`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`May 3, 2001
`
`August 2, 2005
`
`In re U.S. Patent No. 6,925,481
`
`Filed:
`
`Issued:
`
`Inventor: Singhal et al.
`
`Assignee: Clouding IP, LLC
`
`Title:
`
`Technique for Enabling Remote Data Access and Manipulation from
`a Pervasive Device
`
`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,925,481
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`i
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` 
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`TABLE OF CONTENTS
`
`TABLE OF CONTENTS ............................................................................................................. ii
`EXHIBIT LIST ............................................................................................................................ iii
`I.
`INTRODUCTION ................................................................................................................. 1
`II. MANDATORY NOTICES ................................................................................................... 2
`A. Real Party-In-Interest .................................................................................................... 3
`B. Related Maters ................................................................................................................ 3
`C. Lead And Back-Up Counsel ........................................................................................... 3
`D.
`Service Information ........................................................................................................ 3
`III. PAYMENT OF FEES ........................................................................................................... 4
`IV. REQUIREMENTS FOR INTER PARTES REVIEW ........................................................ 4
`A. Grounds For Standing .................................................................................................... 4
`B.
`Identification of Challenge ............................................................................................. 5
`1. The specific art and statutory ground(s) on which the challenge is based .............. 5
`2. How the construed claims are unpatentable under the statutory grounds
`identified in 37 C.F.R. § 42.204(b)(2) and supporting evidence relied upon to
`support the challenge .................................................................................................... 6
`V. FACTUAL BACKGROUND ............................................................................................... 7
`A. Declaration Evidence ...................................................................................................... 7
`B.
`The State of the Art......................................................................................................... 8
`C. The ‘349 Patent Application .......................................................................................... 9
`D.
`Prosecution History of the ‘481 Patent ....................................................................... 11
`VI. BROADEST REASONABLE CONSTRUCTION ........................................................... 11
`A. Location ......................................................................................................................... 12
`B. Means For Receiving .................................................................................................... 13
`C. Means For Obtaining .................................................................................................... 13
`D. Means For Determining ............................................................................................... 14
`E. Means For Returning ................................................................................................... 14
`F. Means For Requesting .................................................................................................. 15
`G. Means For Performing ................................................................................................. 15
`VII. REPRESENTATIVE PROPOSED REJECTIONS SHOWING THAT PETITIONER
`HAS A REASONABLE LIKELIHOOD OF PREVAILING ................................................. 16
`A. Claims 1, 2, 25, 28, and 50-57 Are Anticipated by Schilit under 35 U.S.C. § 102(e)
`......................................................................................................................................... 16
`B. Claim 32 Is Rendered Obvious by Schilit in View of Hutsch Under 35 U.S.C. § 103
`......................................................................................................................................... 29
`C. Claims 1, 2, 25, 28, and 50-57 Are Rendered Obvious by Flynn in View of Schilit
`Under 35 U.S.C. § 103. .................................................................................................. 32
`D. Claim 32 is Rendered Obvious by Flynn in View of Schilit and Further in View of
`Hutsch Under 35 U.S.C. § 103 ..................................................................................... 47
`E. Claims 1, 2, 25, 28, and 50-57 are Rendered Obvious by Barrett in view of Schilit
`Under 35 U.S.C. § 103 ................................................................................................... 49
`VIII. CONCLUSION ............................................................................................................. 60
`CERTIFICATE OF SERVICE ................................................................................................. 61
`
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`ii
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`EXHIBIT LIST
`
`U.S. Patent No. 6,925,481 to Singhal et al.
`
`Excerpts from the Prosecution History of Application No.
`09/848,394, which matured into the ‘481 patent.
`
`U.S. Patent No. 6,670,968 to Schilit et al.
`
`U.S. Patent No. 7,269,664 to Hutsch et al.
`
`Flynn, M., et al., “The Satchel System Architecture: Mobile
`Access to Documents and Services,” Mobile Networks and
`Applications, Vol. 5 (December 2000).
`
`Barrett, R., et al., “Intermediaries: New Places for Producing
`and Manipulating Web Content,” Computer Networks and
`ISDN Systems, Vol. 30 (April 1998).
`
`Declaration of Dr. Benjamin B. Bederson, Ph.D.
`
`
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`iii
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`I.
`
`INTRODUCTION
`
`Petitioner Oracle Corporation (“Oracle” or “Petitioner”) respectfully
`
`requests inter partes review for claims 1, 2, 25, 28, 32, and 50-57 of U.S. Patent
`
`No. 6,924,481 (the “’481 patent,” attached as Ex. 1001) in accordance with 35
`
`U.S.C. §§ 311–319 and 37 C.F.R. § 42.100 et seq.
`
`The ‘481 patent is generally directed to methods and systems for enabling
`
`pervasive computing devices (e.g., the Palm Pilot PDA or the Compaq iPAQ
`
`Home Internet Appliance IA-1(Ex. 1001 at 1:23-25, 2:24-25)) to access and
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`manipulate data, such as, for example, an internet web page or a document stored
`
`on a file server. (See id. at 3:28-33). More particularly, the ‘481 patent is directed
`
`to methods and systems wherein a series of proxy servers are used to (1) obtain
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`data that was requested by a pervasive device, and (2) return the requested data to
`
`the pervasive device along with information regarding one or more data
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`manipulation operations (e.g., printing and faxing) determined to be available for
`
`the obtained data. (See, e.g., id. at 3:28-3, claim 1).
`
`As demonstrated by various references which were not before the Examiner,
`
`this technique was developed and published years prior to the earliest effective
`
`filing date of the ‘481 patent. For instance, by 1997 proxy servers were being used
`
`to transform web page content for optimized display on web browsers. (Ex. 1007
`
`at ¶ 21). Moreover, by the mid-1990s, context-aware or location based computing
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`1
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`had rapidly spread across the academic community, leading to the development of
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`the “ParcTab” mobile computer. (Id. at ¶¶ 22-24). ParcTab allowed users to
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`wirelessly share a document with other nearby devices or manipulate a document –
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`by faxing or printing it – to a nearby printer or fax machine. (Id.)
`
`The natural progression of this research led to the development of various
`
`proxy based systems in which data requested by a pervasive device was not only
`
`manipulated for optimal display on the requesting device, but also linked to
`
`services that could print or fax the requested data. For instance, U.S. Patent No.
`
`6,670,968 to Schilit et al. (“Schilit,” Ex. 1003) discloses a server which, in
`
`response to a data access request received from a mobile device, obtains the
`
`requested web documents, parses the content into selectable hyperlinks, and
`
`determines “situation, or context-appropriate services, such as printing or faxing,”
`
`which may be carried out on the obtained data. (Ex. 1003 at 5:34-51; Ex. 1007 at
`
`¶¶ 38, 39).
`
`Schilit and similar references were not before the Examiner during
`
`prosecution of the ‘481 patent. These references anticipate or render obvious the
`
`challenged claims of the ‘481 patent, as shown in the following discussion.
`
`II. MANDATORY NOTICES
`
`Pursuant to 37 C.F.R. § 42.8(a)(1), Oracle provides the following mandatory
`
`disclosures.
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`2
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` 
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`A. Real Party-In-Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Oracle is the real
`
`party-in-interest.
`
`B. Related Maters
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that the ‘481 Patent is
`
`asserted in co-pending litigation captioned Clouding IP, LLC v. Oracle Corp.,
`
`D.Del., Case No. 1:12-cv-00642. This litigation remains pending. The patents-in-
`
`suit are U.S. Patents 6,631,449; 6,918,014; 7,596,784; 7,065,637; 6,738,799;
`
`5,944,839; 5,825,891; 5,678,042; 5,495,607; 7,254,621; 6,925,481. This IPR
`
`petition is directed to U.S. Patent 6,925,481; however, petitions corresponding to
`
`the remaining patents will be filed in the forthcoming weeks.
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` 
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`C. Lead And Back-Up Counsel
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
`
`designation of counsel: Lead counsel is Greg Gardella (Reg. No. 46,045) and
`
`back-up counsel is Scott A. McKeown (Reg. No. 42,866).
`
`Service Information
`
`D.
`Pursuant to 37 C.F.R. § 42.8(b)(4), papers concerning this matter should be
`
`served on the following.
`
`Address: Greg Gardella or Scott McKeown
`Oblon Spivak
`1940 Duke Street
`Alexandria, VA 22314
`cpdocketgardella@oblon.com and
`3
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`Email:
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`cpdocketmckeown@oblon.com
`Telephone: (703) 413-3000
`Fax:
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`(703) 413-2220
`
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`III. PAYMENT OF FEES
`
`The undersigned authorizes the Office to charge $27,200 to Deposit Account
`
`No. 15-0030 as the fee required by 37 C.F.R. § 42.15(a) for this Petition for inter
`
`partes review. The undersigned further authorizes payment for any additional fees
`
`that might be due in connection with this Petition to be charged to the above
`
`referenced Deposit Account.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`inter partes review of the ‘481 patent is satisfied.
`
`A. Grounds For Standing
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the ‘481
`
`patent is available for inter partes review and that the Petitioner is not barred or
`
`estopped from requesting inter partes review challenging the claims of the ‘481
`
`patent on the grounds identified herein. This is because the ‘481 patent has not
`
`been subject to a previous estoppel based proceeding of the AIA, and, the
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`complaint served on Oracle referenced above in Section II(B) was served within
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`the last 12 months.
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`4
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`B.
`Identification of Challenge
`Pursuant to 37 C.F.R. §§ 42.104(b) and (b)(1), Petitioner requests inter
`
`partes review of claims 1, 2, 25, 28, 32, and 50-57 of the ‘481 patent, and that the
`
`Patent Trial and Appeal Board (“PTAB”) invalidate the same.
`
`1.
`
`The Specific Art and Statutory Ground(s) on Which the
`Challenge is Based
`
`Pursuant to 37 C.F.R. § 42.204(b)(2), inter partes review of the ‘481 patent
`
` 
`
`is requested in view of the following references, each of which is prior art to the
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`‘481 patent under 35 U.S.C. § 102(a), (b), and/or (e):
`
`(1) U.S. Patent No. 6,670,968 to Schilit et al. (“Schilit,” Ex. 1003), issued
`
`December 30, 2003 from an application filed July 10, 2000. Schilit is prior art to
`
`the ‘481 patent under at least 35 U.S.C. § 102(e).
`
`(2) U.S. Patent No. 7,269,664 to Hutsch et al. (“Hutsch,” Ex. 1004),
`
`issued September 11, 2007 from an application filed January 12, 2001. Hutsch is
`
`prior art to the ‘481 patent under at least 35 U.S.C. § 102(e).
`
`(3)
`
`The Satchel System Architecture: Mobile Access to Documents and
`
`Services by Flynn, M., et al. (“Flynn,” Ex. 1005) published December 2000 in
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`Mobile Networks and Applications, Vol. 5, Issue 4, pgs. 243-258. Flynn is prior
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`art to the ‘481 patent under at least 35 U.S.C. § 102(a).
`
`(4)
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`Intermediaries: New Places For Producing And Manipulating Web
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`Content by Barrett, R., et al. (“Barrett,” Ex. 1006) published April 1998 in
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`5
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`Computer Networks and ISDN Systems, volume 30, pgs. 509-518. Barrett is prior
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`art to the ‘481 patent under at least 35 U.S.C. § 102(b).
`
`Schilit (Ex. 1003) anticipates claims 1, 2, 25, 28, and 50-57 of the ‘481
`
`patent under 35 U.S.C. § 102(e). Claim 32 is rendered obvious by Schilit in view
`
`of Hutsch (Ex. 1004) under 35 U.S.C. § 103.
`
`Flynn (Ex. 1005) taken in view of Schilit renders obvious claims 1, 2, 25,
`
`28, and 50-57 of the ‘481 patent under 35 U.S.C. § 103. Claim 32 is rendered
`
`obvious by Flynn in view of Schilit and further in view of Hutsch under 35 U.S.C.
`
`§ 103.
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`Barrett (Ex. 1006) taken in view of Schilit renders obvious claims 1, 2, 25,
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`28, and 50-57 of the ‘481 patent under 35 U.S.C. § 103.
`
`2.
`
`How the Construed Claims Are Unpatentable Under the
`Statutory Grounds Identified in 37 C.F.R. § 42.204(B)(2)
`and Supporting Evidence Relied upon to Support the
`Challenge
`
`Pursuant to 37 C.F.R. § 42.204(b)(4), an explanation of how claims 1, 2, 25,
`
`  
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`28, 32, and 50-57 of the ‘481 patent are unpatentable under the statutory grounds
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`identified above, including the identification of where each element of the claim is
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`found in the prior art, is provided in Section VII, below, in the form of claims
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`charts. Pursuant to 37 C.F.R. § 42.204(b)(5), the exhibit numbers of the supporting
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`evidence relied upon to support the challenges and the relevance of the evidence to
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`the challenges raised, including identifying specific portions of the evidence that
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`support the challenges, are provided in Section VII, below, in the form of claim
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`charts.
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`V.
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`FACTUAL BACKGROUND
`A. Declaration Evidence
`This Petition is supported by the declaration of Professor Benjamin B.
`
`Bederson from the University of Maryland. (Ex. 1007). Prof. Bederson offers his
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`opinion with respect to the content and state of the prior art.
`
`Prof. Bederson is a Professor in the Computer Science Department and the
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`Institute of Advanced Computer Studies at the University of Maryland. Prof.
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`Bederson is also Co-Founder and Chief Scientist for Zumobi, Inc., a venture
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`capital funded startup created to commercialize mobile media for cell phones, and
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`the Co-Founder and Technical Director for the International Children’s Digital
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`Library Foundation, which provides free online children’s books to its members.
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`(Ex. 1007 at ¶ 1). Prof. Bederson is the author or co-author of 10 book chapters
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`and over 100 technical articles directed to web browsing, mobile computing, user
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`interfaces, user experience, and the software and technology underlying these
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`systems. (Id. at ¶ 9). Prof. Bederson is also a co-inventor on 7 U.S. patents
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`generally directed to user interfaces/experience. (Id. at ¶ 5). In 2011, Prof.
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`Bederson was recognized as an Association of Computing Machinery (“ACM”)
`
`distinguished scientist and elected to the Computer-Human Interaction (“CHI”)
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`7
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`Academy for his substantial contributions made in the field of CHI. (Id. at ¶ 7).
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`Prof. Bederson is also one of the principal inventors of the PadPrints’ proxy-based
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`web browser that offered a graphical web history to users by visually showing
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`what web pages a user had visited. (Id. at ¶ 19).
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`B. The State of the Art
`Proxies work by intercepting all web traffic coming from and going to a web
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`browser and, once intercepted, the proxy can manipulate the requested web page in
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`any number of different ways. (Ex. 1007 at ¶ 19). By 1997, proxy servers were
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`being used to modify web content based on the location of the client computer and
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`to automatically re-author a web page designed for a desktop computer to
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`appropriately display on a mobile web browser. (Id. at ¶ 21). By 1998, web
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`proxies were enhanced to automatically manipulate requested content by “adding
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`annotations, highlighting links, adding toolbars, translating document format (e.g.,
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`from Rich Text Format to HTML), changing form information, and adding scripts”
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`all before returning the content to the requesting device. (Id. at ¶ 42).
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`Ubiquitous computing was developing in parallel with the aforementioned
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`proxies. Ubiquitous computing was based on broadly available mobile computing
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`devices. (Id. at ¶ 22). These devices, known as “Tabs” or “Pads,” continually
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`tracked their location and, based on the device’s sensed location, offered various
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`services to the user, such as document sharing, printing, or faxing. (Id. at ¶¶ 22-
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`8
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`25). The ubiquitous computing field quickly evolved into calling its work “context
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`aware computing” upon the realization that location awareness, and the ability of a
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`mobile device to interact with nearby printers, displays, facsimiles, etc. was at the
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`core of the technology. (Id. at ¶ 28).
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`With this deep research focus in mobile web browsing and contextual
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`computing, the natural and obvious technological progression was to put all of
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`these features together to offer mobile, web-based contextualized document
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`services. (Id. at ¶¶ 30, 31). In this manner, rather than simply returning a
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`requested web page that has been optimized for display on a requesting device, the
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`returned data could also be contextualized, such that nearby services (e.g., printing
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`and faxing) could be executed. (Id.). For instance, U.S. Patent No. 6,670,968 to
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`Schilit et al. (“Schilit,” Ex. 1003) discloses a server which, in response to a data
`
`access request received from a mobile device, obtains the requested web
`
`documents, parses the content into selectable hyperlinks, and determines
`
`“situation, or context-appropriate services, such as printing or faxing,” which may
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`be carried out on the obtained data. (Ex. 1003 at 5:34-51; Ex. 1007 at ¶¶ 38, 39).
`
`C. The ‘349 Patent Application
`Application No. 09/848,349 (“the ‘349 application”)) was filed May 3, 2001
`
`and does not claim priority to a prior application. The ‘349 application discussed
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`methods and systems for enabling pervasive computing devices to access and
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`manipulate data, such as, for example, content stored on a web server, or a
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`document stored on a file server. (See, e.g., Ex. 1001 at 3:28-33). First, the
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`pervasive device submits a request for information (e.g., through a web browser),
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`which is received by a protocol proxy. (See id. at 6:33-41, 10:17-22). Second, the
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`protocol proxy forwards the data request from the pervasive device to the
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`appropriate information source, such as a web server. (See id. at 5:42-56; 10:29-
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`34). Third, after receiving the requested data from the appropriate information
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`source, the protocol proxy, by querying a data manipulation server (“DMS”),
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`determines what services are available to manipulate the retrieved content. (See id.
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`at 10:35-53). The DMS maintains a repository of available services for different
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`types of data (See id. at 7:49-54) and forwards content to be manipulated to the
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`appropriate output agent. (See id. at 7:13-16). Services may include, for example,
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`printing, faxing, or e-mailing the retrieved content. (See id. at 3:33-37). Fourth,
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`the protocol proxy forwards the retrieved content, along with a list of available
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`services, to the requesting device. (See id. at 15:52-54, Fig. 1, message flow 7).
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`Preferably, the list of available services will comprise a set of links, which
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`correspond to each available service. (See id. at 12:3-14). The list of available
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`services may be limited to those services available at the device’s location. (See
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`id. at 11:28-31). Lastly, assuming the user of the pervasive device invokes an
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`10
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`availablle service rrequest, thee request iss received
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`by the DMMS and, theereafter,
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` 4).
`executed. (See, e.g., id.16:332-34, Fig.
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`D. Pros
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`ecution History of tthe ‘481 Paatent
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`TThe ‘349 appplication rreceived a first actionn Notice o
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`ce, which
`f Allowanc
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`include the followwing statemment of reassons for al
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`lowance:
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`he ‘349 appwance). Thce of Allow2004 Noticember 24, 2(Ex. 10002 at Nove
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`plication
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`issued aas U.S. Pattent No. 6,9925,481, thhe subject
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`of the instaant petitionn.
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`TThus, the prrosecution history indicates thaat the ‘481
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`s allowed
`patent was
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`becausee the Examminer believved that thee prior art
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`failed to teeach a dataa access
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`techniquue whereinn (1) a dataa access reqquest is recceived fromm a pervassive devicee; (2)
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`the pervvasive deviice in turn receives thhe requesteed data; annd (3) the ppervasive
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`device aalso receivves informaation regarding one oor more datta manipullation
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`operatioons determmined to be available ffor the obttained dataa.
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`VI. BBROADESST REASOONABLE CONSTRRUCTIONN
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`BBecause thee standardss of claim iinterpretatiion used byy the federral courts aare
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`differennt from the standards used by thhe Patent OOffice in cllaim examiination
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`proceeddings (incluuding this iinter partees review),
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`any claimm interpretaations usedd or
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`11
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`applied in these proceedings are neither binding upon Petitioner in patent
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`infringement litigation or on any other litigants, nor do such claim interpretations
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`correspond to the construction of claims under the legal standards used by the
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`courts. Accordingly, any interpretation of claims presented either implicitly or
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`explicitly herein should not be viewed as constituting, in whole or in part,
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`Petitioner’s own interpretation and/or construction of such claims for the purposes
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`of litigation. Instead, any constructions in this proceeding should be viewed only
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`under the “broadest reasonable construction” standard required here.
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`All claimed terms not specifically addressed in this section have been
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`accorded their broadest reasonable interpretation in light of the patent specification
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`including their plain and ordinary meaning. Any claim term which uses the phrase
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`“means for” is presumed for purposes of this petition to invoke 35 U.S.C. § 112 ¶
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`6. (See, e.g., M.P.E.P. § 2181, Eighth Ed., Rev. Nine, August 2012).
`
`A. Location
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`Challenged claims 1, 50, 52, 54, and 56 require a “location of each available
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`data manipulation operation” to be returned to the requesting pervasive device
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`along with the determined data manipulation operations. The ‘481 patent in one
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`embodiment uses term “location” to refer to the physical location of a pervasive
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`device relative to the physical location of available data manipulations. (See Ex.
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`1001 at 11:28-57). However, the term “location,” given its broadest reasonable
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`12
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`
`interpretation in this proceeding, broadly corresponds to a URL or other similar
`
`reference specifying the location on a computer network of an available data
`
`manipulation. (See id. at 5:52-53, 9:10-14; Ex. 1007 at ¶ 15).
`
`B. Means For Receiving
`
`Claim 50 uses the term “means for receiving a data access request from a
`
`pervasive device.” Under the broadest reasonable interpretation of this limitation,
`
`the structure most closely corresponding to this means-plus-function element is a
`
`protocol proxy, which “provides a bridge between the client … and the information
`
`that it seeks to access and manipulate. A protocol proxy is responsible for
`
`accessing information on behalf of the client…” (Ex. 1001 at 5:43-47; see also
`
`Ex. 1007 at ¶46).
`
`C. Means For Obtaining
`
`Claim 50 uses the term “means for obtaining the requested data.” The
`
`specification does not clearly disclose structure for performing the function
`
`“obtaining the requested data.” Under the broadest reasonable interpretation of
`
`this limitation, however, the structure most closely corresponding to this means-
`
`plus-function element is either the protocol proxy which, “forwards the [data]
`
`request to the appropriate information source” (see Ex. 1001 at 10:29-33), or the
`
`file access proxy, which is used to “access data from a local repository, within
`
`remote data stores…” (Id. at 6:53-60; see also Ex. 1007 at ¶ 49).
`
`
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`D. Means For Determining
`
`Claim 50 uses the term “means for determining what data manipulation
`
`operations are available for the obtained data, as well as a location of each
`
`available data manipulation operations.” The specification does not clearly
`
`disclose structure for performing the function “determining what data manipulation
`
`operations are available for the obtained data, as well as a location of each
`
`available data manipulation operations.” Under the broadest reasonable
`
`interpretation of this limitation, however, the structure most closely corresponding
`
`to this means-plus-function element is either the protocol proxy or the data
`
`manipulation server (“DMS”). (Compare Ex. 1001 at 10:38-53 (stating that “[t]he
`
`protocol proxy then determines, in Block 340, which services are available to the
`
`WID for manipulating the returned content. … In a preferred embodiment, the
`
`protocol proxy issues a query to the DMS for a list of available services. … In an
`
`alternative embodiment, the protocol proxy may be statically pre-configured with a
`
`list of available services…”) with id. at 10:54-58 (stating that the DMS
`
`“determines which services are available for the data being returned to the WID”
`
`after being queried by the protocol proxy)). (See also Ex. 1007 at ¶ 52).
`
`E. Means For Returning
`
`Claim 50 uses the term “means for returning the determined data
`
`manipulation operations and locations to the pervasive device, in addition to the
`
`
`
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` 
`
`obtained data.” Under the broadest reasonable interpretation of this limitation, the
`
`structure most closely corresponding to this means-plus-function element is the
`
`protocol proxy, which transmits “the content, along with the annotated list of
`
`available services,” to the pervasive device. (Ex. 1001 at 15:52-55, Fig. 1,
`
`message flow 7; see also Ex. 1007 at ¶ 60).
`
`F. Means For Requesting
`
`Claim 51 uses the term “means for requesting operation of a selection of the
`
`determined data manipulation operations.” Under the broadest reasonable
`
`interpretation of this limitation, the structure most closely corresponding to this
`
`means-plus function element is a user interface to execute a desired manipulation
`
`operation. (See Ex. 1001 at 18:8-15, Fig. 6A, elements 601-604; see also Ex. 1007
`
`at ¶ 63).
`
`G. Means For Performing
`
`Claim 51 uses the term “means for performing the requested operation,
`
`wherein the means for performing is executed by another device on behalf of the
`
`pervasive device.” Claim 53 uses the term “means for performing is executed by
`
`another device on behalf of the pervasive device.” The specification does not
`
`clearly disclose structure for performing the function “performing the requested
`
`operation, wherein the means for performing is executed by another device on
`
`behalf of the pervasive device.” Under the broadest reasonable interpretation of
`
`
`
`15
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` 
`
`this limitation, however, the structure most closely corresponding to this means-
`
`plus-function element is either the data output agents 170 or the DMS. (Compare
`
`Ex. 1001 at 9:44-46 (“[t]he DMS passes data to selected ones of these [data output]
`
`agents to perform the manipulation services which are managed by the DMS) with
`
`id. at 7:13-16 (stating that “[i]n its roll of providing data manipulation services,
`
`those services may be provided by the DMS either directly, or indirectly by
`
`invoking one or more data output agents 170…”)). (See also Ex. 1007 at ¶ 65).
`
`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.
`
`A.
`
`Claims 1, 2, 25, 28, and 50-57 Are Anticipated by Schilit
`under 35 U.S.C. § 102(e)
`
`U.S. Patent No. 6,670,968 to Schilit et al. (“Schilit,” Ex. 1003) was not
`
`considered during the original prosecution of the ‘481 patent, nor is it cumulative
`
`of any prior art considered by the Examiner. Schilit was filed July 10, 2000 and
`
`issued December 30, 2003. The effective filing date of the ‘481 patent is May 3,
`
`2001. Therefore, Schilit is available as prior art against all claims of the ‘481
`
`patent under 35 U.S.C. § 102(e). The following claim chart demonstrates, on a
`
`
`
`16
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`
` 
`
`limitation-by-limitation basis, how claims 1, 2, 25, 28, and 50-57 of the ‘481 patent
`
`are anticipated by Schilit under 35 U.S.C. § 102(e). (See Ex. 1007 at ¶ 75).
`
`US 6,925,481 Claim
`Language
`1. A method of
`enabling data access and
`manipulation from a
`pervasive device,
`comprising steps of:
`
`receiving a data access
`request from a pervasive
`device;
`
`Correspondence to Schilit
`Schilit discloses a system and method for enabling data
`access and manipulation from a pervasive device by
`providing a Web browser that requests, accesses, and displays
`Web page content, along with selectable hyper-links from the
`requested Web page:
`A Web browser provides the ability to separate
`content and hyper-links from a Web page and
`provides a list of the links for viewing on a
`mobile device display screen enabling more
`effective Web page navigating using the limited
`mobile device display. … Further, once a link is
`selected using the mobile device, a services portal
`link is provided to the mobile device display to
`provide selection of services to be performed on
`the selected link, such as faxing or printing. (Ex.
`1003 at Abstract).
`(See also Ex. 1007 at ¶ 37).
`Schilit discloses a Web Browser, called “m-link,” which
`accesses a server to retrieve a document as identified by a
`user-selected URL.
`The present invention provides a Web Browser,
`referred to herein as “m-link”, which converts
`HTML documents for displaying on a mobile
`display. The m-link program accesses a server to
`retrieve a document as identified by a user-
`selected URL. (Ex. 1003 at 5:30-34).
`As shown in Fig. 7, reproduced below, the m-link browser
`receives a data access request from a pervasive device (shown
`as element 11). (Id. at Fig. 7).
`
`
`
`17
`
`

`
` 
`
`
`
`
`
`
`data;
`
`
`
`
`(Seee also Ex. 1007 at ¶ 337).
`
`
`
`
`
`
`obtaining the requessted Thee m-link brrowser of SSchilit acceesses a webb server 122
`
`
`
`(shoown in Figg. 7, above)) to obtain
`
`
`the documment requesst by
`
`
`
`the user of thee pervasivee device.
`
`
`M-link bbrowser 100 accesses
`
`
`a server 122 to retrievve
`
`
`
`
`
`a documment as iddentified bby the usser selecteed
`
`URL. Thhe URL is
`
`
`
`used to iddentify a doocument oon
`
`
`
`server, suuch as servver 14. (EEx. 1003 aat
`
`another
`11:1-4).
`
`
`Reqquested data
`
`to
`
`
`
`is obbtained anand returnned
`thhe
`
`
`
`
`pervvasive deevice in aan un-commpressed
`
`format bby
`
`
`
`
`seleecting the ddisclosed rreading linkk.
`
`The reaading link
`
`
`
`allows thhe user too view thhe
`content
`
`
`
`
`of the linkk line by liine in a linnear fashioon
`
`
`using thee PCS phoone displayy. (Id. at 8::65-67).
`
`
`
`
`
`(Seee also Ex. 1007 at ¶ 337).
`
`
`
`Thee m-link brrowser alsoo determin
`
`
`es and creaates a list oof
`
`
`
`
`
`
`“s