dec., ¶123.) "[T]he HTML commands which determine the appearance, hereafter referred to as the format, of the resulting web page, are generated in script in accordance with the predefined model." (Aihara, 7:48–51.) The script disclosed in Aihara does not pre-process any image, let alone in a "specified form." (Kaliski Dec., ¶123.) Petitioner has not shown that Aihara discloses pre-processing parameters controlling the placement of the digital content in a specified form in preparation for publication. (Id.) 3. Claims 35–38 Are Not Obvious Over Creamer and Aihara. Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing said selected digital content [at said client device] in accordance with one or more pre-processing parameters" that are received from a remote or separate device or "receiving pre-processed" digital content "in accordance with pre-processing parameters" received from a separate device (claims 35–38) Petitioner's invalidity theory refers to the discussion of claim 12, elements a– d, and claim 13, element c. (Pet., 33–36.) As discussed in Sections V(C)(1) and 35 6 IPR2015-00806 U.S. Pat. No. 7,765,482 V(C)(2), neither Creamer nor Aihara nor their combination disclose this element for the same reasons. (Kaliski Dec., ¶124.) Neither Creamer nor Aihara nor their combination teaches or suggests "pre-processing parameters [enabling/controlling] said client device in a placement of" said" [identified group of] "digital content into a specified form in preparation for publication." (claims 35–38) Petitioner's invalidity theory refers to the discussion of claim 12 elements a– d, and claim 13, element c. (Pet., 33–36.) As discussed in Sections V(C)(1) and V(C)(2)(c), neither Creamer nor Aihara nor their combination disclose this element for the same reasons. Furthermore, Petitioner's analysis of claim 12 elements a–d and claim element 13 c do not address this limitation, and thus Petitioner cannot meet its burden with respect to this element. (Kaliski Dec., ¶125.) 4. Dependent Claims 16, 18, 19, 21–23, 40–42, 44–46, and 49 Are Not Obvious Over Creamer and Aihara. 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 Creamer and Aihara. Accordingly, neither Creamer nor Aihara nor their combination discloses these claims for the same reasons. (Kaliski Dec., ¶126–128.) D. Petitioner Has Not Shown That Claims 12, 13, 16, 18, 19, 21–25, 35–38, 40–42, 44–46, and 49 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 36 6 IPR2015-00806 U.S. Pat. No. 7,765,482 motivated to combine Mayle and Narayen. The Board should find that Petitioner has not shown that the challenged claims are obvious under §103. 1. Claim 12 is Not Obvious in View of Mayle and Narayen. Neither Mayle nor Narayen teaches or suggests "receiving pre- processing parameters from a remote device. . . including a specification of an amount of media data." (claim 12) Petitioner misrepresents the teachings of the Mayle reference, asserting that in Mayle the various forms of image processing disclosed "may be performed on the local client device." (Pet., 41 (citing Mayle, 2:65–3:4.)) Because the server in Mayle performs image processing, Mayle does not disclose receiving pre-processing parameters from a remote device. Petitioner has not shown that Aihara discloses this limitation. The byte count in Mayle is not a pre-processing parameter. (Kaliski Dec., ¶131.) "[I]f the byte count exceeds some limit then the image is ignored and the user is redirected to an error page." (Mayle, 11:3–4.) The server ignores, rather than processes, such an image. (Kaliski Dec., ¶131.)The byte count parameter is not sent to the client: it is used by the server "to check the byte count of the data sent to the server." (Mayle, 11:1–2; Kaliski Dec., ¶118.) Recognizing that Mayle does not disclose receiving pre-processing parameters from a remote device, Petitioner uses hindsight to argue that it would 37 6 IPR2015-00806 U.S. Pat. No. 7,765,482 have been obvious to a POSITA "to send the parameters specifying the maximum byte count, maximum scale, and compression format from the server hosting the web site. . . because the browser-based system of Mayle would need these parameters at the client device in order to preprocess the digital content." (Pet., 42–43.) Petitioner is wrong. After disclosing that all processing is performed on the server, Mayle recognizes that the client could preview images before sending to the server for processing. "In addition, the client may be augmented to perform a portion of the processing during interactions with the server" to allow the client device to generate a "preview" of the image as it will appear after processing by the server. (Mayle, 3:2–4, 13:59–14:7 (describing augmenting the client device to perform 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").) A POSITA would recognize that a user may want to preview a postcard in Mayle before allowing access to recipients to ensure that the server-generated postcard will be acceptable for viewing by the recipients. (Kaliski Dec., ¶132.) Absent such a preview function, the server may generate unnecessary and inappropriate post cards. (Id.) A POSITA would 38 6 IPR2015-00806 U.S. Pat. No. 7,765,482 conclude that Mayle teaches that all image processing is performed on the server, and therefore no pre-processing parameters would be received by the client from a remote device in Mayle. (Id.) Nor has Petitioner shown any pre-processing parameters received by Aihara that meets this limitation. Neither Mayle Nor Narayen teaches or suggests "pre- processing. . . media objects using. . . pre-processing parameters." (claim 12) As discussed in the foregoing subsection, Mayle teaches all image processing is performed by the server. Mayle does not provide client pre-processing of an image for transmission to the server, i.e. does not disclose "pre-processing." Mayle only mentions augmenting the client to provide a preview of the image as it will appear after processing by the server. (Kaliski Dec., ¶133.) Mayle does not pre-process media objects at the client. (Kaliski Dec., ¶134.) Nor does Narayen as it discloses processing of the picture album at the server. (Narayen, 10:51–11:6, 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 39 6 IPR2015-00806 U.S. Pat. No. 7,765,482 the "album authoring software scal[ing] each picture if necessary to cause it to fit into the corresponding slot on the album page" is not "pre-processing." (Narayen, 9:45–47; Kaliski Dec., ¶135.) Narayen scales an image for preview on the client display, not modifying the underlying data for that identified image as required by pre-processing. (Kaliski Dec., ¶135.) Furthermore, Narayen does not teach that the scaled image is actually transmitted to a computer. (Id.) 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.) Neither Mayle nor Narayen teaches or suggests "transmitting said pre-processed group of one or more media objects to the remote device." (claim 12) As set forth in the foregoing subsection, Mayle describes preparation of the postcard data only on the server. Petitioner misrepresents Mayle's teachings by asserting "[a]fter pre-processing, subsequent transmission to a remote device occurs '[w]hen the user clicks on the Send button. . . .'" (Pet., 41.) As Mayle makes clear, the Send command simply instructs the server to move the postcard data from the server's temporary files to permanent storage in the server's Card Database and Image Database, at which time the temporary data can be deleted. (Mayle, 5:32–40.) Neither Mayle nor Narayen teaches transmitting any images to the remote device that provided the pre-processing parameters. (Kaliski Dec., ¶136.) Furthermore, 40 6 IPR2015-00806 U.S. Pat. No. 7,765,482 neither 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 transmitted to any device. (Kaliski Dec., ¶136.) Accordingly, neither Mayle nor Narayen disclose this element. (Id.) 2. Claims 13, 24, and 25 are Not Obvious in View of Mayle and Narayen. As discussed below, Petitioner has not shown that Independent claims 13, 24, and 25 are invalid. Neither Mayle nor Narayen nor their combination teaches or suggests "pre-processing said identified content/media object with [or in accordance with] one or more pre-processing parameters that are received from a device separate from said client device." (claims 13, 24, and 25) As set forth in the foregoing Section V(D)(1)(a), while Mayle mentions augmenting the client to provide a preview of the image as it will appear after processing by the server, Mayle does not disclose client-side processing of an image that will be transmitted to the server. All image processing is done on the server. (Kaliski Dec., ¶138.) Mayle includes no teaching of delivery, to the client device, of pre-processing parameters originating from a separate device. (Id.) Narayen fails to supply this missing limitation because Narayen solely discloses processing of the picture album at the server (Narayen, 10:51–11:6.) Nothing in Narayen teaches or 41 6 IPR2015-00806 U.S. Pat. No. 7,765,482 suggests a separate device providing the client device with image processing parameters. (Kaliski Dec., ¶138.) Neither Mayle nor Narayen nor their combination teaches or suggests "placement of said digital content into a specified form in preparation for publication," or "changing the file format of said media object," or "encoding or otherwise converting said media object." (claims 13, 24, and 25) Petitioner's argument with respect to these claim limitations appears to be that a POSITA would simply understand them, because "[t]he '482 patent relates to the field of 'handling, manipulation and processing of digital content and more particularly to the transportation and Internet publishing of digital content.'" (Pet., 48.) This is improper hindsight reconstruction: attributing knowledge to a POSITA based upon the specification of the '482 patent. Neither Mayle nor Narayen place digital content in a form in preparation for publication, nor do they pre-process images. (Kaliski Dec., ¶139.) 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 publication or distribution to others, including remote devices. (Kaliski Dec., ¶139.) Neither Mayle nor Narayen nor their combination teaches or suggests "said transmitted message including said pre- processed digital content/media object and said retrieved information." (claims 13, 24, and 25) 42 6 IPR2015-00806 U.S. Pat. No. 7,765,482 Petitioner's argument with respect to these limitations consists of recitation of the respective claim language, and a reference to Petitioner's argument concerning claim 12. For the reasons set forth above in response to the claim 12 in Section V(D)(1)(c), Mayle and Narayen and their combination do not teach this limitation. (Kaliski Dec., ¶140.) 3. Claims 35–38 are Not Obvious in View of Mayle and Narayen. Petitioner's argument with respect to claims 35–38 relies on its argument concerning claim 12. For the reasons set forth above in response to claims 12 and 13 in Sections V(D)(1) and V(D)(2), Mayle and Narayen and their combination does not render these claims invalid. (Kaliski Dec., ¶141.) 4. Dependent Claims 16, 18, 19, 21, 22, 23, 40, 41, 42, 44, 45, 46 and 49 are Not Obvious in View of Mayle and Narayen. Finally, Petitioner attempts to improperly incorporate its arguments in relation to claims 12 and 13. Petitioner does not explain its conclusions, or demonstrate where, in the Mayle and Narayen references, these asserted limitations can be found. Nonetheless, Petitioner's argument is incorrect as discussed above in response to Petitioner's claim 12 and claim 13 arguments in Sections V(D)(1) and V(D)(2). Petitioner attempts to argue that a POSITA familiar with Mayle and Narayen would simply understand that "the parameters specifying maximum byte count, maximum scale, and compression format were downloaded by the client device from 43 6 IPR2015-00806 U.S. Pat. No. 7,765,482 the server hosting the website comprising the system and stored in the client device's data store." (Pet., 55.) But Mayle teaches away from client-side pre-processing to meet the byte count requirements of the server. (Kaliski Dec., ¶143.) Mayle provides that "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." (Mayle, 10:66–11:4.) Mayle instructs a POSITA that a user operating a client device and desiring to send an image to a server cannot succeed unless he or she knows, and meets, the server's image size and format requirements. (Kaliski Dec., ¶143.) Mayle teaches that a server ignores images whose size exceeds the byte count, and the user receives an error message. (Maye, at 11:1–4.) (Kaliski Dec., ¶143.) 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 exist 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 6 IPR2015-00806 U.S. Pat. No. 7,765,482 and '515 Patents, obtained licenses, and received a wide industry recognition. This continued success rebuts 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 '482 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 (Claims 12, 13, 24, 25, 35–38). (See Kaliski Dec., ¶¶188–194, 214–244.)  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 (Claims 12, 13, 24, 25, 35–38). (See Kaliski Dec., ¶¶188–194, 214–244.)  Preparation of thumbnail images. (Ex. 2010, 7, 10; Ex. 2015, 6). This feature is present in independent claim 35. (See Kaliski Dec., ¶¶226–231.) As one example, Dr. Kaliski opines that Rimfire, including the Prepare & Post Tools, meets the limitations of claim 12. (Kaliski Dec., ¶¶187-194.) Rimfire allows users to pre-process selected images to a specified height and width thereby meeting the "receiving pre-processing parameters," "receiving an identification," and "pre- 45 6 IPR2015-00806 U.S. Pat. No. 7,765,482 processing" limitations of claim 12. (Id.,¶¶187–191.) Additionally, Rimfire allows a user to submit an image to a remote device, via, e.g., a "submission button," and thereby meeting the "transmitting" limitation of claim 12. (Kaliski Dec. ¶¶187, 192– 193.) Dr. Kaliski also opines that Rimfire, including Prepare & Post, also meets the limitations of the remaining challenged claims. (Kaliski Dec. ¶¶195-259.) 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, 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 46 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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. (Ex. 2050 ("Lewis Dec."), ¶¶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 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.) 47 6 IPR2015-00806 U.S. Pat. No. 7,765,482 PictureWorks began pitching the Prepare & Post technology to potential clients shortly after its conception. (See, e.g., Exs. 2005, 2006, 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.) 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 48 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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 Rimfire, 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 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, 49 6 IPR2015-00806 U.S. Pat. No. 7,765,482 eBay requested bids from 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 service eBay struggled to provide since its inception. (Lewis Dec., ¶42; Ex. 2025 at 15–16.) 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. 50 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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 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 51 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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; 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 52 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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.) 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. 53 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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 market within about six years); Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1371 (Fed. Cir. 2012) (ruling Alcon's drug a commercial success, "achieving 70% market share within two years of its launch"). 54 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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 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. 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 55 6 IPR2015-00806 U.S. Pat. No. 7,765,482 proposal. (See, e.g., Ex. 2005; Ex. 2006, 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.) 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 56 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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." (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 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. 57 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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.) 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 58 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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 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. 59 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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 '482 patent was anything but obvious at the time. Petitioner's litigation-inspired attempt to reconstruct the inventors' technology using the 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. In addition, 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 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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 6 IPR2015-00806 U.S. Pat. No. 7,765,482 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