Trials@uspto.gov
`571-272-7822
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`
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`Paper No. 9
`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 IPR2014-00300
`Patent 7,254,621 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
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`Paper No. 9
`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 IPR2014-00300
`Patent 7,254,621 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
`
`
`
`IPR2014-00300
`Patent 7,254,621 B2
`
`
`
`INTRODUCTION
`
`I.
`
`
`
`
`
`SAP America Inc. (“Petitioner”) filed a Petition (“Pet.”) for inter partes
`
`review of claims 1–9 and 17 of U.S. Patent No. 7,254,621 B2 (“the ’621 patent”)
`
`(Ex. 1001) pursuant to 35 U.S.C. §§ 311–319. Paper 5. Clouding IP, LLC
`
`(“Patent Owner”) filed a Preliminary Response (“Prelim. Resp.”). Paper 8. We
`
`have jurisdiction under 35 U.S.C. § 314.
`
`
`
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`
`§ 314(a) which provides as follows:
`
`THRESHOLD.—The Director may not authorize an inter partes review
`to be instituted unless the Director determines that the information
`presented in the petition filed under section 311 and any response
`filed under section 313 shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.
`
`Petitioner challenges the patentability of claims 1–9 and 17 of the ’621
`
`patent under 35 U.S.C. §§ 102 and 103. We determine that the information
`
`presented in the Petition demonstrates that there is a reasonable likelihood that
`
`claims 1–9 and 17 are unpatentable. Pursuant to 35 U.S.C. § 314, we authorize an
`
`inter partes review to be instituted as to claims 1–9 and 17 of the ’621 patent.
`
`A.
`
`The ’621 Patent
`
`The ’621 patent sets forth:
`
`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.
`
`Ex. 1001, 1:14–20 (emphasis added).
`
`2
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`IPR2014-00300
`Patent 7,254,621 B2
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`As explained in the ’621 patent, pervasive devices have become popular in
`
`
`
`recent years as people increasingly seek “anywhere, anytime” access to services
`
`such as voice and data communications. Ex. 1001, 1:24–27. However, pervasive
`
`devices have inherent drawbacks. Ex. 1001, 1:52–53. Pervasive devices typically
`
`do not have sufficient memory to store all of the information that the user requires.
`
`Ex. 1001, 1:64–2:1. Pervasive devices also may not have sufficient software to
`
`access all of the data that a user might wish to use. Ex. 1001, 2:7–9. Pervasive
`
`devices further may not have the necessary drivers installed with which to support
`
`all the data manipulation operations a user might wish to perform. Ex. 1001, 2:17–
`
`19. Accordingly, the ‘621 patent discloses a technique for enabling pervasive
`
`devices to access and manipulate data that avoids these drawbacks. Ex. 1001,
`
`3:26–28.
`
`B.
`
`Related Matters
`
`Petitioner identifies the following related district court proceeding between
`
`Petitioner and Patent Owner that involves the ’621 patent: Clouding IP, LLC v.
`
`SAP AG, Case No. 1:13-cv-01456 (D. Del.). Pet. 3. Petitioner identifies also the
`
`following inter partes review that was before the Patent Trial and Appeal Board
`
`involving the ’621 patent, but is now terminated: IPR2013-00088 (“previous
`
`decision”). Pet. 3.
`
`C.
`
`Illustrative Claim
`
`Independent claim 1 is reproduced below:
`
`A method of enabling data access and manipulation from
`1.
`a pervasive device, comprising the 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
`
`3
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`IPR2014-00300
`Patent 7,254,621 B2
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`
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`providing references to the determined data manipulation
`operations to the pervasive device.
`
`
`
`D.
`
`Prior Art References Applied by Petitioner
`
`Petitioner challenges the patentability of claims 1–9 and 17 on the basis of
`
`the following items of prior art:
`
`US 6,670,968 B1 (“Schilit”)
`
`
`
`Dec. 30, 2003
`
`
`
`Ex. 1006
`
`M. Flynn et al., The Satchel system architecture: Mobile access to
`documents and services, 5 MOBILE NETWORKS AND APPLICATIONS 243
`(2000) (“Flynn”) Ex. 1007
`
`
`
`
`R. Barrett et al.,
`Intermediaries: new places for producing and manipulating Web content, 30
`COMPUTER NETWORKS AND ISDN SYSTEMS 509 (1998) (“Barrett”) Ex. 1008
`
`
`
`
`
`
`E.
`
`The Alleged Grounds of Unpatentability
`
`The information presented in the Petition sets forth Petitioner’s contentions
`
`of unpatentability of claims 1–9 and 17 of the ’621 patent based on the following
`
`specific grounds (Pet. 16–58):
`
`Reference(s)
`
`Basis
`
`Challenged Claims
`
`Schilit
`
`Flynn
`
`§ 102(e)
`
`1–9 and 17
`
`§ 102(a)
`
`1–9 and 17
`
`Flynn and Schilit
`
`§ 103
`
`1–9 and 17
`
`Barrett and Schilit
`
`§ 103
`
`1–9 and 17
`
`
`
`4
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`
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`IPR2014-00300
`Patent 7,254,621 B2
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`
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`II. ANALYSIS
`
`
`
`We turn now to Petitioner’s asserted grounds of unpatentability to determine
`
`whether Petitioner has met the threshold standard, under 35 U.S.C. § 314(a), for
`
`instituting review.
`
`A.
`
`Claim Construction
`
`As a step in our analysis for determining whether to institute a review, we
`
`determine the meaning of the claims for purposes of this Decision. In an inter
`
`partes review, a claim in an unexpired patent shall be given its broadest reasonable
`
`construction in light of the specification of the patent in which it appears.
`
`37 C.F.R. § 42.100(b). Under the broadest reasonable construction standard, claim
`
`terms are given their ordinary and customary meaning, as would be understood by
`
`one of ordinary skill in the art in the context of the entire disclosure. In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`
`definition for a claim term must be set forth in the specification with reasonable
`
`clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994). We must be careful not to read a particular embodiment appearing in the
`
`written description into the claim if the claim language is broader than the
`
`embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We
`
`construe the terms below in accordance with these principles.
`
`1. Whether No More Than One Data Access Request is Permitted
`
`Independent claims 1 and 9 recite “receiving a data access request.”
`
`Independent claim 17 recites “receive a data access request.”
`
`Petitioner asserts the following:
`
`As previously determined by the Board, the other steps of claims 1, 9
`and 17 (meaning the steps other than the “receiving” steps) must be
`responsive to a particular data access request, but nothing precludes
`
`5
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`IPR2014-00300
`Patent 7,254,621 B2
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`the receipt of “additional data access requests or having steps
`performed also in response to another request.” (Ex. 1003 at 7–8).
`
`
`
`Pet. 15.
`
`Based on the recitation of these claim limitations, Patent Owner contends
`
`that all of the other steps recited in each independent claim must occur only in
`
`response to the same recited data access request referenced in the aforementioned
`
`“receiving” or “receive” step, and cannot also occur in response to other additional
`
`data access requests. Prelim. Resp. 5–7. On this record, Patent Owner’s argument
`
`is not persuasive. Independent claim 1, for example, recites the open-ended
`
`transitional phrase “comprising” in conjunction with all of the recited steps,
`
`including “receiving a data access request.” Invitrogen Corp. v. Biocrest Mfg.,
`
`L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003) (“The transition ‘comprising’ in a
`
`method claim indicates that the claim is open-ended and allows for additional
`
`steps.”). Thus, the recitation of “receiving a data access request” does not preclude
`
`receiving additional data access requests or having steps performed also in
`
`response to another request.
`
`Other language in each independent claim is consistent with our claim
`
`construction. For example, a subsequent step recited in independent claim 1 is
`
`“obtaining the requested data.” While the requested data must be obtained in
`
`response to the previously recited “data access request,” it does not follow that the
`
`requested data must be obtained only in response to the same recited “data access
`
`request,” and cannot also be obtained in response to other additional data access
`
`requests. Obtaining data in response to other data access requests, in addition to
`
`the one particular data access request, is not excluded by the claim language at
`
`issue.
`
`The Specification is consistent with the Board’s claim construction. The
`
`embodiments in the Specification, such as Figure 3 cited by Patent Owner, do
`
`6
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`IPR2014-00300
`Patent 7,254,621 B2
`
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`disclose performing the obtaining, determining, and returning steps in response to
`
`
`
`one data access request. But that disclosure does not indicate that other
`
`embodiments are excluded. Indeed, the Specification nowhere disclaims other
`
`embodiments. Moreover, the Specification actually indicates the contrary by
`
`stating “[t]he foregoing description of a preferred embodiment is for purposes of
`
`illustrating the present invention, and is not to be construed as limiting thereof.”
`
`Ex. 1001, 18:43–45.
`
`To support its assertion that independent claim 1 should be construed such
`
`that all of the steps of independent claim 1 subsequent to the receiving step must
`
`occur in response to only one and the same data access request, Patent Owner cites
`
`On-Line Tech., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138
`
`(Fed. Cir. 2004) (“a claim interpretation that 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 construction is the broadest reasonable
`
`interpretation and includes in its scope, rather than excludes, Patent Owner’s
`
`preferred embodiment having only one data access request.
`
`The above analysis similarly applies to independent claims 9 and 17.
`
`Accordingly, while independent claims 1, 9, and 17 do require that the steps
`
`and elements recited therein, other than the receiving step and the receive step, be
`
`responsive to the same recited data access request, they do not preclude either
`
`receiving additional data access requests or having steps performed in response to
`
`another request.
`
`2. “References to the Determined Data Manipulation Operations”
`
`Independent claims 1, 9 and 17 recite “references to the determined data
`
`manipulation operations.” Petitioner cites our Decision in Oracle Corporation v.
`
`Clouding IP, LLC, Case IPR2013-00088 (PTAB May 14, 2013) (Paper 7), in
`
`7
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`IPR2014-00300
`Patent 7,254,621 B2
`
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`asserting that “references to the determined data manipulation operations” should
`
`
`
`be construed as “an identifier, such as a URL, an e-mail address, or a combination
`
`of an e-mail address and subject line, specifying a location of a data manipulation
`
`operation or service on a computer network.” Pet. 15. Patent Owner agrees.
`
`Prelim. Resp. 7–9. We see no reason to modify our previously stated construction.
`
`B.
`
`Claims 1–9 and 17 as Anticipated by Schilit
`
`Petitioner contends that claims 1–9 and 17 are anticipated by Schilit.
`
`Pet. 16–31. Patent Owner disagrees. Prelim. Resp. 10–14.
`
`1.
`
`Schilit (Ex. 1005)
`
`Schilit relates to a Web Browser program, referred to as an “m-link,” which
`
`converts HTML documents for displaying on a mobile display. Ex. 1006, 5:30–32.
`
`The m-link program accesses a server to retrieve a document as identified by a
`
`user-selected URL. Ex. 1006, 5:32–34. The document received from the server is
`
`then parsed and hyper-links contained in the document are separated from the
`
`content. Ex. 1006, 5:34–36. The hyper-links are processed, re-organized, and
`
`provided for display on the mobile device. Ex. 1006, 5:36–37. Once the links are
`
`displayed, the mobile-device keypad can be used to navigate to and select one of
`
`the displayed links. Ex. 1006, 5:46–48. As shown in Figures 6A and 6B, 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 “Hypertext Interaction
`
`revisited” link. Figures 6A and 6B are reproduced below:
`
`8
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`IPR2014-00300
`Patent 7,254,621 B2
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`
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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.
`
`
`
`As shown in Figure 6C, a list of situations, or content-appropriate services,
`
`such as reading, printing, or faxing, is then provided to the mobile device display
`
`after the “Hypertext Interaction revisited” link is selected in Figure 6B. Ex. 1006,
`
`5:48–49. Figure 6C is reproduced below:
`
`
`
`Figure 6C shows services available for the “Hypertext interact . . .”
`publication link from Figure 6B.
`
`The services are hosted on a database. Ex. 1006, 10:1–2. The list of
`
`content-appropriate services, including printing and faxing, are provided
`
`9
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`IPR2014-00300
`Patent 7,254,621 B2
`
`
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`dynamically by the database, for display on the mobile device display, based on the
`
`link owner or link type selected by the user. Ex. 1006, 10:1–4. Selecting one of
`
`the services from the list enables the service selected to be performed on the user-
`
`selected URL. Ex. 1006, 5:49–51.
`
`2.
`
`Claims 1–9 and 17
`
`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 1–9 and 17 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 an m-link
`
`program accesses a server to retrieve a document identified by a user-selected
`
`URL. Ex. 1006, 5:32–34. Independent claim 1 also 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 a user-identified URL, a list of
`
`situations, or content-appropriate services, such as reading, printing, or faxing, for
`
`that user-identified URL are located on a database (Ex. 1006, 10:1–4) and provided
`
`as links on a mobile device display. Ex. 1006, 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 shown in
`
`Figure 6C of Schilit. By contrast, according to Patent Owner, independent claim 1
`
`recites a more efficient process, because the obtaining and determining steps are
`
`performed in response to only one and the same data access request.
`
`Patent Owner assertions are unpersuasive. As set forth above, independent
`
`claim 1 does not require that the obtaining and determining steps are limited to
`
`being performed in response to only one and the same data access request. The
`
`10
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`IPR2014-00300
`Patent 7,254,621 B2
`
`
`obtaining and determining 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 device shown in Figure 6C.
`
`Patent Owner presents the same assertions for independent 9 and 17 as it
`
`does for independent claim 1. The assertions are similarly unpersuasive for claims
`
`9 and 17, for the same reasons as discussed above with respect to independent
`
`claim 1.
`
`3.
`
`Conclusion
`
`For the foregoing reasons, we conclude that there is a reasonable likelihood
`
`that Petitioner would prevail on the ground that claims 1–9 and 17 are anticipated
`
`by Schilit.
`
`C.
`
`Claims 1–9 and 17 as Unpatentable over Flynn and Schilit
`
`Petitioner asserts that claims 1–9 and 17 are unpatentable as obvious over
`
`Flynn and Schilit. Pet. 31-46.
`
`After carefully considering the Petition and Preliminary Response, we are
`
`persuaded that there is not a reasonable likelihood that Petitioner would prevail in
`
`showing that claims 1–9 and 17 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, Petitioner has not articulated any
`
`difference between the claimed invention and either Flynn or Schilit. Pet. 31–37.
`
`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
`
`11
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`IPR2014-00300
`Patent 7,254,621 B2
`
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`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. 32. 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 meet demonstrate a reasonable likelihood that it would prevail on the ground
`
`that independent claim 1 is unpatentable over Flynn and Schilit. For the same
`
`reasons, Petitioner has also failed to demonstrate a reasonable likelihood that it
`
`would prevail with respect to independent claims 9 and 17, and dependent claims
`
`2–8.
`
`For the foregoing reasons, we conclude that there is not a reasonable
`
`likelihood that Petitioner would prevail on the ground that claims 1–9 and 17 are
`
`unpatentable over Flynn and Schilit.
`
`D.
`
`Claims 1–9 and 17 as Unpatentable over Barrett and Schilit
`
`Petitioner asserts that claims 1–9 and 17 are unpatentable as obvious over
`
`Barrett and Schilit. Pet. 46–58. For claims 1–9 and 17, our analysis is similar to
`
`that set forth above with respect to the ground of obviousness based on Flynn and
`
`Schilit. Specifically, for independent claims 1, 9, and 17, Petitioner has not
`
`articulated any difference between the claimed invention and either Barrett or
`
`12
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`IPR2014-00300
`Patent 7,254,621 B2
`
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`Schilit, and thus has failed to make a meaningful obviousness analysis under 35
`
`
`
`U.S.C. § 103.
`
`For the foregoing reasons, we conclude that there is not a reasonable
`
`likelihood that Petitioner would prevail on the ground that claims 1–9 and 17 are
`
`unpatentable over Barrett and Schilit.
`
`E.
`
`Claims 1–9 and 17 as Anticipated by Flynn
`
`Petitioner asserts that claims 1–9 and 17 are anticipated by Flynn. Pet. 31–
`
`46. This alleged ground of unpatentability is redundant in light of the ground on
`
`the basis of which we institute review for the same claims.
`
`III. ORDERS
`
`
`
`After due consideration of the record before us, and for the foregoing
`
`reasons it is:
`
`
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`
`hereby instituted as to claims 1–9 and 17 of the ’621 patent on the ground of
`
`unpatentability under 35 U.S.C. § 102(e) as anticipated by Schilit;
`
`FURTHER ORDERED that all other grounds raised in the Petition are
`
`denied for the reasons discussed above; and
`
`
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes
`
`review of the ʼ621 Patent is hereby instituted commencing on the entry date of this
`
`Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby
`
`given of the institution of a trial.
`
`
`
`
`
`13
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`IPR2014-00300
`Patent 7,254,621 B2
`
`PETITIONER:
`
`Frank Cimino
`Megan Woodworth
`S. Gregory
`DICKSTEIN SHAPIRO LLP
`CiminoF@dicksteinshapiro.com
`WoodworthM@dicksteinshapiro.com
`HerrmanG@dicksteinshapiro.com
`
`PATENT OWNER:
`
`Tarek Fahmi
`Amy Embert
`ASCENDA LAW GROUP, PC
`tarek.fahmi@ascendalaw.com
`amy.embert@ascendalaw.com
`
`
`14
`
`
`
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