Trials@uspto.gov
`571-272-7822
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`Paper No. 8
`Date: July 9, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SAP AMERICA INC.
`Petitioner
`
`v.
`
`CLOUDING IP, LLC
`Patent Owner
`____________
`
`Case IPR2014-00299
`Patent 6,925,481 B2
`____________
`
`
`Before JAMESON LEE, MICHAEL W. KIM, and KRISTINA M. KALAN,
`Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
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`
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`1
`
`EMC Ex. 1004
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`571-272-7822
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`Paper No. 8
`Date: July 9, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SAP AMERICA INC.
`Petitioner
`
`v.
`
`CLOUDING IP, LLC
`Patent Owner
`____________
`
`Case IPR2014-00299
`Patent 6,925,481 B2
`____________
`
`
`Before JAMESON LEE, MICHAEL W. KIM, and KRISTINA M. KALAN,
`Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`1
`
`EMC Ex. 1004
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`
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`IPR2014-00299
`Patent 6,925,481 B2
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`
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`INTRODUCTION
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`I.
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`
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`SAP America Inc. (“Petitioner”) filed a Petition (“Pet.”) for inter
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`partes review of claims 1, 2, 25, 28, 32, and 50–57 of U.S. Patent No.
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`6,925,481 B2 (“the ’481 patent”) pursuant to 35 U.S.C. §§ 311–319.
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`Paper 5. Clouding IP, LLC (“Patent Owner”), filed a Preliminary Response
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`(“Prelim. Resp.”). Paper 7. We have jurisdiction under 35 U.S.C. § 314.
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`The standard for instituting an inter partes review is set forth in 35
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`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.
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`Petitioner challenges the patentability of claims 1, 2, 25, 28, 32, and
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`50–57 of the ’481 patent under 35 U.S.C. §§ 102 and 103. We determine
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`that the information presented in the Petition demonstrates that there is a
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`reasonable likelihood that claims 1, 2, 25, 28, and 32 are unpatentable, but
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`not claims 50-57. Pursuant to 35 U.S.C. § 314, we authorize an inter partes
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`review to be instituted as to claims 1, 2, 25, 28, and 32 of the ’481 patent.
`
`A.
`
`The ’481 Patent
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`The ’481 patent sets forth:
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`The present invention relates to pervasive computing, and more
`particularly to methods, systems, and computer program
`instructions for enabling users of pervasive devices (such as
`limited-function mobile devices, smart appliances, etc.) to
`remotely access and manipulate information in ways that might
`otherwise be impossible or impractical because of inherent
`limitations of the device.
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`2
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`IPR2014-00299
`Patent 6,925,481 B2
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`Ex. 1001, 1:7–13; (emphasis added).
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`As explained in the ’481 patent, pervasive devices have become
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`popular in recent years as users increasingly seek “anywhere, anytime”
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`access to services such as voice and data communications. Ex. 1001, 1:17–
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`20. However, pervasive devices have inherent drawbacks. Ex. 1001, 1:46–
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`47. Pervasive devices typically do not have sufficient memory to store all of
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`information that the user requires. Ex. 1001, 1:61–63. Pervasive devices
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`also may not have sufficient software to access all of data that the user might
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`wish to use. Ex. 1001, 2:3–5. Pervasive devices further may not have
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`necessary drivers installed with which to support all data manipulation
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`operations the user might wish to perform. Ex. 1001, 2:12–14.
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`Accordingly, the ’481 patent discloses a technique for enabling pervasive
`
`devices to access and manipulate data that avoids these drawbacks. Ex.
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`1001, 3:27–29.
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`C.
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`Related Matters
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`Petitioner identifies the following related district court proceeding
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`between Petitioner and Patent Owner that involves the ’481 patent:
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`Clouding IP, LLC v. SAP AG, Case No. 1:13-cv-01456 (D. Del.). Pet. 3.
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`Petitioner identifies also the following inter partes review that was before
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`the Patent Trial and Appeal Board involving the ’481 patent, but is now
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`terminated: IPR2013-00075 (“previous decision”). Pet. 3.
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`C.
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`Illustrative Claim
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`Independent claim 1 is reproduced below:
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`A method of enabling data access and manipulation
`1.
`from a pervasive device, comprising steps of:
`receiving a data access request from a pervasive device;
`obtaining the requested data;
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`3
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`determining what data manipulation operations are
`available for the obtained data, as well as a location of each
`available data manipulation operation; and
`returning the determined data manipulation operations and
`locations to the pervasive device, in addition to the obtained
`data.
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`
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`D.
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`Prior Art References Applied by Petitioner
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`Petitioner challenges the patentability of claims 1, 2, 25, 28, 32, and
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`50–57 on the basis of the following items of prior art:
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`US 6,670,968 B1 (“Schilit”) Dec. 30, 2003
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`US 7,269,664 B2 (“Hutsch”) Sept. 11, 2007
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`
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`Ex. 1005
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`Ex. 1006
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`M. Flynn et al., The Satchel System Architecture: Mobile Access to
`Documents and Services, 5 MOBILE NETWORKS AND APPLICATIONS,
`243 (2000) (“Flynn”) Ex. 1007
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`
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`R. Barrett et al., Intermediaries: New Places for Producing and
`Manipulating Web Content, 30 COMPUTER NETWORKS AND ISDN
`SYSTEMS 509 (1998) (“Barrett”) Ex. 1008
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`
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`E.
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`The Alleged Grounds of Unpatentability.
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`The information presented in the Petition sets forth Petitioner’s
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`contentions of unpatentability of claims 1, 2, 25, 28, 32, and 50–57 of the
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`’481 patent based on the following specific grounds (Pet. 18–57):
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`Reference(s)
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`Basis
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`Challenged Claims
`
`Schilit
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`§ 102(e)
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`1, 2, 25, 28, and 50–57
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`Schilit and Hutsch
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`§ 103
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`32
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`Flynn
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`§ 102(a)
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`1, 2, 25, 28, and 50–57
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`Flynn and Schilit
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`§ 103
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`1, 2, 25, 28, and 50–57
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`4
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`Patent 6,925,481 B2
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`Reference(s)
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`Basis
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`Challenged Claims
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`Flynn and Hutsch
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`§ 103
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`32
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`Barrett and Schilit
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`§ 103
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`1, 2, 25, 28, and 50–57
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`II. ANALYSIS
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`We turn now to Petitioner’s asserted grounds of unpatentability to
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`determine whether Petitioner has met the threshold standard, under
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`35 U.S.C. § 314(a), for instituting review.
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`A.
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`Claim Construction
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`As a step in our analysis for determining whether to institute a review,
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`we determine the meaning of the claims for purposes of this Decision. In an
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`inter partes review, a claim in an unexpired patent shall be given its broadest
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`reasonable construction in light of the specification of the patent in which it
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`appears. 37 C.F.R. § 42.100(b). Under the broadest reasonable construction
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`standard, claim terms are given their ordinary and customary meaning, as
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`would be understood by one of ordinary skill in the art in the context of the
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`entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
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`Cir. 2007). Any special definition for a claim term must be set forth in the
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`specification with reasonable clarity, deliberateness, and precision. In re
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`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to
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`read a particular embodiment appearing in the written description into the
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`claim if the claim language is broader than the embodiment. In re Van
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`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We construe the terms below
`
`in accordance with these principles.
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`5
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`1. Whether No More Than One Data Access Request is Permitted
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`
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`Independent claims 1, 50, 52, and 54 each recite “receiving a data
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`access request.” Independent claim 55 recites “requesting an access.”
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`Petitioner asserts the following:
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`As previously determined by the Board [in IPR2013-00075],
`the other steps of claims 1, 50, 52, 54 and 55 (meaning the steps
`other than the “receiving” and the “requesting” steps) must be
`responsive to a data access request, but nothing precludes the
`receipt of “additional data access requests or having steps
`performed also in response to another request.” (Ex. 1003 at 7–
`9).
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`Pet. 14–15.
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`Based on the recitation of these claim limitations, Patent Owner
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`contends that all of the other steps recited in each independent claim must
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`occur only in response to the same recited data access request referenced in
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`the aforementioned “receiving” or “requesting” step, and cannot also occur
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`in response to other additional data access requests. Prelim. Resp. 7–10. On
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`this record, Patent Owner’s argument is not persuasive Independent claim 1,
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`for example, recites the open-ended transitional phrase “comprising” in
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`conjunction with all of the recited steps, including “receiving a data access
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`request.” Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed.
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`Cir. 2003) (“The transition ‘comprising’ in a method claim indicates that the
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`claim is open-ended and allows for additional steps.”). Thus, the recitation
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`of “receiving a data access request” does not preclude receiving additional
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`data access requests or having steps performed also in response to another
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`request.
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`Other language in each independent claim is consistent with our claim
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`construction. For example, a subsequent step recited in independent claim 1
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`is “obtaining the requested data.” While the requested data must be obtained
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`in response to the previously recited “data access request,” it does not follow
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`that the requested data must be obtained only in response to the same, recited
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`“data access request,” and cannot also be obtained in response to other
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`additional data access requests. Obtaining data in response to other data
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`access requests, in addition to the one particular data access request, is not
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`excluded by the claim language at issue.
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`The Specification is consistent with the Board’s claim construction.
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`The embodiments in the Specification, such as Figure 3 cited by Patent
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`Owner, disclose performing the obtaining, determining, and returning steps
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`in response to one data access request. But that disclosure does not indicate
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`that other embodiments are excluded. Indeed, the Specification nowhere
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`disclaims other embodiments. Moreover, the Specification actually
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`indicates the contrary by stating “[t]he foregoing description of a preferred
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`embodiment is for purposes of illustrating the present invention, and is not to
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`be construed as limiting thereof.” Ex. 1001, 18:36–38.
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`To support its assertion that independent claim 1 should be construed
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`such that all of the steps of independent claim 1 subsequent to the receiving
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`step must occur in response to only one and the same data access request,
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`Patent Owner cites On-Line Tech., Inc. v. Bodenseewerk Perkin-Elmer
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`GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004) (“a claim interpretation that
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`excludes a preferred embodiment from the scope of the claim is rarely, if
`
`ever, correct”). Patent Owner’s assertion is misplaced. On this record, our
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`construction is the broadest reasonable interpretation and includes in its
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`scope, rather than excludes, Patent Owner’s preferred embodiment having
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`only one data access request.
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`7
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`The above analysis similarly applies to independent claims 50, 52, 54,
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`and 55.
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`Accordingly, while independent claims 1, 50, 52, 54, and 55 do
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`require that the steps recited therein, other than the receiving step and the
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`requesting step, be responsive to the same, recited data access request, they
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`do not preclude receiving additional data access requests, or having steps
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`performed also in response to another request.
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`2.
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`“Location of Each Data Manipulation Operation”
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`Independent claims 1, 50, 52, and 54 each recite “location of each
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`[available] data manipulation operation.” Petitioner cites our Decision in
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`Oracle Corporation v. Clouding IP, LLC, Case IPR2013-00075 (PTAB May
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`3, 2013) (Paper 8), in asserting that the “location of each data manipulation
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`operation” should be construed as “a location identified by an address, such
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`as a URL, an e-mail address, or a combination of an e-mail address and
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`subject line, specifying where on a computer network a data manipulation
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`operation or service may be invoked.” Pet. 15 (citing Ex. 1003, 9–10).
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`Patent Owner contends that “location of each data manipulation operation”
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`should be construed as “[a] service invocation address . . . specifying a
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`location on a computer network corresponding to the available data
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`manipulation operation.” Prelim. Resp. 11. For reasons discussed below,
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`there is no meaningful difference between the construction set forth in the
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`Board’s previous decision, and Patent Owner’s proposed construction.
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`The Specification interchangeably refers to a data manipulation
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`operation and a data manipulation service. Ex. 1001, 4:17–29. A service
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`invocation address specifies a location of a data manipulation service. Ex.
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`1001, 9:10–14. The service invocation address is specified for each data
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`manipulation service and indicates an address at which the data
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`
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`manipulation service may be invoked. Ex. 1001, 8:57–60. These addresses
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`are provided as Uniform Resource Locators (“URLs”). Ex. 1001, 8:60–62.
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`In alternative embodiments, service invocation addresses may employ
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`address formats other than URLs, such as e-mail addresses, or a combination
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`of an e-mail address and subject line, to designate a service to be invoked.
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`Ex. 1001, 9:15–19. Thus, we construe “location of each data manipulation
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`operation” as “a location identified by an address, such as a URL, an e-mail
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`address, or a combination of an e-mail address and subject line, specifying
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`where on a computer network a data manipulation operation or service may
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`be invoked.”
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`4.
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`“Means for Obtaining”
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`Independent claim 50 recites “means for obtaining the requested
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`data.” These limitations require construction under 35 U.S.C. § 112 ¶ 6,
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`which states such claims “shall be construed to cover the corresponding
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`structure, material, or acts described in the specification and equivalents
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`thereof.” 35 U.S.C. § 112 ¶ 6. For means-plus-function limitations where
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`the corresponding structure is a computer, the Federal Circuit has held that
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`the specification must disclose the specific algorithm used by the computer
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`to perform the recited function. WMS Gaming, Inc. v. Int’l Game Tech., 184
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`F.3d 1339, 1349 (Fed. Cir. 1999) (“In a means-plus-function claim in which
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`the disclosed structure is a computer, or microprocessor, programmed to
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`carry out an algorithm, the disclosed structure is not the general-purpose
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`computer, but rather the special purpose computer programmed to perform
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`the disclosed algorithm”). The specification can express the algorithm “in
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`any understandable terms including as a mathematical formula, in prose, or
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`as a flow chart, or in any other manner that provides sufficient structure.”
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`
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`Finisar Corp. v. DirecTV Grp., 523 F.3d 1323, 1340 (Fed. Cir. 2008)
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`(citations omitted). If the specification fails to provide sufficient structure,
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`the means-plus-function limitation is indefinite. Aristocrat Techs. Australia
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`Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
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`Petitioner provides the following construction for “means for
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`obtaining”:
`
`The specification does not clearly disclose structure for
`performing the function “obtaining the requested data.” Under
`the broadest reasonable interpretation, however, the structure
`most closely corresponding to this means-plus-function element
`is either the protocol proxy which, “forwards the [data] request
`to the appropriate information source” (see Ex. 1001 at 10:29-
`33), or the file access proxy, which is used to “access data from
`a local repository, within remote data stores . . .” (Id. at 6:53-
`60; see also Ex. 1009 ¶ 49).
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`Pet. 16. However, both “protocol proxy” and “file access proxy” are
`
`software. Simply identifying such software does not identify sufficient
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`structure for the recited “means-plus-function” limitations, as required by 37
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`C.F.R. § 42.104(b)(3). If anything, the corresponding structure would be a
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`special-purpose computer programmed to perform a disclosed algorithm,
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`unless certain narrow exceptions concerning generic computer functions
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`apply. In re Katz, 639 F.3d 1303, 1316 (Fed. Cir. 2011). In setting forth
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`their claim construction, however, Petitioner has not addressed any of these
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`considerations. Petitioner has not identified any particular algorithm
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`disclosed in the specification for implementing the “means for obtaining” or
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`explained why an exception according to In re Katz applies. Consequently,
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`on this record, Petitioner has not articulated sufficiently how the “means for
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`obtaining” claim element should be construed and applied to the prior art as
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`required under § 42.104(b)(3). We decline to commit resources to that task.
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`B.
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`Claims 1, 2, 25, 28, and 50–57 as Anticipated by Schilit
`
`Petitioner contends that claims 1, 2, 25, 28, and 50–57 are anticipated
`
`by Schilit. Pet. 19–32. Patent Owner disagrees. Prelim. Resp. 13–20.
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`1.
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`Schilit (Ex. 1005)
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`Schilit relates to a Web Browser program, referred to as an “m-link,”
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`which converts HTML documents for displaying on a mobile display. Ex.
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`1005, 5:30–32. The m-link program accesses a server to retrieve a
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`document as identified by a user-selected URL. Ex. 1005, 5:32–34. The
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`document received from the server is then parsed and hyper-links contained
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`in the document are separated from the content. Ex. 1005, 5:34–36. The
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`hyper-links are processed, re-organized, and provided for display on the
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`mobile device. Ex. 1005, 5:36–37. Once the links are displayed, the
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`mobile-device keypad can be used to navigate to and select one of the
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`displayed links. Ex. 1005, 5:46–48. As shown in Figures 6A and 6B,
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`Schilit discloses a menu tree of links that can be navigated by user selection
`
`so as to allow a user to select the “Publications” link, and then the
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`“Hypertext Interaction revisited” link. Figures 6A and 6B are reproduced
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`below:
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`Figure 6A displays links from the FXPAL Web page with links
`reorganized for better viewer accessibility, and new links for a
`telephone number and an address provided; Figure 6B shows
`links provided after selection of the publications link in
`Figure 6A.
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`As shown in Figure 6C, a list of situations, or content-appropriate
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`services, such as reading, printing, or faxing, is then provided to the mobile
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`device display after the “Hypertext Interaction revisited” link is selected in
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`Figure 6B. Ex. 1005, 5:48–49. Figure 6C is reproduced below:
`
`Figure 6C shows services available for the “Hypertext interact . . .”
`publication link from Figure 6B.
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`The services are hosted on a database. Ex. 1005, 10:1–2. The list of
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`content-appropriate services, including printing and faxing, are provided
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`dynamically by the database, for display on the mobile device display, based
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`on the link owner or link type selected by the user. Ex. 1005, 10:1–4.
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`Selecting one of the services from the list enables the service selected to be
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`performed on the user-selected URL. Ex. 1005, 5:49–51.
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`2.
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`Claims 1, 2, 25, 28
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`After carefully considering the Petition and Preliminary Response, we
`
`are persuaded that there is a reasonable likelihood that Petitioner would
`
`prevail in showing that claims 1, 2, 25, and 28 are anticipated by Schilit. For
`
`example, independent claim 1 recites “receiving a data access request from a
`
`pervasive device” and “obtaining the requested data.” Schilit discloses that
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`an m-link program accesses a server to retrieve a document identified by a
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`user-selected URL. Ex. 1005, 5:32–34. Independent claim 1 also recites
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`“determining what data manipulation operations are available for the
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`obtained data, as well as a location of each available data manipulation
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`operation;” and “returning the determined data manipulation operations and
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`locations to the pervasive device.” Schilit discloses that in response to
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`receipt of a user-identified URL, a list of situations, or content-appropriate
`
`services, such as reading, printing, or faxing, for that user-identified URL
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`are located on a database (Ex. 1005, 10:1–4) and provided to a mobile
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`device display. Ex. 1005, 5:48–49; Fig. 6C.
`
`Patent Owner asserts that Schilit discloses a process in which multiple
`
`links must be selected by a user before a mobile device displays the links
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`shown in Figure 6C of Schilit. By contrast, according to Patent Owner,
`
`independent claim 1 recites a more efficient process, because the obtaining,
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`determining, and returning steps all are performed in response to only one
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`and the same data access request.
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`Patent Owner’s assertions are unpersuasive. As set forth above,
`
`independent claim 1 does not require that the obtaining, determining, and
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`returning steps all are limited to being performed in response to only one and
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`the same data access request. The obtaining, determining, and returning
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`steps of independent claim 1 are met notwithstanding that in Schilit, multiple
`
`user selections are made prior to arriving at the screen of the mobile display
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`device shown in Figure 6C.
`
`Concerning claim 25, Patent Owner asserts the following:
`
`Claim 25 depends from claim 1 and recites the additional
`feature of the determining step further comprising determining
`what data manipulation operations are available for a content
`type of the obtained data. Schilit fails to disclose this feature of
`claim 25. Schilit discloses making service links available for a
`file dependent on service links provided by the owner of the
`link and the format of the link. Ex. 1005 at 9:41–48 (“For
`instance, if the document accessed is a WordPerfectTM file, the
`“read” or “print” services can be configured
`to use
`WordPerfectTM.”). However, the format of a link does not
`indicate what types of content are associated with that link at
`least because a link format is not analogous to a content type of
`obtained data. For example, link of a particular format may be
`associated with various types of content (e.g., images, text,
`graphs, audio files, etc.).
`
`Prelim. Resp. 18–19. Patent Owner’s assertions are misplaced, as Schilit
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`further discloses: “In addition to the service list being depending on the link
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`owner, or format type, the services can be made dependent on the link
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`content language, age, or size.” Ex. 1005, 9:49–51(emphasis added).
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`Concerning claim 28, Patent Owner asserts the following:
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`
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`Claim 28 depends from claim 1 and recites the additional
`feature of the determining step further comprising determining
`what data manipulation operations are available for a user of the
`pervasive device. While Schilit may describe services that may
`be dependent on user preferences or services typically executed
`by a specific user, such services dependent upon user
`preferences or behavior (i.e., services typically executed by a
`specific user) are not analogous to data manipulation operations
`that are available for a user of a pervasive device at least
`because user preferences and behavior do not dictate the
`availability of data manipulation operations on a pervasive
`device. For example, a user may have a preference for a
`particular data manipulation operation that is not available or,
`conversely, a data manipulation operation may be available to
`the user even though it is not a user’s preferred data
`manipulation operation.
`
`Prelim. Resp. 19. Patent Owner’s assertions are misplaced, as Schilit further
`
`discloses: “[L]ink services also depend on user characteristics, such as the
`
`user location, the type of communication device the user is using, or the
`
`cost of services the user is willing to pay for.” Ex. 1005, 10:22–25
`
`(emphasis added).
`
`3.
`
`Claims 50–57
`
`Claims 50–57 each include means-plus-function limitations. As
`
`explained above, however, we find Petitioners have not identified sufficient
`
`structure (i.e., a microprocessor programmed to perform a specific
`
`algorithm) to meet their burden under Rule 104(b)(3). That is, to the extent
`
`such an algorithm exists, Petitioners have not “identif[ied] the specific
`
`portions of the specification that describe the structure . . . corresponding to
`
`each claimed function.” 37 C.F.R. § 42.104(b)(3). Moreover, because
`
`Petitioners have failed to provide sufficient structure for the claim
`
`15
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`IPR2014-00299
`Patent 6,925,481 B2
`
`
`construction, Petitioners have failed to specify where this structure is found
`
`
`
`in Schilit, pursuant to 37 C.F.R. § 42.104(b)(4). For this reason, we decline
`
`to institute trial on claims 50-57. Cf. Blackberry Corp. v. MobileMedia
`
`Ideas, LLC, IPR2013-00036, slip op. at 12–21 (PTAB Mar. 7, 2014) (Paper
`
`65) (terminating IPR proceeding where Board was unable to reach a
`
`determination on the grounds of unpatentability because the specification did
`
`not disclose a specific algorithm with which to program the microprocessor
`
`to achieve the function of the means-plus-function limitation).
`
`4.
`
`Conclusion
`
`For the foregoing reasons, we conclude that there is a reasonable
`
`likelihood that Petitioner would prevail on the ground that claims 1, 2, 25,
`
`and 28 are anticipated by Schilit. We also conclude that there is not a
`
`reasonable likelihood that Petitioner would prevail on the ground that claims
`
`50–57 are anticipated by Schilit.
`
`C.
`
`Claim 32 as Unpatentable over Schilit and Hutsch
`
`Petitioner contends that claim 32 is obvious over Schilit and Hutsch.
`
`Pet. 33–35. In support of the combination, Petitioner provides a Declaration
`
`of Dr. Benjamin B. Bederson. Ex. 1009 (“Bederson Decl.”). Patent Owner
`
`disagrees. Prelim. Resp. 20–22.
`
`1.
`
`Hutsch
`
`Hutsch discloses a network portal system including a web-top
`
`manager. Ex. 1006, 2:54–55. The web-top manager receives a content
`
`request from a client system. Ex. 1006, 2:55–56. The content request may
`
`include a client system identifier. Ex. 1006, 2:59–60. Raw data responsive
`
`to the content request is passed to the web-top manager. Ex. 1006, 3:8–9.
`
`The web-top manager renders the requested content into a page that can be
`
`16
`
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`
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`IPR2014-00299
`Patent 6,925,481 B2
`
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`displayed by the requesting client system. Ex. 1006, 3:9–12. For example,
`
`
`
`the raw data can be placed in a template associated with a user device that
`
`issued the content request. Ex. 1006, 20:19–22. The raw data may include
`
`two or more layers, and “these layers could then contain various settings,
`
`e.g. for specific user groups or devices.” Ex. 1006, 39:16–20.
`
`2.
`
`Claim 32
`
`Petitioner asserts that claim 32 is unpatentable as obvious over Schilit
`
`and Hutsch. Pet. 33–35. Claim 32 depends directly from independent claim
`
`1, which Petitioner contends is anticipated by Schilit. Claim 32 requires the
`
`added limitation of “determining what data manipulation operations are
`
`available for a user group of which a user of the pervasive device is a
`
`member.” Petitioner asserts that that claim limitation is suggested by a
`
`combination of Schilit and Hutsch. Petitioner provides a rationale for
`
`applying Hutsch’s disclosure into the system disclosed by Schilit. Pet. 33–
`
`34 (citing Bederson Decl. ¶ 41).
`
`We have considered Petitioner’s assertions and supporting evidence,
`
`and are persuaded Petitioner has put forth sufficient evidence to support the
`
`proffered combination of Schilit and Hutsch. Specifically, Schilit discloses
`
`that a list of content-appropriate services, including printing and faxing, are
`
`provided dynamically by a database based on the link owner or link type
`
`selected by the user. Ex. 1005, 10:1–4. Hutsch discloses organizing data
`
`based on user groups. Ex. 1006, 39:16–20. Thus, the combination of
`
`Hutsch and Schilit suggests that in addition to link owner and link type, it
`
`was known to consider what user group the user belonged to, in determining
`
`the list of content-appropriate services to be provided dynamically to the
`
`user.
`
`17
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`
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`IPR2014-00299
`Patent 6,925,481 B2
`
`
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`Patent Owner asserts that claim 32 is patentable for the same reasons
`
`
`
`independent claim 1 is patentable. Prelim. Resp. 20–22. Patent Owner’s
`
`allegations regarding independent claim 1 already have been discussed
`
`above. They are unpersuasive and need not be repeated here.
`
`Patent Owner further asserts that Hutsch only discloses what data the
`
`user can access, and not any determinations of data manipulations available
`
`to the user, as required by claim 32. Patent Owner’s assertions are
`
`misplaced, as Schilit is cited for disclosing the recited data manipulation
`
`operations. Pet. 24–25. In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one
`
`cannot show non-obviousness by attacking references individually where, as
`
`here, the rejections are based on combinations of references”).
`
`3.
`
`Conclusion
`
`For the foregoing reasons, we conclude that there is a reasonable
`
`likelihood that Petitioner would prevail in showing that claim 32 is
`
`unpatentable as obvious over Schilit and Hutsch.
`
`D. Claims 1, 2, 25, 28, and 50–57 as Unpatentable over Flynn and Schilit
`
`Petitioner asserts that claims 1, 2, 25, 28, and 50–57 are unpatentable
`
`as obvious over Flynn and Schilit. Pet. 35–46. Patent Owner disagrees.
`
`Prelim. Resp. 23–27.
`
`1.
`
`Claims 1, 2, 25, 28
`
`After carefully considering the Petition and Preliminary Response, we
`
`are not persuaded that there is a reasonable likelihood that Petitioner would
`
`prevail in showing that claims 1, 2, 25, and 28 are unpatentable over Flynn
`
`and Schilit. An obviousness inquiry is based on factual inquiries including
`
`the difference between the claimed invention and the prior art. Graham v.
`
`John Deere Co., 383 U.S. 1, 17–18 (1966). For independent claim 1,
`
`18
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`
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`IPR2014-00299
`Patent 6,925,481 B2
`
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`Petitioner has not articulated any difference between the claimed invention
`
`
`
`and either Flynn or Schilit. Pet. 35–40. Without having identified
`
`specifically the differences between the claimed invention and the prior art,
`
`Petitioner has failed to make a meaningful obviousness analysis under 35
`
`U.S.C. § 103, and thus has failed to make a threshold showing of a
`
`reasonable likelihood that independent claim 1 is unpatentable over Flynn
`
`and Schilit. Without Petitioner having identified specifically the differences,
`
`we are unable to evaluate properly any rationale offered by Petitioner for
`
`modifying Flynn in view of Schilit. Moreover, Petitioner’s presentation of
`
`reasoning to combine the teachings of Schilit and Flynn with respect to
`
`independent claim 1 is also deficient. To support a showing of obviousness,
`
`there has to be an articulated reasoning with rational underpinnings to
`
`support a motivation to combine teachings. In re Kahn, 441 F.3d 977, 988
`
`(Fed. Cir. 2006). To that end, Petitioner asserts that both Schilit and Flynn
`
`disclose the same claim elements. Pet. 36. That, however, does not
`
`constitute articulated reasoning with rational underpinnings as to why one of
`
`ordinary skill would mix elements between Schilit and Flynn. Petitioner has
`
`failed to demonstrate a reasonable likelihood that it would prevail on the
`
`ground that independent claim 1 is unpatentable over Flynn and Schilit 1.
`
`For the same reasons, Petitioner has also failed to demonstrate a reasonable
`
`likelihood that it would prevail with respect to claims 2, 25, and 28, each of
`
`which depends from independent claim 1.
`
`2.
`
`Claims 50–57
`
`Claims 50–57 each include means-plus-function limitations. We
`
`decline to institute review for the same reasons as set forth above with
`
`respect to the anticipation ground based on Schilit.
`
`19
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`IPR2014-00299
`Patent 6,925,481 B2
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`
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`Conclusion
`
`3.
`
`
`
`For the foregoing reasons, we conclude that there is not a reasonable
`
`likelihood that Petitioner would prevail on the ground that claims 1, 2, 25,
`
`28, and 50–57 are unpatentable over Flynn and Schilit.
`
`E. Claims 1, 2, 25, 28, and 50–57 as Unpatentable over Barrett and Schilit
`
`Petitioner asserts that claims 1, 2, 25, 28, and 50–57 are unpatentable
`
`as obvious over Barrett and Schilit. Pet. 47–57. For claims 1, 2, 25, and 28,
`
`our analysis is similar to that set forth above with respect t
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