UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`SAP AMERICA, INC.
`Petitioner
`
`v.
`
`PI-NET INTERNATIONAL, INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2014-00414
`Patent 8,346,894
`
`
`
`
`
`
`
`DECLARATION OF DR. MARVIN SIRBU IN SUPPORT OF
`PETITIONER’S REPLY TO PATENT OWNER’S
`RESPONSE TO PETITION
`
`
`
`
`
`
`
`
`
`
`
`
`
`SAP 1010
`IPR2014-00414
`Page 1 of 36
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`SAP AMERICA, INC.
`Petitioner
`
`v.
`
`PI-NET INTERNATIONAL, INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2014-00414
`Patent 8,346,894
`
`
`
`
`
`
`
`DECLARATION OF DR. MARVIN SIRBU IN SUPPORT OF
`PETITIONER’S REPLY TO PATENT OWNER’S
`RESPONSE TO PETITION
`
`
`
`
`
`
`
`
`
`
`
`
`
`SAP 1010
`IPR2014-00414
`Page 1 of 36
`
`
`
`
`
`
`
`
`- 2 -
`
`IPR2014-00414
`Patent 8,346,894
`
`I, Marvin Sirbu, Sc.D., declare as follows:
`
`1.
`
`I have been retained on behalf of SAP America, Inc. (“SAP”) to
`
`provide declaratory evidence in an inter partes review of U.S. Patent No.
`
`8,346,894 (“’894 patent”).
`
`2.
`
`I have reviewed and am familiar with the specification of the ’894
`
`patent issued on January 1, 2013. I will cite to the specification using the following
`
`format: ’894 patent, 1:1-10. This example citation points to the specification of the
`
`’894 patent at column 1, lines 1-10.
`
`3.
`
`I have reviewed and am familiar with the following prior art used in
`
`the Petition for Inter Partes Review of the ’894 patent:
`
` U.S. Publication No. 2008/0275779 to Lakshminarayanan (“the ‘779
`
`application”). Lakshminarayanan is provided as SAP 1004.
`
` “Developing Enterprise Web Services. An Architect’s Guide.,” by
`
`Chatterjee et al. (“Chatterjee”) Chatterjee is provided as SAP 1005.
`
` U.S. Publication No. 2006/0161513 to Drumm et al. (“Drumm”). Drumm is
`
`provided as SAP 1006
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 2 of 36
`
`
`
`
`
`
`- 3 -
`
`IPR2014-00414
`Patent 8,346,894
`
` U.S. Publication No. 2009/0006614 to Le et al. (“Le”). Le is provided as
`
`
`
`SAP 1007
`
` U.S. Publication No. 2004/0054610 to Amstutz et al. (“Amstutz”). Amstutz
`
`is provided as SAP 1008.
`
`4.
`
`I have also reviewed and refer to the following documents from this
`
`proceeding:
`
` Petition for Inter Partes Review of U.S. Patent No. 8,346,894 (“Petition”;
`
`Paper 1).
`
` My declaration in support of the Petition for Inter Partes Review of U.S.
`
`Patent No. 8,346,894 (SAP 1002).
`
` Decision—Institution of Inter Partes Review for U.S. Patent No. 8,346,894
`
`(“Decision”; Paper 11).
`
` Patent Owner’s Response to Petition (“Response”; Paper 18).
`
` Provisional Application 60/006,634 (Pi-Net 2007)
`
` ’178 Prosecution History (Pi-Net 2008)
`
` Clark, D., “The Design Philosophy of the DARPA Internet Protocols,”
`Computer Communication Review, 18, 4, Aug 1988. (SAP 1011)
`
` Zwimpfer, L. and Sirbu, M., “Standards Setting for Computer
`Communication: The Case of X.25” IEEE Comm Mag,” 23, 3, March 1985
`(SAP 1012)
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 3 of 36
`
`
`
`
`
`
`
`
`- 4 -
`
`IPR2014-00414
`Patent 8,346,894
`
` Haynes, T., “The Electronic Commerce Dictionary,” The Robleda Company,
`California, 1985, 112 pages. (SAP 1013)
`
` Ashley, Charles C., “IVANS: A vigorous decade,” Bests Review, May,
`1993 (SAP 1014)
`
`5.
`
`I am familiar with the technology at issue as of November 30, 2009
`
`filing date of the ’894 patent.
`
`6.
`
`I have been asked to provide my technical review, analysis, insights
`
`and opinions regarding the above-noted references.
`
`I.
`
`Qualifications
`
`7. My academic and professional pursuits are closely related to the
`
`subject matter of the ’894 patent. In 1989, I founded the Information Networking
`
`Institute at Carnegie Mellon University, dedicated
`
`to
`
`the
`
`integration of
`
`communication, computing and business studies. My efforts placed me at the
`
`cutting edge of early 1990’s Internet commerce. My work was instrumental in the
`
`research and development of distributed transaction processing systems, including
`
`my work on the NetBill micropayment system from 1994-96.
`
`8.
`
`I am a named inventor on two U.S. patents relating to e-commerce
`
`payment systems.
`
`9.
`
`I hold SB (‘66) / SM (‘68) / Sc.D. (‘73) degrees in Electrical
`
`Engineering and Computer Science, an SB (‘67) degree in Mathematics and an EE
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 4 of 36
`
`
`
`
`
`
`- 5 -
`
`IPR2014-00414
`Patent 8,346,894
`
`
`(‘70) (electrical engineer) degree, all from Massachusetts Institute of Technology,
`
`in Cambridge, Massachusetts.
`
`10.
`
` My recent research is directed to telecommunications and Internet
`
`policy, as well as competition and pricing on e-commerce platforms. In my
`
`professional and academic experience, I have considered various usability and
`
`implementation problems of e-commerce platforms.
`
`11.
`
` My Curriculum Vitae was provided as SAP 1003, which contains
`
`further details on my education, experience, publications and other qualifications
`
`to render an expert opinion. My work on this case is being billed at a rate of $375
`
`per hour, with reimbursement for actual expenses. My compensation is not
`
`contingent upon the outcome of this inter partes review.
`
`II. My Understanding of Claim Construction
`
`12.
`
`I understand that, at the Patent Office, claims are to be given their
`
`broadest reasonable construction in light of the specification as would be read by a
`
`person of ordinary skill in the relevant art.
`
`III. My Understanding of Obviousness
`
`13.
`
`It is my understanding that a claimed invention is unpatentable if the
`
`differences between the invention and the prior art are such that the subject matter
`
`as a whole would have been obvious at the time the invention was made to a
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 5 of 36
`
`
`
`
`
`
`- 6 -
`
`IPR2014-00414
`Patent 8,346,894
`
`
`person having ordinary skill in the art to which the subject matter pertains.
`
`14.
`
`I understand that for a single reference or a combination of references
`
`to render the claimed invention obvious, a person of ordinary skill in the art must
`
`have been able to arrive at the claims by altering or combining the applied
`
`references.
`
`15.
`
`I also understand that when considering the obviousness of a patent
`
`claim, one should consider whether a teaching, suggestion, or motivation to
`
`combine the references exists so as to avoid impermissibly applying hindsight
`
`when considering the prior art. I understand this test should not be rigidly applied,
`
`but that the test can be important to avoid such hindsight
`
`16.
`
`It is my understanding that “obviousness” is a question of law based
`
`on underlying factual issues including the content of the prior art and the level of
`
`skill in the art. For that reason, I do not reach any conclusions here with respect to
`
`the ultimate question of obviousness. Rather, my expert testimony is focused on
`
`the underlying facts and analysis that are relevant to the obviousness inquiry.
`
`IV. Level of Ordinary Skill in the Art
`
`17. Based on the technologies disclosed in the ’894 patent, one of
`
`ordinary skill in the art would have a B.S. degree in Computer Science or
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 6 of 36
`
`
`
`
`
`
`- 7 -
`
`IPR2014-00414
`Patent 8,346,894
`
`
`Engineering, as well as at least 3-5 years of academic or industry experience in the
`
`relevant field.
`
`V. The ’894 Patent Claims
`
`18.
`
`I understand that the ’894 patent is related to three other patents
`
`subject to similar proceedings before the U.S. Patent and Trademark Office’s
`
`Patent and Trial Appeal Board (“Board”): U.S. Patent No. 8,108,492 (“the ’492
`
`patent”) is the subject of an inter partes review in proceeding IPR2013-00194;
`
`U.S. Patent No. 5,987,500 (“the ’500 patent”) is the subject of an inter partes
`
`review in proceeding IPR2013-00195; and U.S. Patent No. 8,037,158 (“the ’158
`
`patent”) is the subject of covered business method reviews in proceedings
`
`CBM2013-00013 and CBM2014-00018. I also understand that the ’894 patent is
`
`related to and shares substantially the same specification as the ’492 patent, the
`
`’500 patent and the ’158 patent.
`
`19.
`
`In the following section, I comment on the alternative constructions of
`
`certain claim terms set forth by the Patent Owner in its Response.
`
`A.
`
`“Web Transaction”
`
`20. Patent Owner proposes an alternative construction for the term “Web
`
`transaction”: “any type of commercial or other type of two-way interaction with
`
`capability to do more than one-way browse-only interaction, a Web user can
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 7 of 36
`
`
`
`
`
`
`
`perform.” (Response, pp. 2-5.)
`
`- 8 -
`
`IPR2014-00414
`Patent 8,346,894
`
`21. First, the Patent Owner’s argument regarding one-way browse only
`
`interactions does not make sense. Even the simple act of browsing is a two-way
`
`interaction in which the Web client sends an HTTP request for the information
`
`described by a particular URL (and potentially supplemented by form information
`
`in a POST request) and the Web server sends back some information in an HTTP
`
`response. Thus, the simple act of Web browsing would be considered a two-way
`
`transaction, as would have been understood by a person of ordinary skill in the art.
`
`22. Nonetheless, the Patent Owner’s construction is incorrect, because it
`
`is not supported by the ’894 specification. The ’894 patent’s specification
`
`explicitly states that “a ‘transaction’ for the purposes of the present invention
`
`includes any type of commercial or other type of interactions that a user may want
`
`to perform.” (’894 patent, 5:34–37.) A person of ordinary skill in the art would
`
`have recognized that such transactions include browse only interactions.
`
`23. Moreover, the Patent Owner continues to assert that the Web, as of the
`
`time of the invention, could not be used for transactions. (Response, pp. 2 and 5.)
`
`Yet the existence of CGI meant it was possible to invoke any type of transaction
`
`that a user might want from a Web browser by invoking the appropriate CGI script.
`
`Additionally, I am aware that systems such as Open Market were providing
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 8 of 36
`
`
`
`
`
`
`
`transactional services over the Web as of July of 1995.
`
`- 9 -
`
`IPR2014-00414
`Patent 8,346,894
`
`B.
`
` “Real-Time”
`
`24. The Board construed this claim term to mean “non-deferred.”
`
`(Decision, p. 9.)
`
`25.
`
`I agree with the Board’s construction of this claim term.
`
`26. The Patent Owner’s statement that the term “‘real-time’ is as in an
`
`ATM transaction or a live teller transaction. This is from the standpoint of the user
`
`experience, NOT processing of the transaction” (Response, p. 6) does not affect
`
`any of the analysis regarding the teachings of the prior art references with respect
`
`to this claim term.
`
`C.
`
` “Internet”
`
`27. Patent Owner proposes an alternative construction for the term
`
`“Internet”: “TCP/IP-based Internet, this is the physical Internet with physical
`
`hardware components that provides underlying communication services up to layer
`
`4 of the OSI model and over which an OSI application layer 7 network operates.”
`
`(Response, pp. 5-6.)
`
`28. The Patent Owner’s construction is incorrect, because it is not
`
`supported by the ’894 specification. The ’894 specification does not provide any
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 9 of 36
`
`
`
`
`
`
`- 10 -
`
`IPR2014-00414
`Patent 8,346,894
`
`
`definition for the term “Internet” which includes the limitations, “the physical
`
`Internet with physical hardware components
`
`that provides underlying
`
`communication services up to layer 4 of the OSI model and over which an OSI
`
`application layer 7 network operates,” as alleged by the Patent Owner.
`
`29.
`
`In the Decision to Institute for proceeding IPR2014-00413, the Board
`
`provided the following definition for the term “Internet:” “a global computer
`
`network providing a variety of information and communication facilities,
`
`consisting of
`
`interconnected networks using standardized communication
`
`protocols.” (IPR2014-00413, Paper 12, p. 16.) I agree with this definition, as it is
`
`consistent with what a person of ordinary skill in the art would have understood
`
`this term to mean.
`
`D.
`
`“Web Application”
`
`30. Patent Owner proposes an alternative construction for the term “Web
`
`application”: “a transactional application that is a Web client displayed in a Web
`
`browser or a Web page and that executes a real-time Web transaction a Web user
`
`performs and that includes a networked object identity with information entries and
`
`attributes.” (Response, pp. 6-7.)
`
`31. The Patent Owner’s construction is incorrect, because it is not
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 10 of 36
`
`
`
`
`
`
`- 11 -
`
`IPR2014-00414
`Patent 8,346,894
`
`
`supported by the ’894 specification. For example, Patent Owner’s proposed
`
`construction equates a Web application to a Web client, and specifies that a Web
`
`application/Web client “is displayed in a Web Browser.” (Id.). However, Patent
`
`Owner’s proposed construction is contrary to the teachings of the ’894 patent that
`
`states “[w]eb browsers are software interfaces that run on Web clients.” (’894
`
`patent, 1:40-42.)
`
`32. For example, Fig. 1B of the ’894 patent (shown below) illustrates an
`
`environment where the Web browser 102 runs on a user’s machine and functions
`
`as a client, while an application that provides a service (e.g. Checking application
`
`152, loan application 154) runs on a machine that hosts a Web site and functions as
`
`a server (e.g. Bank Web Server).
`
`
`
`33. The supporting text for Fig. 1B of the ’894 patent also explains:
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 11 of 36
`
`
`
`
`
`
`
`
`- 12 -
`
`IPR2014-00414
`Patent 8,346,894
`
`
`
`Under limited circumstances, a user may have access to
`
`two-way services on the Web via Common Gateway Interface
`
`(CGI) applications. CGI is a standard interface for running
`
`external programs on a Web server. It allows Web servers to
`
`create documents dynamically when the server receives a
`
`request from the Web browser. When the Web server receives a
`
`request for a document, the Web server dynamically executes
`
`the appropriate CGI script and transmits the output of the
`
`execution back to the requesting Web browser. This interaction
`
`can thus be termed a "two-way" transaction. It is a severely
`
`limited transaction, however, because each CGI application is
`
`customized for a particular type of application or service.
`
`
`
`For example, as illustrated in FIG. 1B, user 100 may
`
`access bank 150's Web server and attempt to perform
`
`transactions on checking account 152 and to make a payment
`
`on loan account 154. In order for user 100 to access checking
`
`account 152 and loan account 154 on the Web, CGI application
`
`scripts must be created for each account, as illustrated in FIG.
`
`lB. The bank thus has to create individual scripts for each of its
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 12 of 36
`
`
`
`
`
`
`
`
`- 13 -
`
`IPR2014-00414
`Patent 8,346,894
`
`services to offer users access to these services. User 100 can
`
`then interact in a limited fashion with these individual
`
`applications. Creating and managing individual CGI scripts for
`
`each service is not a viable solution for merchants with a large
`
`number of services. (’894 patent, 2:1-26.)
`
`34. Patent Owner argues:
`
`The claim language requires the Web application to be a POSvc
`
`application, and by definition, as per the specification, the
`
`POSvc application is displayed on a Web page. (See ‘894:6:42-
`
`61; Figs 5C, 5D, 5B, 6A). PO’s construction that a Web
`
`application is the same as a POSvc application displayed on a
`
`Web page or Web browser is in accord with the specification,
`
`title and the claim language. The Web client application
`
`displayed on a Web browser is distinct from the Web browser,
`
`even though the Web browser is itself a Web client. See parent
`
`’178 file history, (Exh. 2004), which states that a POSvc
`
`application is distinctly different from a Web page or URL or
`
`HTML form. The ‘894 patent discloses that the POSvc
`
`application is displayed on a Web page, at Col 6. Cols 1, 5, 7
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 13 of 36
`
`
`
`
`
`
`
`
`- 14 -
`
`IPR2014-00414
`Patent 8,346,894
`
`clearly distinguish the present invention from hyperlinking.
`
`(Response, p. 8)
`
`35. The Patent Owner then points to a section of the ’894 patent that
`
`discusses POSvc applications:
`
`“POSvc applications 510 are
`
`transactional applications
`
`…Exchange 501 processes the consumer's request and displays
`
`an exchange Web page 505 that includes a list of POSvc
`
`applications 510 accessible by exchange 501. A POSvc
`
`application is an application that can execute the type of
`
`transaction that the user may be interested in performing. The
`
`POSvc list is displayed via the graphical user interface
`
`component. One embodiment of the present invention supports
`
`HyperText Markup Language as the graphical user interface
`
`component.” (’894, 6:25-50).
`
`36. Here, Patent Owner equates two terms: “Web application” and
`
`“POSvc application.” However, these two terms are never equated in the ’894
`
`patent. The ’894 patent demonstrates that a POSvc application is not a client that
`
`runs in a Web browser, but rather is associated with a server. For example, Fig. 4B
`
`illustrates that the POSvc application is part of an Exchange.
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 14 of 36
`
`
`
`
`
`
`
`
`- 15 -
`
`IPR2014-00414
`Patent 8,346,894
`
`
`
`37. And the ’894 patent explicitly states, with respect to the Exchange and
`
`Fig. 5: (i) “Although exchange 501 is depicted as residing on Web server 104, the
`
`exchange can also reside on a separate computer system that resides on the Internet
`
`and has an Internet address” (’894 patent, 6:28-31) and (ii) “For the purposes of
`
`illustration, exchange 501 in FIG. 5D is shown as running on a different computer
`
`system (Web server 104) from the computer systems of the Web merchants
`
`running POSvc applications (computer system 200). Exchange 501 may, however,
`
`also be on the same computer system as one or more of the computer systems of
`
`the Web merchants.”(Id. at 61-67.) Additionally, the cited language refers to “an
`
`exchange Web page 505 that includes a list of POSvc applications,” (id. at 6:43-44,
`
`emphasis added), not the applications themselves. POSvc applications are
`
`described as running either on the Web Server (104) (Figure 5C) or a separate
`
`computer system (200) (Figure 5D). There is no support for the proposition that a
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 15 of 36
`
`
`
`
`
`
`- 16 -
`
`IPR2014-00414
`Patent 8,346,894
`
`
`POSvc Web application “is a Web client displayed in a Web browser or a Web
`
`page.” (Response, p. 6) Instead, the specification only states that “the POSvc list is
`
`displayed via the graphical user interface component.” (’894 patent, 6:46-47)
`
`38. Patent Owner, additionally, would like to include the limitation “real-
`
`time Web transaction” in its proposed construction of the term “Web application.”
`
`(Response, p. 6). However, I do not believe that a person of ordinary skill in the
`
`art would construe this term in this manner, because it would be redundant within
`
`the context of claim 1, which already recites the limitation “real-time Web
`
`transaction.”
`
`39. Additionally, in Patent Owner’s construction, Patent Owner alleges
`
`that a “Web application” displays an object that is an individual data structure with
`
`attributes and information entries with which a Web user interacts to perform a
`
`real-time Web transaction.” However, there is no support in the ’894 patent for the
`
`term “Web application” including these additional limitations proposed by the
`
`Patent Owner. The phrase “data structure” appears only once in the specification
`
`and that is in the discussion of a DOLSIB, not in association with the words “Web
`
`application.”
`
`E.
`
`“POSvc Web Application”
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 16 of 36
`
`
`
`
`
`
`
`
`- 17 -
`
`IPR2014-00414
`Patent 8,346,894
`
`40. Patent Owner proposes an alternative construction for this term, which
`
`is identical to Patent Owner’s proposed construction of the term “Web
`
`application”: “a transactional application that is a Web client displayed in a Web
`
`browser or a Web page and that executes a real-time Web transaction a Web user
`
`performs and that includes a networked object identity with information entries and
`
`attributes.” (Response, pp. 15-23.)
`
`41. For the same reasons discussed above for the term “Web application,”
`
`PO’s construction for this term should be rejected, because the construction is
`
`inconsistent with the ’894 specification and is not the broadest reasonable
`
`interpretation of this claim term.
`
`42. As described by the ’894 patent, POSvc applications are transactional
`
`applications where a transaction “includes any type of commercial or other type of
`
`interaction that a user may want to perform. (’894 patent, 5:34-37.) Based on this
`
`teaching, it is clear a POSvc Web application is not limited to “a transactional
`
`application that is a Web client displayed in a Web browser or a Web page and that
`
`executes a real-time Web transaction a Web user performs and that includes a
`
`networked object identity with information entries and attributes” as alleged by
`
`PO’s new construction. (Response, p. 15.)
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 17 of 36
`
`
`
`
`
`
`
`
`- 18 -
`
`IPR2014-00414
`Patent 8,346,894
`
`43. The ’894 patent also teaches that a POSvc application may access
`
`back-end processing to execute a transaction requested by a user:
`
`Once Bank POSvc application 510 has been activated, user 100
`
`will be able to connect to Bank services and utilize the
`
`application to perform banking transactions, thus accessing data
`
`from a host or data repository 575 in the Bank "Back Office."
`
`The Bank Back Office comprises legacy databases and other
`
`data repositories that are utilized by the Bank to store its data.
`
`This connection between user 100 and Bank services is
`
`managed by exchange 501. As illustrated in FIG.5D, once the
`
`connection is made between Bank POSvc application 510(1),
`
`for example, and Bank services, an operator agent on Web
`
`server 104 may be activated to ensure the availability of
`
`distributed functions and capabilities. (’894 patent, 7:1-12.)
`
`This is consistent with the Board’s construction: “a computer program that can
`
`execute the type of transaction the user may be interested in performing.”
`
`(Decision, p. 9.)
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 18 of 36
`
`
`
`
`
`
`
`
`- 19 -
`
`IPR2014-00414
`Patent 8,346,894
`
`44. Moreover, to support its constructions, Patent Owner cites to Figures
`
`5C and 5D of the ’894 patent. (Response, p. 16.) One of ordinary skill in the art
`
`would understand that these figures are an embodiment of the ’894 patent. The
`
`’894 patent notes that FIG. 5D illustrates a process that occurs if a user selects
`
`Bank 510(1) from the list shown in FIG. 5C. (’894 patent, 7:1-12.) According to
`
`the ’894 patent, FIG. 5C “illustrates an example of a point-of-service (POSvc)
`
`application list.” (Id. at 3:31-32.) However, the specification nowhere says the
`
`POSvc application runs “as a web client in a web browser,” as alleged by the
`
`Patent Owner. Such a claim would be inconsistent with the notion that the
`
`invention can work with “any browser” since browsers at the time did not support
`
`anything except HTML pages with forms and static images. Further, the
`
`specification at (3:31-32) refers to an “application list” and not to the applications
`
`themselves; as noted above, the specification describes POSvc applications as
`
`running on the web server (501) or computer system (200) not as “a Web client
`
`displayed in a Web browser.”
`
`F.
`
` “Facilities Network”
`
`45. Patent Owner proposes a construction for this term: “Network with
`
`physical hardware components and
`
`that provides underlying network
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 19 of 36
`
`
`
`
`
`
`- 20 -
`
`IPR2014-00414
`Patent 8,346,894
`
`
`communication services up to layer 4 of the OSI model and over which an OSI
`
`application layer 7 network operates.” (Response, pp. 24-25.)
`
`46. The ’894 patent does not support Patent Owner's narrow construction
`
`of “facilities network” to mean a “[n]etwork with physical hardware components
`
`and that provides underlying network communication services up to layer 4 of the
`
`OSI model and over which an OSI application layer 7 network operates.” (Id.) The
`
`only definition of “facilities network” provided by the ’894 patent is “[an]
`
`embodiment includes a service network running on top of a facilities network,
`
`namely the Internet, the Web or e-mail networks.” (’894 patent, 5:61-63.)
`
`47. The ’894 patent’s description of this term does not require that the
`
`“facilities network” include “layer 4 of the OSI model and over which an OSI
`
`application layer 7 network operates,” as alleged by Patent Owner. (Response pp.
`
`24-25.) Furthermore, a person of ordinary skill in the art would understand that a
`
`facilities network cannot go up to layer 4 since layer 4 is an end-system layer, not a
`
`network service. An ISP provides packet transport services only through layer 3,
`
`as does a facilities network. (See e.g. SAP 1011, Clark, D., “The Design
`
`Philosophy of the DARPA Internet Protocols,” Computer Communication Review,
`
`18, 4, Aug 1988, pp. 106-114: “The basic assumption is that network can transport
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 20 of 36
`
`
`
`
`
`
`- 21 -
`
`IPR2014-00414
`Patent 8,346,894
`
`
`a packet or datagram.... There are a number of services which are explicitly not
`
`assumed from the network. These include reliable or sequenced delivery,…”
`
`Reliable or sequenced delivery is provided by the end system at layer 4 using TCP;
`
`See also SAP 1012, Zwimpfer, L. and Sirbu, M., “Standards Setting for Computer
`
`Communication: The Case of X.25” IEEE Comm Mag,” 23, 3, March 1985, pp.
`
`35-45.)
`
`G.
`
`“Service Network”
`
`48. Patent Owner proposes an alternate construction for this term: “An
`
`OSI application layer network running on top of a facilities network and that
`
`provides value-added network services (VAN services).” (Response, p. 25.)
`
`49. Patent Owner’s proposed construction improperly imports limitations
`
`into the claims and is not supported by the specification. The ’894 patent does not
`
`require the “service network” to be limited to “an OSI application layer network,”
`
`as alleged by Patent Owner. Rather, the ’894 patent explicitly states that
`
`“[d]epending on the type of service, the characteristics of the network elements
`
`will differ,” (’894 patent, 9:23–24) which is consistent with the Board’s
`
`construction of this term: “a network on which services, other than underlying
`
`network communication services, are provided.” (Decision, p. 10.)
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 21 of 36
`
`
`
`
`
`
`
`
`- 22 -
`
`IPR2014-00414
`Patent 8,346,894
`
`50. Patent Owner’s proposed construction imports embodiments of the
`
`’894 patent into the claims. The specification of the ’894 patent mentions “service
`
`network” three times: (1) “This embodiment includes a service network running on
`
`top of a facilities network, namely the Internet, the Web or e-mail networks” (’894
`
`patent, 5:61-63 (emphasis added)); (2) “Five components interact to provide this
`
`service network functionality, namely an exchange, an operator agent, a
`
`management agent, a management manager and a graphical user interface” (id. at
`
`6:3-6 (emphasis added)); and (3) “Exchange 501 creates and allows for the
`
`management (or distributed control) of a service network, operating within the
`
`boundaries of an IP-based facilities network.” (Id. at 6:33-36 (emphasis added).)
`
`Nothing in the ’894 patent specifies that the “service network” is limited to “be an
`
`OSI application layer network” (or layer 7 of the OSI model).
`
`51. Patent Owner’s proposed construction is also inconsistent with the
`
`plain language of the claims. For example, claim 1 recites “a service network
`
`running on top of an IP-based facilities network” (Id., 9:61-62) and the ’894 patent
`
`states that a facilities network in “[an] embodiment includes a service network
`
`running on top of a facilities network, namely the Internet, the Web or e-mail
`
`networks.” (Id., 5:61-63.) The Patent Owner’s construction is thus inconsistent
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 22 of 36
`
`
`
`
`
`
`- 23 -
`
`IPR2014-00414
`Patent 8,346,894
`
`
`with the plain language of claim 1 since it effectively narrows the meaning of
`
`“facilities network” contrary to the ’894 patent’s definition of the term.
`
`H.
`“Service Network Running on Top of a Facilities Network,”
`“[Overlay] Service Network Running on Top of an IP-based
`Facilities Network,” and “Service Network on the Web; Service
`Network Atop the Web”
`52. Patent Owner proposes the following definition for all of these claim
`
`terms: “An OSI application layer network running on top of an IP-based network
`
`with physical hardware components that provides underlying communication
`
`services up to layer 4 of the OSI model and that provides value-added network
`
`services (VAN services).” (Response, pp. 27-28.)
`
`53. Patent Owner’s construction for these terms is based on its incorrect
`
`construction for the term “service network.” As discussed above, PO’s
`
`construction for the term “service network” is incorrect. Similarly, PO’s
`
`construction of the terms “service network running on top of a Facilities network,”
`
`“[Overlay] service network running on top of an IP-based facilities network,” and
`
`“service network on the Web; service network atop the Web” is similarly flawed
`
`and incorrect.
`
`I.
`
`“VAN Service”
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 23 of 36
`
`
`
`
`
`
`
`
`- 24 -
`
`IPR2014-00414
`Patent 8,346,894
`
`54. Patent Owner proposes a construction for this term: “A POSvc
`
`application displayed on a Web page, that provides a value-add to the network and
`
`offered as an online service over the Web.” (Response, p. 29.)
`
`55. However, Patent Owner’s construction of “VAN service” is overly
`
`narrow and inconsistent with the specification. Patent Owner argues that “VAN
`
`service” is a term coined by the inventor. (Id.) The inventor however did not
`
`provide an explicit definition, or disclaim this term in the specification of the’894
`
`patent. The ’894 patent only describes “VAN service” by way of examples
`
`“designed to meet a particular set of requirements related to performance,
`
`reliability, maintenance and ability to handle expected traffic volume.” (’894
`
`patent, 9:16-23.) Nowhere does the specification limit the term “VAN service” as
`
`suggested by Patent Owner.
`
`56. Examples of such “VAN services” include multi-media messaging,
`
`archival/retrieval management and directory services. (See id.) This exemplary
`
`description of “VAN service” is consistent with the well-known definition of
`
`“Value Added Network”: “[a] packet-switched network that offers special services
`
`such as protocol conversion and data store and forward.” (SAP 1013, Electronic
`
`Commerce, p. 109.) This definition predates the World Wide Web, and thus does
`
`
`
`
`
`Atty. Dkt. No. 2187.051IPR6
`
`SAP 1010
`IPR2014-00414
`Page 24 of 36
`
`
`
`
`
`
`- 25 -
`
`IPR2014-00414
`Patent 8,346,894
`
`
`not imply that Web pages are used as user interfaces, nor that services associated
`
`with Value Added Networks are provided by a Web server. Indeed, the examples
`
`cited in the ’894 patent specification—e.g., multimedia messaging and directory
`
`services—also predate the World Wide Web and thus do not presuppose the use of
`
`Web pages as user interfaces. For example, the Insurance Value Added Network
`
`Services (IVANS) provided a variety of value added services such as message
`
`reformatting, and pre-dated the Web. (SAP 1014, Ashley, Charles C., “IVANS: A
`
`vigorous decade,” Bests Review, May, 1993.) Thus, a “VAN service” can be a
`
`service that is associated with a packet-switched network (e.g., Internet) other than
`
`the underlying packet-switched network communications service. This description
`
`is not limited to “[a] POSvc application displayed on a Web page, that provides a
`
`value-add to the network and offered as an online service over the Web.”
`
`J.
`
` “ Internet Cloud Application”
`
`57. Patent Owner proposes an alternative construction fo
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
