Petition, Unified Patents Inc. v. MyMail, LTD., IPR2017-00967

Filed on behalf of Unified Patents Inc.
By: Jonathan Stroud, Reg. 72,518

Roshan Suresh Mansinghani, Reg. 62,429
Unified Patents Inc.
1875 Connecticut Ave. NW, Floor 10
Washington, DC, 20009
Tel: (202) 805-8931
Email: jonathan@unifiedpatents.com
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________________________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________________________________
UNIFIED PATENTS INC.

Petitioner
v.
MYMAIL, LTD
Patent Owner
IPR2017-00967
Patent 8,275,863
PETITION FOR INTER PARTES REVIEW OF

US PATENT NO. 6,757,913
CHALLENGING CLAIMS 1-4, 6-13, 20 AND 22
UNDER 35 U.S.C. 312 AND 37 C.F.R. 42.104
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TABLE OF CONTENTS
Page
I. INTRODUCTION .......................................................................................... 5
II. MANDATORY NOTICES PURSUANT TO 37 C.F.R. 42.8 ..................... 6
A. Notice of Real Party-In-Interest (37 C.F.R. 42.8(b)(1)) .................... 6
B. Notice of Related Matters (37 C.F.R. 42.8(b)(2)) ............................. 7
C. Designation of Lead and Back-up Counsel (37 C.F.R. 42.8(b)(3)) ... 7
D. Service Information (37 C.F.R. 42.8(b)(4)) ....................................... 8
E. Certification of Grounds for Standing (37 C.F.R. 42.104(a))............ 8
III. CHALLENGE AND RELIEF REQUESTED ................................................ 8
A. Specific Art and Statutory Ground(s) on which the Challenges Are
Based..................................................................................................... 8
IV. THE '863 PATENT ....................................................................................... 11
V. PERSON OF ORDINARY SKILL IN THE ART ........................................ 11
VI. CLAIM CONSTRUCTION .......................................................................... 11
A. "attribute" ............................................................................................ 12
B. "automatically" ................................................................................... 13
C. "web browser"..................................................................................... 15
D. "name-value pair" ............................................................................... 15
VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
CLAIM OF THE '863 PATENT IS UNPATENTABLE .............................. 16
Ground 1: Claims 1, 11, 14-17, 20, and 23 are anticipated by Reilly under 35
U.S.C. 102(e) ................................................................................... 16
Ground 2: Claims 1, 4-5, 11, 14-17, 20, and 23 are anticipated by Filepp
under 35 U.S.C. 102(b) .................................................................... 29
Ground 3: Claims 1-2, 4-5, 11, 14-17, 20, and 23 are rendered obvious by
Filepp in view of Morten under 35 U.S.C. 103(a) ........................... 40
Ground 4: Claims 1-2, 11, 14-17, 20, and 23 are rendered obvious by Reilly
in view of Tuniman under 35 U.S.C. 103(a) ................................... 47
Ground 5: Claims 2 and 10 are rendered obvious by Filepp in view of Olsen
under 35 U.S.C. 103(a) .................................................................... 59
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Ground 6: Claims 2 and 10 are rendered obvious by Reilly in view of
December under 35 U.S.C. 103(a) ................................................... 61
VIII. CONCLUSION ............................................................................................. 64
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TABLE OF AUTHORITIES
Page(s)
Cases
Agilent Technologies Inc. v. Affymetrix, Inc.,
No. C 06-05958 JW, 2008 WL 7348188 (N.D. Cal. June 13,
2008) ........................................................................................... 7
MyMail, Ltd. v. Conduit Ltd. et al.,
CA. No. 2:13-cv-00961-JRG/RSP (E.D. Tex.) ............................... 2
Statutes
35 U.S.C. 102 .......................................................................................... passim
35 U.S.C. 103(a) ..................................................................................... passim
35 U.S.C. 314(a) ...................................................................................... 6
35 U.S.C. 311-319 ................................................................................. 1
37 C.F.R. 41.200(b) ................................................................................ 8
37 C.F.R. 42.100 et seq............................................................................ 1
37 C.F.R. 42.100(b) ................................................................................ 7, 12
37 C.F.R. 42.103 ..................................................................................... 3
37 C.F.R. 42.104 ................................................................................... 3, 4, 8, 12

37 C.F.R. 42.15(a).................................................................................. 3
37 C.F.R. 42.22(a)(1) .............................................................................. 3
37 C.F.R. 42.8 ....................................................................................... 2, 3

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EXHIBIT LIST
EX. Description
1001 U.S. Patent 8,275,863 (the '863 patent)
1002 Excerpts from the prosecution history of U.S. Patent No. 8,275,863
U.S. Patent No. 5,740,549 issued to James P. Reilly et al. on April
1003 14, 1998 ("Reilly")
U.S. Patent No. 5,347,632 issued to Robert Filepp et al. on
1004 September 13, 1994 ("Filepp")
U.S. Patent No. 5,021,949 issued to Richard M. Morten et al. on June
1005 4, 1991 ("Morten")
U.S. Patent No. 5,644,737 issued to David Charles Tuniman et al. on
1006 July 1, 1997 ("Tuniman")
J.W. Olsen, Big Three On-Line Services Reach Out to the Internet,
1007 PC Magazine, June 27, 1995 ("Olsen")
John December and Neil Randall, The World Wide Web Unleashed
1008 (2d ed. 1995).
1009 Declaration of Benjamin B. Bederson, Ph.D.
1010 List of Materials Considered by Benjamin B. Bederson, Ph.D.
1011 Curriculum Vitae of Benjamin B. Bederson, Ph.D.
U.S. Patent No. 5,155,847 issued to Donald L. Kirouac et al. on
1012 October 13, 1992 ("Kirouac").
1013 Oxford Dictionary of Computing (4th ed. 1996)
1014 The American Heritage College Dictionary (3d ed. 1993)
Web Browser, Wikipedia (April 3, 2009),
1015 http://en.wikipedia.org/w/index.php?title=Web_browser&oldid=2814
Web browser, Macmillan Dictionary,
http://www.macmillandictionary.com/dictionary/american/web-
1016 browser (last visited November 12, 2014)
1017 Web browser, Cambridge Dictionaries Online,
http://dictionary.cambridge.org/dictionary/british/web-browser (last
visited November 12, 2014)
1018 Second Declaration of Benjamin B. Bederson, Ph.D.
1019 Petitioners Voluntary Interrogatory Responses
1020 ClientConnect, Ltd., v. MyMail, Ltd., IPR2015-00269, Paper 1 (filed
Nov. 14, 2014) (ClientConnect).
1021 ClientConnect, Ltd., v. MyMail, Ltd., IPR2015-00269, Paper 7 (June
8, 2014)
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U.S. Patent 8,275,863 (the 863 Patent) was previously challenged in
ClientConnect, Ltd., v. MyMail, Ltd., IPR2015-00269, Paper 1 (Nov. 14, 2014)
(EX1020). The grounds (listed infra at Section VII) in this petition are the same as
those on which trial was instituted in IPR2015-00269. See Institution, IPR2015-
00269 (EX1020) at 19. This petitions content is substantially the same as that in
IPR2015-00269, other than omitting anticipation challenges to a claim (2) on which
the Board did not institute trial and adopting the Boards construction for one term.
This petition relies on a second declaration from Benjamin Bederson
(EX1020) that reaffirms and swears that he supports his earlier-filed declaration
(EX1009) in IPR2015-00269. This petition does not expand on the grounds the
Board already found support institution of a trial.
I. INTRODUCTION
The challenged claims are directed to a method for updating a toolbar on a
user's computer. The patent uses many words to describe the method, but the
method is in fact very simple. In the method, the user's computer automatically
sends a "revision level" over the Internet to a server, the server determines from the
revision level whether an update is needed, and the toolbar is updated.
Well before the purported invention, it was widely known that software on a
user's computer could be automatically updated by use of revision levels sent to a
server. Toolbars were similarly ubiquitous. Not surprisingly, printed publications

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Patent 8,275,863
predating the purported invention disclosed automatically updating toolbars using
the claimed method. But even if they had not, it would have been obvious to apply
a common method applicable to software in general to one particular form of
software, toolbars. Thus the challenged claims are not patentable both because
they were anticipated by prior art and because, even if they had not been
anticipated, they would have been obvious to one of ordinary skill in the art.
The '863 patent has an unusual history. Over the course of twelve years of
prosecution, the applicant changed its claims repeatedly and substantially. The
applicant also provided enormous quantities of irrelevant documentation from
another litigation. The claims were changed so dramatically that, in their eventual
form, they are arguably not even supported by the specification; this is
particularly relevant here because, as will be shown, the prior art actually contains
far more detailed descriptions of what is being claimed than does the '863 patent
itself.
II. MANDATORY NOTICES PURSUANT TO 37 C.F.R. 42.8
A. Notice of Real Party-In-Interest (37 C.F.R. 42.8(b)(1))
Pursuant to 37 C.F.R. 42.8(b)(1), Unified Patents Inc. (Unified or
Petitioner) certifies that Unified is the real party-in-interest, and further certifies
that no other party exercised control or could exercise control over Unifieds
participation in this proceeding, the filing of this petition, or the conduct of any
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ensuing trial. In this regard, Unified has submitted voluntary discovery. See
EX1019 (Petitioners Voluntary Interrogatory Responses).
B. Notice of Related Matters (37 C.F.R. 42.8(b)(2))
The 863 patent (EX1001) is owned by MyMail Ltd. (Patent Owner).
To the best of petitioners knowledge, the '863 patent has been asserted in
MyMail, Ltd. v. Duck Duck Go, Inc., 2-16-cv-01474 (E.D. Tex. filed Dec. 29,
2016); MyMail, Ltd. v. IAC Search & Media, Inc., 2-16-cv-01434 (E.D. Tex. filed
Dec. 20, 2016); MyMail, Ltd. v. Comcast Corp., 2-16-cv-01280 (E.D. Tex. filed
Nov. 18, 2016); MyMail, Ltd. v. ooVoo LLC, 2-16-cv-01281 (E.D. Tex. Nov. 18,
2016); MyMail, Ltd. v. Panda Distribution, Inc. d/b/a Panda Security USA, 2-16-
cv-01282 (E.D. Tex. Nov. 18, 2016); MyMail, Ltd. v. Oracle Corp., 2-16-cv-01249
E.D. Tex. Nov. 9, 2016); MyMail, Ltd. v. Yahoo!, Inc., 2-16-cv-01000 (E.D. Tex.
Sept. 7, 2016); MyMail, Ltd. v. Nasdaq, Inc., 2-16-cv-00889 (E.D. Tex. Aug. 10,
2016); and MyMail, Ltd. v. Conduit Ltd. et al, 2-13-cv-00961 (E.D. Tex. Nov. 14,
2013).
An earlier administrative proceeding, ClientConnect Ltd. v. MyMail Ltd.,
IPR2015-00269 (filed Nov. 14, 2014), was instituted and later settled. This
petition is substantively identical to that instituted petition.
C. Designation of Lead and Back-up Counsel (37 C.F.R. 42.8(b)(3))

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Jonathan Stroud (Reg. 72,518) will act as lead counsel; Roshan Suresh
Mansinghani (Reg. 62,429) will act as backup counsel.
D. Service Information (37 C.F.R. 42.8(b)(4))
Petitioner consents to e-mail service at jonathan@unifiedpatents.com.
Petitioner can be reached at Unified Patents Inc., 1875 Connecticut Ave. NW,
Floor 10, Washington, D.C. 20009 and (650) 999-0899.
E. Certification of Grounds for Standing (37 C.F.R. 42.104(a))
Petitioner certifies that the '863 patent is eligible for inter partes review and
that Petitioner is not barred or estopped from requesting an inter partes review of
the challenged claims of the '863 patent on the grounds identified herein.
Petitioner has not initiated a civil action challenging the validity of any claim of
the '863 patent.
III. CHALLENGE AND RELIEF REQUESTED
Pursuant to 37 C.F.R. 42.22(a)(1) and 42.104(b) and (b)(1) Petitioner
challenges claims 1-2, 4-5, 10-11, 14-17, 20, and 23 of the '863 patent. The
application leading to the '863 patent was filed as Application 10/417,853 on
April 16, 2003. Petitioner respectfully requests inter partes review and
cancellation of claims 1-2, 4-5, 10-11, 14-17, 20, and 23 of the '863 patent based
on the grounds detailed below.
A. Specific Art and Statutory Ground(s) on which the Challenges

Are Based
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Pursuant to 37 C.F.R. 42.104(b)(2), inter partes review of the '863
patent is requested in view of the following references, each of which is prior art
to the '863 patent under 35 U.S.C. 102(b) and/or (e):
1. U.S. Patent No. 5,740,549 to Reilly et al. ("Reilly," EX1003) was filed June
12, 1995 as Application No. 08/489,591. Reilly is prior art under pre-AIA
35 U.S.C. 102(e).
2. U.S. Patent No. 5,347,632 to Filepp et al. ("Filepp," EX1004) issued on
September 13, 1994. Filepp is prior art under pre-AIA 35 U.S.C. 102(b).
3. U.S. Patent No. 5,021,949 to Morten et al. ("Morten," EX1005) issued on
June 4, 1991. Morten is prior art under pre-AIA 35 U.S.C. 102(b).
4. U.S. Patent No. 5,644,737 to David Charles Tuniman et al. ("Tuniman,"
EX1006) was filed June 6, 1995 as Application No. 08/466,611. Tuniman is
prior art under pre-AIA 35 U.S.C. 102(e).
5. J.W. Olsen, Big Three On-Line Services Reach Out to the Internet, PC
Magazine, June 27, 1995 ("Olsen," EX1007) was published in June 1995.
Olsen is prior art under pre-AIA U.S.C. 102(b).
6. John December and Neil Randall, The World Wide Web Unleashed (2d ed.
1995) ("December," EX1008) was published in June 1995. December is
prior art under pre-AIA U.S.C. 102(b).

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None of the asserted references except for Tuniman were cited or considered by
the PTO during the prosecution of the '863 patent.
Petitioner requests cancellation of claims 1-2, 4-5, 10-11, 14-17, 20, and 23
under the following statutory grounds:
Ground 1: Claims 1, 11, 14-17, 20, and 23 are anticipated by Reilly under 35
U.S.C. 102(e).
under 35 U.S.C. 102(b).
Ground 3: Claims 1, 4-5, 11, 14-17, 20, and 23 are rendered obvious by
Filepp in view of Morten under 35 U.S.C. 103(a).
Ground 4: Claims 1-2, 11, 14-17, 20, and 23 are rendered obvious by Reilly
in view of Tuniman under 35 U.S.C. 103(a).
Ground 5: Claims 2 and 10 are rendered obvious by Filepp in view of Olsen
under 35 U.S.C. 103(a).
December under 35 U.S.C. 103(a).
Section VI demonstrates, for each of the statutory grounds, that there is a
reasonable likelihood that the Petitioner will prevail. See 35 U.S.C. 314(a).
Additional explanation and support for each ground is set forth in the expert
declaration of Benjamin B. Bederson, Ph.D. See EX1009 90-146.

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IV. THE '863 PATENT
The '863 patent issued from an application filed on April 16, 2003, which
was a divisional of another application filed on June 19, 1998, which itself
claimed priority to a provisional application filed June 19, 1997. EX1001-1.
Although the specification of the '863 patent is mainly directed to methods
of facilitating internet traffic, see, e.g., EX1001 at 1:1-10:6; 11:25-29:10, the
claims are exclusively directed to methods of modifying a toolbar. The alleged
invention of the '863 patent is the straightforward and well-known concept of a
toolbar combined with a common and well-understood method for updating
software. See, e.g., EX1009 25-36.
V. PERSON OF ORDINARY SKILL IN THE ART
A Person of Ordinary Skill In The Art ("POSITA") would generally have had
either (i) a Bachelors' degree in Computer Science or a similar field, and three or
four years of work experience in software application design or related fields, or (ii)
a Masters' degree in Computer Science or a similar field and two or three years of
work experience in software application design or related fields. See EX1009 63-
66.
VI. CLAIM CONSTRUCTION
In an inter partes review, the challenged claims must be given their
"broadest reasonable construction" in light of the specification of the patent in
which they appear. 37 C.F.R. 42.100(b). Because of this rule, for the purpose of
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this inter partes review Petitioner has employed the broadest reasonable
construction of the challenged claims throughout this petition.1 Pursuant to 37
C.F.R. 42.104(b)(3), the following subsections explain the proper construction
of particular claim terms at issue for purposes of this review.
A. "attribute"
Every challenged claim of the '863 patent involves a database comprising a
plurality of "attributes"; in each challenged claim, this is either specifically recited
in the claim or included through dependency from an independent base claim. The
'863 patent discusses attributes in the context of data that describes a property of an
object. For example, attributes are used to define the presentation and function of
buttons on a toolbar. EX1001 at 10:38-40 ("The Toolbar reads a plurality, for this
1
The broadest reasonable construction of claim terms, of course, will often be
quite different from the construction those terms would receive in district court
claim construction proceedings. See Agilent Technologies Inc. v. Affymetrix,
Inc., No. C 06-05958 JW, 2008 WL 7348188, at *5 (N.D. Cal. June 13,
2008) ("'A claim shall be given its broadest reasonable construction in light
of the specification of the application or patent in which it appears.' 37
C.F.R. 41.200(b). [sic] Therefore, the construction used may be broader
than that which would be found in litigation").

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example five, of attributes from the button bar database. 1. CaptionTitle or
Button Name. [] 2. Enabled [] 3. Execution Type [] 4. Hint [] 5a. Execute
FileCommand line of file to be executed [] 5b. URL []"). "Attributes" are
also used to define data used to describe a network connection. Ex 1001 at 18:48-
55 ("The multi-dial procedure 700 provides the access service 106 with a
mechanism to control access by a user 110, a group of users, a computer, a group
of computers, a local area network (LAN) of computers, or any combination
thereof, to the Internet 100, based upon any one of the following seven sub-
function attributes: Cost, Availability, Reliability, Location, Busy-Sequence,
Service Selected, or Single Dial/Multi-Login"). This is consistent with dictionaries
of the time. For example, the Oxford Dictionary of Computing (4th ed. 1996)
defined the term "attribute" as "A defined property of an entity, object, etc."
EX1013-3. Thus, the broadest reasonable construction of "attribute" is defined
property of an entity or object. See also EX1009 69-73.
B. "automatically"
Every challenged claim of the '863 patent involves a user device's
"automatically" sending a revision level of toolbar data to an update server; in each
challenged claim, this is either specifically recited in the claim or included through
dependency from an independent base claim. The '863 patent consistently uses
"automatically" to refer to actions not directed or controlled by the user. See, e.g.,
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EX1001 at 23:19-23 ("Accordingly, upon the user 100 [sic] initiating a connection
to the network 100, the client dispatch application 200 automatically selects a dial-
in phone number that it has determined to have a high probability of success for
connection."); id. at 8:4-8 ("After receiving the ISP-specific access information,
the client dispatch application 200 may disconnect the user 110 from the current
ISP 102 and automatically dial and reconnect the user 110 to the desired ISP 102
associated with the ISP-specific access information."); id. at 11:7-13 ("The MOT
script is typically associated with a Web page and when the user 110 clicks on the
Web page, the MOT script associated with the Web page is read back by the client
dispatch application 200. The client dispatch application 200 uses the particular
MOT script and the button bar database 210 information and builds the button bar
automatically according to the MOT script specifications."); id at 19:45-49 ("In
either case, the user's dial adaptor (modem) is configured with the ISP-specific
access information associated with the predefined dial-in number. After proper
configuration, the client dispatch application 200 automatically dials and attempts
connection to the ISP 102."). Consistent with this usage, a POSITA would have
understood the broadest reasonable interpretation of "automatically" to denote
actions not under the user's direction or control. This understanding is consistent
with dictionaries of the time. For example, The American Heritage College
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Dictionary (3d ed. 1993), defined "automatically" as "acting or operating in a
manner essentially independent of external influence or control." EX1014-3. Thus,
the broadest reasonable construction of "automatically" is independently of user
direction or control. See also EX1009 74-81.
C. "web browser"
In the institution, the Board construed web browser as a software
application that enables a user to find HMTL documents (i.e., web pages) and
display them to the user. EX1020 at 78. We agree.
D. "name-value pair"
Challenged claim 4 of the '863 patent specifically recites the term "name-
value pairs" in the context of "a file containing a plurality of name-value pairs
comprising the plurality of attributes." The '863 patent discusses name-value pairs
with reference to unique names paired with values set in a database. See EX1001
Fig. 8 ("Database: Name=Value"); id. at 4:5-6; id. at 27:27-30 (disclosing the
name-value pairs PAPID:nsTEST and PAP password:zzzwww123 set in the NS
database). A POSITA would have understood from Figure 8 that "value" is being
assigned to "name," replacing the previous value for "name"; therefore, "name"
must be unique. EX1009 86. Similarly, Figures 15 and 17 of the '863 patent
show unique names associated with values. See EX1001 Figs. 15, 17. Thus, the
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broadest reasonable construction of "name-value pair" is unique name that is
paired with a value that is set in a database. See also EX1009 86-89.
Any other terms at issue should receive the broadest reasonable
construction considering the specification. See 37 C.F.R. 42.100(b).
VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE

CLAIM OF THE '863 PATENT IS UNPATENTABLE
Pursuant to 37 C.F.R. 42.104(b)(4), Petitioner provides in the following
claim charts a detailed comparison of the claimed subject matter and the prior art
specifying where each element of the challenged claims are found in the prior art.
Claims 1-2, 4-5, 10-11, 14-17, 20, and 23 of the '863 patent are unpatentable on
the following grounds:
Ground 35 USC Reference(s) Claims
1 102(e) Reilly 1, 11, 14-17, 20, 23
2 102(b) Filepp 1, 4-5, 11, 14-17, 20, 23
3 103(a) Filepp in view of Morton 1-2, 4-5, 11, 14-17, 20, 23
4 103(a) Reilly in view of Tuniman 1-2, 11, 14-17, 20, 23
5 103(a) Filepp in view of Olsen 2, 10
6 103(a) Reilly in view of 2, 10

December
Ground 1: Claims 1, 11, 14-17, 20, and 23 are anticipated by Reilly

under 35 U.S.C. 102(e)
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Reilly is a patent issued to employees of PointCast Inc., a company that in
the late 1990s provided software used by hundreds of thousands of people to obtain
personalized collections of information that were pushed to them over the Internet.
The personalized information was accessed through a graphical user interface that
included a toolbar (complete with configurable buttons) that was modified by
individual users so that each user could readily access just the particular categories
of content (e.g., news, weather, sports, etc.) that they wished to review.
Reilly discloses a toolbar and a method for modifying it. Reilly discloses a
toolbar within a user interface (see, e.g., Fig. 10 element 250) that enables the user
to select a category of information to view from one of several buttons of the
toolbar. See EX1003 at 13:38-41. Reilly explains that the categories displayed in
the toolbar buttons are stored in one or more "Data Access Tables." See EX1003 at
4:42-49. Reilly further teaches a well-understood method for updating the Data
Access Tables. See EX1003 at 14:40-15:15.

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Figure 10
Reilly
(EX1003)
In the update process in Reilly, the user device automatically sends the
revision level of the data it currently has to a server. This revision level takes the
form, for example, of a timestamp in the user profile. See, e.g., EX1003 at 14:57-
58, 7:47-8:9, 16:15-18. From this revision level, the server determines whether
updates to the user application data, including the Data Access Tables, should be
sent to the user device, and the server sends those updates to the user device along
with instructions for implementation of the updates. See EX1003 at 14:62-15:11.
The user device receives the update data and, without user interaction, updates the
user application data, thereby producing updated toolbar data. See EX1003 at
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15:8-15. Reilly thus anticipates claims 1-2, 11, 14-17, 20, and 23 of the '863
patent. See also EX1009 90-101. The following claim chart demonstrates, on a
limitation-by-limitation basis, how claims 1, 11, 14-17, 20, and 23 of the '863
patent are anticipated by Reilly:
'863 Claim Disclosure of Reilly

Independent claim 1:
1. A method of Toolbar:
modifying a toolbar,
comprising the steps See, e.g., Fig. 10 element 250:
of:
Figure 10
Reilly
(EX1003)
See also, e.g. , EX1003 at 13:37 -40 ("The news

stories shown in the center section 248 of the data
viewer's display is selected by first selecting an
information category by clicking on any of the
category buttons 250 on the left margin of the
display.").
A method of modifying:
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See, e.g., EX1003 at 14:50-15:10 ("When a client

computer first initiates a connection to the information
server The application server 272 then makes calls to
one or more data servers 274 to collect all the
information that needs to be sent to the client computer
and then sends those items to the client computer The
client computer then loads the received information into
its local database, and replaces software modules with
received software modules, if any."); id. at 4:44-46
("The category list can
be updated by the personnel operating the information
server, typically to add and delete special new
categories.").
[1.a] a user Internet See, e.g., EX1003 at 2:67-3:1 ("Workstations remotely

device located from the information server."); id. at 6:26-31
("The subscriber workstation 102 includes an Internet
interface 178 for communication with the information
server 104 via the Internet 119"); id. at 14:50-53 ("When a
client computer first initiates a connection to the
information server, it sends a first message to the Internet
address associated with a router process 270 in the
information server."); id. at Claim 1("the computer being
coupled to a network"); id. at Claim 17 ("The computer-
implemented method as recited in claim 1 wherein the
network is the Internet.").
[1.b] displaying a See Reilly disclosure above for claim elements 1 and 1.a.
toolbar comprising one
or more buttons,
[1.c] the toolbar defined See, e.g., EX1003 at 6:57-61 ("Data Access Tables 186
by toolbar data stored in are used to access news stories, advertisements and
one or more toolbar- display scripts associated with each of the categories of
defining databases news items that are to be displayed on the subscriber's
workstation."); id. at 4:42-49 ("The information editor
maintains a list of the currently defined categories and
sub-categories. The category list can be updated by the
personnel operating the information server, typically to
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add and delete special new categories associated with
major news events such as a famous trial or event which
generates many news stories. The category to which each
news story is assigned is represented in one or more Data
Access Tables.").
[1.d] the toolbar data Attributes:
comprising a plurality
of attributes, each See, e.g., EX1003 at 4:42-49 ("The information editor
attribute associated with maintains a list of the currently defined categories and
a button of the toolbar, sub-categories. The category list can be updated by the
Access Tables.").
The toolbar data comprising a plurality of attributes, each

attribute associated with a button of the toolbar:
See, e.g., EX1003 at 4:42-49 ("The information editor

maintains a list of the currently defined categories and
sub-categories. The category list can be updated by the
Access Tables.").
IPR2017-00967
Patent 8,275,863
Figure 10
Reilly
(EX1003)
[1.e] wherein for each See, e.g. EX1003 at 13:37-40 ("The news stories shown in
button of the toolbar, at the center section 248 of the data viewer's display is
least one of the plurality selected by first selecting an information category by
of attributes identifying clicking on any of the category buttons 250 on the left
a function to be margin of the display.").
performed when the
button is actuated by the A function to be performed:
user Internet device;
See, e.g. EX1003 at 13:37-40 ("The news stories shown
in the center section 248 of the data viewer's display is
selected by first selecting an information category by
clicking on any of the category buttons 250 on the left
margin of the display.").
[1.f] the user Internet Revision level:
device automatically
sending a revision level See, e.g., EX1003 at 7:47-8:9 ("[T]he user profile 194
of the one or more includes category and subcategory preferences
toolbar-defining information 216 that identifies categories and
databases to a subcategories of news stories that the subscriber does not
predetermined network want to view, as well as a list of "special categories" of
address; news stories of special interest to the subscriber which
override any categories noted as not being of interest to
the subscriber; timestamps 217a-217c indicating the time
of the last updates to the subscriber computer's locally
IPR2017-00967
Patent 8,275,863
stored set of news stories, advertisements and
administrative files (including scripts, images and
software modules).").
The user Internet device automatically sending a revision

level of the one or more toolbar-defining databases to a
predetermined network address:
See, e.g., EX1003 at 8:19-23 ("The default connection

schedule is for the subscriber's computer to initiate a
connection to the information server once during the
middle of the night (e.g., a randomly selected time
between 11 p.m. and 7 a.m. local time) for an
"administrative update."); id. at 14:50-61 ("When a client
server, it sends a first message to the Internet address
associated with a router process 270 in the information
server. The router selects an application server 272 with at
least one available thread and passes back to the client
computer an Internet address associated with that
application server. The client computer then sends a
portion of its user profile to the assigned application
server."); id. at 7:47-8:9 ("[T]he user profile 194 includes
category and subcategory preferences information 216
that identifies categories and subcategories of news stories
that the subscriber does not want to view, as well as a list
of "special categories" of news stories of special interest
to the subscriber which override any categories noted as
not being of interest to the subscriber; timestamps 217a-
217c indicating the time of the last updates to the
subscriber computer's locally stored set of news stories,
advertisements and administrative files (including scripts,
images and software modules)."); id. at 16:15-18 ("/*
Software Module Synchronization */ Client sends
message indicate it is ready for software synchronization,
including date and time of last administrative update.").
IPR2017-00967
Patent 8,275,863
Figure 4:
Reilly (EX1003)
[1.g] a server at the Revision level:

predetermined network
address determining, See, e.g., EX1003 at 16:15-19 ("/* Software Module
from the revision level, Synchronization */ Client sends message indicate it is
the user Internet device ready for software synchronization, including date and
should receive the time of last administrative update Server sends new
toolbar update data; software modules, if any, based on date and time of last
administrative update.").
A server at the predetermined network address

determining, from the revision level, the user Internet
device should receive the toolbar update data:
See, e.g., EX1003 at 14:62-15:1 ("Based on the time of

day and the information in the transmitted user profile, the
application server determines (A) what type of update is
to be performed (i.e., a news item update or an
administrative update), and (B) what new information
needs to be downloaded to the client computer and what
items in the client computer's local information database
should be deleted."); id. at 16:15-19 ("/* Software Module
Synchronization */ Client sends message indicate it is
ready for software synchronization, including date and
time of last administrative update Server sends new
software modules, if any, based on date and time of last
administrative update.").
IPR2017-00967
Patent 8,275,863
Figure 2 extract
Reilly (EX1003)
[1.h] the user Internet See, e.g., EX1003 at 14:53-56 ("The router selects an
device receiving toolbar application server 272 with at least one available thread
update data from the and passes back to the client computer an Internet address
Internet; associated with that application server."); id. at 15:1-6
("The application server 272 then makes calls to one or
more data servers 274 to collect all the information that
needs to be sent to the client computer and then sends
those items to the client computer, along with instructions
on what items, if any, should be deleted from the client
computer' s local information database."); id. at Claim 17
("The computer-implemented method as recited in claim 1
wherein the network is the Internet").
[1.i] the user Internet See, e.g., EX1003 at 15:1-15 ("The application server 272
device initiating without then makes calls to one or more data servers 274 to collect
user interaction an all the information that needs to be sent to the client
operation to update the computer and then sends those items to the client
toolbar data in computer, along with instructions on what items, if any,
accordance with the should be deleted from the client computer's local
toolbar update data information database. The client computer then loads the
received; received information into its local database, and replaces
software modules with received software modules, if any.
It also deletes the items, if any, specified for deletion by
the information server. Finally, it updates its data access
tables 186 to incorporate all the changes to the
information database so that the client computer is ready
to display news items and advertisements in each
information category.").
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Patent 8,275,863
[1.j] the user Internet See, e.g., EX1003 at 15:8-15 ("The client computer then
device updating, by the loads the received information into its local database, and
operation, the toolbar replaces software modules with received software
data in accordance with modules, if any. It also deletes the items, if any, specified
the toolbar update data, for deletion by the information server. Finally, it updates
thereby producing its data access tables 186 to incorporate all the changes to
updated toolbar data, the information database so that the client computer is
ready to display news items and advertisements in each
information category.").
[1.k] the updating See, e.g., EX1003 at 15:8-15 ("The client computer then
comprising at least one loads the received information into its local database, and
of the following steps replaces software modules with received software
(a) and (b), each modules, if any. It also deletes the items, if any, specified
respectively comprising: for deletion by the information server. Finally, it updates
its data access tables 186 to incorporate all the changes to
(a) writing at least one the information database so that the client computer is
new attribute to the ready to display news items and advertisements in each
original toolbar data, information category."); id. at 13:37-40 ("The news
wherein the writing at stories shown in the center section 248 of the data
least one new attribute viewer's display is selected by first selecting an
to the toolbar data information category by clicking on any of the category
comprises changing the buttons 250 on the left margin of the display."); id. At
one or more buttons of 4:44-49 ("The category list can be updated by the
the toolbar by adding a personnel operating the information server, typically to
button; and add and delete special new categories associated with
(b) updating at least one generates many news stories. The category to which each
attribute of the toolbar news story is assigned is represented in one or more Data
data; and the user Access Tables."); id. at claim 7 ("The computer-
Internet implemented method of claim 6 wherein the list of
predefined categories is automatically updated based on
device displaying the changed information on the information server.").
toolbar as defined by the
updated toolbar data.
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Patent 8,275,863
Figure 10
Reilly (EX1003)
Dependent Claims 11, 14-17, 20, and 23:

11. The method of claim See, e.g. EX1003 at 8:19-23 ("The default connection
1, wherein the initiating Schedule is for the subscriber's computer to initiate a
of the operation occurs connection to the information server once during the
transparently. middle of the night (e.g., a randomly selected time
between 11 p.m. and 7 a.m. local time) for an
"administrative update.").
14. The method of claim See, e.g. EX1003 at 13:37-40 ("The news stories shown in
1, wherein the updating the center section 248 of the data viewer's display is
the toolbar data selected by first selecting an information category by
comprises writing at clicking on any of the category buttons 250 on the left
least one new attribute margin of the display."); id. at 4:44-49 ("The category list
to the toolbar data. can be updated by the personnel operating the information
server, typically to add and delete special new categories
15. The method of claim associated with major news events such as a famous trial
14, wherein the writing or event which generates many news stories. The category
at least one new to which each news story is assigned is represented in one
attribute to the toolbar or more Data Access Tables.").
data comprises changing
the one or more buttons
IPR2017-00967
Patent 8,275,863
of the toolbar by adding
a button.
the toolbar data selected by first selecting an information category by
comprises updating at clicking on any of the category buttons 250 on the left
least one attribute of themargin of the display."); id. at 4:44-49 ("The category list
toolbar data. can be updated by the personnel operating the information
server, typically to add and delete special new categories
17. The method of claim associated with major news events such as a famous trial
16, wherein the or event which generates many news stories. The category
updating at least one to which each news story is assigned is represented in one
attribute of the toolbar or more Data Access Tables.").
data comprises updating
the one or more buttons
of the toolbar.
of the toolbar data in selected by first selecting an information category by
accordance with the clicking on any of the category buttons 250 on the left
toolbar update data margin of the display."); id. at 4:44-49 ("The category list
comprises updating an can be updated by the personnel operating the information
attribute defining a server, typically to add and delete special new categories
button caption, the associated with major news events such as a famous trial
attribute updating from or event which generates many news stories. The category
a first caption to a to which each news story is assigned is represented in one
second caption. or more Data Access Tables.").
23. The method of claim See, e.g., EX1003 at 4:8-10 ("In the preferred
1, further comprising embodiment, each subscriber's computer 102 is connected
the user Internet device to the information server 104 via the Internet 119 for a
maintaining the display small fraction of each day.").
of the toolbar as defined
by the updated toolbar
data until a subsequent
updating of the updated
toolbar data.
Reilly anticipates claims 1, 11, 14-17, 20, and 23 of the '863 patent. See also
EX1009 90-101.
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Patent 8,275,863
under 35 U.S.C. 102(b)
Filepp is a patent issued to employees of Prodigy Services Co., a company
that decades ago was a leading provider of on-line access, software, and services
used by a subscriber base of over three million people to access news and
entertainment. The system was designed around a graphical user interface
running on a client's computer (RS 400 in EX1004) that included several
dynamic toolbars. This interface was tailored by Prodigy to fit different content
delivered for display and use on client computers.
Filepp discloses a toolbar and a method for modifying it. Filepp discloses a
toolbar within a user interface that enables the user to execute a variety of useful
commands. See EX1004 at 9:53-57. Filepp discloses the storage of data that
generates toolbar buttons in dynamic "page element objects" (PEOs).
See EX1004 at 9:53-57, 10:66-11:1. Filepp further teaches a well understood
method for updating the page element objects. See EX1004 at 89:1-17.
IPR2017-00967
Patent 8,275,863
Figure 3a
Filepp
(EX1004)
In Filepp's update process, the user device automatically sends the current
revision level of the current toolbar data stored in page element objects to a server.
See EX1004 at 89:1-5. The server determines from this revision level whether
updates to the toolbar data should be sent to the user device. See EX1004 at 89:6-
12. Based on this determination, the server either delivers the updated toolbar data
or informs the user device that the toolbar data is up-to-date. See EX1004 at 89:6-
12. If the server delivers an update, the user device, without user interaction,
updates the user application data, thereby producing updated toolbar data. See
EX1004 at 89:14-17. Filepp thus anticipates claims 1-2, 4-5, 11, 14-17, 20, and 23
of the '863 patent. See also EX1009 102-21. The following claim chart
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Patent 8,275,863
demonstrates, on a limitation-by-limitation basis, how claims 1, 4-5, 11, 14-17,
20, and 23 of the '863 patent are anticipated by Filepp:
'863 Claim Disclosure of Filepp

1. A method of Toolbar:
modifying a toolbar,
comprising the steps of: See, e.g., EX1004 at 9:53-57 ("As shown in FIG. 3b, user
interface 285 includes a command bar 290 having a
number of commands 291-298 which the user can
execute.").
Figure 3a
Filepp
(EX1004)
A method of modifying:
See, e.g., EX1004 at 89:1-17 ("With respect to version

checking for currency, where an object stored at RS 400 is
initially fetched or accessed during a session, a request to
delivery system 20 is made for the object by specifying
the version id of the object stored at RS 400. In response,
delivery system 20 will advise the reception system 400
either that the version id of the stored object matches the
currency value; i.e., the stored object is acceptable, or
deliver a current object that will replace the stored object
shown to be stale. Alternatively, the response may be that
the object was not found. If the version of the stored
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Patent 8,275,863
object is current, the stored object will be used until
verified again in accordance with its storage candidacy. If
the stored object is stale, the new object delivered will
replace the old one and support the desired screen. If the
response is object not found, the stored object will be
deleted.").
[1.a] a user Internet See, e.g., EX1004 at 1:11-15 ("This invention relates
device generally to a distributed processing, interactive computer
network intended to provide very large numbers of
simultaneous users; e.g. millions, with access to a large
number; e.g. thousands, of applications."); id. at 4:9-14
("[T]he invention includes a plurality of reception units
within reception layer 401 of interactive computer
network 10 for displaying information and providing
transactional services. In this arrangement, many users
each accesses network 10 with a conventional personal
computer."); id. at 6:52-56 ("In the preferred embodiment,
network 10 provides information and transaction
processing services for a large number of users
simultaneously accessing the network via the public
switched telephone network (PSTN), broadcast, and/or
other media.").
[1.b] displaying a See Filepp disclosure above for claim element 1, 1.a.
toolbar comprising one
or more buttons,
[1.c] the toolbar Toolbar defined by toolbar data:
defined by toolbar data
stored in one or more See, e.g., EX1004 at 9:53-57 ("As shown in FIG. 3b, user
toolbar-defining interface 285 includes a command bar 290 having a
databases number of commands 291-298 which the user can
execute."); id. at 10:66-11:1 ("Page element objects 504,
on the other hand, are structured to contain the display
data; i.e., text and graphic, to be displayed which is
mapped within screen partitions 250 to 290.");
Stored in one or more toolbar-defining databases:
See, e.g., EX1004 at 84:45-54 ("Object storage facility

439 provides an interface through which object interpreter
435 and TBOL interpreter 438 either synchronously
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Patent 8,275,863
request (using the TBOL verb operator "GET") objects
without which processing in either module cannot
continue, or asynchronously request (using the TBOL
verb operator "FETCH") objects in anticipation of later
use. Object storage facility 439 returns the requested
objects to the requesting module once retrieved from
either local store 440 or interactive network 10.); id. At
85:20-22 ("Object storage facility 439 manages objects
locally in local store 440.").
[1.d] the toolbar data The toolbar data comprising a plurality of attributes:
comprising a plurality
of attributes, each See, e.g., EX1004 at 10:66-11:1 ("Page element objects
attribute associated 504, on the other hand, are structured to contain the
with a button of the display data; i.e., text and graphic, to be displayed which
toolbar, is mapped within screen partitions 250 to 290."); see also
Figs. 3a, 3b.
Each attribute associated with a button of the toolbar:
See, e.g., EX1004 at 9:53-57 ("As shown in FIG. 3b, user

number of commands 291-298 which the user can
execute."); id. at 10:66-11:1 ("Page element objects 504,
on the other hand, are structured to contain the display
mapped within screen partitions 250 to 290.").
[1.e] wherein for each See, e.g., EX1004 at 74:65-75:2 ("Command bar 290 is
button of the toolbar, at shown in FIGS. 3 (a) and 3 (b) and includes a NEXT
least one of the command 291, a BACK command 292, a PATH
plurality of attributes command 293, a MENU command 294, and ACTION
identifying a function command 295, a JUMP command 296, a HELP command
to be performed when 297, and an EXIT command 298.").
the button is actuated
by the user Internet
device;
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Patent 8,275,863
Figure 3a
Filepp
(EX1004)
[1.f] the user Internet See, e.g., EX1004 at 89:1-10 ("With respect to version
device automatically checking for currency, where an object stored at RS 400 is
sending a revision level initially fetched or accessed during a session, a request to
of the one or more delivery system 20 is made for the object by specifying
toolbar-defining the version id of the object stored at RS 400. In response,
databases to a delivery system 20 will advise the reception system 400
predetermined network either that the version id of the stored object matches the
address; currency value; i.e., the stored object is acceptable, or
shown to be stale."); id. at 84:61-65 ("When objects are
requested from object storage facility 439, only the latest
version of the object will be provided to guarantee
currency of information to the user. Object storage facility
439 assures currency by requesting version verification
from network 10 for those objects which are available
locally.").
See, e.g., EX1004 at 78:38-43 ("If the string entered by

the user matches a keyword existing on one of the
keyword tables, and is thus associated with a specific
PTO, RS 400 fetches and displays associated objects of
the partitioned applications and builds the entry page in
accordance with the page composition dictated by the
target PTO.").
IPR2017-00967
Patent 8,275,863
Figure 11
Filepp
(EX1004)
[1.g] a server at the See, e.g., EX1004 at 89:1-10 ("With respect to version
predetermined network checking for currency, where an object stored at RS 400 is
address determining, initially fetched or accessed during a session, a request to
from the revision level, delivery system 20 is made for the object by specifying
the user Internet device the version id of the object stored at RS 400. In response,
should receive the delivery system 20 will advise the reception system 400
toolbar update data; either that the version id of the stored object matches the
shown to be stale.").
[1.h] the user Internet See, e.g., EX1004 at 6:10-12 ("RS 400 includes a means
device receiving to communicate with network 10 to retrieve objects"); id.
toolbar update data at 93:56-57 ("objects received from network 10"); id. At
from the Internet; 94:21-23 ("Requests received from object storage facility
439 include requests for objects from storage in
interactive system 10."); id. at 6:52-56 ("In the preferred
embodiment, network 10 provides information and
transaction processing services for a large number of users
simultaneously accessing the network via the public
switched telephone network (PSTN), broadcast, and/or
other media."); id. at 1:11-15 ("This invention relates
generally to a distributed processing, interactive computer
IPR2017-00967
Patent 8,275,863
network intended to provide very large numbers of
simultaneous users; e.g. millions, with access to a large
number; e.g. thousands, of applications.").
[1.i] the user Internet See, e.g., EX1004 at 89:12-17 ("If the version of the
device initiating stored object is current, the stored object will be used until
without user interaction verified again in accordance with its storage candidacy. If
an operation to update the stored object is stale, the new object delivered will
the toolbar data in replace the old one and support the desired screen. If the
accordance with the response is object not found, the stored object will be
toolbar update data deleted.").
received;
[1.j] the user Internet See, e.g., EX1004 at 89:12-17 ("If the version of the
device updating, by the stored object is current, the stored object will be used until
operation, the toolbar verified again in accordance with its storage candidacy. If
data in accordance with the stored object is stale, the new object delivered will
the toolbar update data, replace the old one and support the desired screen. If the
thereby producing response is object not found, the stored object will be
updated toolbar data, deleted.").
[1.k] the updating See, e.g., EX1004 at 75:12-15 ("A filter program can be
comprising at least one attached to both the NEXT or BACK functions to modify
of the following steps their implicit sequential nature based upon the value of
(a) and (b), each the occurrence in the object set id.").
respectively
comprising: See, e.g., EX1004 at 9:53-57 ("As shown in FIG. 3b, user
(a) writing at least one number of commands 291-298 which the user can
new attribute to the execute."); id. at 10:66-11:1 ("Page element objects 504,
original toolbar data, on the other hand, are structured to contain the display
wherein the writing at data; i.e., text and graphic, to be displayed which is
least one new attribute mapped within screen partitions 250 to 290."); id. at 14:7-
to the toolbar data 17 ("PAGE ELEMENT OBJECT, [<header >
comprises changing the (compression descriptor) (presentation data) (program
one or more buttons of call) (custom cursor) (custom text) (field
the toolbar by adding a definition) (field-level program call) (custom cursor
button; and type 2) (custom graphic) (field definition type 2)
(array definition) (inventory control) ]; Page element
(b) updating at least objects, as explained, are structured to contain the display
one attribute of the data; i.e. text and graphics, to be presented at screen
toolbar data; and the partitions 250 to 290.").
user Internet device
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Patent 8,275,863
displaying the toolbar
as defined by the
Figure 3a
Filepp
(EX1004)
Dependent claims 4-5, 11, 14-17, 20, and 23:

4. The method of claim See, e.g., EX1004 at 12:24-35 ("More specifically and as
1, wherein the one or shown schematically in FIG. 4a, objects 500 to 510 are
more toolbar-defining predefined, variable length records consisting of a fixed
databases comprises a length header 551 and one or more self-defining record
file containing a segments 552 a list of which is presented in FIG. 4c as
plurality of name-value segment types 512 to 540. In accordance with the
pairs comprising the invention, and as shown in FIG. 4b, object header 551 in
plurality of attributes. preferred form is 18 bytes in length and contains a
prescribed sequence of information which provides data
regarding the object's identification."); id. at Claim 10
("The reception system according to claim 7, wherein the
object processing means includes elements for
interpreting an object structure in which the header
includes an object identifier.").
5. The method of claim See, e.g., EX1004 at 85:20-24 ("Object storage facility
1, wherein the contents 439 manages objects locally in local store 440, comprised
of the one or more of a cache (segmented between available RAM and a
toolbar-defining fixed size disk file), and stage (fixed size disk file).").
databases and the
contents of the toolbar
update data within the
user Internet device are
hidden from a user of
the user Internet
device.
IPR2017-00967
Patent 8,275,863
11. The method of See, e.g., EX1004 at 89:1-17 ("With respect to version
claim 1, wherein the checking for currency, where an object stored at RS 400 is
initiating of the initially fetched or accessed during a session, a request to
operation occurs delivery system 20 is made for the object by specifying
transparently. the version id of the object stored at RS 400. In response,
delivery system 20 will advise the reception system 400
either that the version id of the stored object matches the
shown to be stale. Alternatively, the response may be that
the object was not found. If the version of the stored
object is current, the stored object will be used until
verified again in accordance with its storage candidacy. If
the stored object is stale, the new object delivered will
replace the old one and support the desired screen. If the
response is object not found, the stored object will be
deleted.").
14. The method of See, e.g., EX1004 at 9:53-57 ("As shown in FIG. 3b, user
claim 1, wherein the interface 285 includes a command bar 290 having a
updating the toolbar number of commands 291-298 which the user can
data comprises writing execute."); id. at 10:66-11:1 ("Page element objects 504,
at least one new on the other hand, are structured to contain the display
attribute to the toolbar data; i.e., text and graphic, to be displayed which is
data. mapped within screen partitions 250 to 290."); id. at 14:7-
17 ("PAGE ELEMENT OBJECT, [<header >
15. The method of (compression descriptor) (presentation data) (program
claim 14, wherein the call) (custom cursor) (custom text) (field
writing at least one new definition) (field-level program call) (custom cursor
attribute to the toolbar type 2) (custom graphic) (field definition type 2)
data comprises (array definition) (inventory control) ]; Page element
changing the one or objects, as explained, are structured to contain the display
more buttons of the data; i.e. text and graphics, to be presented at screen
toolbar by adding a partitions 250 to 290.").
button.
updating the toolbar number of commands 291-298 which the user can
data comprises execute."); id. at 10:66-11:1 ("Page element objects 504,
updating at least one on the other hand, are structured to contain the display
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Patent 8,275,863
attribute of the toolbar mapped within screen partitions 250 to 290."); id. at 14:7-
data. 17 ("PAGE ELEMENT OBJECT, [<header >
(compression descriptor) (presentation data) (program
17. The method of call) (custom cursor) (custom text) (field
claim 16, wherein the definition) (field-level program call) (custom cursor
updating at least one type 2) (custom graphic) (field definition type 2)
attribute of the toolbar (array definition) (inventory control) ]; Page element
data comprises objects, as explained, are structured to contain the display
updating the one or data; i.e. text and graphics, to be presented at screen
more buttons of the partitions 250 to 290.").
toolbar.
updating of the toolbar number of commands 291-298 which the user can
data in accordance with execute."); id. at 10:66-11:1 ("Page element objects 504,
the toolbar update data on the other hand, are structured to contain the display
comprises updating an data; i.e., text and graphic, to be displayed which is
attribute defining a mapped within screen partitions 250 to 290."); id. at 14:7-
button caption, the 17 ("PAGE ELEMENT OBJECT, [<header >
attribute updating from (compression descriptor) (presentation data) (program
a first caption to a call) (custom cursor) (custom text) (field
second caption. definition) (field-level program call) (custom cursor
type 2) (custom graphic) (field definition type 2)
(array definition) (inventory control) ]; Page element
objects, as explained, are structured to contain the display
data; i.e. text and graphics, to be presented at screen
partitions 250 to 290.").
23. The method of See, e.g., EX1004 at 89:12-14 ("If the version of the
claim 1, further stored object is current, the stored object will be used until
comprising the user verified again in accordance with its storage candidacy.").
Internet device
maintaining the display
of the toolbar as
defined by the updated
tool bar data until a
subsequent updating of
the updated toolbar
data.
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Patent 8,275,863
Filepp anticipates claims 1-2, 4-5, 11, 14-17, 20 and 23 of the '863 patent.
See also EX1009 102-21.
Ground 3: Claims 1-2, 4-5, 11, 14-17, 20, and 23 are rendered obvious
by Filepp in view of Morten under 35 U.S.C. 103(a)
As described above regarding Ground 2, Filepp alone anticipates claims
1, 4-5, 11, 14-17, 20, and 23. Further, claims 1-2, 4-5, 11, 14-17, 20, and 23
would have been obvious over Filepp in view of Morten (EX1005).
In Filepp, the disclosed network was based on IBM's System Network
Architecture (SNA). See EX1004 at 22:30-41, 22:67-23:4, 6:52-56. By the mid-
1990s, proprietary networks such as SNA were being replaced by IP-based
networks and integrated with the Internet. Morten provides a mechanism to adapt
the computers on a network in Filepp to communicate over the Internet.
Specifically, Morten discloses a method of connecting SNA-based hosts using an
IP-based network. See EX1005 at 7:21-22, 11:3-6. This would adapt the
teachings of Filepp to the Internet without requiring any modification.
Given the rapidly increasing popularity of the Internet in the mid-1990s, a
POSITA would have had reason to adapt the SNA-based embodiment of the
invention in Filepp to the Internet-bridging technology disclosed in Morten,
creating a toolbar that updated over the Internet. A POSITA's reasons to combine
Morten's teachings with Filepp would have included: (i) to reduce costs
associated with deploying the network disclosed in Filepp; (ii) to provide the
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users of the network disclosed in Filepp with the wide array of resources
available through the Internet, increasing the value of the network disclosed in
Filepp; (iii) to extend the network in Filepp to other users throughout the world,
including in other countries; (iv) to increase the speed by which the network in
Filepp functioned due to the high performance of IP-based networks; (v) to
interoperate with local area networks (LANs) that widely implemented the
Internet Protocol; etc. Indeed,
Filepp's own specification would have motivated a POSITA to combine Filepp's
disclosures with a distributed interactive computer network such as the Internet.
See, e.g., EX1004 at 1:11-25 ("This invention relates generally to a distributed
processing, interactive computer network intended to provide very large numbers
of simultaneous users; e.g. millions, with access to a large number; e.g.,
thousands, of applications which include pre-created, interactive text/graphic
sessions; and more particularly, to a computer network in which the interactive
text/graphic sessions are comprised of pre-created blocks of data and program
instructions which may be distributed downwardly in the network for use at a
software enhanced user computer terminal that reduces processing demand on the
higher-level network elements, thus permitting the higher-level elements to
function primarily as data supply and maintenance resource, and, thereby, reduce
network complexity, cost and response time.").

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It would have been clear and obvious to a POSITA to use the known
technique of Morten to improve the method of Filepp. See also EX1009 123-
30. Furthermore, Filepp has been cited as prior art against at least forty-eight
issued U.S. patents that contain the word "Internet" in their titles; POSITAs not
only would have, but did, appreciate Filepp's applicability to Internet-based
systems. Thus, Filepp in view of Morten renders obvious claims 1-2, 4-5, 11,
14-17, 20, and 23 of the '863 patent. See also EX1009 122-31. The following
claim chart demonstrates, on a limitation-by-limitation basis, how claims 1-2, 4-
5, 11, 14-17, 20, and 23 of the '863 patent are rendered obvious by Filepp in
view of Morten:
'863 Claim Disclosure of Filepp

1. A method of modifying a toolbar, See Filepp disclosure above for claim
comprising the steps of: element 1.
[1.a] a user Internet device See, e.g., EX1004 at 22:30-41 ("In
accordance with the invention, to facilitate
message exchange internally, and through
gateway 210 to entities externally to network
10, a protocol termed the "Data Interchange
Architecture" (DIA) is used to support the
transport and interpretation of information.
More particularly, DIA enables:
communications between RS 400 units,
separation of functions between network
layers 100, 200, 300 and 401; consistent
parsing of data; an "open" architecture for
network 10; downward compatibility within
the network; compatibility with standard
industry protocols such as the IBM System
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Network Architecture."); id. at 22:67-23:4
("within the SNA portion of network 10, DIA
and its supporting programs may be
considered "applications" facilities. In this
context, DIA resides at the transaction
services level of SNA."); id. at 6:52-56 ("In
the preferred embodiment, network 10
provides information and transaction
processing services for a large number of
users simultaneously accessing the network
via the public switched telephone network
(PSTN), broadcast, and/or other media.").
See EX1005 at Claim 1 ("A data
communications system for establishing a
communications path over an IP packet
switched network to a second SNA host
computer"); 7:21-22 ("The DDN standard
establishes criteria for the Internet Protocol
(IP)."); id. at 11:3-6 ("It is an object of the
invention to provide DDN interoperability
from IBM host computers that will let SNA
installations communicate over DDN packet
switched networks.").
[1.b] displaying a toolbar See Filepp disclosure above for claim
comprising one or more buttons, elements 1. See Filepp in view of Morten
disclosure above for claim element 1a.
[1.c] the toolbar defined by toolbar See Filepp disclosure above for claim
data stored in one or more toolbar- element 1.c.
defining databases
[1.d] the toolbar data comprising a See Filepp disclosure above for claim
plurality of attributes, each attribute element 1d.
associated with a button of the
toolbar,
[1.e] wherein for each button of the See Filepp disclosure above for claim
toolbar, at least one of the plurality element 1.e.
of attributes identifying a function
to be performed when the button is
actuated by the user Internet device;
[1.f] the user Internet device See Filepp disclosure above for claim
automatically sending a revision element 1.f.
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level of the one or more toolbar-
defining databases to a See, e.g., EX1005 at 36:20-42 ("The LUs for
predetermined network address; which a host application can initiate a
session, (VTAM OPNDST ACQUIRE), are
those LUs which define RAF attached logical
units (printers) controlled by the RAF
resident primary SNA function. For each
RAF attached printer to which a host based
application such as JES2 must send data, a
unique LU must be defined to the host
resident VTAM and JES subsystem. The LU
definition must comply with the session
protocols supported by the RAF based SNA
support package. Within the FEP each LU
shall be associated with the appropriate RAF
based LU by defining the RAFs DDN
network address, the RAFs DDN host
address, and the unique TCP port address
defined for the RAFs LU. These addresses
will be used by the FEP to establish the
DDN/TCP connection when the SNA BIND
PIU is received from the VTAM/host. The
FEP shall respond to VTAM initiated
ACTIVATE LOGICAL UNIT PIUs for this
class of LUs with a positive response and a
control vector indicating that the LU is
available (power- on). ACTIVATE
LOGICAL UNIT (ERP) shall be treated as
an ACTIVATE LOGICAL UNIT (COLD).
DEACTIVATE LOGICAL UNIT shall be
supported.").
[1.g] a server at the predetermined See Filepp disclosure above for claim
network address determining, from element 1.g.
the revision level, the user Internet
device should receive the toolbar
update data;
[1.h] the user Internet device See, e.g., EX1004 at 6:10-12 ("RS 400
receiving toolbar update data from includes a means to communicate with
the Internet; network 10 to retrieve objects"); id. At
93:56-57 ("objects received from network
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10"); id. at 94:21-23 ("Requests received
from object storage facility 439 include
requests for objects from storage in
interactive system 10."); id. at 22:67-23:4
("within the SNA portion of network 10, DIA
and its supporting programs may be
considered "applications" facilities. In this
context, DIA resides at the transaction
services level of SNA.").
See Filepp in view of Morten disclosure

above for claim element 1a.
[1.i] the user Internet device See Filepp disclosure above for claim
initiating without user interaction an element 1.i.
operation to update the toolbar data
in accordance with the toolbar
update data received;
[1.j] the user Internet device See Filepp disclosure above for claim
updating, by the operation, the element 1.j.
toolbar data in accordance with the
toolbar update data, thereby
producing updated toolbar data,
[1.k] the updating comprising at See Filepp disclosure above for claim
least one of the following steps (a) element 1.k.
and (b), each respectively
comprising:
(a) writing at least one new attribute

to the original toolbar data, wherein
the writing at least one new attribute
to the toolbar data comprises
changing the one or more buttons of
the toolbar by adding a button; and
(b) updating at least one attribute of

the toolbar data; and
the user Internet device displaying

the toolbar as defined by the
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Dependent claims 2, 4-5, 11, 14-17, 20, and 23:
2. The method of claim 1 wherein See, e.g., EX1004 at Abstract ("An
database responsive toolbar interactive computer system network enables
software installed in the user a user to display desired information, such as
Internet device as part of a web news, financial and cultural information, and
browser displays the toolbar as perform desired transactional services, such
defined by the toolbar data and the as banking and shopping, through any of a
toolbar as defined by the updated plurality of types of personal computers.
toolbar data. User inputs are received by the personal
computer and are translated into personal
computer-independent data objects and
executable code objects which are then
processed by the network."). See also Filepp
disclosure above for claim elements 1.a-d,
1.j-k.
4. The method of claim 1, wherein See Filepp disclosure above for claim 4.
the one or more tool bar-defining
databases comprises a file
containing a plurality of name-value
pairs comprising the plurality of
attributes.
the contents of the one or more
toolbar-defining databases and the
contents of the toolbar update data
within the user Internet device are
hidden from a user of the user
Internet device.
the initiating of the operation occurs
transparently.
14. The method of claim 1, wherein See Filepp disclosure above for claims 14
the updating the toolbar data and 15.
comprises writing at least one new
attribute to the toolbar data.
15. The method of claim 14,

wherein the writing at least one new
attribute to the toolbar data
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comprises changing the one or more
buttons of the toolbar by adding a
button.
16. The method of claim 1, wherein See Filepp disclosure above for claims 16
the updating the toolbar data and 17.
comprises updating at least one
attribute of the toolbar data.
17. The method of claim 16,

wherein the updating at least one
attribute of the toolbar data
comprises updating the one or more
buttons of the toolbar.
the updating of the toolbar data in
accordance with the toolbar update
data comprises updating an attribute
defining a button caption, the
attribute updating from a first
caption to a second caption.
23. The method of claim 1, further See Filepp disclosure above for claim 23.
comprising the user Internet device
maintaining the display of the
toolbar as defined by the updated
tool bar data until a subsequent
updating of the updated toolbar data.
Filepp in view of Morten renders obvious claims 1-2, 4-5, 11, 14-17, 20 and
23 of the '863 patent. See also EX1009 122-31.
Ground 4: Claims 1-2, 11, 14-17, 20, and 23 are rendered obvious by
Reilly in view of Tuniman under 35 U.S.C. 103(a)
As described above in connection with Ground 1, Reilly alone anticipates
claims 1-2, 11, 14-17, 20, and 23. Even if Reilly did not anticipate these claims,
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Patent 8,275,863
the claims would nonetheless have been obvious over Reilly in view of Tuniman
(EX1006).
Reilly teaches a method for automatically updating software, including
toolbars. Tuniman discloses software with fully configurable toolbars. See
EX1006 at 1:38-2:39. A POSITA would have been motivated to combine the
method for automatically updating software disclosed in Reilly with the fully
configurable toolbars disclosed in Tuniman in order to eliminate the need for a
user to manually update the toolbar, making the update process faster and more
seamless. See also EX1009 133, 135-38. Furthermore, a POSITA would have
been motivated to alter fully configurable toolbars to automatically update in
order to ensure that a user received the most current version of the configurable
toolbar in question. See, e.g., EX1012 at 1:11-27 ("Presently, a plurality of
methods are used by software suppliers to upgrade the existing software that is
used by their customers. These methods include floppy disk distribution, tape
distribution and modem support However, a number of problems exist in this
type of software support method a user must use the existing software even
after faults have been recognized, until the new disk version of the software is
received, since there is no immediate software support for individual users."); see
also EX1009 133. For example, a POSITA would have recognized that
automatic updates could make new functions available to the user of the fully
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configurable toolbar quickly and reliably as the functions became available. See,
e.g., EX1012 at 1:31-34 ("Moreover, further time delays exist in obtaining
upgraded versions of the software."); see also EX1009 133, 137. Similarly, a
POSITA would have appreciated that automatic updates could eliminate program
errors in the toolbar software more quickly and reliably. See, e.g., EX1012 at
1:27-31 ("Furthermore, since the upgrading process often results in the addition
of new program errors, the user must cope with the program faults of the new
version until yet another version of the software is released."); see also EX1009
135-37. More generally, a POSITA would have known that automatic updating
could increase the speed of updating. For example, Figure 11 of Tuniman
requires a user to click a button captioned "Add File" in order to add a new
program to the toolbar; a POSITA would have been motivated to combine
Tuniman with Reilly in order to avoid the need for this extra step. In the 1990s
there was a well-known transition between manual configuration and automatic
configuration of user software programs. EX1012 at 1:11-27.
It would have been readily apparent and obvious to a POSITA to use the
known technique of Tuniman with the method of Reilly. See also EX1009
132-39. Thus, Reilly in view of Tuniman renders obvious claims 1-2, 11, 14-
17, 20, and 23 of the '863 patent. See also EX1009 132-39. The following
claim chart demonstrates, on a limitation-by-limitation basis, how claims 1-2,

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11, 14-17, 20, and 23 of the '863 patent are rendered obvious by Reilly in view
of Tuniman:
'863 Claim Disclosure of Reilly in view of Tuniman

1. A method of See, e.g., EX1006 at 1:6-10 ("This invention generally
modifying a toolbar, pertains to a method and system for displaying graphic
comprising the steps controls on a computer screen, and more specifically, to
of: the configuration and properties of toolbars comprising a
plurality of graphic icons that are displayed for interactive
control by a user.").
Figures 2-5
Tuniman
(EX1006)
See, e.g., EX1003 at 14:50-15:10 ("When a client

server The application server 272 then makes calls to
one or more data servers 274 to collect all the information
that needs to be sent to the client computer and then sends
those items to the client computer The client computer
then loads the received information into its local database,
and replaces software modules with received software
modules, if any.").
[1.a] a user Internet See Reilly disclosure above for claim element 1.a.; see
device also EX1006 at 4:65-5:18 ("With reference to FIG. 1A, a
generally conventional personal computer 10 is shown,
which is suitable for implementing the present invention.
Personal computer 10 includes a processor chassis 12 in
which are disposed a mother board and a plurality of other
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circuit boards (neither separately shown) of the type
conventionally used in a personal computer. The mother
board includes a central processing unit (CPU) 23 and
memory 21, including both read only memory (ROM) and
random access memory (RAM) that are coupled to the
CPU through a data bus 13, as shown in FIG. 1B. Also
coupled to the CPU through the data bus are a display
interface 15, a hard drive and floppy drive interface 17, a
serial/mouse port 19, and a keyboard interface 25.
Although many other internal components of processor
chassis 12 are not shown, those of ordinary skill in the art
will appreciate that such components and their
interconnection are well known. Accordingly, further
details concerning the internal construction of personal
computer 10 need not be disclosed in connection with the
present invention.").
[1.b] displaying a See Reilly in view of Tuniman disclosure above for claim
toolbar comprising elements 1, 1.a.
one or more buttons,
[1.c] the toolbar See, e.g., EX1003 at 6:57-61 ("Data Access Tables 186
defined by toolbar dataare used to access news stories, advertisements and display
stored in one or more scripts associated with each of the categories of news items
toolbar-defining that are to be displayed on the subscriber's workstation.").
databases See, e.g., EX1006 at Claim 26 ("The graphic operating
system of claim 25, further comprising a central processing
unit that is coupled to the computer display, and memory
for storing a plurality of program instructions, wherein the
means for organizing, means for creating, and means for
enabling are effected on the computer by executing the
plurality of program instructions with the central
processing unit.").
[1.d] the toolbar data See, e.g., EX1006 at Claim 26 ("The graphic operating
comprising a plurality system of claim 25, further comprising a central processing
of attributes, each unit that is coupled to the computer display, and memory
attribute associated for storing a plurality of program instructions, wherein the
with a button of the means for organizing, means for creating, and means for
toolbar, enabling are effected on the computer by executing the
plurality of program instructions with the central
processing unit."); id. at 10:55-11:14 ("In FIG. 10, a tab
162 is presently selected within dialog box 160, enabling
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the user to control the "View" properties of the stacked
toolbarIn the View properties, the user can select toolbar
from a drop down box 165 and then set a Toolbar
background color for the selected toolbarTo change the
color, the user selects a Change Color button 168A
check box 170 also enables the user to indicate whether a
gradient fill should be added to the text on the stacked
toolbars.A smooth characteristic for the background
color is selected by placing a check in a check box 171. A
check box 172 enables the user to selectively indicate that
a Standard Toolbar Color should be used.
Figure 10
Tuniman
(EX1006)
[1.e] wherein for each See, e.g. EX1006 at 2:40-43 ("the graphic objects include
button of the toolbar, buttons that are activated when the user clicks a select
at least one of the button on a pointing device while a cursor controlled by
plurality of attributes the pointing device is positioned over the button"); id. at
identifying a function 4:30-32 ("showing a "Tooltip" that identifies the function
to be performed when of a button"); id. at 5:48-51 ("For example, if a graphic
the button is actuated object represents a word processing program, double
by the user Internet clicking on the graphic object causes the work processing
device; program to be executed by the computer.").
[1.f] the user Internet See Reilly disclosure above for claim element 1.f.
device automatically
sending a revision
level of the one or
more toolbar-defining
databases to a
predetermined
network address;
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[1.g] a server at the See Reilly disclosure above for claim element 1.g.
predetermined
network address
determining, from the
revision level, the user
Internet device should
receive the toolbar
update data;
[1.h] the user Internet See Reilly disclosure above for claim element 1.h.
device receiving
toolbar update data
from the Internet;
[1.i] the user Internet See Reilly disclosure above for claim element 1.i.
device initiating
without user
interaction an
operation to update the
toolbar data in
accordance with the
toolbar update data
received;
[1.j] the user Internet See Reilly disclosure above for claim element 1.j.
device updating, by
the operation, the
toolbar data in
accordance with the
toolbar update data,
thereby producing
updated toolbar data,
[1.k] the updating See, e.g., EX1006 at 11:47-61 ("In FIG. 11, a set of control
comprising at least one 78 include a drop-down box 80 to enable the user to select
of the following steps a toolbar on which the buttons or other graphic objects are
(a) and (b), each to be modified. In the example shown, an Accessories
respectively toolbar has been selected. The graphic objects within the
comprising: Accessories toolbar are shown in a list box 82. Any of the
listed graphic objects can selectively be activated or
(a) writing at least one deactivated to appear in the toolbar, as indicated by a
new attribute to the check mark or absence of a check mark in a box adjacent
original toolbar data, the graphic object. "Move" control buttons 84 or 86 can be
wherein the writing at selected to shift any graphic object selected in list box 82
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least one new attribute up or down within the list, thereby changing the relative
to the toolbar data position of the graphic object on the toolbar. Controls 88,
comprises changing 90, 92, and 94 respectively enable a user to add a file,
the one or more folder, or space, or delete a graphic object from the list
buttons of the toolbar displayed in list box 82.");
by adding a button;
and
(b) updating at least

one attribute of the Figure 11
toolbar data; and the
user Internet device Tuniman
displaying the toolbar (EX1006)
as defined by the
id. at 10:55-11:14 ("In FIG. 10, a tab 162 is presently
selected within dialog box 160, enabling the user to control
the "View" properties of the stacked toolbarIn the View
properties, the user can select toolbar from a drop down
box 165 and then set a Toolbar background color for the
selected toolbarTo change the color, the user selects a
Change Color button 168A check box 170 also enables
the user to indicate whether a gradient fill should be added
to the text on the stacked toolbars.A smooth
characteristic for the background color is selected by
placing a check in a check box 171. A check box 172
enables the user to selectively indicate that a Standard
Toolbar Color should be used.
Figure 10
Tuniman
(EX1006)
Dependent claims 2, 11, 14-17, 20, and 23:

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2. The method of See, e.g. EX1003 at 13:9-25 ("When using the second
claim 1 wherein screen saver exit mode, if subscriber user clicks on an
database responsive advertisement, the subscriber's computer is automatically
toolbar software connected to the an associated World Wide Web page on
installed in the user the Internet that provides additional information from the
Internet device as part advertiser. This is accomplished by World Wide Web
of a web browser connection and viewer procedures 211 (see FIG. 2) stored
displays the toolbar as on subscriber's computer. Each advertisement is stored on
defined by the toolbar both the information server and subscriber computers as a
data and the toolbar as C++ data structure that includes (A) an image data array,
defined by the updated typically representing a "GIF" format image, as well as (B)
toolbar data. a list of static images (such as corporate logos and
legends), if any, incorporated into the advertisement, and
(C) a Web site address that is used by the World Wide
Web connection and viewer procedures 211 to connect the
subscriber to the advertiser's specified Web page when the
subscriber clicks on the image of the associated
advertisement.").
13:29-31 ("Referring to FIG. 10, the data viewer 208 is a

program for viewing news items that the subscriber
specifically wants to read."); id. at 55-60 ("Furthermore, in
client computers with very limited hard disk space
available for storing news items, as indicated by the user
profile 194 for the client computer, the secondary
component of news items may not be stored in the local
information database in order to conserve disk space."); id.
at 14:7-11 ("When using the data viewer, if subscriber user
clicks on the displayed advertisement, the subscriber's
computer is automatically connected to the an associated
World Wide Web page on the Internet that provides
additional information from the advertiser.").
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Figure 10
Reilly (EX1003)
See Reilly disclosure above for claim elements 1.a-d, j-k.

See also EX1009 100.
See, e.g., EX1006 at 2:40-43 ("Preferably, the graphic

objects include buttons that are activated when the user
clicks a select button on a pointing device while a cursor
controlled by the pointing device is positioned over the
button.").
11. The method of See Reilly disclosure above for claim 11.
claim 1, wherein the
initiating of the
operation occurs
transparently.
14. The method of See, e.g., EX1006 at 11:47-61 ("In FIG. 11, a set of control
claim 1, wherein the 78 include a drop-down box 80 to enable the user to select
updating the toolbar a toolbar on which the buttons or other graphic objects are
data comprises writing to be modified. In the example shown, an Accessories
at least one new toolbar has been selected. The graphic objects within the
Accessories toolbar are shown in a list box 82. Any of the
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attribute to the toolbar listed graphic objects can selectively be activated or
data. deactivated to appear in the toolbar, as indicated by a
check mark or absence of a check mark in a box adjacent
15. The method of the graphic object. "Move" control buttons 84 or 86 can be
claim 14, wherein the selected to shift any graphic object selected in list box 82
writing at least one up or down within the list, thereby changing the relative
new attribute to the position of the graphic object on the toolbar. Controls 88,
toolbar data comprises 90, 92, and 94 respectively enable a user to add a file,
changing the one or folder, or space, or delete a graphic object from the list
more buttons of the displayed in list box 82.").
toolbar by adding a
button.
Figure 11
Tuniman
(EX1006)
See also Reilly disclosure above for claims 14 and 15.

16. The method of See, e.g., EX1006 at 10:55-11:14 ("In FIG. 10, a tab 162
claim 1, wherein the is presently selected within dialog box 160, enabling the
updating the toolbar user to control the "View" properties of the stacked
data comprises toolbarIn the View properties, the user can select toolbar
updating at least one from a drop down box 165 and then set a Toolbar
attribute of the toolbar background color for the selected toolbarTo change the
data. color, the user selects a Change Color button 168A
check box 170 also enables the user to indicate whether a
17. The method of gradient fill should be added to the text on the stacked
claim 16, wherein the toolbars.A smooth characteristic for the background
updating at least one color is selected by placing a check in a check box 171. A
attribute of the toolbar check box 172 enables the user to selectively indicate that
data comprises a Standard Toolbar Color should be used.").
updating the one or
more buttons of the
toolbar.
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Patent 8,275,863
Figure 10
Tuniman
(EX1006)
20. The method of See, e.g., EX1006 at 11:19-24 ("A check box 178 provides
claim 1, wherein the for selectively indicating whether the Tooltips box (i.e., the
updating of the toolbar label box identifying the graphic object or toolbar) is
data in accordance displayed when the user moves the cursor with the
with the toolbar update pointing device so that it is over one of the graphic objects
data comprises or logos on the stacked toolbars.").
updating an attribute
defining a button
caption, the attribute
updating from a first Figure 10
caption to a second
caption. Tuniman
(EX1006)
See also Reilly disclosure above for claim 20.

23. The method of See Reilly disclosure above for claim 23.
claim 1, further
comprising the user
Internet device
maintaining the
display of the toolbar
as defined by the
updated tool bar data
until a subsequent
updating of the
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Reilly in view of Tuniman renders obvious claims 1-2, 11, 14-17, 20, and 23
of the '863 patent. See also EX1009 132-39.
Ground 5: Claims 2 and 10 are rendered obvious by Filepp in view of

Olsen under 35 U.S.C. 103(a)
As discussed above, the online service described in Filepp was
commercialized as "Prodigy." Prodigy integrated a web browser into its
product. The functionality of the web browser in the Prodigy product, including
the ability to open URLs, is disclosed by Olsen. EX1007-7 (disclosing that the
Prodigy client was the "first service with a Web browser").
The authors of Filepp specifically contemplated that their system would
be used to provide access to external resources and applications. EX1004 at
22:54-60. In the mid-1990s, the world wide web ("WWW") was the fastest
growing source of such external resources and applications. See EX1009 140-
41. This provided many reasons for software developers to combine the
database responsive toolbar software of Filepp with the integrated web browsers
and their ability to open URLs described in Olsen. Some of these reasons
included customer desires, flexibility, cost savings, and speed. See also EX1009
142. Most importantly, Prodigy actually combined the web browser and ability
to open a URL described in Olsen with the underlying Prodigy architecture
described in Filepp. See, e.g., EX1007-7.

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Thus, Filepp in view of Olsen renders obvious claims 2 and 10. See also
EX1009 140-43. If however, Filepp in view of Olsen is found not to disclose
the limitations of claim 10, Ground 6 alternately discloses those limitations. The
following claim chart demonstrates, on a limitation-by-limitation basis, how
claims 2 and 10 are rendered obvious by Filepp in view of Olsen:
'863 Claim Disclosure of Filepp in view of Olsen

2. The method of See, e.g., EX1007-7 ("The first service with a We browser,
claim 1, wherein Prodigy still leads in some ways but in others its interface
database responsive is hopelessly outdated. Like AOL, Prodigy' Version 1.1
toolbar software interface has buttons that let you choose among content
installed in the user areas Once at Prodigy's Web site, you're not limited to
Internet device as part manually entering sites for FTP and other Internet features;
of a web browser there are a multitude of links to remote sites. And
displays the toolbar as Prodigy's browser is the only one that can send Internet
defined by the toolbar mail from a handy pull-down menu.").
data and the toolbar as
defined by the updated
toolbar data.
Olsen
(EX1007-7)
See also Filepp disclosure above for claim elements 1.a-d,

1.j-k.
10. The method of See, e.g., EX1007-7 ("The first service with a Web
claim 1, wherein the browser, Prodigy still leads in some ways but in others its
function to be interface is hopelessly outdated. Like AOL, Prodigy's
IPR2017-00967
Patent 8,275,863
performed when at Version 1.1 interface has buttons that let you choose
least one button of the among content areas Once at Prodigy's Web site, you're
toolbar as defined by not limited to manually entering sites for FTP and other
the updated toolbar Internet features; there are a multitude of links to remote
data is actuated by the sites. And Prodigy's browser is the only one that can send
user Internet device Internet mail from a handy pull-down menu.").
comprises opening a
URL.
Olsen
(EX1007-7)
See also Filepp disclosure above for claim elements 1.a-d,

1.j-k.
Filepp in view of Olsen renders obvious claims 2 and 10 of the '863 patent.
See EX1009 140-43.

December under 35 U.S.C. 103(a)
December discloses a feature in Netscape Navigator, one of the most
popular web browsers in the mid-1990s: the Directory Buttons. The Directory
Buttons were an array of buttons, some of which opened a URL when clicked.
EX1008-11. At the time, the function of these buttons was fixed: the attributes of
the buttons could not be updated. EX1008-11. However, a POSITA would have
had many reasons to combine this disclosed feature of opening URLs when a
IPR2017-00967
Patent 8,275,863
web browser toolbar button is clicked with the automatic toolbar updating feature
disclosed by Reilly in order to give users quick access to websites. See EX1009
144-45. For example, the ability to update the web browser toolbar buttons and
associated URLs would provide additional functionality and currency. Indeed,
December specifically laments that the buttons were not updatable. EX1008-11
("These buttons can't be modified, unfortunately, nor can their related URLs be
changed. So you'll probably end up not displaying them at all after a while
[]."). As a further example, enabling an updating button to open a URL would
streamline the user navigation process. As a further example, if an organization
changed URLs and wished to update users' toolbars accordingly, an automatically
updating button would smooth the transition.
Thus, Reilly in view of December renders obvious claims 2 and 10. See also
EX1009 144-46. If however, Reilly in view of December is found not to
disclose the limitations of claim 2, Ground 5 alternately discloses those
limitations. The following claim chart demonstrates, on a limitation-by-limitation
basis, how claims 2 and 10 are rendered obvious by Reilly in view of December:
'863 Claim Disclosure of Reilly in view of December

2. The method of See, e.g., Ex.1008-7 to -10 ("Like any good GUI
claim 1, wherein application, Netscape Navigator comes with a toolbar
database responsive These are shortcut buttons to pages that take you to the
toolbar software same pages as those that appear [] These buttons can't be
installed in the user modified, unfortunately, nor can their related URLs be
Internet device as part changed.").
IPR2017-00967
Patent 8,275,863
of a web browser
displays the toolbar as Figure 11.9:
defined by the toolbar Toolbar in
data and the toolbar as Netscape for
defined by the updated Macintosh.
toolbar data. December
(EX1008-9)
See also EX1003 at 14:7-11 ("When using the data viewer,

if subscriber user clicks on the displayed advertisement,
the subscriber's computer is automatically connected to the
an associated World Wide Web page on the Internet that
provides additional information from the advertiser."). See
also Reilly disclosure above for claim elements 1.a-d, 1.j-
k; see also Reilly disclosure for Claim 2 elements above.
10. The method of See, e.g., Ex.1008-7 to -10 ("Like any good GUI
claim 1, wherein the application, Netscape Navigator comes with a toolbar
function to be These are shortcut buttons to pages that take you to the
performed when at same pages as those that appear [] These buttons can't be
least one button of the modified, unfortunately, nor can their related URLs be
toolbar as defined by changed.").
the updated toolbar
data is actuated by the Figure 11.9:
user Internet device Toolbar in
comprises opening a Netscape for
URL Macintosh
.
See also EX1003 at 14:7-11 ("When using the data viewer,
if subscriber user clicks on the displayed advertisement,
the subscriber's computer is automatically connected to the
an associated World Wide Web page on the Internet that
provides additional information from the advertiser."). See
also Reilly disclosure above for claim elements 1.a-d, 1.j-
k.
IPR2017-00967
Patent 8,275,863
Reilly in view of December renders obvious claims 2 and 10 of the '863
patent. See also EX1009 144-46.
VIII. CONCLUSION
For the foregoing reasons, Petitioner asks that inter partes review of the '863
patent be instituted and that claims 1-2, 4-5, 10-11, 14-17, 20, and 23 be cancelled.
Respectfully,
/ /
Jonathan Stroud
IPR2017-00967
Patent 8,275,863
CERTIFICATE UNDER 37 CFR 42.24(d)
Under the provisions of 37 CFR 42.24(d), the undersigned hereby certifies
that the word count for the foregoing Petition for Inter Partes Review is 13,871 using
the word count feature of Microsoft Word for Mac, which is less than the 14,000
words allowed under 37 CFR 42.24(a)(i).
Respectfully submitted,
Dated: February 24, 2017 / /

Jonathan Stroud, Reg. 72,518
IPR2017-00967
Patent 8,275,863
CERTIFICATE OF SERVICE
I hereby certify that on February 24, 2017, I caused a true and correct copy of
the foregoing materials:
Petition for Inter Partes Review of U.S. Patent 8,275,863 Under 35 U.S.C.
312 and 37 C.F.R. 42.104
Exhibit List
Exhibits for Petition for Inter Partes Review of U.S. Patent 8,275,863
(EX1001-1021)
Power of Attorney
Word Count Certification Under 37 CFR 42.24(d)
to be served via Priority Mail Express on the following correspondent of record as
listed on PAIR:
GARDERE WYNNE SEWELL LLP

INTELLECTUAL PROPERTY SECTION
2021 MCKINNEY AVENUE
SUITE 1600
DALLAS TX 75201-2237
/ /
Jonathan Stroud, Reg. 72,518

Petition, Unified Patents Inc. v. MyMail, LTD., IPR2017-00967

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Petition, Unified Patents Inc. v. MyMail, LTD., IPR2017-00967

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Filed on behalf of Unified Patents Inc.

By: Jonathan Stroud, Reg. 72,518

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS INC.

PETITION FOR INTER PARTES REVIEW OF

35 U.S.C. 102 .......................................................................................... passim

35 U.S.C. 103(a) ..................................................................................... passim

35 U.S.C. 314(a) ...................................................................................... 6

35 U.S.C. 311-319 ................................................................................. 1

37 C.F.R. 41.200(b) ................................................................................ 8

37 C.F.R. 42.100 et seq............................................................................ 1

37 C.F.R. 42.100(b) ................................................................................ 7, 12

37 C.F.R. 42.103 ..................................................................................... 3

37 C.F.R. 42.104 ................................................................................... 3, 4, 8, 12

37 C.F.R. 42.22(a)(1) .............................................................................. 3

37 C.F.R. 42.8 ....................................................................................... 2, 3

ClientConnect, Ltd., v. MyMail, Ltd., IPR2015-00269, Paper 1 (Nov. 14, 2014)

those on which trial was instituted in IPR2015-00269. See Institution, IPR2015-

IPR2015-00269, other than omitting anticipation challenges to a claim (2) on which

This petition relies on a second declaration from Benjamin Bederson

Board already found support institution of a trial.

The challenged claims are directed to a method for updating a toolbar on a

revision level whether an update is needed, and the toolbar is updated.

user's computer could be automatically updated by use of revision levels sent to a

server. Toolbars were similarly ubiquitous. Not surprisingly, printed publications

a common method applicable to software in general to one particular form of

applicant also provided enormous quantities of irrelevant documentation from

II. MANDATORY NOTICES PURSUANT TO 37 C.F.R. 42.8

A. Notice of Real Party-In-Interest (37 C.F.R. 42.8(b)(1))

Pursuant to 37 C.F.R. 42.8(b)(1), Unified Patents Inc. (Unified or

EX1019 (Petitioners Voluntary Interrogatory Responses).

B. Notice of Related Matters (37 C.F.R. 42.8(b)(2))

The 863 patent (EX1001) is owned by MyMail Ltd. (Patent Owner).

An earlier administrative proceeding, ClientConnect Ltd. v. MyMail Ltd.,

petition is substantively identical to that instituted petition.

C. Designation of Lead and Back-up Counsel (37 C.F.R. 42.8(b)(3))

Mansinghani (Reg. 62,429) will act as backup counsel.

D. Service Information (37 C.F.R. 42.8(b)(4))

Petitioner consents to e-mail service at jonathan@unifiedpatents.com.

Floor 10, Washington, D.C. 20009 and (650) 999-0899.

E. Certification of Grounds for Standing (37 C.F.R. 42.104(a))

the '863 patent.

III. CHALLENGE AND RELIEF REQUESTED

Pursuant to 37 C.F.R. 42.22(a)(1) and 42.104(b) and (b)(1) Petitioner

application leading to the '863 patent was filed as Application 10/417,853 on

on the grounds detailed below.

A. Specific Art and Statutory Ground(s) on which the Challenges

to the '863 patent under 35 U.S.C. 102(b) and/or (e):

2. U.S. Patent No. 5,347,632 to Filepp et al. ("Filepp," EX1004) issued on

3. U.S. Patent No. 5,021,949 to Morten et al. ("Morten," EX1005) issued on

June 4, 1991. Morten is prior art under pre-AIA 35 U.S.C. 102(b).

4. U.S. Patent No. 5,644,737 to David Charles Tuniman et al. ("Tuniman,"

EX1006) was filed June 6, 1995 as Application No. 08/466,611. Tuniman is

prior art under pre-AIA 35 U.S.C. 102(e).

Olsen is prior art under pre-AIA U.S.C. 102(b).

1995) ("December," EX1008) was published in June 1995. December is

prior art under pre-AIA U.S.C. 102(b).

the PTO during the prosecution of the '863 patent.

under the following statutory grounds:

under 35 U.S.C. 102(b).

Filepp in view of Morten under 35 U.S.C. 103(a).

in view of Tuniman under 35 U.S.C. 103(a).