`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`ALFONSO CIOFFI, MEGAN ELIZABETH ROZMAN,
`MELANIE ANN ROZMAN, AND MORGAN LEE ROZMAN,
`Patent Owners.
`____________
`
`Case CBM2017-00015
`Patent RE43,528
`____________
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`

`

`CBM2017-00015
`Patent RE43,528
`
`Table of Contents
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND ............................................................................................. 3
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`Related Matters ...................................................................................... 3
`
`Concurrent District Court Litigation ..................................................... 4
`
`Description in the ’528 Reissue ............................................................ 5
`
`Prosecution History of the ’528 Reissue .............................................10
`
`Challenged Independent Claims of the ’528 Reissue .........................10
`
`III. OVERVIEW OF THE PETITION ................................................................13
`
`IV. CONSTRUCTION OF TERMS ....................................................................14
`
`V.
`
`THE BOARD SHOULD DENY INSTITUTION BECAUSE THE ’528
`REISSUE DOES NOT QUALIFY AS A “COVER BUSINESS METHOD
`PATENT” ......................................................................................................15
`
`a.
`
`Financial Product or Service ...............................................................16
`
`i.
`
`ii.
`
`None of the Challenged Claims are financial in nature. ...........18
`
`The Petitioner fails to carry its burden to establish that at least
`one of the Challenged Claims is financial in nature. ................21
`
`b.
`
`Technological Invention Exception ....................................................25
`
`i.
`
`ii.
`
`The Petitioner Fails to Establish that the Claimed Subject
`Matter of the ’528 Reissue as a Whole Does Not Recite a
`Technical Feature that Is New and Unobvious .........................25
`
`The Petitioner Fails to Establish that the Claimed Subject
`Matter of the ’528 Reissue Patent as a Whole Does Not Recite a
`Technical Feature that Solves a Technological Problem Using a
`Technological Solution .............................................................31
`
`VI. THE BOARD SHOULD EXERCISE ITS DISCRETION AND DENY
`INSTITUTION ..............................................................................................34
`
`VII. CONCLUSION ..............................................................................................37
`
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`Patent Owner Preliminary Response
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`Patent RE43,528
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`Cases
`
`Table of Authorities
`
`Alice Corp. Pty Ltd. v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014)................................................................................... 29, 34
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016)..........................................................................................35
`
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327, 118 U.S.P.Q.2d 1684 (Fed. Cir. 2016) ................................. 29, 34
`
`Facebook, Inc. v. Skky, LLC,
`CBM2016-00091, paper 7, slip op. (P.T.A.B. Nov. 23, 2016) ............................17
`
`Fairchild Semiconductor Corp. v. In-Depth Test LLC,
`CBM2015-00060, paper 11, slip op. (P.T.A.B. Aug. 3, 2015) ..................... 16, 18
`
`FedEx Corp. v. Ronald A. Katz Tech. Licensing, L.P.,
`CBM2015-00053, paper 9, slip op. (P.T.A.B. June 29, 2015) ...................... 16, 18
`
`Google, Inc. v. LocatioNet Sys. Ltd.,
`CBM2016-00062, paper 7, slip op. (P.T.AB. Oct. 25, 2016) ..............................23
`
`In re CSB-System Int’l, Inc.,
`832 F.3d 1335 (Fed. Cir. 2016) ............................................................................14
`
`In re Cuozzo Speed Techs., LLC.,
`793 F.3d 1268 (Fed. Cir. 2015) ............................................................................35
`
`Kayak Software Corp. v. Int’l Bus. Machs. Corp.,
`CBM2016-00077, paper 15, slip op. (P.T.A.B. Dec. 15, 2016) .................... 23, 25
`
`Plaid Techs., Inc. v. Yodlee, Inc.,
`CBM2016-00082, paper 8, slip op. (P.T.A.B. Oct. 6, 2016) ........................ 18, 24
`
`The U.S. Postal Service v. Return Mail, Inc.,
`CBM2014-00116, paper 24, slip op. (P.T.A.B. Feb. 20, 2015) ...........................35
`
`United Servs. Automobile Assoc. v. Asghari-Kamrani,
`CBM2016-00064, paper 14, slip op. (P.T.A.B. Sep. 21, 2016) ...........................17
`
`Patent Owner Preliminary Response
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`Patent RE43,528
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`Unwired Planet, LLC v. Google, Inc.,
`__ F.3d ___, 2015-1812, slip op. (Fed. Cir. Nov. 21, 2016) ................... 17, 18, 22
`
`Statutes
`
`35 U.S.C. § 103 ........................................................................................................13
`
`Leahy-Smith America Invents Act (“AIA”) § 18(d)(1) ......................................1, 16
`
`Rules
`
`37 C.F.R. § 42.207 ..................................................................................................... 1
`
`37 C.F.R. § 42.220 ...............................................................................................3, 14
`
`37 C.F.R. § 42.301 ...............................................................................................1, 25
`
`37 C.F.R. § 42.304 ...................................................................................................16
`
`37 C.F.R. § 42.65 .....................................................................................................30
`
`77 Fed. Reg. 48734 (Aug. 14, 2012)........................................................................35
`
`77 Fed. Reg. 48756 (Aug. 14, 2012)........................................................... 14, 29, 37
`
`
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`Patent Owner Preliminary Response
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`CBM2017-00015
`Patent RE43,528
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`Exhibit List
`
`Exhibit No.
`
`Exhibit Description
`
`Declaration of H.E. Dunsmore in Support of Patent Owner’s
`Preliminary Response
`
`Declaration of Eric Benisek in Support of Patent Owner’s
`Preliminary Response
`
`United States Court of Appeals for the Federal Circuit, Median
`Disposition Time for Cases Decided by Merits Panels
`
`2001
`
`2002
`
`2003
`
`
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`Patent Owner Preliminary Response
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`I.
`
`INTRODUCTION
`
`Alfonso Cioffi, Megan Rozman, Melanie Rozman, and Morgan Rozman
`
`(collectively, “Patent Owner”) hereby provide this Patent Owner Preliminary
`
`Response pursuant to 37 C.F.R. § 42.207 and in response to the Petition for
`
`Covered Business Method Review of U.S. Patent No. RE43,528 (“Petition”) filed
`
`by Petitioner Google Inc. (“Petitioner”). This response is timely filed within three
`
`months after the date of the Notice of Filing Date Accorded to Petition and Time
`
`for Filing Patent Owner Preliminary Response dated November 17, 2016.
`
`The Patent Owner respectfully submits that the Petitioner’s request to
`
`institute a covered business method (“CBM”) review of claims of U.S. Patent No.
`
`RE43,528 (“’528 Reissue”) should be denied because the ’528 Reissue does not
`
`qualify as a CBM patent pursuant to the Leahy-Smith America Invents Act
`
`(“AIA”) § 18(d)(1) and 37 C.F.R. § 42.301. First, the claimed subject matter of the
`
`’528 Reissue is in no way financial in nature. The ’528 Reissue claims an
`
`improvement to a computer to thereby prevent corruption of data or one or more
`
`system files by malware, which is of general utility with no finance-related
`
`terminology or limitations. The Petitioner has failed to carry its burden to establish
`
`that any claim of the ’528 Reissue is financial in nature. Next, the Petitioner has
`
`failed to carry its burden to establish that the claimed subject matter of the ’528
`
`Reissue as a whole does not recite a technical feature that is new and unobvious.
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`Further, the claimed subject matter of the ’528 Reissue recites a technical feature
`
`that solves a technical problem (e.g., malware and various shortcomings of
`
`previous architectures) using a technical solution (e.g., an improvement to an
`
`architecture of a computer); and the Petitioner has failed to carry its burden to
`
`establish otherwise.
`
`Even if the Board determines that the ’528 Reissue qualifies as a CBM
`
`patent, the Board should exercise its discretion to deny the Petitioner’s request to
`
`institute a CBM review of the ’528 Reissue because instituting CBM review in this
`
`instance would be contrary to recognized purposes of CBM reviews. The Patent
`
`Owner and Petitioner have been involved in district court litigation since February
`
`5, 2013, which is the asserted basis for standing by the Petitioner. Prior to the due
`
`date of this Patent Owner Preliminary Response, trial in the district court litigation
`
`has concluded, along with its preceding extensive discovery and even an appeal to
`
`the Court of Appeals for the Federal Circuit with respect to claim construction
`
`issues. If a CBM review is instituted, it would (i) not be an alternative to district
`
`court litigation, (ii) add expense and burden to both parties, and (iii) potentially
`
`delay resolution of the conflict between the parties, all of which is contrary to
`
`recognized purposes of CBM reviews.
`
`The Patent Owner herein provides reasons why the Petitioner’s request to
`
`institute a CBM review should be denied and does not herein provide a response to
`
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`any of the asserted Grounds for Challenge proposed in the Petition. However, the
`
`Patent Owner does not concede that the asserted Grounds for Challenge
`
`demonstrate that any claim is more likely than not unpatentable. The Patent
`
`Owner reserves the right to respond to the asserted Grounds for Challenge,
`
`including by providing any relevant evidence, in a patent owner response pursuant
`
`to 37 C.F.R. § 42.220 if a CBM review of the ’528 Reissue is instituted.
`
`II. BACKGROUND
`
`a.
`
`Related Matters
`
`The ’528 Reissue is included in the subject of an infringement action in
`
`concurrent district court litigation in Cioffi, et al. v. Google, Inc., No. 2:13-cv-
`
`00103 (E.D. Tex.) (“the district court litigation”). See Ex. 1005 (Amended
`
`Complaint) at ¶12. Additionally, U.S. Patent Nos. RE43,500 (“’500 Reissue”) and
`
`RE43,529 (“’529 Reissue) are included in the subject of the infringement action in
`
`the same district court litigation. See id. at ¶¶ 11-13.
`
`Each of U.S. Patent No. RE43,103 (“’103 Reissue”), the’500 Reissue, the
`
`’528 Reissue, and the ’529 Reissue claims priority to U.S. Patent No. 7,484,247
`
`(“’247 Patent”), and each share a substantially same specification. The Petitioner
`
`has filed petitions requesting institution of CBM reviews relating to these reissue
`
`patents as follows:
`
`CBM2017-00009 relating to the ’529 Reissue;
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`Patent RE43,528
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`CBM2017-00010 relating to the ’528 Reissue;
`
`CBM2017-00011 relating to the ’500 Reissue;
`
`CBM2017-00012 relating to the ’103 Reissue;
`
`CBM2017-00013 relating to the ’103 Reissue;
`
`CBM2017-00014 relating to the ’500 Reissue;
`
`CBM2017-00015 relating to the ’528 Reissue (instant proceeding); and
`
`CBM2017-00016 relating to the ’529 Reissue.
`
`U.S. Patent Application No. 13/757,684 claims priority to the ’247 Patent
`
`and remains pending before the U.S. Patent & Trademark Office.
`
`b.
`
`Concurrent District Court Litigation
`
`The district court litigation was pending for almost four years before the
`
`Petitioner filed the Petition. The district court litigation began on February 5, 2013
`
`with the Patent Owner filing its complaint against the Petitioner. See Ex. 2002
`
`(Benisek Decl.) at ¶ 6. Recently, a trial was held in the district court litigation,
`
`which concluded on February 10, 2017. See id. at ¶ 34. The jury returned a
`
`verdict determining that the claims asserted in the district court litigation were
`
`infringed and not invalid. See id. at ¶ 35. During the preceding pendency of the
`
`district court litigation, extensive discovery occurred, as well as an appeal to the
`
`Court of Appeals for the Federal Circuit with respect to claim construction issues.
`
`See id. at ¶¶ 6-33.
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`c.
`
`Description in the ’528 Reissue
`
`The ’528 Reissue describes that “a lack of security against unwanted
`
`incursions into the computers main processing and non-volatile memory space has
`
`emerged as a significant problem” in the open interconnection architecture of, e.g.,
`
`the internet. Ex. 1001 (’528 Reissue) at 3:25-29, 37-39. Specifically, open
`
`interconnection architectures of computers allowed malicious software
`
`(“malware”) access to programs and data files. See id. at 3:39-47; Ex. 2001
`
`(Dunsmore Decl.) at ¶¶ 36-37. Many attempts to address the problem of malware
`
`were made, but each had some limitation. See Ex. 2001 at ¶¶ 38-42. For example,
`
`rings-of protection could be complex, which could allow a malware practitioner
`
`more options to bypass security and to hack or corrupt programs. See Ex. 1001 at
`
`4:50-5:7. Another attempt to address malware was blockers, sweepers, firewalls,
`
`and router/firewalls. See id. at 5:42-45. These were limited in that they only
`
`detected known malware or were based on receiving data from trusted sites or
`
`known applications. See id. at 5:53-61.
`
`An inherent problem with then existing computer architectures and solutions
`
`was that all executable data files would be resident on a main process to perform a
`
`desired function, and when coupled with resource sharing (such as sharing
`
`memory) due to the operating system, malware resident on the main processor
`
`could access memory to corrupt programs. See id. at 5:17-35, 6:15-21; Ex. 2001 at
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`¶¶ 37, 41. The ’528 Reissue states that “what is needed in the art is a means of
`
`isolating the network interface program from the main computer system such that
`
`the network interface program does not share a common memory storage area with
`
`other trusted programs.” Ex. 1001 at 6:58-61.
`
`The ’528 Reissue describes a multi-process browser architecture where
`
`when potential malware is downloaded from, e.g., the internet, the suspicious
`
`program executes within the second web browser process from which a first
`
`memory space is protected. See, e.g., id. at Abstract, 11:29-37. Thus, the malware
`
`cannot automatically damage other sectors of the computer systems, such as
`
`system or critical files resident on the first memory space. See, e.g., id. at 11:32-41.
`
`In an example embodiment, Figure 9 illustrates a computer system 100,
`
`which may represent, for example, a portable computer, such as a notebook
`
`computer, or any data processing system, a personal digital assistant (PDA), a
`
`communication device such as a cell phone, or device that is capable of being
`
`connected to a network of one or more computers. See, e.g., id. at 15:62-63, 9:23-
`
`28. The computer system 100 comprises a video processor 970, a processor 960, a
`
`memory data storage area 950, and a network interface 190. See, e.g., id. at 15:63-
`
`65, Figs. 1, 9.
`
`The processor 960 comprises multiple processor cores, illustrated by a first
`
`processor 920 and a second processor 940. See, e.g., id. at 15:65-16:5. The
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`memory data storage area 950 may further comprise a first memory data storage
`
`area 910 and a second memory data storage area 930. See, e.g., id. at 16:5-7. The
`
`memory areas 910 and 930 may comprise separate, isolated memory zones within
`
`a common physical memory space, such as separate partitions within the same hard
`
`drive, for example. See, e.g., id. at 16:7-9, 32-35. The first processor 920 is
`
`communicatively coupled to both memory data storage areas 910 and 930, see,
`
`e.g., id. at 10:46-48, Figs. 1, 9, and the second processor 940 is communicatively
`
`coupled to the second memory data storage area 930, see, e.g., id. at 10:34-37,
`
`Figs. 1, 9. The second processor 940 may be configured to be incapable of
`
`initiating access to the first memory data storage area 910. See, e.g., id. at 16:22-
`
`31, 10:34-54.
`
`The second processor 940 is communicatively coupled to the network
`
`interface device 190, which is connected to a network (e.g., the internet) of one or
`
`more computer devices 195. See, e.g., id. at 10:5-22, Fig. 9. A common operating
`
`system may control the combination of the first processor 920 and first memory
`
`data storage area 910 and the combination of the second processor 940 and second
`
`memory data storage area 920. See, e.g., id. at 11:45-47.
`
`The functions carried out by the processors 920 and 940 may comprise
`
`separate, secure logical processes executing on the same physical processor. See,
`
`e.g., id. at 16:10-12. The computer system 100 would be capable of disallowing a
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`secure logical process access to certain memory spaces, and/or disallowing a
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`secure logical process from initiating access to another logical process. See, e.g.,
`
`id. at 16:22-27. For example, the functions carried out by the second processor 940
`
`may comprise a secure logical process, which may be configured to be unable to
`
`automatically initiate access to either the first memory data storage area 910 or
`
`another logical process performing the functions of the first processor 920. See,
`
`e.g., id. at 16:27-31.
`
`In Figure 6, an exemplary process flow 600 allows an interactive network
`
`process to be carried out on the computer system 100. See, e.g., id. at 14:18-21. A
`
`user initiates an interactive network process via the second processor 940 (step
`
`610). See, e.g., id. at 14:21-23, Figs. 1, 9. For example, the user can open a first
`
`process, and the first processor 920 operating the first process can cause a second
`
`process on the second processor 940 to be initiated. See, e.g., id. at 10:57-64, Fig. 2
`
`(steps 210, 220). The second processor 940 receives interactive network process
`
`status data from a network connection, e.g., the network interface 190 (step 620).
`
`See, e.g., id. at 14:23-24, Figs. 1, 9. The second processor 940 informs the first
`
`processor 920 that interactive network process status data is available (step 630).
`
`See, e.g., id. at 14:24-26, Figs. 1, 9. The first processor 920 retrieves interactive
`
`network process status data from the second processor 940 and uses the status data
`
`to update the interactive network process and update video display, e.g., through
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`the video processor 970 (step 640). See, e.g., id. at 14:26-29, Figs. 1, 9. The first
`
`processor 920 then passes the updated interactive network process status data to
`
`the second processor 940 (step 650). See, e.g., id. at 14:29-30, Figs. 1, 9. The
`
`second processor 940 then sends the updated interactive network process status
`
`data to the network 195 via network interface 190 (step 660). See, e.g., id. at 14:30-
`
`32, Figs. 1, 9. The exemplary process 600, or a process functionally equivalent, is
`
`carried out continuously as long as the interactive process is running. See, e.g., id.
`
`at 14:32-35, Figs. 1, 9.
`
`By using the exemplary process 600 (or an equivalent), the computer system
`
`100 is capable of actively deciding what data to download and use, and what data
`
`to discard or scan for malware. See, e.g., id. at 14:36-39, Figs. 1, 9. The status data
`
`is buffered prior to loading it onto the combination of the first processor 920 and
`
`first memory data storage area 910. See, e.g., id. at 14:39-40, Figs. 1, 9. The
`
`combination of the first processor 920 and first memory data storage area 910 may
`
`be advantageously configured to only accept status information in the proper
`
`format, thereby minimizing the chance that a malware practitioner could
`
`deceptively load malware onto the combination of the first processor 920 and first
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`memory data storage area 910. See, e.g., id. at 14:40-44, Figs. 1, 9.
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`d.
`
`Prosecution History of the ’528 Reissue
`
`The ’528 Reissue matured from U.S. Patent Application No. 12/720,147
`
`(“’147 Application”) filed on March 9, 2010 as a reissue application of U.S. Patent
`
`No. 7,484,247, which issued on January 27, 2009 from U.S. Patent Application
`
`No. 10/931,609 (“’609 Application”) filed on August 7, 2004. The Patent Owner
`
`does not believe that the prosecution histories in the ’147 Application or ’609
`
`Application are helpful for understanding issues presented herein. Hence, further
`
`description of the prosecution histories is omitted herein for brevity.
`
`e.
`
`Challenged Independent Claims of the ’528 Reissue
`
`Independent Claims 1, 21, 44, and 64 of the ’528 Reissue are as follows:
`
`Claim 1
`
`1. A method of operating a computer system capable of exchanging data
`across a network of one or more computers and having at least a first and second
`electronic data processor capable of executing instructions using a common
`operating system, comprising:
`executing a first web browser process, capable of accessing data of a
`website via the network, in a first logical process within the common
`operating system using the first electronic data processor, wherein the
`first logical process is capable of accessing data contained in a first
`memory space;
`executing a second web browser process in a second logical process within
`the common operating system using the second electronic data
`processor, wherein the second logical process is capable of accessing
`data contained in the second memory space; and
`displaying data from the first logical process and the second logical
`process, wherein a video processor is adapted to combine data from the
`first and second logical processes and transmit the combined data to a
`display;
`wherein the computer system is configured such that the second electronic
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`Claim 1
`
`data processor is operating in a protected mode and data residing on
`the first memory space is protected from corruption by a malware
`process downloaded from the network and executing as part of the
`second web browser process.
`
`
`
`Claim 21
`
`21. A portable computer capable of executing instructions using a
`common operating system, comprising:
`a network interface device configured to exchange data across a network
`of one or more computers and access at least one website;
`at least a first memory space and a second memory space, the first memory
`space containing at least one system file;
`at least one electronic data processor communicatively coupled to the
`network interface device, the first and second memory space, and to a
`user interface, wherein the user interface is configured to receive input
`from a computer user;
`the at least one electronic data processor configured to execute a first web
`browser process, capable of accessing data of the at least one website
`via the network, in a first logical process within the common operating
`system, wherein the first logical process is capable of accessing data
`contained in the first memory space;
`the at least one electronic data processor further configured to execute a
`second web browser process in a second logical process within the
`common operating system, wherein the second logical process is
`capable of accessing data contained in the second memory space and is
`further capable of generating video data from the at least one website
`accessed via the network; and
`a video processor configured to process video data from the second web
`browser process for display;
`wherein the first web browser process is capable of opening the second
`web browser process and is further capable of passing data to the
`second web browser process;
`wherein further the portable computer is configured such that the at least
`one system file residing on the first memory space is protected from
`corruption by a malware process downloaded from the network and
`executing within the second web browser process.
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`
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`Claim 44
`
`44. A method of operating a portable computer capable of executing
`instructions using a common operating system and comprising a network
`interface device, at least a first memory space and a second memory space, and
`at least one electronic data processor communicatively coupled to the network
`interface device, the first and second memory space, and to a user interface,
`comprising:
`exchanging data across a network of one or more computers with the
`network interface device and accessing at least one website;
`storing at least one system file in the first memory space;
`opening a first web browser process capable of accessing data of the at
`least one website via the network, wherein the first web browser
`process is capable of accessing data contained in the first memory
`space;
`opening a second web browser process, wherein the second web browser
`process is capable of accessing data contained in the second memory
`space, and is further capable of generating data for video display; and
`passing data from the first web browser process to the second web browser
`process;
`wherein the portable computer is configured such that the at least one
`system file residing on the first memory space is protected from
`corruption by a malware process downloaded from the network and
`executing as part of the second web browser process.
`
`
`
`Claim 64
`
`64. A computer program product comprising a program code stored in a
`non-transitory computer readable medium operable on computer capable of
`executing instructions using a common operating system and having at least one
`electronic data processor communicatively coupled to a first and second memory
`space and to a network interface device configured to exchange data across a
`network of one or more computers and access at least one website, configured to:
`store at least one system file within the first memory space;
`open a first web browser process, capable of accessing data of the at least
`one website via the network, in a first logical process, the first logical
`process being configured to access data contained in the first memory
`
`Patent Owner Preliminary Response
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`Page 12
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`

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`CBM2017-00015
`Patent RE43,528
`
`Claim 64
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`space;
`open a second web browser process in a second logical process, the second
`logical process being configured to access data contained in the second
`memory space; and
`pass data from the first web browser process to the second web browser
`process, wherein the at least one system file residing on the first
`memory space is protected from corruption by a malware process
`downloaded from the network and executing as part of the second web
`browser process.
`
`
`
`III. OVERVIEW OF THE PETITION
`
`In addition to providing arguments why the ’528 Reissue purportedly
`
`qualifies as a CBM patent, the Petitioner in the Petition challenges Claims 1, 5, 8,
`
`21-24, 30, 44, 64, and 67 of the ’528 Reissue (“Challenged Claims”) under the
`
`following proposed grounds:
`
`Ground 1: The Petitioner asserts that Claims 21-24, 30, 44, 64, and 67 are
`
`purportedly obvious under 35 U.S.C. § 103 over Ioannidis-2002 (Ex. 1025) and
`
`Ioannidis-2001 (Ex. 1026) individually, together, or in light of Absolute OpenBSD
`
`(Ex. 1027) and the knowledge of one of ordinary skill in the art;
`
`Ground 2: The Petitioner asserts that Claims 1, 5, 8 are purportedly
`
`obvious under 35 U.S.C. § 103 over Ioannidis-2002 (Ex. 1025) and Ioannidis-2001
`
`(Ex. 1026) individually, together, or in light of Absolute OpenBSD (Ex. 1027) and
`
`Complete FreeBSD (Ex. 1028) and the knowledge of one of ordinary skill in the
`
`art.
`
`Patent Owner Preliminary Response
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`
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`Page 13
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`CBM2017-00015
`Patent RE43,528
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`The Patent Owner does not respond individually to these Grounds herein,
`
`but provides sufficient reasons why the ’528 Reissue does not qualify as a CBM
`
`patent and other reasons why institution of a CBM review should be denied. The
`
`Patent Owner does not concede that the Petitioner has demonstrated under any of
`
`these Grounds that any claim is more likely than not unpatentable. The Patent
`
`Owner reserves the right to respond to these asserted Grounds, including by
`
`providing any relevant evidence, in a patent owner response pursuant to 37 C.F.R.
`
`§ 42.220 if a CBM review of the ’528 Reissue is instituted.
`
`IV. CONSTRUCTION OF TERMS
`
`The Patent Owner herein applies to the claim terms their broadest reasonable
`
`interpretation as understood by one of ordinary skill in the relevant art and
`
`consistent with the disclosure of the ’528 Reissue. See 77 Fed. Reg. 48756, 48764
`
`(Aug. 14, 2012).
`
`The Patent Owner applies the following constructions of the listed terms,
`
`consistent with the broadest reasonable interpretation of those terms, as applied in
`
`the concurrent district court litigation, see In re CSB-System Int’l, Inc., 832 F.3d
`
`1335, 1341 (Fed. Cir. 2016) (“In many cases, the claim construction will be the
`
`same under the Phillips and BRI standards.”), and as indicated and not disputed by
`
`the Petitioner in the Petition, see Petition at 26-28.
`
`Patent Owner Preliminary Response
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`
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`Page 14
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`

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`CBM2017-00015
`Patent RE43,528
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`“web browser process” – process that can access data on websites with, or
`
`without, assistance of another web browser process (e.g., direct or indirect).
`
`“first memory space” – memory space distinct from a second memory
`
`space.
`
`“second memory space” – memory space distinct from a first memory
`
`space.
`
`“the second electronic data processor is operating in a protected mode”
`
`– the second electronic data processor is configured such that it is incapable of
`
`automatically accessing the first memory space.
`
`Preamble of claim 64 is limiting.
`
`The Patent Owner does not believe that explicitly construing other terms is
`
`necessary for an understanding of issues presented herein. The Patent Owner does
`
`not concede to other constructions presented by the Petitioner in the Petition and
`
`reserves the right to present argument and evidence supporting other constructions
`
`in a patent owner response if a CBM review of the ’528 Reissue is instituted.
`
`V.
`
`THE BOARD SHOULD DENY INSTITUTION BECAUSE THE ’528
`REISSUE DOES NOT QUALIFY AS A “COVER BUSINESS
`METHOD PATENT”
`
`The claims of the ’528 Reissue are not directed to use in the practice,
`
`administration, or management of a financial product or service—i.e., are not
`
`financial in nature. The Petitioner fails to carry its burden to establish otherwise.
`
`Patent Owner Preliminary Response
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`
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`Page 15
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`CBM2017-00015
`Patent RE43,528
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`The Petitioner further fails to carry its burden to establish that the ’528 Reissue is
`
`not a technological invention.
`
`A “covered business method patent” is a patent that “claims a method or
`
`corresponding apparatus for performing data processing or other operations used in
`
`the practice, administration, or management of a financial product or service,
`
`except that the term does not include patents for technological inventions.” AIA §
`
`18(d)(1). “The determination of whether a patent is eligible for CBM patent
`
`review is based on what the patent claims.” FedEx Corp. v. Ronald A. Katz Tech.
`
`Licensing, L.P., CBM2015-00053, paper 9, slip op. at 8 (P.T.A.B. June 29, 2015).
`
`“A patent having just one claim directed to subject matter falling within the
`
`definition of a CBM patent is eligible for review even if the patent includes
`
`additional claims that are not directed to such subject matter.” Id. “Petitioner
`
`bears the burden of demonstrating that the [] patent is a covered business method
`
`patent.” Fairchild Semiconductor Corp. v. In-Depth Test LLC, CBM2015-00060,
`
`paper 11, slip op. at 5 (P.T.A.B. Aug. 3, 2015) (citing 37 C.F.R. § 42.304(a)).
`
`a.
`
`Financial Product or Service
`
`None of the Challenged Claims r