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
`
`_____________________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`RESPONSE TO PETITION
`
`
`
`

`

`
`
`
`TABLE OF CONTENTS
`
`IPR2014-00414
`Patent 8,346,894
`
`TABLE OF AUTHORITIES ................................................................................... iii
`
`LIST OF EXHIBITS ................................................................................................ iv
`
`TABLE OF CONTENTS ........................................................................................... 1
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Argument ......................................................................................................... 1
`
`A.
`
`PO’s alternative constructions should not be adopted. ......................... 1
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`10.
`
`11.
`
`12.
`
`13.
`
`“Web Transaction” ...................................................................... 1
`
`“Internet” and “(World Wide) Web” .......................................... 2
`
`“Real-Time” ................................................................................ 3
`
`“Web Application” ...................................................................... 3
`
`“POSvc Web Application” ......................................................... 4
`
`“Facilities Network” ................................................................... 6
`
`“Service Network” ...................................................................... 6
`
`“Service network running on top of a Facilities
`network”(term 8); “[Overlay] service network running on
`top of an IP-based facilities network”(term 9); “Service
`network on the Web; service network atop the web”(term
`10) ............................................................................................... 7
`
`“VAN service” ............................................................................ 7
`
`“Internet Cloud Application” ...................................................... 8
`
`“Web Merchant” ......................................................................... 8
`
`“Object” ...................................................................................... 9
`
`“Information entries and attributes of an object” ....................... 9
`
`
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`- i -
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`IPR2014-00414
`Patent 8,346,894
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`“Application layer routing of the object identity with the
`information entries and attributes” ........................................... 10
`
`“Object Routing” ....................................................................... 11
`
`“Exchange” ............................................................................... 11
`
`“Back-end application” ............................................................. 12
`
`14.
`
`15.
`
`16.
`
`17.
`
`B.
`
`Institution of Inter Partes Review was proper and should not be
`reversed. .............................................................................................. 12
`
`1.
`
`The Petition and the Board’s Institution decision do not
`exceed the permissible scope of review for IPRs ..................... 13
`
`C.
`
`Challenged claims of the ’894 patent are unpatentable. ..................... 15
`
`III. Conclusion ..................................................................................................... 15
`
`
`
`
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`- ii -
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`IPR2014-00414
`Patent 8,346,894
`
`TABLE OF AUTHORITIES
`
`Cases
`Dell Inc. v. Acceleron, LLC,
`IPR2013-00443 (P.T.A.B. Jan. 16, 2014) ............................................................ 14
`
`Hewlett-Packard Co. v. MCM Portfolio, LLC,
`IPR2013-00217 (P.T.A.B. Sept. 10, 2013) .......................................................... 14
`
`In re NTP, Inc.,
`654 F.3d 1268, 1277 ............................................................................................. 13
`
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) ............................................................................ 16
`
`Nissan North America, Inc. v. Board of Regents, Univ. of Texas System,
`IPR2012-00037, Paper No. 24 at 14-16 (P.T.A.B. March 19, 2013) ................... 14
`
`Statutes
`
`35 U.S.C. § 112 ................................................................................................. 13, 15
`
`35 U.S.C. § 120 ........................................................................................................ 13
`
`
`
`
`
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`- iii -
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`

`
`LIST OF EXHIBITS
`
`IPR2014-00414
`Patent 8,346,894
`
`
`
`SAP
`
`
`Exhibit No.
`SAP 1001
`SAP 1002
`SAP 1003
`SAP1004
`
`SAP 1005
`
`SAP 1006
`SAP 1007
`SAP 1008
`SAP 1009
`
`Document Description
`U.S. Patent No. 8,346,894 to Arunachalam
`Declaration of Dr. Marvin Sirbu
`Curriculum Vitae of Dr. Marvin Sirbu
`U.S. Publication No. 2008/0275779 to Lakshminarayanan
`Chatterjee et al., “Developing Enterprise Web Services. An
`Architect’s Guide., 2003
`U.S. Publication No. 2006/0161513 to Drumm et al.
`U.S. Publication No. 2009/0006614 to Le et al.
`U.S. Publication No. 2004/0054610 to Amstutz et al.
`Claim Construction Opinion
`
`
`
`
`
`
`SAP 1010
`
`SAP 1011
`
`SAP 1012
`
`SAP 1013
`
`SAP 1014
`
`
`
`
`Currently Filed
`
`Declaration of Dr. Marvin Sirbu in Support of Petitioner’s
`Reply to Patent Owner’s Response to Petition.
`
`Clark, D., “The Design Philosophy of the DARPA Internet
`Protocols,” Computer Communication Review, 18, 4, Aug
`1988.
`
`Zwimpfer, L. and Sirbu, M., “Standards Setting for Computer
`Communication: The Case of X.25” IEEE Comm Mag,” 23, 3,
`March 1985
`
`Haynes, T., “The Electronic Commerce Dictionary,” The
`Robleda Company, California, 1985, 112 pages.
`
`Ashley, Charles C., “IVANS: A vigorous decade,” Bests
`Review, May, 1993
`
`- iv -
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`

`
`I.
`
`
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`IPR2014-00414
`Patent 8,346,894
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`Introduction
`The Board, in instituting the instant inter partes review, found that
`
`Petitioner, SAP, has presented a compelling case for finding challenged claims 1-
`
`19 of U.S. Patent 8,346,894 (SAP 1001,’894 patent) unpatentable. In response to
`
`the Board’s well-reasoned decision, Patent Owner (“PO”) does not provide any
`
`substantive arguments against the instituted grounds of rejection. Instead, PO
`
`provides an overall confusing response focused on improper claim construction
`
`arguments and meritless arguments regarding the permissible scope for inter partes
`
`review proceedings.
`
`II. Argument
`A. PO’s alternative constructions should not be adopted.
`Recognizing the weaknesses in its position, PO premises its Response
`
`primarily on overly narrow and unsupported constructions of 19 terms. The Board
`
`should reject PO’s constructions because PO’s constructions are inconsistent with
`
`the specification, import limitations into the claims, and introduce further
`
`ambiguity into the claims. 1 For ease of reference, in discussing the 19 terms we
`
`use the same numbering as PO.
`
`1.
`
`“Web Transaction”
`
`
`1 Unlike Petitioner, PO does not provide expert testimony or extrinsic
`
`evidence to support any of its proposed claim constructions.
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`- 1 -
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`IPR2014-00414
`Patent 8,346,894
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`PO asks the Board to further narrow its construction of the term “Web
`
`transaction” by adding “two-way” interaction and capability to do “more than one-
`
`way browse-only interaction, a Web user can perform.” (See Paper 18, Response,
`
`p. 2.) The '894 patent does not limit the term “Web transaction” as alleged by PO
`
`and for this reason, PO's narrow construction should be rejected. (See SAP 1010,
`
`Sirbu Dec., ¶¶ 20-23.) To the contrary, the '894 patent explains: “a ‘transaction’ for
`
`the purposes of the present invention includes any type of commercial or other type
`
`of interaction that a user may want to perform.” (’894 patent, 5:34-37.)
`
`“Internet” and “(World Wide) Web”
`
`2.
`PO does not dispute the Board’s construction of the term “Web.” (Response,
`
`p. 5.) PO, however, urges the Board to reconsider its construction of the term
`
`“Internet.” (Id.) The ’894 patent does not support PO's narrow construction of
`
`“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.”
`
`(Id., emphasis in original) The term Internet is a well-known term and should be
`
`given its plain and ordinary meaning, as would have been understood by a POSA.
`
`(Decision to Institute, Paper 11, p. 16; Sirbu Dec., ¶¶ 27-29.) The Board should
`
`thus reject PO’s construction and maintain its existing construction: “a global
`
`computer network providing a variety of information and communication facilities,
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`- 2 -
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`IPR2014-00414
`Patent 8,346,894
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`interconnected networks using standardized communication
`
`
`consisting of
`
`protocols.”
`
`“Real-Time”
`
`3.
`PO does not dispute the Board’s construction of this term and therefore the
`
`Board should maintain its existing construction: “non-deferred”. (Decision, p. 9.)
`
` “Web Application”
`
`4.
`PO urges the Board to reconsider its construction of this term and adopt
`
`PO’s new construction. (Response, pp. 6-7.) The Board should reject PO’s
`
`construction because it is not supported by the’894 specification. For example,
`
`PO'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.”
`
`(Response, pp. 6-7). But this contradicts the teachings of the ’894 patent that
`
`explicitly states “[w]eb browsers are software interfaces that run on Web clients.”
`
`(’894 patent, 1:40-42; Sirbu Dec., ¶¶ 30-39.) Moreover, Fig. 1 and its supporting
`
`text illustrate that 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. (See also ’894 patent, 1:52-67; Sirbu Dec., ¶¶ 30-39.)
`
`PO’s construction and argument also equates and interchangeably uses the
`
`terms “web application” and “POSvc application.” (Response, pp. 8-9) But there is
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`- 3 -
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`IPR2014-00414
`Patent 8,346,894
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`no support in the ’894 patent for equating these terms. In fact, the use of different
`
`terms in claim 1 indicates the terms should have different meanings. (Sirbu Dec., ¶
`
`36.) Additionally, 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. (Sirbu
`
`Dec., ¶¶ 36-37.) For example, Fig. 4B illustrates that the POSvc application is part
`
`of an Exchange, which the ’894 patent states can reside on a Web server (e.g. Web
`
`server 104) or a separate computer with an Internet address. (’894 patent, 6:28-31,
`
`61-67.)
`
`PO also includes the limitation “real-time Web transaction” in its proposed
`
`construction of “Web application.” (Response, p. 6). However, this inclusion is
`
`redundant given the explicit recitations of claim 1, and further is not supported in
`
`the specification. (Sirbu Dec., ¶ 38.) PO also fails to identify any support in the
`
`specification for the added limitation “that includes a networked object identity
`
`with information entries and attributes.” (Response, pp. 6-7; Sirbu Dec., ¶ 39.)
`
`Accordingly, the Board should reject PO’s construction and maintain its existing
`
`construction.
`
`“POSvc Web Application”
`
`5.
`PO urges the Board to reconsider its construction of these terms and instead
`
`adopt its construction: “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
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`IPR2014-00414
`Patent 8,346,894
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`user performs and that includes a networked object identity with information
`
`entries and attributes.” (Response, pp. 6 and 15, emphasis added.) The Board
`
`should not adopt this construction for at least two reasons.
`
`First, PO’s construction is inconsistent with the ’894 patent specification.
`
`(See Sirbu Dec., ¶ 40-44.) The specification states that “Web browsers are software
`
`interfaces that run on Web clients.” (’894 patent, 1:40-42.) For example, FIG. 1A
`
`of the ’894 patent shows a Web browser 102 running on a user’s machine (e.g.,
`
`Web client) and a service application (e.g., car dealer Web page) running on a
`
`server machine that hosts the web site. (See id., 1:52-67 and Sirbu Dec., ¶ 30-44.)
`
`Second, PO's construction is inconsistent with its own arguments. For
`
`example, PO states that “[t]he Web client application displayed on a Web browser
`
`is distinct from the Web browser, even though the Web browser is itself a Web
`
`client.” (Response, p. 8, emphasis added.) PO does not reconcile the glaring
`
`inconsistency with this statement: if the “Web browser is itself a Web client,” then
`
`how is “a Web client ... displayed on a Web browser” as alleged by PO in its
`
`construction. Additionally, the ’894 patent shows that a “POSvc Web application”
`
`is not a Web client displayed on a Web browser; rather, it is associated with a Web
`
`server. (See Sirbu Dec., ¶ 40-44.) For example, FIG. 4B of the ’894 patent
`
`illustrates that Web pages and POSvc applications are part of an Exchange, which
`
`resides on a Web server or another computer with an Internet address. (See id. and
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`

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`’894 patent, 6:28-31.)
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`IPR2014-00414
`Patent 8,346,894
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` “Facilities Network”
`
`6.
`The ’894 patent does not support PO’s narrow construction of “facilities
`
`
`
`network”: a “network 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.” (Response, pp. 24-25;
`
`Sirbu Dec., ¶¶ 45-47.) The discussion of “facilities network” in the ’894 patent is
`
`“[an] embodiment includ[ing] a service network running on top of a facilities
`
`network, namely the Internet, the Web or e-mail networks.” (’894 patent, 5:61-63;
`
`Sirbu Dec., ¶¶ 45-47.) The ’894 patent does not specifically limit the facilities
`
`network to particular layers of the OSI model, as alleged by PO. (Sirbu Dec., ¶¶
`
`45-47.) Accordingly, PO’s narrow construction of “services network” should be
`
`rejected and the Board’s construction should be maintained.
`
`“Service Network”
`
`7.
`PO urges the Board to further narrow its construction of this term by
`
`
`
`requiring (1) that the service network is “[a]n OSI application layer network
`
`running on top of a facilities network” and (2) that the service network “provides
`
`value-added network services (VAN services).” (Response, p. 25.) PO’s proposed
`
`construction improperly imports limitations into the claims and is not supported by
`
`the specification or plain language of the claims. (Sirbu Dec., ¶¶ 48-51.) Nothing in
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`- 6 -
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`IPR2014-00414
`Patent 8,346,894
`
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`the ’894 patent requires the “service network” to be limited to “an OSI application
`
`layer network.” (’894 patent, 5:61-63; Sirbu Dec., ¶¶ 48-51.) Rather, the ’894
`
`patent explicitly states that “[d]epending on the type of service, the network
`
`elements will differ,” which is consistent with the Board’s construction of this
`
`term. (’894 patent, 9:23–24.) Thus, the specification does not support PO's overly
`
`narrow construction. (Sirbu Dec., ¶¶ 48-51.)
`
`8.
`
`top of a Facilities
`running on
`“Service network
`network”(term 8); “[Overlay] service network running on top
`of an IP-based facilities network”(term 9); “Service network
`on the Web; service network atop the web”(term 10)
`
`PO urges the Board to reconsider its construction of claim terms 8-10,
`
`relying on PO’s erroneous construction of the term “service network.” (Response,
`
`pp. 27-30.) For the same reasons discussed above for the term “service network,”
`
`PO’s constructions for these terms should be rejected and
`
`the Board’s
`
`constructions should be maintained. (Sirbu Dec., ¶¶ 52-53.)
`
` “VAN service”
`
`9.
`PO’s proposed construction of “VAN service” is overly narrow and
`
`
`
`inconsistent with the specification and thus the BRI standard. (Sirbu Dec., ¶¶ 54-
`
`56.) Consistent with the Board’s construction of this term, the ’894 patent
`
`describes “VAN service” by way of example, stating that it includes “multi-media
`
`messaging, archival/retrieval management, directory services, data staging,
`
`conferencing, financial services, home banking, risk management and a variety of
`
`- 7 -
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`IPR2014-00414
`Patent 8,346,894
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`other vertical services” and is “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.) Accordingly, the specification does not
`
`support PO’s narrow construction. (See Sirbu Dec., ¶¶ 54-56.)
`
`“Internet Cloud Application”
`
`10.
`PO urges the Board to reconsider its construction of this term and adopt its
`
`new construction, which is identical to its proposed construction of the term
`
`“POSvc Web application.” However, the use of different terms in claim 1 indicates
`
`the terms should have different meanings. The term “Internet Cloud Application”
`
`does not appear in the specification of the ’894 patent. Thus, consistent with the
`
`Board’s construction, this term should be given its plain and ordinary meaning, as
`
`would have been understood by a POSA. (Sirbu Dec., ¶¶ 57-59.)
`
`“Web Merchant”
`
`11.
`PO asks the Board to adopt its narrow construction of this term: “provider of
`
`goods of a POSvc application.” (Response, pp. 31-32.) The ’894 patent does not
`
`limit this term to “POSvc applications”: “a true ‘Web merchant’ . . . [is] namely a
`
`merchant capable of providing complete transactional services on the Web.” (’894
`
`patent, 5:54-56.) PO further asserts that the Board “failed to state what ‘using the
`
`Web’ means and also failed to state how the goods and services are provided.”
`
`(Response, pp. 30-31.) The Board however appropriately addressed the
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`IPR2014-00414
`Patent 8,346,894
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`construction of the term “Web,” which is not disputed by PO. (See Response, p. 5.)
`
`For the above reasons, the Board should reject PO’s construction of the term “Web
`
`merchant.” (See Sirbu Dec., ¶¶ 60-62.)
`
` “Object”
`
`12.
`PO urges the Board to not construe this term and instead construe the term
`
`“networked object.” (Response, p. 32.) Petitioner’s arguments, however, are
`
`without merit. PO alleges that “[o]ne of ordinary skill in the art in 1995 knew that
`
`the term ‘object’ in the patent refers to a data structure specific to an application
`
`and consists of data and methods.” (Response, p. 33.) But nothing in the ’894
`
`patent supports such a limiting definition of the term “object.” (Sirbu Dec., ¶¶ 63-
`
`65.) Under BRI, the Board’s construction of this term is correct and consistent with
`
`the specification which describes an “object” as having a “name, a syntax and an
`
`encoding.” (’894 patent, 8:31-32; Sirbu Dec., ¶¶ 63-65.) PO’s construction should
`
`be rejected. (Sirbu Dec., ¶¶ 63-65.)
`
`Regarding the term “networked object,” PO requests that this term be
`
`construed. However, PO’s arguments for this term rely on its incorrect construction
`
`of the term “object.” (Response, pp. 33-34.) Thus, PO’s arguments regarding the
`
`term “networked object” are equally as flawed, and should not be considered.
`
`(Sirbu Dec., ¶¶ 63-65.)
`
`13.
`
` “Information entries and attributes of an object”
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`IPR2014-00414
`Patent 8,346,894
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`PO does not dispute the Board’s construction of the term “attributes” but
`
`proposes an alternative construction for the term “information entries.” (See
`
`Response, p. 34.) PO provides a single conclusory statement: “[t]hese values
`
`represent the Web transaction specified by the Web user corresponding to the
`
`attributes specific to the POSvc Web application.” (Id.) However, PO provides no
`
`analysis to support its narrow construction. Therefore, the Board should thus reject
`
`PO’s construction. (See Sirbu Dec., ¶¶ 66-67.)
`
`14.
`
` “Application layer routing of the object identity with the
`information entries and attributes”
`PO asks the Board to adopt its narrow construction of this term. (See
`
`Response, pp. 34-35.) However, the ’894 patent specification does not support
`
`such a narrow interpretation. Instead, the '894 patent describes application layer
`
`routing as “routing [that] creates an open channel for the management, and the
`
`selective flow of data from remote databases on a network.” (’894 patent, 5:27-29.)
`
`This description does not limit “application layer routing” to “OSI application
`
`layer routing of the individual networked objects” or to routing “from a POSvc
`
`application displayed on a Web page or in a Web browser,” as alleged by PO. PO
`
`improperly seeks to bundle language already cited in the claims with its
`
`construction of “application layer routing of the object identity with the
`
`information entries and attributes,” which is impermissible. (See, e.g., claim 1 of
`
`the ’894 patent.) The Board should thus reject PO’s proposed construction. (See
`
`- 10 -
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`

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`Sirbu Dec., ¶¶ 68-69.)
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`IPR2014-00414
`Patent 8,346,894
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`15.
` “Object Routing”
`PO asks the Board to adopt its narrow construction of this term. (See
`
`Response, pp. 35-36.) To support its construction, PO merely cites to page 27 of its
`
`preliminary response. (See id.) PO again provides no analysis, no explanation and
`
`no additional evidence to support its narrow construction. The Board has already
`
`rejected these arguments in its Decision and should maintain this position. (See
`
`Decision to Institute, p. 10; see also Sirbu Dec., ¶¶ 70-73.)
`
` “Exchange”
`
`16.
`PO urges the Board to adopt its narrow construction of this term: “Web page
`
`505, POSvc applications 510 on a Web page, switching service 702, object routing
`
`component, also known as object router (which includes the individual networked
`
`objects—the information entries and attributes displayed in a POSvc application
`
`displayed on a Web browser or Web page).” (Response, pp. 36-37.) The Board
`
`should reject PO’s construction for at least three reasons.
`
`First, PO relies on conclusory arguments which are devoid of any support.
`
`(See id., pp. 36-37.) Second, the proposed construction for “Exchange” relies on
`
`PO’s construction of “POSvc Web application,” which is flawed for the reasons
`
`discussed above. Third, PO’s construction and analysis do not address the function
`
`of the “Exchange” recited in claim 10: “the Exchange manages in real-time the
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`- 11 -
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`IPR2014-00414
`Patent 8,346,894
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`connection between the real-time Web transaction request and any commercial
`
`service.” The Board found that no further construction of the term “Exchange” is
`
`required.” (Decision to Institute, p. 11; see also Sirbu Dec., ¶¶ 74-75.)
`
` “Back-end application”
`
`17.
`PO’s construction for this term, “an application not at the front end”,
`
`provides no clarity and thus should be rejected. (Response, p. 37.) “Back-end
`
`application” is not discussed in the ’894 patent specification and only appears in
`
`the claims. (See, e.g., claim 12 of the ’894 patent.) PO argues that “[a] Web user
`
`does not ever access a computer system or database in a Back Office, for obvious
`
`security reasons, a Bank or other Web merchant or VAN service provider would
`
`not allow a user to access the computer system or database in the Back Office,
`
`even via an application.” (Id., p. 39.) PO provides no intrinsic evidence or expert
`
`evidence to support this conclusory statement. Indeed, PO's statement is contrary
`
`to the understanding of one of ordinary skill in the art. If the Web user cannot
`
`directly (or even indirectly) access the Bank’s computer system or database in the
`
`Back Office, then performing any transactions (e.g., transferring funds) would be
`
`impossible. (Sirbu Dec., ¶¶ 76-78.) Thus, the Board should reject PO’s
`
`construction.
`
`B. Institution of Inter Partes Review was proper and should not be
`reversed.
`
`PO attacks the institution of this IPR proceeding based on PO’s
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`misunderstanding of the rules of IPR proceedings, arguing that the Petitioner and
`
`Board have exceeded the permissible scope of review. (Response, pp. 42-43.)
`
`However, the priority date challenge of the ’894 patent and the determination that
`
`the references are prior art should be maintained by the Board, because PO has
`
`failed to provide sufficient evidence to rebut Petitioner’s showing that the effective
`
`filing date of claims 1-19 is the November 30, 2009 filing date of the ’894 patent.
`
`1.
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`The Petition and the Board’s Institution decision do not
`exceed the permissible scope of review for IPRs
`PO erroneously alleges that the petition is “de facto improper,” because it
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`raises issues related to 35 U.S.C. § 112. (Response, p. 42.) But the Petition did not
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`raise a 35 U.S.C. § 112 rejection. Rather, the priority date of the ’894 patent was
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`challenged, which necessarily requires a 35 U.S.C § 112 analysis. Such an
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`analysis is in accordance with Federal Circuit law and other proceedings before the
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`USPTO under 35 U.S.C. § 120 which states that a claim in a U.S. application is
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`entitled to the benefit of the filing date of an earlier filed U.S. application only if
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`the subject matter of the claim is disclosed in the manner provided by 35 U.S.C. §
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`112, first paragraph, in the earlier filed application. See, e.g., In re NTP, Inc., 654
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`F.3d 1268, 1277 (Fed. Cir. 2011)2.
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`2 See also Nissan North America, Inc. v. Board of Regents, Univ. of Texas
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`System, IPR2012-00037, Paper No. 24 at 14-16 (P.T.A.B. March 19, 2013); Dell
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`IPR2014-00414
`Patent 8,346,894
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`PO next argues that the priority date of the ’894 patent should at least be
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`October 30, 2007, the date of U.S. Patent No. 8,037,158. (Response, p. 43.) The
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`PO, however, does not point to any specific portions of the ’158 patent that shows
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`support for the claimed negative limitations, “wherein the object in the POSvc Web
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`application is not an SNMP object” and “utilizing an object in the Web
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`application … to connect in real-time to the value added-network service of the
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`Web merchant without executing Common Gateway Interface (CGI) scripts.”
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`(Id.) The ’158 patent lacks any discussion that shows PO possessed the claimed
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`negative limitations. (See Petition, pp. 4-6.) The ’894 patent therefore is not
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`entitled to the ’158 priority date.
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`PO also alleges that provisional application 60/006,634 and the prosecution
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`history of parent patent 5,778,178 (’178 patent) provide support for the negative
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`limitations. (Response, pp. 44-48.) PO is incorrect, as its alleged support merely
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`provides a broad discussion regarding SNMP and CGI. (See Pi-Net 2007,
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`Provisional Application 60/006,634, p. 3; Pi-Net 2008, ’178 Prosecution History,
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`pp. 3, 9-14, 15-26, 33-44, 46-72, Figs. 1-11; also see Sirbu Dec., ¶¶ 82-85.) Such
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`general discussions of SNMP and CGI scripts do not constitute a disclaimer or
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`exclusion of that subject matter. “It is not sufficient for purposes of the written
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`Inc. v. Acceleron, LLC, IPR2013-00443 (P.T.A.B. Jan. 16, 2014); Hewlett-Packard
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`Co. v. MCM Portfolio, LLC, IPR2013-00217 (P.T.A.B. Sept. 10, 2013)
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`IPR2014-00414
`Patent 8,346,894
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`description requirement of § 112 that the disclosure, when combined with
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`knowledge in the art, would lead one to speculate as to modifications that the
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`inventor might have envisioned, but failed to disclose.” Lockwood v. Am. Airlines,
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`Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Accordingly, the effective filing date
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`of the ’894 patent is no earlier than November 30, 2009 and the references used in
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`the grounds of institution are indeed prior art.
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`C. Challenged claims of the ’894 patent are unpatentable.
`PO does not provide any substantive arguments against the prior art
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`rejections instituted by the Board. Since PO’s claim constructions are improper
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`and the Board’s constructions should be maintained, claims 1-19 are obvious in
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`view of the instituted grounds.
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`III. Conclusion
`Accordingly, challenged claims 1-19 of the ’894 patent should be canceled.
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`Respectfully submitted,
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`/Lori A. Gordon/
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`Lori A. Gordon (Reg. No. 50,633)
`Attorney for Petitioner
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`Date: February 17, 2015
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`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e))
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`The undersigned hereby certifies that the above-captioned “PETITIONER’S
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`REPLY TO PATENT OWNER’S RESPONSE TO PETITION” and all
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`accompanying exhibits were served in their entireties on February 17, 2015, upon
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`the following party via email:
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`Dr. Lakshmi Arunachalam (Pro Se)
`Menlo Park, CA 94025
`Tel.: (650) 690-0995
`Fax: (650) 854-3393
`laks22002@yahoo.com
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Lori A. Gordon/
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`Lori A. Gordon
`Registration No. 50,633
`Attorney for Petitioner
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`Date: February 17, 2015
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`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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