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By Tony Dutra
Aug. 12 — A 1998-filed patent on a personalized internet home page, asserted against Google, Microsoft and six others, was affirmed invalid by the U.S. Court of Appeals for the Federal Circuit Aug. 12 ( B.E. Tech., LLC v. Microsoft Corp. , 2016 BL 261464, Fed. Cir., No. 2015-1882, 8/12/16 ).
The alleged infringers filed a total of five petitions with the Patent Trial and Appeal Board attacking B.E. Technology LLC's patent. Their petitions described a number of patents and publications that predated B.E.'s application. But the board and court needed only one—cited by each petition—to show prior invention in the early days of browser technology.Source Material:
U.S. Patent:No. 6,771,290
B.E.'s U.S. Patent No. 6,771,290 includes three claims on a personalized internet user interface. The original application leading to the patent was filed in 1998.
B.E. filed 11 lawsuits in the U.S. District Court for the Western District of Tennessee. In general, B.E. accused smartphones and tablets as infringing, but its complaints listed a variety of other devices, including Microsoft Xbox 360 consoles.
Google Inc., Microsoft Corp., Samsung Electronics America Inc. and Sony Mobile Communications (USA) Inc. all responded by challenging the patent at the PTAB. The challengers each cited an international patent application filed by Dan Kikinis—currently chief technology officer at FutureDial Inc.—and claiming priority to 1996.
The board found that the Kikinis application disclosed all the elements of the '290 patents claims, making the latter invalid for anticipation. The Federal Circuit affirmed.
B.E. tried to distinguish its invention from Kikinis's by saying it createdseparate “regions” of the user interface for particular functions, such as getting different types of mail messages. Though the patent description provided explicit definitions for 20 terms, “region” was not among them.
Kikinis described putting like functions in separate areas, which the court determined was an accurate synonym for regions. The court agreed with the PTAB that a dictionary definition broadly defining a region as an area on the user interface screen could fill in if there was any confusion.
B.E. also tried to distinguish its browser-program interaction. The way client-side browsers interacted with server-side programs—such as retrieving mail messages from a database—was variable in the late 1990s. Again, though the court concluded that Kikinis's browser-server division of tasks was similar to B.E.'s patent.
Judge Alan D. Lourie wrote the court's opinion, which was joined by Judges Raymond T. Chen and Kara F. Stoll.
Additional district court defendants are Amazon Digital Services Inc., Apple Inc., Barnes & Noble Inc. and Motorola Mobility Holdings LLC.
B.E. also asserted U.S. Patent No. 6,628,314 against Google, Microsoft and Apple, and in separate complaints against Facebook Inc., Match.com LLC and People Media Inc. Facebook and Match.com joined the successful PTAB attacks against that patent. The Federal Circuit heard oral argument in that consolidated appeal July 6, but it has not yet published an opinion.
Freitas Angell & Weinberg LLP, Redwood City, Calif., represented B.E. For the appellees: Mayer Brown LLP, Washington, represented Google; Sidley Austin LLP, Washington, represented Microsoft; Greenberg Traurig LLP, New York, represented Samsung; and Kenyon & Kenyon LLP, New York, represented Sony.
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