IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In re U.S. Patent No. 7,254,621
`
`Trial Number:
`
`Filed:
`
`Issued:
`
`March 7, 2005
`
`August 7, 2007
`
`Inventors: Sandeep Kishan Singhal
`Barry Eliot Levinson
`Darren Michael Sanders
`
`Assignee: Clouding IP, LLC
`
`Title:
`
`Technique for Enabling Remote Data Access and Manipulation from
`a Pervasive Device
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,254,621
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`

`

`TABLE OF CONTENTS
`
`V.
`
`INTRODUCTION .........................................................................................1
`I.
`II. MANDATORY NOTICES............................................................................4
`A.
`Real Parties-In-Interest ........................................................................4
`B.
`Related Matters....................................................................................4
`C.
`Lead And Back-Up Counsel ................................................................5
`PAYMENT OF FEES....................................................................................5
`III.
`IV. REQUIREMENTS FOR INTER PARTES REVIEW ....................................6
`A.
`Grounds For Standing..........................................................................6
`B.
`Identification Of Challenge..................................................................7
`SUMMARY OF THE ’621 PATENT............................................................7
`A.
`Description Of The ’621 Patent............................................................7
`B.
`Summary Of The Prosecution History ...............................................10
`C.
`Level of Ordinary Skill in the Art ......................................................11
`VI. CLAIM CONSTRUCTION .........................................................................11
`A.
`“Receiving [receive] a data access request” .......................................12
`B.
`“References to the determined data manipulation operations”............13
`C.
`“Location of the pervasive device” ....................................................14
`VII. CLAIMS 1-24 OF THE ’621 PATENT ARE UNPATENTABLE...............15
`A.
`Schilit Anticipates Claims 1-24..........................................................15
`B.
`Description Of The Prior Art Schilit Patent........................................15
`C.
`Detailed Explanation of Invalidity .....................................................20
`1.
`Schilit Anticipates Method Claims 1-8 and Computer Program
`Claims 9-16 .......................................................................................21
`Schilit Anticipates System Claims 17-24 ...........................................36
`2.
`VIII. CONCLUSION ...........................................................................................47
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`Clio USA, Inc. v. The Procter and Gamble Co.,
`IPR2013-00438, Paper No. 9 (P.T.A.B., January 9, 2014) .................................6
`
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007)........................................................................11
`
`Statutes
`
`35 U.S.C. § 102(e) ..................................................................................................7
`
`35 U.S.C. §§ 311-319 .............................................................................................1
`
`35 U.S.C. § 315(a)(1)..............................................................................................6
`
`Other Authorities
`
`37 C.F.R. § 42.15(a) ...............................................................................................5
`
`37 C.F.R. § 42.100(b) ...........................................................................................11
`
`37 C.F.R. §§ 42.100 et seq......................................................................................1
`
`37 C.F.R. § 42.101(a)..............................................................................................6
`
`37 C.F.R. § 42.101(c)..............................................................................................6
`
`37 C.F.R. § 42.104..................................................................................................6
`
`37 C.F.R. § 42.104(b)(4).......................................................................................20
`
`ii
`
`

`

`EXHIBIT LIST
`
`EMC 1001
`
`U.S. Pat. 7,254,621 to Singhal et al. (the “’621 patent”)
`
`EMC 1002
`
`Excerpts from the Prosecution History of Application No.
`11/075,437, which matured into the ’621 patent
`
`EMC 1003
`
`Board’s Decision Instituting Review in IPR 2013-00088
`
`EMC 1004
`
`Board’s Decision Instituting Review in IPR 2014-00300
`
`EMC 1005
`
`U.S. Patent No. 6,925,481 to Singhal et al. (the “’481
`patent”)
`
`EMC 1006
`
`U.S. Patent No. 6,670,968 to Schilit et al. (“Schilit”)
`
`EMC 1007
`
`EMC 1008
`
`EMC 1009
`
`Complaint, Dkt. No. 1 in EMC Corp. et al. v. Clouding IP,
`No. 13-CV-3824 (N.D. Cal.)
`
`Notice of Dismissal, Dkt. No. 8 in EMC Corp. et al. v.
`Clouding IP, No. 13-CV-3824 (N.D. Cal.)
`
`Declaration in Prior Proceedings of Dr. Benjamin Bederson
`with Exhibits
`
`EMC 1010
`
`Declaration of Dr. Benjamin Goldberg (“Goldberg Decl.”)
`
`EMC 1011
`
`Opening Brief in Support of Defendants EMC Corp., EMC
`International U.S. Holdings, Inc. and VMware, Inc.’s
`Motion to Dismiss for Lack of Standing, Dkt. No. 35 in
`Clouding IP v. EMC Corp. et al., No. 13-CV-1455 (D. Del.)
`
`EMC 1012
`
`Order Dismissing Case, Dkt. No. 69 in Clouding IP v. EMC
`Corp. et al., No. 13-CV-1455 (D. Del.)
`
`iii
`
`

`

`I.
`
`INTRODUCTION
`
`EMC Corporation, EMC International U.S. Holdings, Inc., and VMware,
`
`Inc. (collectively, “Petitioners”), respectfully request inter partes review and
`
`cancellation of claims 1-24 of U.S. Patent No. 7,254,621 (the “’621 Patent,”
`
`attached as Ex. 1001) in accordance with 35 U.S.C. §§ 311-319 and 37 C.F.R.
`
`§§ 42.100 et seq.
`
`As described in its Abstract, the ’621 Patent generally relates to “methods,
`
`systems, and computer program instructions for enabling users of pervasive
`
`devices to remotely access and manipulate information in ways that might
`
`otherwise be impossible or impractical because of inherent limitations of the
`
`device.”1 (Ex. 1001 ’621 Patent, Abstract). The claims of the ’621 Patent,
`
`however, are invalid because all of the limitations are disclosed in prior art U.S.
`
`Patent No. 6,670,968 to Schilit (the “Schilit Patent”) (Ex. 1006). Like the later
`
`’621 Patent, the Schilit Patent describes using a mobile phone to access and
`
`manipulate web content.
`
`The Board has already determined – twice in fact – that Schilit anticipates
`
`claims of the ’621 Patent. Clouding IP, LLC (“Clouding”) previously sued Oracle
`
`1
`
`While the ’621 Patent is unclear about what, precisely, is a “pervasive
`
`device,” examples of such a device include two-way pagers, personal digital
`
`assistants, and cellular phones. (Ex. 1001 at 1:30-35).
`
`1
`
`

`

`Corporation (“Oracle”) alleging infringement of certain claims of the ’621 Patent.
`
`In response, Oracle petitioned for inter partes review of the ’621 Patent alleging, in
`
`part, that Schilit anticipated claims 1-9 and 17. Case IPR2013-00088. The Board
`
`considered Schilit, compared it to the claims of the ’621 Patent, and “conclude[d]
`
`that there is a reasonable likelihood that Oracle would prevail on the ground that
`
`claims 1-9 and 17 are anticipated by Schilit.” (Ex. 1003 at 12).
`
`Less than two months after the Board instituted review, Clouding and Oracle
`
`settled their dispute and jointly petitioned the Board to terminate its pending inter
`
`partes review. The Board granted the motion and terminated the Oracle petition
`
`on July 22, 2013.
`
`On July 26, 2013 – just four days after the Board terminated the Oracle inter
`
`partes review – Clouding filed a new complaint alleging that three other entities
`
`infringed claims of the ’621 Patent. Clouding filed a wave of similar complaints
`
`on August 16, 2013 against various other companies including SAP America, Inc.,
`
`EMC Corporation, and VMware, Inc.
`
`On December 26, 2013, SAP America, Inc. petitioned the Board to institute
`
`inter partes review alleging, once again, that Schilit anticipates claims 1-9 and 17.
`
`Case IPR2013-00088. As with the Oracle petition, the Board reviewed the ’621
`
`Patent and the prior art Schilit Patent and determined, for the second time, “that
`
`2
`
`

`

`there is a reasonable likelihood that Petitioner would prevail in showing that claims
`
`1-9 and 17 are anticipated by Schilit.” (Ex. 1004 at 11).
`
`After SAP filed its petition for inter partes review, Clouding identified the
`
`asserted claims in the related district court litigations. Clouding has now asserted
`
`claims that were never previously asserted and, thus, not subject to the Oracle or
`
`SAP petitions. For example, Clouding has alleged that EMC Corporation and
`
`VMware, Inc. infringe claim 10, which was not asserted against Oracle or SAP
`
`and, thus, was not part of those previous petitions even though it, too, is anticipated
`
`by Schilit.2
`
`To avoid piecemeal disputes and establish – once and for all – that none of
`
`the claims of the ’621 Patent are patentable, Petitioners respectfully request that the
`
`Board institute review to consider whether Schilit anticipates all of the claims of
`
`the ’621 Patent. This proceeding would not be cumulative to the Board’s pending
`
`inter partes review of the ’621 Patent as it would include additional claims not at
`
`2
`
`On December 20, 2013, Petitioners moved to dismiss Clouding’s district
`
`court infringement cases “on the ground that Plaintiff Clouding IP, LLC
`
`(‘Clouding IP’) lacks standing because it did not obtain all substantial rights in the
`
`patents-in-suit from Symantec Corp. (‘Symantec’).” (See e.g. Ex. 1011 at 1). On
`
`July 28, 2014, the district court granted motions to dismiss for lack of subject
`
`matter jurisdiction based on lack of standing. (Ex. 1012 at ¶ 1).
`
`3
`
`

`

`issue in that proceeding. Review is appropriate because Schilit anticipates all
`
`claims of the ’621 Patent.
`
`II. MANDATORY NOTICES
`
`A. Real Parties-In-Interest
`
`EMC Corporation, EMC International U.S. Holdings, Inc., and VMware,
`
`Inc., are the real parties-in-interest.3
`
`B. Related Matters
`
`Petitioners identify the following judicial or administrative matters that
`
`would affect, or be affected by, a decision in this proceeding. The district court
`
`cases were dismissed on July 28, 2014 because Clouding lacked standing (see, e.g.,
`
`Ex. 1012 ¶ 1):
`
`Clouding IP, LLC v. Amazon.com, Inc., D. Del. C.A. No. 12-641-LPS
`
`3 Petitioners had an agreement with AT&T Mobility LLC, AT&T Corp. and
`
`Dropbox, Inc. whereby AT&T and Dropbox would join this petition. But, on July
`
`28, 2014, the district court granted defendants’ motion to dismiss for lack of
`
`standing and terminated the cases.
`
`In light of that ruling, AT&T and Dropbox
`
`gave notice that they do not elect to join this petition. AT&T and Dropbox have
`
`taken the position that they are not real parties in interest. Petitioners make this
`
`disclosure pursuant to their obligation to disclose relevant facts regarding the real
`
`parties in interest.
`
`4
`
`

`

`Clouding IP, LLC v. Google Inc., D. Del. C.A. No. 12-639-LPS
`
`Clouding IP, LLC v. Rackspace Hosting, Inc., D. Del. C.A. No. 12-675-LPS
`
`Clouding IP, LLC v. EMC Corp., et al., D. Del. C.A. No. 13-1455-LPS
`
`Clouding IP, LLC v. Dropbox Inc., D. Del. C.A. No. 13-1454-LPS
`
`Clouding IP, LLC v. SAP AG, et al., D. Del. C.A. No. 13-1456-LPS
`
`Clouding IP, LLC v. Verizon Inc., et al., D. Del. C.A. No. 13-1458-LPS
`
`Clouding IP, LLC v. AT&T Corp., D. Del. C.A. No. 13-1342-LPS
`
`Clouding IP, LLC v. Citrix Systems, Inc., D. Del. C.A. No. 13-1453-LPS
`
`IPR2013-00088, initiated by Oracle (review instituted based on same prior
`
`art asserted here; now terminated due to settlement of the parties)
`
`IPR2014-00300, initiated by SAP (review instituted based on same prior art
`
`asserted here)
`
`C. Lead And Back-Up Counsel
`
`Petitioners designate the following counsel, with service information (a
`
`Power of Attorney accompanies this Petition):
`
`Lead Counsel
`
`Backup Counsel
`
`Don Daybell
`d2dptabdocket@orrick.com
`Registration No. 50,877
`CA Bar No. 210961
`ORRICK, HERRINGTON, &
`SUTCLIFFE LLP
`2050 Main St., Suite 1100
`Irvine, CA 92614
`Tel: 949-567-6700
`
`Mark Shean
`m2sptabdocket@orrick.com
`Registration No. 54,441
`CA Bar No. 217671
`ORRICK, HERRINGTON, &
`SUTCLIFFE LLP
`2050 Main St., Suite 1100
`Irvine, CA 92614
`Tel: 949-567-6700
`
`5
`
`

`

`Fax: 949-567-6710
`Customer No. 34313
`
`Fax: 949-567-6710
`Customer No. 34313
`
`III. PAYMENT OF FEES
`
`The undersigned authorizes the Office to charge $27,400.00 to Deposit
`
`Account No. 15-0665 as the fee required by 37 C.F.R. § 42.15(a) for this Petition
`
`for Inter Partes Review. The undersigned further authorizes payment for any
`
`additional fees or credit of overpayment that might be due in connection with this
`
`Petition to Deposit Account 15-0665.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`inter partes review of the ’621 Patent is satisfied.
`
`A. Grounds For Standing
`
`Petitioners certify that the ’621 Patent is available for inter partes review
`
`and that the Petitioners are not barred or estopped from requesting inter partes
`
`review challenging the claims of the ’621 Patent on the grounds identified herein.
`
`Petitioners have been sued for infringement of at least one claim of the ’621 Patent
`
`in Clouding IP, LLC v. EMC Corp., et al., D. Del. C.A. No. 13-1455-LPS (served
`
`August 20, 2013). Petitioners are not estopped from challenging the claims on the
`
`6
`
`

`

`grounds identified in the petition.4 37 C.F.R. § 42.101(c). Petitioners have not
`
`been party to any other inter partes review of the challenged claims.
`
`B.
`
`Identification Of Challenge
`
`The precise relief requested by Petitioners is that the Patent Trial and Appeal
`
`Board institute inter partes review of claims 1-24 of the ’621 Patent and cancel
`
`those claims as unpatentable as anticipated by U.S. Patent No. 6,670,968 to Schilit
`
`et al. (“Schilit”), filed July 10, 2000, issued December 30, 2003. Schilit is prior art
`
`to the ’621 Patent under at least 35 U.S.C. § 102(e).
`
`Charts are provided in section VII, below, detailing where each claim
`
`limitation is disclosed in the prior art.
`
`The proper construction of the claims is addressed in section VI, below.
`
`This petition relies on the declaration of Dr. Benjamin Goldberg, Ph.D., as
`
`4
`
`On August 19, 2013, Petitioners EMC Corporation and VMware, Inc. filed
`
`an action seeking declaratory judgment that the ’481 Patent was not infringed and
`
`invalid. (Ex. 1007 (Complaint)). That case was voluntarily dismissed, without
`
`prejudice, on Sept. 9, 2013, before Patent Owner answered. (Ex. 1008 (Notice of
`
`Voluntary Dismissal)). Because that action was dismissed without prejudice, the
`
`Board has previously determined that 35 U.S.C. § 315(a)(1) and 37 C.F.R. §
`
`42.101(a) do not apply. Clio USA, Inc. v. The Procter and Gamble Co., IPR2013-
`
`00438, Paper No. 9, at 7-9 (P.T.A.B., January 9, 2014).
`
`7
`
`

`

`supporting evidence regarding the level of ordinary skill in the art and how one of
`
`ordinary skill in the art would have understood the ’621 Patent and the prior art
`
`reference, as well as for a background of the technology. Dr. Goldberg’s
`
`qualifications and opinions are set forth in his declaration, attached hereto as
`
`Exhibit 1010 (“Goldberg Decl.”).
`
`V. SUMMARY OF THE ’621 PATENT
`
`A. Description Of The ’621 Patent
`
`The ’621 Patent is entitled “technique for enabling remote data access and
`
`manipulation from a pervasive device.” The ’621 Patent provides the following
`
`summary of its alleged invention:
`
`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 at 1:14–20).
`
`The Board previously reviewed and summarized the ’621 Patent in the
`
`Oracle and SAP inter partes review proceedings:
`
`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.
`
`8
`
`

`

`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.
`
`(Ex. 1004 at 2-3).
`
`More specifically, as described by the ’621 Patent, a pervasive device
`
`requests information (such as a web page) not stored on the device. (See Ex. 1001
`
`at 6:38-46, 10:21-26). This request is received by a protocol proxy, which
`
`forwards it to the appropriate information source, such as a web server. (See id. at
`
`5:46-60, 10:33-39). The requested information (e.g., the web page) is returned and
`
`the protocol proxy determines what services are available to manipulate the
`
`retrieved content. (See id. at 10:39-57). This is illustrated in Figure 1 of the ’621
`
`Patent:
`
`9
`
`

`

`(Ex. 1001 at Fig. 1)
`
`For example, if the retrieved information is text, the available services may
`
`include displaying, printing, or emailing that text. (See id. at 3:38-42).
`
`Conversely, if the retrieved information is a phone number, the available services
`
`may include dialing that number. (Id. at 8:16-18). The available services are
`
`determined from a data manipulation server, which maintains a repository of
`
`available services for different types of data. (Id. at 7:55-61). The protocol proxy
`
`returns the requested information, along with a list of available services and their
`
`locations, to the pervasive device. (See id. at 15:58-60, Fig. 1, message flow 7).
`
`10
`
`

`

`B. Summary Of The Prosecution History
`
`The ’621 Patent was filed as application No. 11/075,437 (“the ’437
`
`application”) on March 7, 2005. The ’437 application was a continuation of
`
`Application No. 09/848,394 (U.S. Patent No. 6,925,481 (“the ’481 Patent,” Ex.
`
`1005)).5 The ’437 application ultimately issued as the ’621 Patent.
`
`On January 8, 2007, claims 1-24 of the ’437 application were rejected due to
`
`nonstatutory obviousness-type double patenting based on the ’481 Patent. The
`
`Examiner noted, however, the claims would be allowable upon receiving a terminal
`
`disclaimer because the Examiner believed that “the prior art of record does not teach
`
`providing references to determined data manipulation operations for obtained data to a
`
`pervasive device that requests the data.” (Ex. 1002 at January 8, 2007 Office Action).
`
`On January 26, 2007, the applicants submitted a terminal disclaimer and claims 1-24
`
`were allowed.
`
`Notably, the Schilit Patent – which teaches the limitation the Examiner
`
`believed missing from the prior art of record – was not cited during the prosecution of
`
`the ’621 Patent.
`
`5
`
`Petitioners have filed a separate inter partes review petition directed to the
`
`claimed subject matter of the ’481 patent.
`
`11
`
`

`

`C. Level of Ordinary Skill in the Art
`
`A person of ordinary skill in the art to which the ’621 Patent is directed, as
`
`of around 2001, the claimed priority date of the ’621 Patent, would have had a
`
`bachelor’s or master’s degree in electrical engineering, computer science, or
`
`computer engineering, or a similar field. Such a person would also have
`
`familiarity with client-server computing and two years of experience developing
`
`software for mobile devices and client-server systems. (Goldberg Decl. at ¶ 12).
`
`VI. CLAIM CONSTRUCTION
`
`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).
`
`For purposes of this petition, Petitioners submit that the following terms, all
`
`of which have been previously construed by the Board, should be construed again
`
`in the same manner:
`
`(1) “receiving [receive] a data access request”;
`
`(2) “references to the determined data manipulation operations”; and,
`
`(3) “location of the pervasive device”.
`
`12
`
`

`

`For all remaining terms, Petitioners submit, for the purposes of this inter partes
`
`review only, that the broadest reasonable interpretation is the ordinary and
`
`customary meaning that the terms would have had to one of ordinary skill in the
`
`art. Petitioners submit that none of the challenged claims contain a means-plus-
`
`function or step-plus-function limitation.
`
`A.
`
`“Receiving [receive] a data access request”
`
`For purposes of this inter partes review, Petitioners submit that the broadest
`
`reasonable construction of “receiving [receive] a data access request” is the
`
`construction adopted by the Board in the Oracle and SAP proceedings.
`
`Specifically, the broadest reasonable construction of the term “receiving a data
`
`access request” as used in claims 1 and 9, and the term “receive a data access
`
`request” as used in claim 17 of the ’621 Patent, does not preclude receiving
`
`additional data access requests, or having steps performed also in response to
`
`another request. IPR2013-00088 and IPR2014-00300. (Ex. 1003 at 7-8; Ex. 1004
`
`at 5-7).
`
`As the Board twice noted, this construction is consistent with the open-
`
`ended transition “comprising” in the independent claims. IPR2013-00088 and
`
`IPR2014-00300. (Ex. 1003 at 7-8; Ex. 1004 at 5-7). It is also consistent with the
`
`specification, which explicitly notes that the embodiments in which only one
`
`13
`
`

`

`request was disclosed were not to be construed as limiting. (Ex. 1001 at 18:43-45);
`
`(see also Ex. 1003 at 7-8; Ex. 1004 at 5-7).
`
`B.
`
`“References to the determined data manipulation operations”
`
`For purposes of this inter partes review, Petitioners submit that the broadest
`
`reasonable construction of the term “references to the determined data
`
`manipulation operations” is the construction adopted by the Board in the Oracle
`
`and SAP proceedings. Specifically, the broadest reasonable construction of the
`
`term “references to the determined data manipulation operations” as used in claims
`
`1, 8, 9, 16, 17, and 24 of the ’621 Patent, means “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.”
`
`IPR2013-00088 and IPR2014-00300. (Ex. 1003 at 9-10; Ex. 1004 at 7-8).
`
`As the Board twice noted, this construction finds direct support in the
`
`specification, which discloses that the references to data manipulation operations
`
`“may employ address formats other than URLs, such as e-mail addresses, or
`
`perhaps a combination of an e-mail address and subject line, to designate a service
`
`to be invoked.” (Ex. 1001 at 9:22-25; see also Ex. 1003 at 9-10; Ex. 1004 at 7-8).
`
`C.
`
`“Location of the pervasive device”
`
`For purposes of this inter partes review, Petitioners submit that the broadest
`
`reasonable construction of the term “location of the pervasive device” is the
`
`14
`
`

`

`construction adopted by the Board in the Oracle proceeding. Specifically, the
`
`broadest reasonable construction of the term “location of the pervasive device” as
`
`used in claims 6, 14, and 22 of the ’621 Patent, means “a physical location of the
`
`pervasive device.” IPR2013-00088. (Ex. 1003 at 10).
`
`As the Board previously noted, this construction is supported by the
`
`specification of the ’621 Patent, which “discloses that location information may be
`
`determined by querying a global positioning system (“GPS”) function on the
`
`pervasive device. (Ex. 1001, 11:32-37.)” IPR2013-00088. (Ex. 1003 at 10). This
`
`construction is also consistent with the claim language, which requires determining
`
`the physical location of the pervasive device in order to identify what data
`
`manipulation operations are available for the current location of the pervasive
`
`device. (See, e.g., Ex. 1001, claims 6, 14, and 22).
`
`VII. CLAIMS 1-24 OF THE ’621 PATENT ARE UNPATENTABLE
`
`A. Schilit Anticipates Claims 1-24
`
`The Board has determined on two occasions that there to be a reasonable
`
`likelihood that Schilit anticipates claims 1-9 and 17 of the ’621 Patent. (See Ex.
`
`1003 at 11-12, 13 (Oracle); Ex. 1004 at 10-11, 13 (SAP)). While Clouding had not
`
`asserted other claims at the time those petitions were filed, Schilit also anticipates
`
`claims 10-16 and 18-24, which include limitations that are identical or essentially
`
`15
`
`

`

`identical to those already determined by the Board to be taught by Schilit. In other
`
`words, Schilit anticipates all of the claims of the ’621 Patent.
`
`B. Description Of The Prior Art Schilit Patent
`
`Schilit describes a system that allows a user of a mobile (pervasive) device
`
`to request access to data, such as a web page, from a server using a proxy that
`
`converts the data to suit the capabilities of the mobile device.6 (See, e.g., Ex. 1006
`
`at 5:30-34). A server in Schilit’s system maintains a database of available services
`
`(data manipulation operations such as “print” or “fax”) and provides to the
`
`pervasive device references (service invocation addresses) of services that are
`
`available to the device. (See, e.g., Ex. 1006 at 5:45-51, 8:62-9:5, 11:1-10). With
`
`this information, the device can request or invoke an available service (data
`
`manipulation operation). (See, e.g., Ex. 1006 at 8:60-9:9). Schilit also discloses
`
`that a selection of the services that are made available may vary depending on the
`
`6
`
`The Schilit Patent expressly states that its invention can be used with mobile
`
`devices such as cellular phones and personal digital assistants such as the Nokia
`
`9000 Communicator. (See e.g., Ex. 1006 at 8:36-48 and Fig. 5B (cellular phone)
`
`and at 10:45-47 and Fig. 2 (personal digital assistant)). Cellular phones and
`
`personal digital assistants are two examples of “pervasive devices” identified in the
`
`’621 Patent. (Ex. 1001 at 1:30-35).
`
`16
`
`

`

`content type of the data, the user requesting access, or the physical location of the
`
`pervasive (mobile) device. (See, e.g., Ex. 1006 at 9:41-54, 4:52-54, 4:58-60).
`
`Specifically, Schilit and the ’621 Patent both envision an architecture in
`
`which a mobile device (WID 130 in the Figure 1 of the ’481 Patent, mobile-device
`
`11 in Figure 7 of the Schilit Patent, both shaded yellow for identification) request
`
`data from webservers and receive both the requested data, as well as the location of
`
`data manipulation operations that can be performed on that data:
`
`(Ex. 1001, Fig. 1).
`
`(Schilit, Fig. 7)
`
`The Board has twice considered and summarized the teachings of the Schilit
`
`Patent as it relates to the ’621 Patent:
`
`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 [Schilit Patent], 5:30–32. The m-link program
`
`17
`
`

`

`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:
`
`(Ex. 1004 at 8). The Board continued, noting:
`
`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 [Schilit Patent], 5:48–49.
`
`18
`
`

`

`(Ex. 1004 at 9). The Board concluded its review of Schilit, observing that:
`The services are hosted on a database. Ex. 1006 [Schilit Patent],
`10:1–2. The list of content-appropriate services, including printing
`and faxing, are provided 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.
`(Ex. 1004 at 10).
`
`Based on its previous review of the Schilit Patent, the Board has twice
`
`determined that Schilit teaches the limitations of claims of the ’621 Patent. For
`
`example, the Board summarized why there is a reasonable likelihood that Schilit
`
`anticipates claim 1 of the ’621 Patent:
`
`[I]ndependent 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
`
`19
`
`

`

`document identified by a user-selected URL. Ex. 1006 [Schilit
`Patent], 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.
`(Ex. 1004 at 10). As set forth in the detailed charts, below, Schilit likewise
`
`anticipates claims 2-24.
`
`C. Detailed Explanation of Invalidity
`
`Pursuant to 37 C.F.R. § 42.104(b)(4), Petitioners provide in the following
`
`claim charts a detailed comparison of the claimed subject matter and the prior art,
`
`specifying where each element of each challenged claim is found in the prior art
`
`reference.
`
`The ’621 Patent contains multiple claims with substantially similar elements.
`
`Thus, for the sake of convenience, similar claim elements are grouped and
`
`discussed together. Specifically, the ’621 Patent includes three independent
`
`claims. While these claims ostensibly relate to a method, computer program, and
`
`system, they incorporate substantially similar – often identical – limitations. (See
`
`Goldberg Decl. at ¶¶ 24-25). The same is true for the three sets of dependent
`
`20
`
`

`

`claims (claims 2-8, 10-16, and 18-24). (See Goldberg Decl. at ¶¶ 24-25). For
`
`example, compare claim 4 (method) with analogous claims 12 (computer program)
`
`and 20 (system), below:
`
`4. The method of claim 1,
`
`12. The computer
`
`20. The system of claim
`
`program product of claim
`
`17,
`
`9,
`
`wherein the determining
`
`wherein the determining
`
`wherein the protocol
`
`step further comprises
`
`step further comprises
`
`proxy is further adapted to
`
`determining what data
`
`determining what data
`
`determine what data
`
`manipulation operations
`
`manipulation operations
`
`manipulation operations
`
`are available for a content
`
`are available for a content
`
`are available for a content
`
`type of the obtained data.
`
`type of the obtained data.
`
`type of the obtained data.
`
`As explained in the prior petitions, the following claim charts, and the supporting
`
`declaration of Dr. Goldberg, the methods, computer programs, and systems
`
`claimed in the ’621 Patent are all anticipated by Schilit.
`
`21
`
`

`

`1. Schilit Anticipates Method Claims 1-8 and Computer Program
`Claims 9-16.
`
`’621 Claim
`1. A method of
`enabling data access
`and manipulation from
`a pervasive device,
`comprising the steps
`of:
`
`U.S. Patent No. 6,670,968 (“Schilit”) (Ex. 1006)
`Schilit discloses a method and computer program (the m-
`link web browser and its use) for enabling data access
`and manipulation from a mobile device such as a cell
`phone (the claimed “pervasive device”). Specifically,
`Schilit teach