`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`In re U.S. Patent No. 7,065,637
`
`Filed:
`
`Issued:
`
`Inventors: Sekaran Nanja
`
`Assignee: Clouding IP, LLC
`
`Title:
`
`Sep. 15, 2000
`
`June 20, 2006
`
`System for Configuration of Dynamic Computing Environments
`Using a Visual Interface
`
`
`
`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. 7,065,637
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`
`
`i
`
`

`

` 
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST ............................................................................................................................ iii
`
`I.
`
`INTRODUCTION..............................................................................................................1
`
`II. MANDATORY NOTICES ................................................................................................3
`A. Real Party-In-Interest ...................................................................................................... 3
`B. Related Matters ................................................................................................................. 3
`1. Related Litigation ....................................................................................................................................... 3
`2. Related Applications................................................................................................................................... 3
`C. Lead and Back-Up Counsel ............................................................................................. 4
`D. Service Information .......................................................................................................... 4
`
`III.
`
`PAYMENT OF FEES ........................................................................................................4
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW ....................................................5
`A. Grounds for Standing ....................................................................................................... 5
`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 ................................... 7
`
`FACTUAL BACKGROUND ............................................................................................8
`V.
`A. Declaration Evidence ........................................................................................................ 8
`B. The State of the Art........................................................................................................... 9
`C. The ‘990 Patent Application .......................................................................................... 13
`D. Prosecution History of the ‘637 Patent ......................................................................... 15
`
`BROADEST REASONABLE CONSTRUCTION .......................................................17
`VI.
`A. “Visual Construction” .................................................................................................... 18
`B. “Configuration” .............................................................................................................. 19
`
`VII. REPRESENTATIVE PROPOSED REJECTIONS AND SHOWING THAT
`PETITIONER IS LIKELY TO PREVAIL ...................................................................21
`A. Claims 1-4 and 6 Are Anticipated by Patterson under 35 U.S.C. § 102(e). ............... 21
`B. Claims 1-4 and 6 Are Rendered Obvious by Aziz Taken in View of Verissmo Under
`35 U.S.C. § 103(a). ........................................................................................................... 30
`C. Claims 1-4 and 6 Are Rendered Obvious by Aziz Taken in View of ClusterX Under
`35 U.S.C. § 103(a). ........................................................................................................... 42
`
`VII. CONCLUSION ................................................................................................................56
`
`CERTIFICATE OF SERVICE ..................................................................................................57
`
`
`
`ii
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`

`

` 
`
`
`
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`
`
`
`EXHIBIT LIST
`
` 
`U.S. Patent No. 7,065,637 to Nanja
`Excerpts from the Prosecution History of the ‘637 patent
`U.S. Patent No. 7,093,005 to Patterson
`Provisional application 60/212,925 filed June 20, 2000 by Patterson
`U.S. Patent No. 6,779,016 to Aziz et al.
`U.S. Patent No. 5,841,654 to Verissimo
`ClusterX 2.0 Getting Started Guide
`Veritas ClusterX for MSCS
`Declaration of Dr. Benjamin B. Bederson, Ph.D.
`
`
`
`
`
`iii
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`

`

` 
`
`I.
`
`INTRODUCTION
`
`Petitioner Oracle Corporation (“Oracle” or “Petitioner”) respectfully
`
`requests inter partes review for claims 1-4 and 6 of U.S. Patent No. 7,065,637
`
`(“the ‘637 patent,” attached as Ex. 1001) in accordance with 35 U.S.C. §§ 311–319
`
`and 37 C.F.R. § 42.100 et seq.
`
`The ‘637 patent discloses a user interface that “enables the fast, efficient
`
`selection and configuration of processing resources for [a] computing
`
`environment.” (Ex. 1001 at 3:1-3). The Summary of the ‘637 patent explains that
`
`“the system architect may create a computing environment from a remotely
`
`accessible user interface such as a web page on the Internet.” (Id. at 3:6-9). Claim
`
`1 of the ‘637 patent recites a user interface for displaying a visual construction of
`
`the computing environment and for receiving signals to save a device configuration
`
`and to instantiate a device from the stored configuration. (See generally id. at
`
`claim 1).
`
`As demonstrated by various references which were not before the Examiner,
`
`this type of internet-based system design portal for networked computers was
`
`disclosed by others prior to the earliest claimed priority date. For instance, United
`
`States Patent No. 6,779,016 to Aziz et al. (“Aziz,” Ex. 1005) describes Web portals
`
`that permit customers to create custom Virtual Server Farms out of a wide scale
`
`computing fabric:
`
`
`
`1
`
`

`

` 
`
`The Web pages enable a customer to create a custom VSF, by
`specifying a number of tiers, the number of computing elements in a
`particular tier, the hardware and software platform used for each
`element, and things such as what kind of Web server, application
`server, or database server software should be preconfigured on these
`computing elements. (Ex. 1005 at 15:44-49).
`
`As another example, U.S. Patent No. 7,093,005 to Martin Patterson (“Patterson,”
`
`Ex. 1003) discloses what is essentially the preferred embodiment of the ‘637
`
`patent. As shown in the table below, the illustrative examples of configurable
`
`systems cited by the ‘637 patent and Patterson are closely similar:
`
`‘637 patent
`For example, a customer can request a
`web-site simulator using
`12 web-page servers on a Microsoft®
`NT platform, 2 disk arrays at a
`specific bandwidth and storage
`capacity, 2 caching servers and 200
`clients running Netscape
`NavigatorTM under Microsoft
`Windows® 2000 using Pentium
`IIITM processors at under 800 MHz.
`(Ex. 1001 at 5:1-7).
`
`
`
`Patterson reference
`For example, a Web Server role may be
`defined in terms of the hardware,
`operating system, and associated
`applications of the server, e.g., dual
`Pentium of a specified minimum clock
`rate and memory size, NT version 4.0,
`Internet Information Server version 3.0
`with specified plug-in components. (Ex.
`1003 at 9:57-62).
`
`The claim charts set forth in the following sections demonstrate that the
`
`Patterson, Aziz, and other references variously anticipate and render obvious
`
`claims 1-4 and 6 of the ‘637 patent.
`
`
`
`
`
`
`
`2
`
`

`

` 
`
`II. MANDATORY NOTICES
`
`Pursuant to 37 C.F.R. § 42.8(a)(1), Oracle provides the following mandatory
`
`disclosures.
`
`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 Matters
`1. Related Litigation
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that the ‘637 Patent is
`
`asserted in co-pending litigation captioned Clouding IP, LLC v. Oracle Corp.,
`
`D.Del., Case No. 1:12-cv-00642. 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 No.
`
`7,065,637; however, petitions corresponding to the remaining patents have been
`
`filed or will be filed in the forthcoming weeks.
`
`2. Related Applications
`Continuation application 12/946,448 is currently pending before the U.S.
`
`Patent and Trademark Office. The ‘448 application claims benefit to application
`
`serial no. 09/662,990, which matured into the ‘637 patent.
`
`
`
`
`
`
`
`3
`
`

`

` 
`
`
`
`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
`cpdocketmckeown@oblon.com
`Telephone: (703) 413-3000
`Fax:
`
`(703) 413-2220
`
`Email:
`
`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.
`
`
`
`
`
`
`
`4
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`

`

` 
`
`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 ‘637 patent is satisfied.
`
`A. Grounds for Standing
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the ‘637
`
`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 ‘637
`
`patent on the grounds identified herein. The ‘637 patent has not been subject to a
`
`previous estoppel based proceeding of the AIA and the complaint served on Oracle
`
`referenced above in Section II(B) was served within the last 12 months.
`
`B. Identification of Challenge
`Pursuant to 37 C.F.R. §§ 42.104(b) and (b)(1), Petitioner requests inter
`
`partes review of claims 1-4 and 6 of the ‘637 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 ‘637 patent
`
`is requested in view of the following references, each of which is prior art to the
`
`‘637 patent under 35 U.S.C. § 102(a), (b), and/or (e):
`
` (1) U.S. Patent No. 7,093,005 to Martin Patterson (“Patterson,” Ex.
`
`1003), issued Aug. 15, 2006, from an application filed May 22, 2001. Patterson is
`
`
`
`5
`
`

`

` 
`
`prior art to the ‘637 patent under at least 35 U.S.C. § 102(e) in view of provisional
`
`application 60/212,925 (“Patterson Provisional,” Ex. 1004) filed June 20, 2000.
`
`(2) U.S. Patent No. 6,779,016 to Aziz et al. (“Aziz,” Ex. 1005) issued
`
`August 17, 2004, from an application filed February 11, 2000. Aziz is prior art to
`
`the ‘637 patent under at least 35 U.S.C. § 102(e).
`
`(3) U.S. Patent No. 5,841,654 to Verissimo et al. (“Verissmo,” Ex. 1006)
`
`issued on November 24, 1998. Verissimo is available as prior art against all claims
`
`of the ‘637 patent under 35 U.S.C. § 102(b).
`
`(4) The ClusterX 2.0 Getting Started Guide by NuView (“ClusterX,” Ex.
`
`1007) was made publicly available at least prior to August 1999. According to the
`
`whitepaper published by Veritas concerning ClusterX 3.0, NuView’s ClusterX was
`
`“[a]nnounced in 1998 by NuView, Inc., and acquired by VERITAS in August
`
`1999.” (See Ex. 1008 at 1). Accordingly, ClusterX is available as prior art against
`
`all claims of the ‘637 patent under 35 U.S.C. § 102(b).
`
`Claims 1-4 and 6 are anticipated by Patterson (Ex. 1003) under 35 U.S.C. §
`
`102(e).
`
`Claims 1-4 and 6 are rendered obvious by Aziz (Ex. 1005) in view of
`
`Verissmo (Ex. 1006) under 35 U.S.C. § 103(a).
`
`Claims 1-4 and 6 are rendered obvious by Aziz (Ex. 1005) in view of
`
`ClusterX (Ex. 1007) under 35 U.S.C. § 103(a).
`
`
`
`6
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`

`

` 
`
`
`
`
`
`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 1-4 and
`
`6 of the ‘637 patent are unpatentable under the statutory grounds identified above,
`
`including the identification of where each element of the claim is found in the prior
`
`art, is provided in Section VII below, in the form of claims charts. Pursuant to 37
`
`C.F.R. § 42.204(b)(5), the appendix numbers of the supporting evidence relied
`
`upon to support the challenges and the relevance of the evidence to the challenges
`
`raised, including identifying specific portions of the evidence that support the
`
`challenges, are provided in Section VII below, in the form of claim charts.
`
`
`
`
`
`
`
`7
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`

`

` 
`
`V.
`
`FACTUAL BACKGROUND
`A. Declaration Evidence
`This Petition is supported by the declaration of Professor Benjamin B.
`
`Bederson from the University of Maryland. (Ex. 1009). Prof. Bederson offers his
`
`opinion with respect to the content and state of the prior art.
`
`Prof. Bederson is a Professor in the Computer Science Department and the
`
`Institute of Advanced Computer Studies at the University of Maryland. Prof.
`
`Bederson is also Co-Founder and Chief Scientist for Zumobi, Inc., a venture
`
`capital funded startup created to commercialize mobile media for cell phones, and
`
`the Co-Founder and Technical Director for the International Children’s Digital
`
`Library Foundation, which provides free online children’s books to its members.
`
`(Ex. 1009 at ¶ 1). Prof. Bederson is the author or co-author of 10 book chapters
`
`and over 100 technical articles directed to web browsing, mobile computing, user
`
`interfaces, user experience, and the software and technology underlying these
`
`systems. (Id. at ¶ 9). Prof. Bederson is also a co-inventor on 7 U.S. patents
`
`generally directed to user interfaces/experience. (Id. at ¶ 5). In 2011, Prof.
`
`Bederson was recognized as an Association of Computing Machinery (“ACM”)
`
`distinguished scientist and elected to the Computer-Human Interaction (“CHI”)
`
`Academy for his substantial contributions made in the field of CHI. (Id. at ¶ 7).
`
`
`
`
`
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`8
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` 
`
`B. The State of the Art
`In the late 1990’s, the World Wide Web (WWW) was achieving its first
`
`peak. Known as the “dot-com” era, there was a tremendous amount of innovation
`
`around e-commerce and web-based companies in general. Essentially every one of
`
`these companies ran web servers which provided users with web pages, typically
`
`backed by databases. These web servers were regular computers running special
`
`“server” software, and the computers ran an operating system such as Windows or
`
`Linux. While it was possible to simply plug one of these computers into an office
`
`network, and provide a website to the world, that was uncommon as that would not
`
`offer a reliable or scalable solution.
`
`Instead, it was common to put these server computers in “data centers” or
`
`“server rooms” that were special facilities with “racks” of many computers. As
`
`there could be, and often was, an abundance of users, it wasn’t sufficient to simply
`
`have a single computer running a web server due to reliability and speed issues.
`
`Instead, clusters of computers were configured to collectively provide a faster or
`
`reliable service even when being used by many users. The computers could be
`
`structured in different ways, but one typical organization was to have a number of
`
`web servers that would connect to a separate set of computers that provided access
`
`to a database. To decide which web server would respond to a specific request, a
`
`“load balancer” was typically put up front, and it would direct requests to balance
`
`
`
`9
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`

`

` 
`
`the load across numerous web servers. (See Ex. 1009 at A-2).
`
`The basic architecture described above captures the essence of how web
`
`server systems were set up in the late 1990’s, but there is another basic issue when
`
`managing computer systems: adaptability. It was (and is) common for websites to
`
`get more (or less) popular over time, and so the systems manager must be able to
`
`increase or decrease the number of computers in the system to respond to varying
`
`loads. Doing this manually by physically going to the server room or data center
`
`and plugging cables between machines was an extremely time consuming task.
`
`And so it was not surprising that a number of solutions were made to provide
`
`software based configuration of these systems to avoid having to physically visit
`
`the servers.
`
`The Dell Computer Company was a significant seller of computers designed
`
`to be used for web servers in the late 1990’s. For example, in 1999, Dell sold a
`
`specialized piece of hardware called a “Dell OpenManage Remote Assistant Card”
`
`(DRAC). (Id. at A-3). These DRAC cards, which I used in the ICDL server
`
`configuration, enabled remote management of individual servers to, for example,
`
`reboot a machine when it became unresponsive. This was important because it
`
`allowed remote management of a computer without having to physically touch it. It
`
`was part of the ecosystem of devices that enabled the software based configuration
`
`of computer systems.
`
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`10
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` 
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`Additionally, companies were offering full service solutions allowing a
`
`customer to configure and order web servers entirely over the web were as early as
`
`1998. For example, Rackspace allowed clients to custom configure servers via the
`
`Rackspace website. (Id. at A-4). The following screenshots of their website in
`
`February of 1998 shows the ability to pick amongst a plurality of configurations of
`
`web servers as well as to specify which operating system should be used on a
`
`server and what resources should be made available on that server: (Id. at A-5, A-
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`6).
`
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`11
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`

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`

`

` 
`
`C. The ‘990 Patent Application
`The ‘990 patent application which matured into U.S. Patent No. 7,065,637 is
`
`generally directed to a system for providing “ such fast allocation and
`
`configuration of resources that environments can be created from a pool of
`
`resources within minutes, or even seconds, (virtually) destroyed, and reallocated
`
`for creating different environments from the same pool of resources.” (Exhibit
`
`1001 at 4:42-48) This “provides an efficient system for provisioning ‘crash and
`
`burn’ systems which can be used in different software development life-cycle
`
`scenarios including testing, rapid beta deployment, etc.” (Id. at 4:58-60) A
`
`preferred embodiment allows customers to create a computing environment from a
`
`remotely accessible user interface such as a web page on the Internet. (Id. at 4:58-
`
`60)
`
`Once a user logs in, a configuration page is displayed as illustrated in the
`
`web page of Fig. 5:
`
`
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`13
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`BBased on a selection mmade by thhe user, a cconfiguratioon server aallocates a
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`computer with thee requestedd operatingg system annd other appplication ssoftware. (I(Id.
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`at 6:57--60) Accorrdingly, if aa user wishhes to conffigure a serrver for thee computinng
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`environnment, the uuser clickss on “selectt a configuuration or tthe user maay open a
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`windoww on one off the machiines whichh were prevviously connfigured annd the acceess
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`server pprovides thhe user withh access too the speciffic machin
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`e. (Id. at 66:15-22) OOnce
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`allocateed, the userr can open a terminall to access
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`the specifiic computiing device
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`and
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`when thhe user tries to accesss, the confiiguration/aaccess servver activatees the machhine
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`from thee inventoryy. (Id. at 77:1-13)
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`14
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`

`

` 
`
`D. Prosecution History of the ‘637 Patent
`In the June 10, 2004, office action claims 7-14 were rejected under 35
`
`U.S.C. §103(a) as being unpatentable over McNally et al., U.S. Patent No.
`
`6,259,448 (“McNally”). Pending claim 7, which issued as claim 1, was deemed
`
`allowable after it was amended as follows:
`
`1. A system for providing configurable resources to create a
`computing environment, the system comprising a configurable
`communication link; a plurality of hardware devices coupled to the
`communication link; a plurality of software programs executable by
`the hardware devices, the software programs comprising at least one
`of operating system software and application software, wherein the
`computing environment comprises the communication link, at least
`one of the hardware devices and at least one of the software programs;
`and a visual construction of the computing environment via a user
`interface, the user interface coupled to a display screen and to an input
`device for generating signals in response to interactions of a user,
`wherein the user interface is configured to accept a signal which
`enables the user to request a copy a device configuration, the system
`is configured to make the copy of the device configuration and save
`the copy of the device configuration in storage, the user interface is
`further configured to accept a signal which enables the user to
`instantiate a device from a stored configuration, and the system is
`further configured
`to
`instantiate
`the device from
`the stored
`configuration.
`(See Ex. 1002 at November 10, 2004 Office Action Response, pp. 3, 10-11;
`
`
`
`15
`
`

`

` 
`
`March 3, 2005 Notice of Allowance).
`In a previous office action dependent claim 15 was rejected under 35 U.S.C.
`
`§103(a) as being unpatentable over Young, U.S. Patent No. 6,560,606. Pending
`
`claim 15, which issued as independent claim 9, was deemed allowable after it was
`
`amended and then rewritten in independent form. The limitations imported from
`
`dependent claim 15 are highlighted below:
`
`9. A system for providing configurable resources to create a
`computing environment, the system comprising . . . a visual
`construction of the computing environment via a user interface, the
`user interface coupled to a display screen and to an input device for
`generating signals in response to interactions of a user, wherein the
`user interface configured to: . . . accept a signal which enables the
`user to request a copy of a device configuration, and accept a signal
`which enables the user to instantiate a device from a stored
`configuration, and the system is further configured to allocate the
`private storage to be accessible through specific devices in the
`computing environment for a specific user, make the copy of the
`device configuration and save the copy of the device configuration in
`storage, and instantiate the device from the stored configuration.
`
`
`(See id. at November 10, 2004 Office Action Response, pp.5-6, 10-11; March 3,
`
`2005 Notice of Allowance). The notice of allowability did not include a statement
`
`of reasons for allowance.
`
`
`
`
`
`16
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`

`

` 
`
`VI. BROADEST REASONABLE CONSTRUCTION
`Pursuant to 37 C.F.R. § 42.204(b)(3), the claims subject to inter partes review
`
`shall receive the “broadest reasonable construction in light of the specification of
`
`the patent in which [they] appear[].” See also In re Swanson, No. 07-1534 (Fed.
`
`Cir. 2008); In re Trans Texas Holding Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007)
`
`(citing In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)). As the Federal
`
`Circuit noted in Trans Texas, the Office has traditionally applied a broader
`
`standard than a Court does when interpreting claim scope. Moreover, the Office is
`
`not bound by any district court claim construction. Trans Texas, 498 F.3d at 1297-
`
`98, 1301. Rather,
`
`the PTO applies to verbiage of the proposed claims the broadest
`reasonable meaning of the words in their ordinary usage as they
`would be understood by one of ordinary skill in the art, taking
`into account whatever enlightenment by way of definitions or
`otherwise that may be afforded by the written description
`contained in applicant’s specification. In re Morris, 127 F.3d
`1048, 1054-55, 44 U.S.P.Q.2d 1023, 1027-28 (Fed. Cir. 1997).
`
`Because the standards of claim interpretation used by the Courts in patent litigation
`
`are different from the claim interpretation standards used by the Office in claim
`
`examination proceedings (including inter partes review), any claim interpretations
`
`submitted herein for the purpose of demonstrating a Reasonable Likelihood of
`
`Prevailing are neither binding upon litigants in any litigation, nor do such claim
`
`
`
`17
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`

`

` 
`
`interpretations correspond to the construction of claims under the legal standards that
`
`are mandated to be used by the Courts in litigation.
`
`The interpretation of the claims presented either implicitly or explicitly
`
`herein should not be viewed as constituting, in whole or in part, Petitioner’s own
`
`interpretation and/or construction of such claims for the purposes of the underlying
`
`litigation. Instead, such constructions in this proceeding should be viewed only as
`
`constituting an interpretation of the claims under the “broadest reasonable
`
`construction” standard.
`
`All claim terms not specifically addressed below have been accorded their
`
`broadest reasonable interpretation in light of the patent specification including their
`
`plain and ordinary meaning to the extent such a meaning could be determined by a
`
`skilled artisan.
`
`A. “Visual Construction”
`
`Under the broadest reasonable construction/interpretation (“BRI”), the term
`
`“visual construction” should be interpreted as including both textual and graphical
`
`representations of the network. The specification does not use the term “visual
`
`construction.” However, Figure 11 of the ‘637 patent illustrates a web page 8 that
`
`provides the user interface 102, which includes both graphical and textual
`
`components (see Ex. 1001 at 7:29-31, Fig. 11) (See also Ex. 1009 at ¶ 35):
`
`
`
`18
`
`

`

` 
`
`
`
`
`
`B. “Configuratioon”
`
`
`
`
`
`
`
`erm RI”), the tetation (“BRon/interpretconstructioUUnder the bbroadest reasonable c
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`“configuuration” shhould be innterpreted aas includinng any softtware or haardware
`
`
`
`
`
`
`
`related ssettings. TThis is con
`
`
`
`
`
`sistent withh the speciification’s
`
`
`
`m:
`discussionn of the term
`
`
`
`
`
`is automattic. For exaample, a
`
`
`
`The cconfiguratiion of enviironments
`-page
`
`
`
`
`
`custoomer can reequest a weeb-site simmulator usinng 12 web
`specific
`
`
`
`
`
`serveers on a Miicrosoft® NNT platforrm, 2 disk aarrays at a
`
`
`
`
`
`
`bandwwidth and storage caapacity, 2 ccaching serrvers and 2200
`
`
`
`
`clientts running Netscape NNavigatorTTM under
`Microsoft
`
`
`
`
`
`
`Winddows® 20000 using Peentium IIITTM processsors at undder 800
`
`
`
`
`
`
`MHzz. Such an eenvironmeent is createed automaatically andd made
`
`
`
`
`
`
`accesssible to thhe architectt in real-timme over thee web. A fufurther
`will be
`
`
`
`
`underrstanding oof embodimments of thhe present
`invention w
`
`
`
`
`
`
`gaineed with refference to tthe diagramms and desscriptions wwhich
`
`
`
`19
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`

`

` 
`
`
`
`
`
`follow. (Ex. 1001 at 5:1-12) (See also Ex. 1009 at ¶ 35).
`follow.
`(Ex. 100] at 5:1-12) (See also Ex. 1009 at ‘1] 35).
`
`
`
`
`20
`20
`
`

`

` 
`
`VII. REPRESENTATIVE PROPOSED REJECTIONS AND SHOWING
`THAT PETITIONER IS LIKELY TO PREVAIL
`
`The references addressed below each provide the teaching believed by the
`
`Examiner to be missing from the prior art and render obvious the claimed subject
`
`matter. It should be understood that rejections may be premised on alternative
`
`combinations of these same references.
`
`A. Claims 1-4 and 6 Are Anticipated by Patterson under 35 U.S.C. §
`102(e).
`
`U.S. Patent No. 7,093,005 to Martin Patterson (“Patterson,” Ex. 1003) was
`
`not considered during the original prosecution of the ‘637 patent, nor is it
`
`cumulative of any prior art considered by the Examiner. Patterson issued August
`
`15, 2006, from a 124-page provisional application filed June 20, 2000, which is
`
`attached as Exhibit 1004. All relevant aspects of Patterson’s disclosure are fully
`
`supported by the 124 page provisional application. The earliest priority date that
`
`the claims of the ‘637 patent may be entitled to is August 24, 2000, which is the
`
`provisional filing date of the ‘637 patent. Patterson is thus prior art to the ‘637
`
`patent under at least 35 U.S.C. § 102(e).
`
`Patterson incorporates by reference at column 1, line 38, U.S. Patent No.
`
`6,779,016 to Aziz et al. (Ex. 1005). Aziz and Patterson have common inventorship
`
`and are on their face both assigned to the same company. Patterson describes an
`
`evolution of the system previously disclosed in Aziz.
`
`
`
`21
`
`

`

` 
`
`The following claim chart demonstrates, on a limitation-by-limitation basis,
`
`how claims 1-4 and 6 of the ‘637 patent are anticipated by under 35 U.S.C. §
`
`102(e) by Patterson. The quotations embedded in the following chart are taken
`
`from the issued Patterson patent. Citations to corresponding portions of the
`
`Patterson provisional application are provided for each such embedded
`
`quotation. Citations are to the originally numbered pages of the provisional
`
`application. (See also Ex. 1009 at ¶ 36).
`
`U.S. Patent No.
`7,065,637 Claim
`Language
`1. A system for
`providing configurable
`resources to create a
`computing
`environment, the
`system comprising:
`
`a configurable
`communication link;
`
`Correspondence to
`U.S. Patent No. 7,093,005 to Patterson
`Patterson discloses methods to “visually create a logical
`description of a virtual server farm and instantiate a
`corresponding tangible, operable computing system
`relatively instantly . . .” (Ex. 1003 at 2:14-16). (See also
`Ex. 1004 at 3).
`
`Patterson describes a dynamically configurable network
`that allows creation of an “instant data center.”
`In this document, the terms "virtual server
`farm," "VSF," "farm," "instant data center," and
`"IDC" are used interchangeably to refer to a
`networked computer system that comprises the
`combination of more than one processor, one or
`more storage devices, and one or more
`protective elements or management elements
`such as a firewall or load balancer. Such a
`system is created on demand from a large grid
`of generic computing elements and storage
`elements of the type described in Aziz, et al.
`(Ex. 1003 at 6:43-51). (See also Ex. 1004 at 2-
`3, 29, 59, 62, 69, 73, 111-113, 119).
`
`
`
`22
`
`

`

` 
`
`U.S. Patent No.
`7,065,637 Claim
`Language
`
`plurality of hardware
`devices coupled to the
`communication link;
`
`a plurality of software
`programs executable by
`the hardware devices,
`the software programs
`comprising at least one
`of operating system
`software and
`application software,
`wherein the computing
`environment comprises
`the communication
`link, at least one of the
`hardware devices and
`at least one of the
`software programs; and
`
`Correspondence to
`U.S. Patent No. 7,093,005 to Patterson
`Patterson also describes receiving a graphical
`representation of a logical configuration of the networked
`system. (Id. at 3:4-6)
`Aziz, which is incorporated by reference into Patterson,
`describes a plurality of VLANs, such as VLAN1 and
`VLAN2, configurable based on the creation of the VSF
`and the computin