UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`000GLE INC.
`Petitioner
`
`I!,,
`
`AT HOME BONDHOLDERS’ LIQUIDATING TRUST,
`Patent Owner
`
`Case CBM20 16-00036
`U.S. Pat. No. 6,286,045
`
`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`000GLE INC.
`Petitioner
`
`I!,,
`
`AT HOME BONDHOLDERS’ LIQUIDATING TRUST,
`Patent Owner
`
`Case CBM20 16-00036
`U.S. Pat. No. 6,286,045
`
`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Case CBM2016-00036 of
`U.S. Pat. No. 6,286,045
`
`Following Enfish, LLC v. Microsoft Corp., No. 2015-1244 (Fed. Cir. May
`
`12, 2016), and TLI Communications LLC v. AV Automotive LLC, No. 2015-1372
`
`(Fed. Cir. May 17, 2016), claims 1-12, 14-31, 33-44, 47-53, 55-59, 61-67, 69-73,
`
`75, 77, and 78 of U.S. Pat. 6,286,045 remain unpatentable under 35 U.S.C. § 101.
`
`I. (cid:9)
`
`Unlike Enfish, the ’045 patent claims are not directed to a specific im-
`provement to the way computers operate, and remain patent-ineligible.
`
`The 045 patent claims are not, as P0 argues, directed to an improvement to
`
`the way computers operate. Regardless of whether they are analyzed in their entire-
`
`ty or considered as an ordered combination, the challenged claims merely describe
`
`generalized steps, not an inventive technological solution.’ Whereas in Enfish the
`
`claims were patent-eligible because a self-referential table was a specific asserted
`
`improvement over conventional databases and the operation of a computer, Enfish
`
`at * 11-12, nothing in the challenged claims improves the functioning of the
`
`claimed servers, computer networks, or terminals, or changes the process of deliv-
`
`ering content over the Internet. That is, the challenged claims do not: (1) recite any
`
`new hardware or software algorithm, (ii) aim to alter the claimed computing tech-
`
`nology they rely on, or (iii) override routine computer functions like "conventional
`
`database structures." Enfish at *6, *8. In fact, the ’045 patent acknowledges that
`
`most of its claimed invention used generic processes and known prior art.
`
`See Pet.,
`
`’ Throughout its POPR, P0 stated that Google did not address the claims in their
`
`entirety, or as an ordered combination. E.g., POPR, 31, 34-35, 40-41. This is not
`
`correct. See, e.g., Pet., 54 ("Not only are the individual steps 112 and 114 conven-
`
`tionally performed in the art, but the combination was also well known"), 59, 26.
`
`-1-
`
`
`
`Case CBM2016-00036 of
`U.S. Pat. No. 6,286,045
`
`9-14 (comparing FIG. 3 to FIG. 4). And the allegedly novel combination of block-
`
`ing and redirecting network traffic did not introduce any new or improved proto-
`
`cols that overrode existing functionality. Rather, the combination employed exist-
`
`ing, conventional HTTP and HTML commands, and the claims do not recite any
`
`special techniques for implementing unbiockability (which, in any event, is de-
`
`scribed in the specification as being implemented by way of existing, conventional
`
`techniques). See Pet., 27-29.
`
`Further, the ’045 patent claims are not written at the same level of detail as
`
`those in Enfish. The Enfish claims recite a specific system of managing infor-
`
`mation in a memory table, describing the self-referential table down to the format-
`
`ting of the rows and columns of the table. In contrast, the
`
`’045 patent claims gener-
`
`ically recite a signal having "information intended to prevent said first request sig-
`
`nal from being blocked" followed by a "second request signal"(cid:151)they provide no
`
`detail as to how to implement these signals, much less limitations guaranteeing the
`
`steps will work as "intended." See, e.g., claim 1. Thus, the challenged claims are
`
`distinguishable from those in Enjish.
`
`IL Similar to TLI, the ’045 patent’s abstract idea is tethered to the claim
`language, and any recited physical components merely provide a gener-
`ic environment in which to carry out the abstract idea.
`
`The challenged claims are more akin to the claims in TLI than those at issue
`
`in Enfish. Specifically, the challenged claims are directed to the abstract idea of
`
`storing, managing, and delivering information, similar to TL-Ps abstract idea of
`"classifying an image and storing the image based on its classification." TLJ at *7
`
`-2-
`
`
`
`Case CBM2016-00036 of
`U.S. Pat. No. 6,286,045
`
`The Petition walks through the analysis "tethering" this abstract idea to explicit
`
`language in the claims. See, Pet., 51-52. As with the TLI claims, the challenged
`
`claims rely upon tangible components such as a server or a terminal, but the ’045
`
`patent’s specification makes clear that these components only provide a generic en-
`
`vironment where the components are merely a "conduit for the abstract idea."
`
`TLI
`
`at *9
`
`Moreover, PO’s efforts to recast the 045 patent claims following Enfish (and
`
`ignoring I’Ll altogether) belie the purpose originally described by the patent. Ac-
`
`cording to P0, the claims are "directed to solving the problem of blocked banner
`
`requests in a caching network, while retaining the benefits of caching." POPR, 33.
`
`P0 therefore asserts that no analysis of the ’045 patent or its claims support the
`
`proffered abstract idea of "storing, managing, and delivering information." POPR,
`
`34. To the contrary, the Background of the Invention explicitly states that "[t]his
`
`invention relates to the system for the storage, management, and delivery of infor-
`
`mation on a computer network." GOOG 1001, 1:9-13. This abstract idea is also re-
`
`flected in all five of the objects of the invention listed in the Summary of the In-
`
`vention. Id., 3:31-50. These sections provide a snapshot(cid:151)concurrent with the time
`
`of filing(cid:151)of the original purpose of the invention. Conversely, these sections do
`
`not support PO’s efforts, nearly 20 years later, to recast the invention and analogize
`
`with Enfish. And both Enfish and TLI confirm that the specification’s characteriza-
`
`tion of the invention can provide insight into the purpose of the claims.
`
`Enfish at
`
`*15; TLI at*8.
`
`Here, similar to TLI, the challenged claims are "directed to the use of con-
`
`-3-
`
`
`
`Case CBM2016-00036 of
`U.S. Pat. No. 6,286,045
`
`ventional or generic technology in a nascent but well-known environment, without
`
`any claim that the invention reflects an inventive solution to any problem presented
`
`by combining the t wo. ! TLI at *8. The specification does not say, nor does P0 ar -
`
`gue, that the ’045 patent claims any new servers, terminals, computers, devices, or
`
`new physical combination of these components. See id., *8.9. The specification
`
`does not even provide any technical details for these components, but instead pre-
`
`dominantly describes the system and methods in purely functional terms.
`
`Id.; See
`
`Pet., 51-52. The functions of the claimed components also do not include any
`
`meaningful limitations(cid:151)merely performing generic, well-known routines.
`
`Id., 56-
`
`65. Like the claims in TLI, each of the additional claim limitations, both alone and
`
`in combination, were previously known in the art (even PO’s asserted unblockable
`
`signal + cacheable signal combination was known, as evidenced by, among other
`
`documents, Kirsch. See Pet., 27-28). This is like TLJ, where the court found the
`
`feature of "attaching classification data ... to images for the purpose of storing" as
`
`a well-established "basic concept" sufficient to fall under Alice step 1. TLI at * 11.
`
`For these reasons, and as discussed in the Petition, the challenged claims are
`
`not directed to patent-eligible subject matter. If anything, (1) the contrast between
`
`the ’045 patent claims and the specificity of the Enfish claims, and (2) the similarity
`
`between the level of detail in the ’045 patent claims and the TLI claims, further
`
`support Petitioner’s assertion that the challenged claims are patent-ineligible.
`
`-4-
`
`
`
`Case CBM2016-00036 of
`U.S. Pat. No. 6,286,045
`
`RESPECTFULLY SUBMITTED,
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`Date: June 17, 2016
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`?Michelle K. oHoloubek
`Attorney for Petitioner Google Inc.
`Registration No. 54,179
`
`- 5 -
`
`
`
`Case CBM2016-00036 of
`U.S. Pat. No. 6,286,045
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`
`The undersigned hereby certifies that the above-captioned PETITIONER’S
`
`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE was served in
`
`its entirety on June 17, 2016, upon the following parties:
`
`Garland Stephens (Lead Counsel)
`Justin Constant (Backup Counsel)
`WElL, GOTSCHAL & MANGES LLP
`700 Louisiana, Suite 1700
`Houston, Texas 77002
`garland. stephens@weil. corn
`jtin. constant@weil.com
`sean.mills@weil . corn
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`Date: June 17, 2016
`1100 New York Avenue, N.W (cid:9)
`Washington, D.C. 20005-3934 (cid:9)
`(202) 371-2600 (cid:9)
`
`28246821 .DOCX
`
`Michelle K. Holoubek
`Attorney for Petitioner Google Inc.
`Registration No. 54,179
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
