Trials@uspto.gov
`571-272-7822
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`Paper 7
`Date: May 14, 2013
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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
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`____________
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`ORACLE CORPORATION
`Petitioner
`
`v.
`
`CLOUDING IP, LLC
`Patent Owner
`____________
`
`Case IPR2013-00088
`Patent 7,254,621
`____________
`
`
`Before JAMESON LEE, MICHAEL W. KIM, and RAMA G. ELLURU,
`Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
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`
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`1
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`EMC Ex. 1003
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`

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`IPR2013-00088
`Patent 7,254,621
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`I.
`
`INTRODUCTION
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`
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`
`
`Background
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`
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`Oracle Corporation (“Oracle”) petitioned for inter partes review of claims 1-
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`9 and 17 of US Patent 7,254,621 (“ ’621 Patent”) (Ex. 1001) pursuant to 35 U.S.C.
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`§§ 311 et seq. The patent owner, Clouding IP, LLC (“Clouding IP”), filed a
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`preliminary response on March 19, 2013. We have jurisdiction under
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`35 U.S.C. § 314.
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`
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`The standard for instituting an inter partes review is set forth in 35 U.S.C.
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`§ 314(a) which provides as follows:
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`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.
`
`The petition is granted and we institute an inter partes review of claims 1-9
`
`and 17.
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`Summary of the Invention
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`The ’621 Patent sets forth (Ex. 1001, 1:14-20):
`
`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.
`
`(Emphasis added.)
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`As explained in the ’621 Patent, pervasive devices have become popular in
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`recent years as people increasingly seek “anywhere, anytime” access to services
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`IPR2013-00088
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`such as voice and data communications. (Ex. 1001, 1:24-27.) However, pervasive
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`devices have inherent drawbacks. (Ex. 1001, 1:52-53.) As an example, they
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`typically do not have sufficient memory to store all of the information that the user
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`requires. (Ex. 1001, 1:64-2:1.) Pervasive devices also may not have sufficient
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`software to access all of the data that a user might wish to use. (Ex. 1001, 2:7-9.)
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`Pervasive devices further may not have the necessary drivers installed with which
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`to support all the data manipulation operations a user might wish to perform. (Ex.
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`1001, 2:17-19.) Accordingly, the ‘621 Patent discloses a technique for enabling
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`pervasive devices to access and manipulate data that avoids these drawbacks. (Ex.
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`1001, 3:26-28.)
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`Independent claim 1 is reproduced below:
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`Illustrative Claim
`
`A method of enabling data access and manipulation from
`1.
`a pervasive device, comprising steps of:
`receiving a data access request from a pervasive device;
`obtaining the requested data;
`determining what data manipulation operations are available for
`the obtained data; and
`providing references to the determined data manipulation
`operations to the pervasive device.
`
`Prior Art References Applied by Petitioner
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`Oracle challenges the patentability of claims 1-9 and 17 on the basis of the
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`following items of prior art:
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`US 6,670,968 B1 (“Schilit”)
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`
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`Dec. 30, 2003
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`
`
`Ex. 1003
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`Flynn, M., et al., “The Satchel system architecture: Mobile access to
`documents and services,” 5 Mobile Networks and Applications,
`243(“Flynn”)
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`
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`Dec. 2000
`
`
`Ex. 1004
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`Barrett, R., et al., “Intermediaries: new places for producing and
`manipulating Web content,” 30 Computer Networks and ISDN Systems 509
`(“Barrett”)
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`
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`Apr. 1998
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`
`Ex. 1005
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`Further, Oracle relies upon the declaration testimony of its witness, Dr.
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`
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`Benjamin B. Bederson (“Bederson Decl.”). (Ex. 1007.)
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`The Alleged Grounds of Unpatentability
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`
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`Oracle alleges the following grounds of unpatentability:
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`a.
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`Claims 1-9 and 17 are unpatentable under 35 U.S.C. § 102(e) as
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`anticipated by Schilit;
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`b.
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`Claims 1-9 and 17 are unpatentable under 35 U.S.C. § 103(a) as
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`obvious over Flynn and Schilit;
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`c.
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`Claims 1-9 and 17 are unpatentable under 35 U.S.C. § 103(a) as
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`obvious over Barrett and Schilit.
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`II. ANALYSIS
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`A. Findings of Fact
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`The following findings of facts as well as those contained in the discussion
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`portion of this opinion are supported by a preponderance of the evidence.
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`Schilit
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`1.
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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. 1003,
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`5:30-32.)
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`2.
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`Schilit discloses that the m-link program accesses a server to retrieve
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`a document as identified by a user-selected URL. (Ex. 1003, 5:32-34.)
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`3.
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`Schilit discloses that the document received from the server is then
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`parsed and hyper-links contained in the document are separated from the content.
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`(Ex. 1003, 5:34-36.)
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`4.
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`Schilit discloses that the hyper-links are processed, re-organized, and
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`provided for display on the mobile device. (Ex. 1003, 5:36-37.)
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`5.
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`According to Schilit, once the links are displayed, the mobile-device
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`
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`keypad can be used to navigate to and select one of the displayed links. (Ex. 1003,
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`5:46-48.)
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`6.
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`As shown below in Figures 6A and 6B, Schilit discloses a menu tree
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`of links that can be navigated by user selection so as to allow a user to select the
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`“Publications” link, and then the “Hypertext Interaction revisited” link. (Ex. 1003,
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`Figs. 6A-6B.)
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`7.
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`As shown below in Figure 6C, Schilit discloses that a list of situations,
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`or content-appropriate services, such as reading, printing, or faxing, then is
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`provided to the mobile device display after the “Hypertext Interaction revisited”
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`link is selected in Figure 6B. (Ex. 1003, 5:48-49.)
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`5
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`8.
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`Schilit discloses that the services are hosted on a database. (Ex. 1003,
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`
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`10:1-2.)
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`9.
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`Schilit discloses that the list of content-appropriate services, including
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`printing and faxing, are provided dynamically by the database, for display on the
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`mobile device display, based on the link owner or link type selected by the user.
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`(Ex. 1003, 10:1-4.)
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`10. According to Schilit, selecting one of the services from the list enables
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`the service selected to be performed on the user-selected URL. (Ex. 1003, 5:49-
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`51.)
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`B. Claim Construction
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`In assessing the merit of Oracle’s petition, we have construed whether no
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`more than one data access request is permitted by the claims, as well as the claim
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`terms “references to the determined data manipulation operations” and “location”
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`in light of the specification of the ’621 Patent.
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`The Board construes a claim in an inter partes review using the “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); see Office Patent Trial Practice Guides, 77 Fed.
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`Reg. 48756, 48766 (Aug. 14, 2012). Claims terms usually are given their ordinary
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`and customary meaning as would be understood by one of ordinary skill in the art
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`in the context of the underlying patent disclosure. Phillips v. AWH Corp., 415 F.3d
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`1303, 1313 (Fed. Cir. 2005) (en banc). Indeed, the construction that stays true to
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`the claim language and most naturally aligns with the inventor’s description is
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`likely the correct construction. Renishaw PLC v. Marposs Societa’ per Azioni, 158
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`F.3d 1243, 1250 (Fed. Cir. 1998).
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`1. Whether No More Than One Data Access Request is Permitted
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`Independent claims 1 and 9 each recite “receiving a data access request.”
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`Independent claim 17 recites “receive a data access request.” Based on the
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`recitation of these claim limitations, Clouding IP contends that all of the other
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`steps recited in each independent claim must occur only in response to the
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`particular data access request referenced in the aforementioned “receiving” step.
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`(Prel. Resp. 4-6.) Clouding IP is incorrect. Taking independent claim 1 as an
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`example, it recites the open-ended transitional phrase “comprising” in conjunction
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`with all of the recited steps, including “receiving a data access request.” Invitrogen
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`Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003) (“The transition
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`‘comprising’ in a method claim indicates that the claim is open-ended and allows
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`for additional steps”). Thus, the recitation of “receiving a data access request”
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`does not preclude receiving additional data access requests or having steps
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`performed in response to another request.
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`Other language in each independent claim is consistent with this claim
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`construction. For example, a subsequent step recited in independent claim 1 is
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`“obtaining the requested data.” While the requested data must be obtained in
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`response to the previously recited “data access request,” it does not follow that the
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`requested data must be obtained only in response to that particular “data access
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`request,” and cannot also be obtained in response to other additional data access
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`requests. Obtaining data in response to other data access requests, in addition to
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`
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`the one particular data access request, is not excluded by the claim language at
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`issue.
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`The Specification is also consistent with the Board’s claim construction.
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`The embodiments in the Specification do disclose performing the obtaining,
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`determining, and providing steps in response to one data access request. But that
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`disclosure does not indicate that other embodiments are excluded. Indeed, the
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`Specification nowhere disclaims other embodiments. Moreover, the Specification
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`actually 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 be
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`construed as limiting thereof.” (Ex. 1001, 18:43-45.)
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`To support its assertion that independent claim 1 should be construed such
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`that all of the steps of independent claim 1 subsequent to the receiving step must
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`occur in response to only one and the same data access request, Clouding IP cites
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`On-Line Tech., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138
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`(Fed. Cir. 2004) (“a claim interpretation that excludes a preferred embodiment
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`from the scope of the claim is rarely, if ever, correct.”) Clouding IP’s argument is
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`misplaced. The Board’s construction is broad and covers in its scope, rather than
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`excludes, Clouding IP’s preferred embodiments having only one data access
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`request.
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`The above analysis similarly applies to independent claims 9 and 17.
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`Accordingly, while independent claims 1, 9, and 17 do require that the steps
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`recited therein, other than the receiving step, be responsive to a particular data
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`access request, they do not preclude receiving additional data access requests, or
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`having steps performed also in response to another request.
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`8
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`2. “References to the Determined Data Manipulation Operations”
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`
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`Independent claims 1, 9 and 17 each recite “references to the determined
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`data manipulation operations.” Oracle contends that “references to the determined
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`data manipulation operations” should be construed as “an identifier, such as a URL
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`link, that provides a way of locating and accessing the determined data
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`manipulation operations.” (Pet. 12-13.) Clouding IP contends that “references to
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`the determined data manipulation operations” should be construed as “an identifier
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`corresponding to an available data manipulation operation.” (Prel. Resp. 12; p. 8.)
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`For reasons discussed below, there is no meaningful difference between the
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`respective constructions proffered by Oracle and Clouding IP.
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`The Specification does not use the term “reference” as it pertains to
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`returning determined data manipulation operations. The Specification does
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`disclose a service invocation address that specifies a location of a data
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`manipulation service. (Ex. 1001, 9:16-20.) The Specification interchangeably
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`refers to a data manipulation operation and a data manipulation service. (Ex. 1001,
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`4:22-40.) The service invocation address is specified for each data manipulation
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`service and indicates an address at which the data manipulation service may be
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`invoked. (Ex. 1001, 8:63-66.) These addresses are provided as Uniform Resource
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`Locators (“URLs”). (Ex. 1001, 8:66-9:1.) In alternative embodiments, service
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`invocation addresses may employ address formats other than URLs, such as e-mail
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`addresses, or a combination of an e-mail address and subject line, to designate a
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`service to be invoked. (Ex. 1001, 9:21-25.) Thus, we construe “references to the
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`determined data manipulation operations” as an identifier, such as a URL, an e-
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`mail address, or a combination of an e-mail address and subject line, specifying a
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`location of a data manipulation operation or service on a computer network. This
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`construction is essentially the same as those proffered by Oracle and by Clouding
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`
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`IP, only stated more precisely.
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`3. “Location”
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`Dependent claim 6 recites “determining a current location of the pervasive
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`device.” Oracle contends that “location” should be construed as “a physical
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`location of the pervasive device.” (Pet. 13.) Clouding IP also contends that
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`“location” should be construed as “a physical location of the pervasive device.”
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`(Prel. Resp. 8.) We do not entirely agree.
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`The Specification discloses that location information may be determined by
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`querying a global positioning system (“GPS”) function on the pervasive device.
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`(Ex. 1001, 11:32-37.) A GPS determines a physical location. The Specification
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`also discloses that location information may include a list of access points which
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`are near the pervasive device. (Ex. 1001, 11:46-49.) The use of the term “near”
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`indicates physical proximity to a physical location. The rest of dependent claim 6
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`is consistent with “location” being a physical location. Accordingly, we agree with
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`Oracle and Clouding IP that “location” is “a physical location.” However, we
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`disagree with Oracle and Clouding IP that the term “location” by itself has
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`significance and meaning only with respect to pervasive devices. Unless expressly
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`required by a claim recitation to be associated with a pervasive device, for
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`example, as a part of the phrase “location of the pervasive device,” a location by
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`itself can be associated with any object. We construe “location” by itself as any
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`physical location associated with any object, and construe “location of the
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`pervasive device” as “a physical location of the pervasive device.”
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`C. Claims 1-9 and 17 as Anticipated by Schilit
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`A claim is anticipated only if each and every element as set forth in the
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`claim is described, either expressly or inherently, in a single prior art reference.
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`Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).
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`Oracle contends that claims 1-9 and 17 are anticipated by Schilit. (Pet. 14-28.)
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`We have considered Oracle’s allegations and supporting evidence. The arguments
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`have merit. For example, independent claim 1 recites “receiving a data access
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`request from a pervasive device” and “obtaining the requested data.” Schilit
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`discloses that an m-link program accesses a server to retrieve a document
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`identified by a user-selected URL. (Ex. 1003, 5:32-34.) Independent claim 1 also
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`recites “determining what data manipulation operations are available for the
`
`obtained data; and providing references to the determined data manipulation
`
`operations to the pervasive device.” Schilit discloses that in response to receipt of
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`a user-identified URL, a list of situations, or content-appropriate services, such as
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`reading, printing, or faxing, for that user-identified URL are located on a database
`
`(Ex. 1003, 10:1-4) and provided as links on a mobile device display. (Ex. 1003,
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`5:48-49; Figure 6C).
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`Clouding IP contends that Schilit discloses a process in which multiple links
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`must be selected by a user before a mobile device displays the links shown in
`
`Figure 6C of Schilit. By contrast, according to Clouding IP, independent claim 1
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`recites a more efficient process, because the obtaining, determining, and returning
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`steps all are performed in response to only one and the same data access request.
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`(Prel. Resp. 9-13.)
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`Clouding IP’s arguments are unpersuasive. As set forth above, independent
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`claim 1 does not require that the obtaining, determining, and providing steps all are
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`limited to being performed in response to only one and the same data access
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`request. The obtaining, determining, and providing steps of independent claim 1
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`are met notwithstanding that in Schilit, multiple user selections are made prior to
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`arriving at the screen of the mobile display device shown in Figure 6C.
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`Clouding IP presents the same arguments for independent 9 and 17 as it does
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`for independent claim 1. (Prel Resp. 12-13.) The arguments similarly are
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`unpersuasive for claims 9 and 17. Like claim 1, claim 9 also recites receiving,
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`obtaining, determining, and providing steps with identical wording. Similarly,
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`claim 17 recites “receive a data access request from the pervasive device; obtain
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`the requested data; communicate with the data manipulation server to determine,
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`responsive to the obtained data, what data manipulation operations are available;
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`and provide references to the determined data manipulation operations to the
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`pervasive device.” Our discussion above with regard to claim 1 also applies to
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`claims 9 and 17.
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`For the foregoing reasons, we conclude that there is a reasonable likelihood
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`that Oracle would prevail on the ground that claims 1-9 and 17 are anticipated by
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`Schilit.
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`D. Claims 1-9 and 17 as Unpatentable over Flynn and Schilit
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`Oracle contends that claims 1-9 and 17 are unpatentable for obviousness
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`over Flynn and Schilit. (Pet. 28-45.) This alleged ground of unpatentability is
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`redundant in light of the grounds on the basis of which we institute review for the
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`same claims.
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`E. Claims 1-9 and 17 as Unpatentable over Barrett and Schilit
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`Oracle contends that claims 1-9 and 17 are unpatentable for obviousness
`
`over Barrett and Schilit. (Pet. 45-57.) This alleged ground of unpatentability is
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`redundant in light of the grounds on the basis of which we institute review for the
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`same claims.
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`III. ORDERS
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`
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`After due consideration of the record before us, and for the foregoing
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`reasons it is:
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`
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`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
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`hereby instituted as to claims 1-9 and 17 of the ’621 patent on the ground of
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`unpatentability under 35 U.S.C. § 102 as anticipated by Schilit;
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`FURTHER ORDERED that inter partes review is not instituted with
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`respect to claims 1-9 and 17, either on the ground of unpatentability under 35
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`U.S.C. § 103 for obviousness over Flynn and Schilit, or on the ground of
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`obviousness over Barrett and Schilit;
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`
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
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`§ 42.4, notice is hereby given of the institution of a trial; and
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`FURTHER ORDERED that an initial conference call with the Board is
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`scheduled for 2:00 PM Eastern Time on June 4, 2013. The parties are directed to
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`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48765-66 (Aug. 14,
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`2012), for guidance in preparing for the initial conference call, and should come
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`prepared to discuss any proposed changes to the Scheduling Order entered
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`herewith and any motions the parties anticipate filing during the trial.
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`IPR2013-00088
`Patent 7,254,621
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`For PETITIONER:
`
`
`
`
`
`Greg Gardella
`Scott McKeown
`OBLON SPIVAK
`CPDocketGardella@oblon.com
`CPDocketMckeown@oblon.com
`
`For PATENT OWNER
`
`Tarek Fahmi
`Amy Embert
`FAMHI, SELLERS, EMBERT & DAVITZ
`tarek.fahmi@tnfip.com
`amy.embert@fseip.com
`
`
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`14
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