`Date: 4 January 2013
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ORACLE CORPORATION
`Petitioner
`
`v.
`
`Patent of CLOUDING IP, LLC
`Patent Owner
`____________
`
`Case IPR2013-00073 (JL)
`Patent 6,738,799
`____________
`
`
`Before JAMESON LEE, MICHAEL W. KIM, and RAMA G. ELLURU,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`ORDER
`DENYING CERTAIN GROUNDS
`
`Petitioner indicates in the petition that the alleged grounds of unpatentability
`
`
`
`extend beyond those specifically identified and particularly discussed in the
`
`petition and includes unspecified combinations of prior art. According to the
`
`Petitioner, the specifically identified grounds are just representative and not
`
`exhaustive. The first paragraph of Section VII of the petition states:
`
`
`
`
`
`IPR2013-00073
`Patent 6,738,799
`
`
`
`VII. REPRESENTATIVE PROPOSED REJECTIONS SHOWING
`THAT PETITIONER HAS A REASONABLE LIKELIHOOD OF
`PREVAILING
`
`
`
`
`
`The references addressed below each provide the teaching
`believed by the Examiner to be missing from the prior art and
`variously anticipate or render obvious the claimed subject matter. It
`should be understood that rejections may be premised on alternative
`combinations of these same references.
`
`At the outset, we note that it is the Petitioner in an inter partes review who
`
`
`
`challenges or seeks to cancel claims of the involved patent. 35 U.S.C. § 311(b).
`
`Inter partes review is a trial under the procedures of 37 C.F.R. § 42.100, et. seq.,
`
`and is not itself a reexamination proceeding or a continued prosecution of the
`
`involved patent by the USPTO. The Petitioner bears the burden of proof.
`
`37 C.F.R. § 42.20. It is incorrect to refer to Petitioner’s alleged grounds of
`
`unpatentability as a proposed rejection to be made by the Board.
`
`
`
`The petition must identify with particularity each claim challenged, the
`
`grounds on which the challenge to each claim is based, and the evidence that
`
`support the grounds for the challenge to each claim. 35 U.S.C. § 312(a)(3). Per
`
`37 C.F.R. § 42.22(a), each petition must include a statement of the precise relief
`
`requested and a full statement of the reasons for the relief requested, including a
`
`detailed explanation of the significance of the evidence including material facts,
`
`the governing law, rules, and precedent. Under 37 C.F.R. § 42.104(b)(4), the
`
`petition must specify where each element of a challenged claim is found in the
`
`prior art patents or printed publications. In accordance with 37 C.F.R. § 104(b)(5),
`
`the relevance of the evidence supporting the challenge must be provided including
`
`identification of specific portions of the evidence that support the challenge.
`
`2
`
`
`
`
`IPR2013-00073
`Patent 6,738,799
`
`
`
`
`Petitioner’s suggestion that certain additional unspecified grounds may be
`
`
`
`premised on alternative combinations of the prior art fails to satisfy any of the
`
`above-noted requirements. Such vagueness and generality do not support any
`
`specific ground of unpatentability against any claim. Petitioner has failed to
`
`demonstrate a reasonable likelihood that it would prevail on any such non-
`
`specifically identified ground of unpatentability.
`
`
`
`
`
`Accordingly, it is
`
`ORDERED that all non-specifically identified grounds of unpatentability
`
`are herein denied;
`
`
`
`FURTHER ORDERED that the Patent Owner need not speculate, address,
`
`or otherwise respond to alleged grounds which have already been denied; and
`
`
`
`FURTHER ORDERED that the only surviving grounds now still
`
`remaining in the petition for consideration are the Group 1 to Group 4 grounds
`
`specifically identified in the petition:
`
`Group 1
`
`Claim 37 as anticipated by Balcha under 35 U.S.C. § 102(e)
`
`
`
`
`
`Claims 1, 5, 9, 10, 23, and 24 as obvious over Balcha and
`Miller under 35 U.S.C. § 103
`
`
`
`Claims 6-8 as obvious over Balcha, Miller, and Freivald under
`35 U.S.C. § 103
`
`Group 2
`
`
`
`Claims 1, 5-10, 23, 24, and 37 as obvious over Miller and
`Freivald under 35 U.S.C. § 103
`
`Group 3
`
`Claim 37 as anticipated by Freivald under 35 U.S.C. § 102(e)
`
`
`
`3
`
`
`
`
`IPR2013-00073
`Patent 6,738,799
`
`
`
`Group 4
`
`
`
`
`
`
`
`Claims 1, 23, 24, and 37 as anticipated by William under
`35 U.S.C. § 102(e)
`
`
`
`Claims 5-10 as obvious over William and Miller under
`35 U.S.C. § 103
`
`
`
`
`
`
`
`4
`
`
`
`
`
`
`
`
`IPR2013-00073
`Patent 6,738,799
`
`For PETITIONER:
`
`Greg Gardella
`Scott A. McKeown
`OBLON SPIVAK
`cpdocketgardella@oblon.com
`cpdocketmckeown@oblon.com
`
`
`
`For PATENT OWNER
`
`Tarek N. Fahmi
`Amy J. Embert
`Fahmi, Sellers & Embert
`tarek.fahmi@fseip.com
`amy.embert@fseip.com
`
`
`
`5
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