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` Entered: May 1, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ORACLE CORPORATION
`Petitioners,
`
`v.
`
`CLOUDING IP, LLC
`Patent Owner.
`
`
`
`Case IPR2013-00099 (JL)
`Patent 7,065,637
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL W. KIM,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`Oracle Exhibit 1013, Page 1
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`I.
`INTRODUCTION
`Oracle Corporation (“Oracle”) filed a petition requesting an inter partes
`review of claims 1-4 and 6 of U.S. Patent 7,065,637 (Ex. 1001, “the ’637 patent”).
`(Paper 5, “Pet.”) In response, Clouding IP, LLC (“Clouding”) filed a patent owner
`preliminary response. (Paper 9, “Prel. Resp.”) We have jurisdiction under
`35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`§ 314(a) which provides as follows:
`THRESHOLD -- The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`
`Upon consideration of the petition and patent owner preliminary response,
`we determine that the information presented in the petition establishes that there is
`a reasonable likelihood that Oracle would prevail with respect to claims 1-4 and 6
`of the ’637 patent. Accordingly, pursuant to 35 U.S.C. § 314, we authorize an
`inter partes review to be instituted as to claims 1-4 and 6 of the ’637 patent.
`
`A. Related Proceedings
`
`Oracle indicates that the ’637 patent is involved in co-pending litigation
`captioned Clouding IP, LLC v. Oracle Corp., Case No. 1:12-cv-00642 (D.Del.).
`(Pet. 3.) Additionally, Clouding informs the Board that U.S. Patent Application
`12/946,448 is a pending continuation of the application which issued as the ’637
`patent. (Prel. Resp. 5.)
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`B. The ’637 Patent
`
`The ’637 patent relates to an interactive system for computer system
`architects to design and create a computing environment dynamically. (Ex. 1001,
`Abs., 1:17-23, 2:66-3:1.) In particular, the ’637 patent discloses an interactive
`system that permits computer system architects to design a computing environment
`by allocating resources (e.g., hardware, software, or communication components)
`and specifying how the resources are to be used. (Ex. 1001, Abs., 4:17-19.)
`Figure 1 of the ’637 patent depicts a block diagram of a system for
`configuring a computing environment, and is reproduced as follows:
`
`
`
`Figure 1 of the ’637 patent illustrates a block diagram of
` a system for configuring a computing environment.
`
`As shown above, a customer (e.g., a computer system architect) 101 uses the
`web-based visual interface 102 and the Internet 108 to interact with server system
`103 for allocating resources. (Ex. 1001, 5:13-35.) In response to the customer’s
`request, the server 103 allocates resources based on the customer’s requirements
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`and the availability of resources in the inventory 105. (Id.) The access level
`security layer 106 and isolation level security layer 107 ensure that customer 101
`can access the server and resources, without any other customer being aware of the
`information passed between the interface 102 and the server 103, such as the
`specific configuration or computing environment used by customer 101. (Id.)
`
`C. Illustrative Claim
`
`Of the challenged claims, claim 1 is the sole independent claim. Claims 2-4
`and 6 directly or indirectly depend from claim 1. For purposes of this decision,
`Claim 1 is illustrative of the claimed subject matter of the ’637 patent, and is
`reproduced as follows (emphasis added):
`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 [of] a device configuration,
`the system is configured to make the copy of the device
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`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.
`
`
`D. Prior Art Relied Upon
`
`
`
`Oracle relies upon the following prior art references:
`Verissimo U.S. Patent 5,841,654 Nov. 24, 1998
`Aziz
`U.S. Patent 6,779,016 Aug. 17, 2004
`Patterson U.S. Patent 7,093,005 Aug. 15, 2006
`
`“Cluster X Getting Started Guide Version 2.0 The First True Cluster
`Application and Configuration Management Solution for Microsoft
`Windows NT” Copyright 1998-19999 NuView, Inc. (“ClusterX,” Ex. 1007)
`
`
`(Ex. 1006)
`(Ex. 1005)
`(Ex. 1003)
`
`E.
`
`The Asserted Grounds
`
`Oracle alleges that the challenged claims are unpatentable based on the
`following grounds:
`1. Claims 1-4 and 6 are unpatentable under 35 U.S.C. § 102(e) as anticipated
`by Patterson;
`2. Claims 1-4 and 6 are unpatentable under 35 U.S.C. § 103(a) over Aziz and
`Verissimo; and
`3. Claims 1-4 and 6 are unpatentable under 35 U.S.C. § 103(a) over Aziz and
`ClusterX.
`
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`5
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`II. ANALYSIS
`
`A. Claim Construction
`
`As a first step in our analysis for determining whether to institute a review,
`we determine the meaning of the claims. In an inter partes review, claim terms in
`an unexpired patent are given their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b). In that
`regard, we determine the scope of the claims not solely on the basis of the claim
`language, but also by giving claims their broadest reasonable interpretation
`consistent with the specification and in light of the specification as it would be
`understood 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, an inventor is entitled to be his or
`her own lexicographer of patent claim terms by providing a definition of the term
`in the specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`We find it necessary to construe the claim term “resources.” Further, the
`parties identify the claim terms “visual construction” and “configuration” for
`which claim construction is sought. (Pet. 18-20; Prel. Resp. 4-5.) For this
`decision, we will construe each of these claim terms in turn.
`
`1. “Resources” (Claim 1)
`
`The claim term “resources” appears in the preamble of claim 1, which
`recites “[a] system for providing configurable resources to create a computing
`environment.”
`We begin our analysis by reviewing the specification of the ’637 patent.
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`See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (The
`specification is the single best guide to the meaning of a claim term.). Notably, the
`specification provides the following (Ex. 1001, 4:15-30, emphasis added):
`The present invention allows fast, efficient selection and configuration
`of processing networks. The processing network is referred to as a
`system including “resources.” A system resource is any hardware,
`software or communication components in the system. For example,
`discrete hardware devices include processing platforms such as
`computers or processors, mobile/laptop computers, embedded
`computing devices, hand-held computers, personal digital assistants,
`point-of-sale terminals, smart-card devices, storage devices, data
`transmission and routing hardware etc., without limitation. Software,
`or any other form of instruction, is executed by processors in the
`system and is a type of resource. Finally, communication resources
`are also part of the system such as a digital network’s hardware, the
`network configuration and topology, and network control as provided
`by software or hardware.
`
`We recognize that the specification of the ’637 patent defines the claim term
`“resources” as “any hardware, software or communication components in the
`system” with reasonable clarity. Paulsen, 30 F.3d at 1480. That definition is also
`consistent with the other claim language, such as “wherein the computing
`environment comprises the communication link, at least one of the hardware
`devices and at least one of the software programs” as recited in claim 1. We
`therefore adopt that definition as our claim construction for the claim term
`“resources.”
`
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`2. “Visual Construction” (Claim 1)
`
`Claim 1 recites “a visual construction of the computing environment via a
`user interface.” Essentially, the claim term “visual construction” is referring to a
`visual representation of a computing environment being created by a user.
`Oracle asserts that the term “visual construction” should be interpreted as
`including “both textual and graphical representations of the network” (emphasis
`added). (Pet. 18, citing Ex. 1001, 7:29-31, Fig. 11; Ex. 1009, ¶ 35.) According to
`Clouding, however, the claim term “visual construction” should be interpreted as
`including “textual and/or graphical representation of a network” (emphasis in the
`original). (Prel. Resp. 4, citing Ex. 1001, Figs 5, 7, and 11.) The parties’ proposed
`interpretations and contentions provide an illuminating context as to how one of
`ordinary skill in the art would have understood the claim term in light of the
`specification.
`We discern no special definition in the specification of the ’637 patent for
`this claim term. In fact, the specification does not use the claim term “visual
`construction” or “construction” anywhere. Nevertheless, the parties direct our
`attention to certain figures of the ’637 patent that are said to be examples of a
`visual construction. More precisely, the parties agree that Figure 11 of the ’637
`patent depicts a visual construction that includes both textual and graphical
`representations of a network. (Pet. 18; Prel. Resp. 4.) Figure 11 of the ’637 patent
`is reproduced as follows (emphasis added):
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`Figure 11 of the ’637 patent illustrates a web-page user interface that provides
`a visual representation of a computing environment.
`
`
`As depicted in the above figure, the web-page user interface displays a list of
`resources (e.g., “95 Windows”), and icons representing the computing environment
`(highlighted with a green oval), including the resources that have been allocated by
`the user. (Ex. 1001, 6:49-7:32.) Although that example in Figure 11 of the ’637
`patent shows both textual representations (e.g., “NT Windows winnt4-185”) and
`graphical representations (e.g., the communication connections), the claim
`language is not so limiting.
`As ordinarily understood, the word “visual” means “producing mental
`images” and the word “construction” means the process of making or forming
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`something by combining or arranging of parts or elements.1 We observe that either
`a textual representation or a graphical representation could produce a mental image
`of a computing environment. As such, limiting the claim to require both textual
`and graphical representations would be importing the limitation from the
`specification into the claim improperly. In re Zletz, 893 F.2d 319, 321 (Fed.Cir.
`1989). (Limitations are not to be read into the claims from the specification.).
`In light of the specification of the ’637 patent and the claimed subject
`matter, we construe the claim term “visual construction” to mean “a representation
`of the combination of hardware, software, and communication components,” and
`the representation may include at least one of the following: (1) a textual
`representation; and (2) a graphical representation.
`
`3. “Configuration” (Claims 1 and 4)
`
`Clouding agrees with Oracle that the claim term “configuration” should be
`construed as including “any software or hardware related settings.” (Pet. 19, citing
`Ex. 1001, 5:1-12 & Ex. 1009, ¶ 35; Prel. Resp. 4.) However, a review of the
`specification reflects that the claim term “configuration” is not limited to software
`and hardware components, but also includes communication components. (See
`e.g., Ex. 1001, 4:15-30, reproduced above.)
`We further determine that the phrase “related settings” in the parties’
`proposed interpretation is vague. The claim term “configuration” ordinarily means
`
`
`1 See e.g., MERRIAM-WEBSTER DICTIONARY, http://www.merriam-
`webster.com/dictionary/ (last visited Apr. 22, 2013).
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`“relative arrangement of parts or elements.”2 In the context of the claimed subject
`matter and the specification of the ’637 patent, we construe the claim term
`“configuration” to mean “an arrangement of software, hardware, and
`communication components.”
`
`B. Claims 1-4 and 6 – Anticipated by Patterson
`
`Oracle asserts that claims 1-4 and 6 are unpatentable under 35 U.S.C.
`§ 102(e) as anticipated by Patterson. (Pet. 21-29.) To support its assertion, Oracle
`provides detailed explanations as to how each claim limitation is met by Patterson,
`including claim charts and a declaration of Dr. Benjamin B. Bederson3 (“Dr.
`Bederson”). (Pet. 21-29; Ex. 1009.) In its preliminary response, Clouding presents
`no argument as to this ground of unpatentability.
`Patterson discloses a system that enables a user to create and deploy a
`networked computer system by creating a graphical representation of the logical
`configuration of the networked computer system. (Ex. 1003, Abs.; 6:43-55.) The
`networked computer system is created based on a user selection of graphic icons
`that represent computing elements, network elements, and interconnections. (Id.)
`
`2 See e.g., MERRIAM-WEBSTER DICTIONARY, http://www.merriam-
`webster.com/dictionary/ (last visited Apr. 22, 2013).
`3 Dr. Bederson holds a Ph.D. in computer science from New York University and
`has more than 25 years of experience in the computer science and human-computer
`interaction field. (Ex. 1009, ¶¶ 1-11.) At the time of his declaration, Dr. Bederson
`was employed by the University of Maryland as a Professor in the Computer
`Science Department and the Institute of Advanced Computer Studies. (Id.) We
`conclude that Dr. Bederson is qualified to testify as to the understanding of one
`skill in the art.
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`FFigures 1A and 1D off Patterson
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`networkked compuuter systemm, and are reproducedd as followss:
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`a or creating d system fodepict a mmethod and
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`Figures 1A and 1D of Pattersoon illustratte a methodd and systeem for
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`ed computa networked creating dessigning and
`er system.
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`As shown inn Figure 1AA of Patterrson, a graaphical reprresentationn of a logiccal
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`configuuration of aa computer system is
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`created annd stored (1101). (Ex.
` 1003,
`tion of the
` computer
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`7:41-433.) A textuual represenntation of tthe logical
`configurat
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`system is generateed based onn the graphhical repre
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`sentation ((102). (Exx. 1003, 7:551-
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`56.) Finnally, commmands are generatedd based on
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`the textuall represent
`ation and
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`executed so that thhe networkked compuuter systemm is createdd and activaated by
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`interconnnecting coomputing eelements loogically (1
`04). (Ex.
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`1003, 7:566-64.)
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`As represented in Figure 1 D of Patterson, the system for creating a
`networked computer system includes a client 120 that executes a browser 122 and
`communicates with service provider 126 through a network 124. (Ex. 1001,
`9:19-26.) The service provider 126 has a computing grid 132 that has a large
`plurality of processor and storage elements. (Ex. 1001, 9:28-42.) With the
`appropriate instructions, service provider 126 can create and deploy one or more
`data centers 134 using elements of the computing grid 132. (Id.) The service
`provider 126 also offers a graphical user interface editor server 28, and an
`administration management server 130, which interact with browser 122 to provide
`data center definition, management, reconfiguration. (Id.)
`Figure 3A of Patterson depicts a user interface, and is reproduced as follows:
`
`Figure 3A of Patterson illustrates a user interface that shows
`graphical representation of the networked computer system.
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`As depicted in Figure 3A, Patterson’s software editor application provides a
`user interface that has icons representing elements or nodes of a computer system
`so that a user can drop the icons into a workspace, connect the icons with lines
`representing network connections, configure one or more parameter values
`associated with the nodes, and submit the completed logical representation to a
`service provider for review and validation. (Ex. 1003, 7:43-50; 21:37-43.)
`Although Patterson’s actual filing date is later than the actual filing date of
`the ’637 patent, Patterson qualifies as prior art under 35 U.S.C. § 102(e) based on
`its effective filing date. Patterson claims the benefit under 35 U.S.C. § 119(e) to
`U.S. Patent Provisional Application No. 60/212,925 (“the ’925 provisional
`application,” Ex. 1004) filed on June 20, 2000, which is prior to the effective filing
`date of the ’637 patent (August 24, 2000). In its petition, Oracle provides detailed
`explanations as to how each claim limitation is met by each of Patterson and the
`’925 provisional application. (Pet. 22-29.)
`Upon review of Oracle’s analysis and supporting evidence, we determine
`that Oracle assertion regarding the anticipatory ground of unpatentability has merit.
`On this record, Oracle has demonstrated that there is a reasonable likelihood that it
`would prevail with respect to claims 1-4 and 6 on the ground that these claims are
`anticipated by Patterson.
`
`C. Claims 1-4 and 6 – Unpatentable Over Aziz in view of Verissimo
`
`Oracle asserts that claims 1-4 and 6 are unpatentable under 35 U.S.C.
`§ 103(a) over Aziz in view of Verissimo. (Pet. 30-41.) In particular, Oracle
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`alleges that the combination of the cited prior art references describes all of the
`claim limitations and provides a rationale for combining the references. (Id.)
`Clouding opposes and argues that the combination of Aziz and Verissimo
`fails to describe the claim limitation “the user interface is configured to accept a
`signal which enables the user to request a copy [of] 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” as recited in claim 1 (with emphasis
`added). (Prel. Resp. 6.) We do not agree.
`Oracle relies upon Aziz for disclosing all of the claim limitations of claim 1,
`except the disputed claim limitation. (Pet. 30-41.) As noted by Clouding, Oracle
`cites Verissimo for the disputed claim limitation. (Prel. Resp. 6; Pet. 35.)
`Verissimo discloses a system for configuring a process control system. (Ex. 1006,
`Abs.) As described by Verissimo, the configuration process includes a design
`phase and a downloading phase. (Ex. 1006, 7:33-34.) Using a user interface, a
`user may design a software representation of the process control system by
`selecting representations of the various field mounted devices to be included in the
`actual control system. (Ex. 1006, Abs., 8:16-20; Figure 6A.)
`Figure 5B of Verissimo, reproduced below, depicts a flow diagram of a file
`command subroutine for configuring a system.
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`Figure 5B of Verissimo illustrates a flow diagram
` for configuring a system.
`
`As shown above, a user may select to create a new configuration file (2006)
`or to open an existing configuration file (2008). (Ex. 1006, 9:3-14.) If the user
`chooses to open an existing configuration file, the selected file is retrieved from
`memory. (Id., emphasis added.) Once the user has completed the process of
`selecting and identifying the field mounted devices and the function blocks to be
`included in the system, the user may select to save the completed configuration file
`in memory (2020). (Ex. 1006, 8:46-50; 9:30-32; 11:62-12:2, emphasis added.)
`And when the design phase is completed, the user can initiate the downloading of
`the configuration and link files to the Fieldbus system from the master computer
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`through the interface device, using the Download command from the File
`command menu. (Ex. 1006, 14:65-15:6, emphasis added.)
`Given those disclosures of Verissimo, we are not persuaded by Clouding’s
`arguments. Rather, we determine that Oracle has made a threshold showing that
`Verissimo describes the disputed claim limitation as recited in claim 1.
`Moreover, Clouding fails to provide adequate explanation or credible
`evidence as to why Verissimo does not meet that limitation. Clouding’s contention
`regarding Oracle’s reliance on Dr. Bederson’s testimony to “fill in the gaps” is
`inapposite because Verissimo describes the disputed claim limitation as discussed
`above. (Prel. Resp. 6-9.) As stated previously, we conclude that Dr. Bederson is
`qualified to testify as to the understanding of one skill in the art. Contrary to
`Clouding’s contention, Dr. Bederson’s testimony provides a credible rationale for
`combining Aziz and Verissimo. (Prel. Resp. 7, citing to Pet. 35 and Ex. 1009,
`¶ 23.) For instance, Dr. Bederson testifies (Ex. 1009, ¶¶ 23-24, emphasis added):
`Once the user has completed the process of selecting and
`identifying the field mounted devices and function blocks to be
`included in the Fieldbus system to be configured, the Fieldbus
`Network can be viewed via the window 10 and the user can save the
`completed configuration file by selecting the Save command from the
`File command menu. [Ex. 1006, 11:62-12:2] 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.
`
`I believe that it is reasonable and entirely expected for a person of
`ordinary skill in this area to combine the above-noted system
`configurator of Verissimo with the virtual provisioning console and
`VSF creation techniques of Aziz. When combined in this manner, the
`virtual provisioning console could provide a VSF system configurator
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`GUI enabling the visual creation of the VSF. Accordingly, the system
`configurator GUI could be used to specify the number of tiers, the
`number and types 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.
`The configured VSF configuration could then be viewed or saved for
`later use and/or modification by the customer. I believe that it would
`be reasonable and expected for a person of ordinary skill to combine
`these references for a variety of reasons.
`
`On this record, we determine Dr. Bederson’s testimony to be credible that it
`articulates an adequate rationale with technical reasoning as to why a person of
`ordinary skill in the art would have combined the teachings of Aziz and Verissimo
`to reach the subject matter of claim 1.
`We have reviewed Oracle’s analysis and supporting evidence, and determine
`that Oracle’s assertion as to the unpatentability of the challenged claims based on
`Aziz and Verissimo is persuasive. Accordingly, Oracle has demonstrated that
`there is a reasonable likelihood that it would prevail with respect to claims 1-4
`and 6 based on the ground that these claims are unpatentable over Aziz and
`Verissimo.
`
`D. Other Asserted Grounds
`Oracle also asserts that claims 1-4 and 6 are unpatentable under 35 U.S.C.
`§ 103(a) over Aziz and ClusterX. (Pet. 42-55.) That asserted ground is denied as
`redundant in light of the determination that there is a reasonable likelihood that the
`challenged claims are unpatentable based on the grounds of unpatentability on
`which we institute an inter partes review. See 37 C.F.R. § 42.108(a).
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`III. CONCLUSION
`For the forgoing reasons, we determine that the information presented in the
`petition establishes that there is a reasonable likelihood that Oracle would prevail
`with respect to claims 1-4 and 6 of the ’637 patent.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby instituted as to claims 1-4 and 6 of the ’637 patent for the following
`grounds:
`1. Claims 1-4 and 6 are unpatentable under 35 U.S.C. § 102(e) as anticipated
`by Patterson; and
`2. Claims 1-4 and 6 are unpatentable under 35 U.S.C. § 103(a) over Aziz and
`Verissimo;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial; the trial is commencing
`on the entry date of this decision; and
`FURTHER ORDERED that an initial conference call with the Board is
`scheduled for 2:00 PM Eastern Time on May 16, 2013; the parties are directed to
`the Office Trial Practice Guide4 for guidance in preparing for the initial conference
`call, and should come prepared to discuss any proposed changes to the Scheduling
`
`
`4 Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48765-66 (Aug. 14,
`2012).
`
`19
`
`Oracle Exhibit 1013, Page 19
`
`
`
`Case IPR2013-00099
`Patent 7,065,637
`
`
`Order entered herewith and any motions the parties anticipate filing during the
`trial.
`
`
`
`
`
`
`
`
`
`For PETITIONER:
`
`Greg Gardella
`Scott A. McKeown
`OBLON SPIVAK
`cpdocketgardella@oblon.com
`cpdocketmckeown@oblon.com
`
`
`For PATENT OWNER
`
`Tarek N. Fahmi
`Amy J. Embert
`Fahmi, Sellers & Embert
`tarek.fahmi@fseip.com
`amy.embert@fseip.com
`
`20
`
`Oracle Exhibit 1013, Page 20
`
`