`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT AND TRIAL APPEAL BOARD
`
`
`
`
`
`ORACLE CORPORATION
`Petitioner
`
`v.
`
`Patent of CLOUDING IP, LLC
`Patent Owner
`
`
`
`
`Case IPR 2013-00099 (JL)
`Patent 7,065,637
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`7,065,637
`UNDER 35 USC §§ 311-319 AND 37 CFR § 42.100 ET SEQ.
`
`
`
`
`
`
`
`
`
`
`Oracle Exhibit 1012, Page 1
`
`
`
`
`
`Table of Contents
`
`1. Introduction ................................................................................................ 1
`
`2. Overview of U.S. Patent 7,065,637 ............................................................. 2
`
`
`
`
`
`
`
`
`
`3. Claim Terms Requiring Construction .......................................................... 3
`
`
`
`
`A. Visual Construction .............................................................................. 4
`
`B. Configuration ....................................................................................... 4
`
`C. Summary of Proposed Claim Constructions. ........................................ 5
`
`4. Notice of Related Application. ..................................................................... 5
`
`5. Argument ..................................................................................................... 6
`
`A. The Petition Fails to Establish a Reasonable Likelihood that
`at Least One of Claims 1-4 and 6 is Unpatentable over Aziz in
`view of Verissimo. .................................................................................... 6
`
`6. Conclusion .................................................................................................. 9
`
`
`
`
`
`
`
`
`ii
`
`Oracle Exhibit 1012, Page 2
`
`
`
`
`
`Cases
`
`Table of Authorities
`
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) ............. 4
`
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359 (Fed. Cir. 2004) .................. 4
`
`In re Fine, 837 F.2d 1071 (Fed. Cir. 1988) ...................................................... 9
`
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) .......................................... 8, 9
`
`KSR Int’l Co v. Teleflex Inc., 550 U.S. 398 (2007) ........................................ 8, 9
`
`
`
`Regulations
`
`37 C.F.R. § 1.75(d)(1) ..................................................................................... 4
`
`37 C.F.R. § 42.108(c) ...................................................................................... 2
`
`
`
`Other Authorities
`
`157 Cong. Rec. S1375 (Mar. 8, 2011) ............................................................. 1
`
`H.R. Rep. No. 112-98 (part 1) (2011) ............................................................. 1
`
`MPEP § 2173.01 ............................................................................................. 4
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012) ........ 3
`
`
`
`
`
`iii
`
`Oracle Exhibit 1012, Page 3
`
`
`
`Pursuant to 37 C.F.R. § 42.107(a) Patent Owner, Clouding IP, LLC,
`
`submits the following preliminary response to the Petition, setting forth reasons
`
`why no inter partes review should be instituted under 35 U.S.C. § 314.
`
`1. Introduction
`
`The Board should not institute inter partes review because Petitioner,
`
`Oracle Corp., has not met the high standard1 required by Patent Office
`
`regulations to demonstrate a reasonable likelihood that at least one of the claims
`
`challenged in the petition is unpatentable. 37 C.F.R. § 42.108(c).
`
`
`
`1 The “reasonable likelihood” standard was intended by Congress to be a
`substantially higher barrier to patent validity challenges that the former
`“substantial new question of patentability” test used for inter partes
`reexaminations. See H.R. Rep. No. 112-98 (part 1) at 47 (2011) (“The
`threshold for initiating an inter partes review is elevated from ‘significant new
`question of patentability’ – a standard that currently allows 95% of all requests
`to be granted – to a standard requiring petitioners to present information
`showing that their challenge has a reasonable likelihood of success.”). Thus, the
`new standard makes inter partes review available only in exceptional cases where
`serious doubts about the patent’s validity are raised and a prima facie case has
`been established. See 157 Cong. Rec. S1375 (Mar. 8, 2011) (statement of Sen.
`Kyl (D-Ariz)).
`
`
`
`1
`
`Oracle Exhibit 1012, Page 4
`
`
`
`2. Overview of U.S. Patent 7,065,637
`
`
`
`U.S. Patent 7,065,637 (the “’637 Patent”) (Oracle Ex. 1001) describes a
`
`user interface for creating a dynamic computing environment. Ex. 1001 at
`
`Abstract. The user interface assists users with their selection, allocation and
`
`configuration of computing resources, such as processors, storage devices,
`
`routing hardware, networks and software. Id. at col. 1, ll. 18-23 and col. 4, ll.
`
`15-30. More specifically, the user interface may provide the user with graphical
`
`representations of specially configured computing resources (i.e., computing
`
`resources configured according to a stored configuration). Id. at col. 6, ll. 49-
`
`50. A user may select one or more of these specially configured computing
`
`resources, id. at col. 6, ll. 51-54, and activate the selected computing resource
`
`in his/her computing environment. Id. at col. 7, ll. 10-15. Computing
`
`resources may further be linked to one other in the computing environment.
`
`Id. at Fig. 11.
`
`Even though many users may share the same pool of resources, security
`
`mechanisms are provided so that one user is not aware of how another user may
`
`be using the computing resources. Id. at col. 5, ll. 27-35. Further, resources
`
`may be time-shared among a plurality of users, such that the same resources
`
`may be allocated to one user at a certain time, and to another user at another
`
`
`
`2
`
`Oracle Exhibit 1012, Page 5
`
`
`
`time. Id. at col. 4, ll. 43-57. The computing environment may be virtually
`
`hosted, meaning that users may create and interact with their respective
`
`computing environments remotely via a web-based interface. Id. at col. 4, ll.
`
`58-67 and col. 5, ll. 50-56.
`
`
`
`
`
`
`
`3. Claim Terms Requiring Construction
`
`
`
` Consistent with the statute and legislative history of the America Invents
`
`Act, when considering whether to institute a patent trial the Board has
`
`indicated that it will interpret the claims of a challenged patent using a
`
`“broadest reasonable construction” approach. Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). In applying such a
`
`standard, it is important to recognize that the broadest reasonable construction
`
`of claim language is not one that permits any reading thereof. Instead, it is one
`
`that must be made “in light of the specification as it would be interpreted by
`
`one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
`
`1359, 1364 (Fed. Cir. 2004). Further, unless the patentee has clearly
`
`demonstrated an intention to stray, there is a “heavy presumption” that a claim
`
`term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick
`
`
`
`3
`
`Oracle Exhibit 1012, Page 6
`
`
`
`Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Of course, patent claims must
`
`“conform to the invention as set forth in the remainder of the specification and
`
`the terms and phrases used in the claims must find clear support or antecedent
`
`basis in the description so that the meaning of the terms in the claims may be
`
`ascertainable by reference to the description.” 37 C.F.R. § 1.75(d)(1).
`
`
`
`A.
`
`Visual Construction
`
`Consistent with the requirement to adopt the broadest reasonable
`
`construction, the term virtual construction should be construed as including
`
`“textual and/or graphical representations of a network”. Such a construction is
`
`consistent with the disclosure of the ‘637 Patent. See, e.g., Ex. 1001 at Fig. 5
`
`(web page 3 showing graphical representations 95, 98, etc.); Figs. 7 and 11, etc.
`
`(showing textual and graphical representations). The best source for
`
`determining the meaning of a claim is the specification. MPEP § 2173.01.
`
`
`
`B.
`
`Configuration
`
`The Patent Owner agrees with the Petitioner that the term configuration
`
`should be construed as including any software or hardware related settings.
`
`
`
`
`
`
`4
`
`Oracle Exhibit 1012, Page 7
`
`
`
`C.
`
`Summary of Proposed Claim Constructions.
`
`For the convenience of the Board, below is presented a summary of the
`
`Patent Owner’s proposed claim constructions.
`
`
`
`Claims in which Term
`Appears
`1
`
`Claim Term for
`Construction
`visual construction
`
`1, 4
`
`configuration
`
`Proposed Construction
`
`textual and/or graphical
`representations of the
`network
`
`including any software
`or hardware related
`settings
`
`
`
`
`4. Notice of Related Application.
`
`U.S. Patent Application 12/946,448 is a pending continuation of the
`
`application which led to the ‘637 Patent.
`
`
`
`
`
`
`5
`
`Oracle Exhibit 1012, Page 8
`
`
`
`5. Argument
`
`A. The Petition Fails to Establish a Reasonable Likelihood that at
`Least One of Claims 1-4 and 6 is Unpatentable over Aziz in view of
`Verissimo.
`
`The Petition alleges that claims 1-4 and 6 are obvious under 35 U.S.C. §
`
`103 when the teachings of Aziz et al., U.S. Patent 6,779,016 (Oracle Ex. 1005)
`
`are considered in combination with those of Verissimo et al., U.S. Patent
`
`5,841,654 (Oracle Ex. 1006). See, e.g., Petition at pp. 30 et seq. In setting forth
`
`this proposed rejection, the Petition relies on Aziz for teaching all of the
`
`features of claim 1,2 except:
`
`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
`
`Ex. 1001, claim 1 at col. 7, l. 65 – col. 8, l. 3 (emphasis added). Petitioner
`
`looks to Verissimo to supply these missing elements.
`
`
`
`More specifically, at p. 35 the Petition relies upon Verissimo for
`
`permitting a “user to create and save a configuration file”. Even if this is so, no
`
`copy of a configuration file is requested, made and saved in Verissimo. Indeed,
`
`
`
`
`2 Petition at pp. 31 et seq.
`
`6
`
`Oracle Exhibit 1012, Page 9
`
`
`
`the Petition admits as much and seeks to rely on statements made by
`
`Petitioner’s declarant, Professor Bederson, to fill in the gaps:
`
`Professor Bederson explains in his declaration that a
`skilled artisan would have appreciated that the
`configuration file could be saved under a new
`filename to create a copy of the file and further
`explains the applicability of the combination of Aziz
`and Verissimo. (Ex. 1009 at ¶¶ 23-25).
`
`Petition at p. 35. Upon referring to Professor Bederson’s declaration, however,
`
`one finds that Professor Bederson’s “explanation” is nothing more than a
`
`conclusory statement that the claimed feature is obvious: “Of course, as would
`
`be obvious to one of ordinary skill in the art at the time of the invention, a
`
`configuration file could be saved under a new filename thereby creating a copy
`
`of the configuration file”. Ex. 1009 at ¶ 23.
`
`Rather than explaining the rationale for the allegations of obviousness
`
`advanced in the Petition, Professor Bederson has merely restated the conclusion
`
`of obviousness as the premise for finding the same. Conclusory statements of
`
`this kind, which are devoid of any reasoning in support thereof, are wholly
`
`insufficient grounds for rejecting a claim for obviousness. KSR Int’l Co v.
`
`Teleflex Inc., 550 U.S. 398 (2007) (holding that the key to supporting any
`
`rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why
`
`
`
`7
`
`Oracle Exhibit 1012, Page 10
`
`
`
`the claimed invention would have been obvious.) In order for there to be a
`
`“clear articulation” of any such reasons, the analysis supporting a rejection of
`
`this nature must be made explicit. Id. and see In re Kahn, 441 F.3d 977, 988
`
`(Fed. Cir. 2006). Professor Bederson’s single line conclusion fails to meet this
`
`requirement.
`
`A prima facie case of obviousness requires, at a minimum, that the
`
`Petitioner articulate the reasons why the claimed invention would be obvious to
`
`the person of ordinary skill in the art. KSR, supra, 550 U.S. at 419. Mere
`
`conclusory statements without any supporting rationale are wholly insufficient
`
`for this purpose. In re Kahn, supra, 441 F.3d at 988. Here, Petitioner has failed
`
`to meet this burden because no explanation is offered as to why a person of
`
`ordinary skill in the art would modify the proposed Aziz-Verissimo combination
`
`to accommodate requesting, copying and saving a configuration file in the
`
`manner recited in the present claims. Hence, claim 1 should be deemed
`
`patentable over Aziz-Verissimo.
`
`If an independent claim is nonobvious under 35 U.S.C. 103, then any
`
`claim depending therefrom is nonobvious. In re Fine, 837 F.2d 1071 (Fed. Cir.
`
`1988). Claims 2-4 and 6 each depend directly or indirectly from claim 1.
`
`Because the Petitioner’s proposed rejection of claim 1 for obviousness fails to
`
`
`
`8
`
`Oracle Exhibit 1012, Page 11
`
`
`
`meet the requires for a prima facie case, there is no reasonable likelihood that
`
`the Petitioner will prevail its assertion that claims 1-4 and 6 are unpatentable
`
`over Aziz in view of Verissimo under 35 U.S.C. § 103(a).
`
`For at least the foregoing reasons, Petitioner has failed to demonstrate a
`
`reasonable likelihood that it will prevail as to the challenged claims and this
`
`proposed ground for institution of inter partes review proceedings should be
`
`denied.
`
`
`
`6. Conclusion
`
`
`
`For at least the foregoing reasons, the Board should not institute inter
`
`partes review of the ’637 Patent on the grounds proposed by Petitioner.
`
`
`
`
`
`
`
`
`
`Date: March 26, 2013
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
` by:
`
`
`
`
`
` /Tarek N. Fahmi/
`Tarek N. Fahmi, Reg. No. 41,402
`
`
`
`Fahmi, Sellers, Embert & Davitz
`84 W. Santa Clara St.
`Suite 550
`San Jose, CA 95113-1812
`1 866 877 4883
`
`
`
`9
`
`Oracle Exhibit 1012, Page 12
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`was served on March 26, 2013, by filing this document though the Patent
`
`Review Processing System as well as delivering a copy via EXPRESS MAIL
`
`directed to the attorneys of record for the Petitioner at the following address:
`
`Greg Gardella
`Oblon Spivak
`1940 Duke Street
`Alexandria, VA 22314
`
`
`
`Date: March 26, 2013
`
`
`
`
`
`
`
`
`
`
`
`
` by:
`
`
`
`
`
` /Tarek N. Fahmi/
`Tarek N. Fahmi, Reg. No. 41,402
`
`
`
`Fahmi, Sellers, Embert & Davitz
`84 W. Santa Clara St.
`Suite 550
`San Jose, CA 95113-1812
`1 866 877 4883
`
`
`
`
`
`Oracle Exhibit 1012, Page 13
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
