Petitioner’s Reply in Support of Petition
`IPR2015-00523
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SERVICENOW, INC.
`Petitioner
`
`v.
`
`HEWLETT-PACKARD COMPANY
`Patent Owner
`
`Case IPR2015-00523
`Patent 6,321,229
`
`
`
`PETITIONER’S REPLY
`
`
`
`
`
`
`
`IPR2015-00523
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SERVICENOW, INC.
`Petitioner
`
`v.
`
`HEWLETT-PACKARD COMPANY
`Patent Owner
`
`Case IPR2015-00523
`Patent 6,321,229
`
`
`
`PETITIONER’S REPLY
`
`
`
`
`
`
`
`
`Table of Contents
`
`
`Page
`
`
`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`JONES AND FOX DISCLOSE A “DERIVED CONTAINER” THAT
`CORRESPONDS TO A “CATEGORY OF INFORMATION
`STORED IN SAID INFORMATION REPOSITORY” ................................ 1
`A.
`The Claims Do Not Require a “Category” Itself Be Stored ................ 3
`B.
`Jones and Fox Disclose a Stored “Category of Information” .............. 4
`C.
`The Patent Owner’s Speculation About Broken or Incomplete
`Links in Jones is Meritless ................................................................... 6
`JONES AND FOX DISCLOSE “INFORMATION EXTRACTED
`FROM SAID INFORMATION REPOSITORY” .......................................... 7
`JONES AND FORTA ARE COMBINABLE FOR CLAIMS 15 AND
`17 .................................................................................................................... 9
`THE PATENT OWNER’S PROPOSED CONSTRUCTION OF
`“DERIVED CONTAINER” SHOULD BE REJECTED ............................. 14
`A.
`Even Under the Patent Owner’s Proposed Construction of
`“Derived Container,” the Cited Prior Art Discloses It ....................... 15
`VI. CONCLUSION ............................................................................................. 18
`
`III.
`
`IV.
`
`V.
`
`
`
`
`
`‐i‐
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00523
`I.
`Introduction
`
`The Federal Circuit has “repeatedly cautioned against limiting the claimed
`
`invention to preferred embodiments or specific examples in the specification.”
`
`Imaginal Systematic, LLC v. Leggett & Platt, Inc., 805 F.3d 1102, 1109-10 (Fed.
`
`Cir. 2015) (quotations omitted; citing cases). In fact, the Federal Circuit has
`
`expressly rejected the contention that even if a patent “describes only a single
`
`embodiment, the claims of the patent must be construed as being limited to that
`
`embodiment.” Hill-Rom Services, Inc. v. Stryker Corp., 755 F. 3d 1367, 1371-72
`
`(Fed. Cir. 2014) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F. 3d 898, 906
`
`(Fed. Cir. 2004)) (emphasis added).
`
`Yet despite this longstanding rule of claim interpretation, nearly the entirety
`
`of the patent owner’s response consists of repeated attempts to import unwarranted
`
`limitations from the specification into the claims. The patent owner’s arguments
`
`should be rejected. Because the cited prior art discloses or suggests each limitation
`
`of claims 8-10, 13, 15, 17 and 18-20, and renders the challenged claims obvious,
`
`the Board should find those claims unpatentable based on the instituted ground.
`
`II.
`
`Jones and Fox Disclose A “Derived Container” That Corresponds To A
`“Category of Information Stored in Said Information Repository”
`
`Independent claims 8, 17 and 18 each recite an “information repository” and
`
`a computer or computer code for “creating a hierarchy of derived containers,
`
`wherein a given derived container corresponds to . . . a category of information
`
`
`
`
`
`-1-
`
`
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00523
`stored in said information repository.” The patent owner asserts that the prior art
`
`does not disclose this limitation, but its arguments rely on a narrow and
`
`unsupported construction of this phrase and a misreading of the prior art.
`
`As explained in the Petition, Jones discloses an information repository such
`
`as an on-line Customer Support Library. (Petition at 22-23.) The “hierarchy of
`
`derived containers” in Jones takes the form of hyperlinked TOC entries on an
`
`HTML (web) page, which correspond to HTML pages stored in the information
`
`repository. (Petition at 28-29.) A hyperlinked TOC entry corresponds to a
`
`“category of information stored in said information repository” because the URL
`
`for the TOC entry includes a NAME attribute from an HTML file stored in the
`
`information repository. (Petition at 30-33.) For example, Jones discloses the URL
`
`“/Technology/whitepapers.html#VRML,” with the text “VRML” being a NAME
`
`attribute that categorizes the contents of a section of the “whitepapers.html” file.
`
`(Id.) Both the NAME attribute, and the underlying information it categorizes, are
`
`stored in the HTML file. (Id.)
`
`The patent owner argues that the cited prior art fails to disclose “a category
`
`of information stored in said information repository” because, according to the
`
`patent owner: (1) the “category of information” itself must be stored in the
`
`information repository; (2) no part of the URLs in the TOC entries in Jones and
`
`Fox corresponds to a category of information; and (3) the NAME attribute of a
`
`
`
`
`
`-2-
`
`
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00523
`URL in Jones and Fox does not come from the information repository itself.
`
`(Resp. at 22-23.) Each of these arguments is addressed in turn below. As
`
`explained below, each of these arguments is not only premised on an erroneous
`
`view of the claim language, but irrelevant because the prior art discloses the
`
`limitation even under the patent owner’s erroneous reading.
`
`A. The Claims Do Not Require a “Category” Itself Be Stored
`
`The patent owner contends that the “claim language is clear on its face” that
`
`the category itself must be stored in the information repository. (Resp. at 22.) But
`
`the claim language does not impose such a requirement. The claims require that “a
`
`given derived container corresponds to . . . a category of information stored in said
`
`information repository.” (’229, Ex. 1001, claim 8, 17, 18.) The correct broadest
`
`reasonable interpretation of this phrase is that “stored” modifies the “information
`
`in said information repository,” not “category.” (Petition at 31.) Accordingly, the
`
`information that is the subject to the category must be stored in the information
`
`repository, not some separate and unclaimed category field. (Id.)
`
`The patent owner’s argument relies on improperly importing an embodiment in
`
`which the category corresponds to a field stored in a database. (Resp. at 22-23.)
`
`But the claims do not recite a database, let alone fields in a database. The ’229
`
`patent is clear that an information repository need not be a database. (E.g., ’229,
`
`1:32-35.) In fact, the patent owner’s own expert agreed at his deposition that the
`
`
`
`
`
`-3-
`
`
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00523
`claims do not require a database. (Onnen Tr., Ex. 1029, at 17:12-22, 18:6-8, 19:1-
`
`4.) Moreover, the Board correctly determined in its institution decision that the
`
`term “information repository” simply refers to a collection of information, and the
`
`patent owner has not challenged that construction. (Decision, at 4-5.)1
`
`The patent owner’s attempt to import a database embodiment from
`
`specification should therefore be rejected. Imaginal Systematic, 805 F.3d at 1109-
`
`10; Hill-Rom Services, 755 F. 3d at 1371-72. The Board should accordingly find
`
`that the claims do not require that the “category” itself, rather than the underlying
`
`information represented by the category, be stored in the information repository.
`
`B.
`
`Jones and Fox Disclose a Stored “Category of Information”
`
`Even if the claims did require that a category itself (separate from the
`
`underlying information) be stored in the information repository, Jones and Fox still
`
`disclose and render obvious this limitation. As explained in the Petition, it would
`
`have been obvious in view of Jones and Fox that a NAME attributes (e.g.,
`
`“VRML” in “/Technology/whitepapers.html#VRML”) is stored in the HTML
`
`document to which the URL refers (“whitepapers.html”), the HTML document
`
`1 In a footnote, the patent owner suggests that the Board construe “category of
`
`information” as “a field from a database.” (Resp. at 23 n.2.) As explained in the
`
`text, there is no support in the claims or specification for such a requirement, and
`
`even the patent owner’s expert agrees that the claims do not require a database.
`
`
`
`
`
`-4-
`
`
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00523
`being stored in the information repository. (Petition at 31-33.) The NAME
`
`attribute is therefore stored in the information repository and thus satisfies the
`
`claim limitation even under the patent owner’s narrow and erroneous construction.
`
`The patent owner presents two arguments that the NAME attribute does not
`
`correspond to a category of information. First, the patent owner asserts that “the
`
`NAME attribute is simply an arbitrary tag/bookmark that will cause the end user to
`
`jump to a specific location within a document.” (Resp. 23.) The patent owner
`
`does not explain why this meaningfully distinguishes the “category of information”
`
`claim limitation. The fact that the web browser uses the NAME attribute to jump
`
`to the section of an HTML document does not preclude the NAME attribute from
`
`also corresponding to a category of information in that document.
`
`To the contrary, it would have been obvious that the NAME field will
`
`correspond to a category of information in the document to which it refers.
`
`(Petition at 34-35.) Fox specifically discloses using the NAME attribute to create a
`
`table of contents to categorize a document into a series of topics. (Fox, Ex. 1004,
`
`at 361-63.) Fox discloses an example of a NAME attribute of “jew” to identify a
`
`section of a document discussing the world’s major religions about Judaism.
`
`(Petition at 33 (quoting Fox at 362-33).) The patent owner’s own expert agreed
`
`that it “makes sense” for a NAME attribute to describe the subject matter of its
`
`associated section. (Onnen Tr., Ex. 1029, 36:4-16; see also id. at 19:6-20:12
`
`
`
`
`
`-5-
`
`
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00523
`(explaining that an HTML anchor tag with a NAME attribute, such as <A
`
`NAME=“jew”>, is called a “named anchor”); see also Fox at 360-61.) It therefore
`
`would have been obvious to a person of ordinary skill in the art that a NAME
`
`attribute in Jones could categorize the section of a document with which it is
`
`associated, as described in Fox. (Petition at 34-35.)
`
`As a second argument, the patent owner contends that a NAME attribute is
`
`not a “category of information” because it “do[es] not correspond to a field from a
`
`database.” (Resp. at 23.) As explained above, the claims do not require a
`
`database, which the patent owner’s expert freely acknowledged. Even the patent
`
`owner itself admits that a database is only an example of an “information
`
`repository.” (Resp. at 3.) The patent owner’s improper attempt to import a “field
`
`from a database” requirement into the claims should be rejected.
`
`C. The Patent Owner’s Speculation About Broken or Incomplete
`Links in Jones is Meritless
`
`The patent owner next speculates that the NAME attribute in a hyperlinked
`
`TOC entry in Jones (e.g., “VRML” in “/Technology/whitepapers.html#VRML”)
`
`might not exist in the linked-to web page (e.g. “whitepapers.html”). (Resp. at 24-
`
`25.) This argument is based on pure speculation. Jones nowhere suggests the
`
`creation of a NAME attribute that does not correspond to a section name in the
`
`referenced HTML file. The patent owner’s own expert admitted that it would
`
`make no sense for the TOC of Jones to include hyperlinks that were broken or did
`
`
`
`
`-6-
`
`
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00523
`not work as intended. (Onnen Tr., Ex. 1029, 41:21-25, 43:23-44:8.)
`
`Even if there was a basis for such speculation, the patent owner’s argument
`
`ignores the teachings of Fox that were specifically combined with Jones for
`
`purposes of this limitation. Fox specifically teaches an example URL that includes
`
`a NAME attribute that does exist in the linked-to web page. (Petition at 33
`
`(quoting Fox at 362-63).) The fact that the contents of “whitepapers.html” is not
`
`set forth in Jones is therefore irrelevant. It would have been obvious to a person of
`
`ordinary skill in the art that the NAME attribute in the URL of Jones could
`
`correspond to the name of a section in the referenced-to document, as disclosed in
`
`Fox. (Id. at 33-34.) As explained in the Petition, the whole point of specifying a
`
`NAME attribute in a URL (e.g. “VRML”) is to allow the browser to match it with
`
`a heading in the referenced HTML document (e.g. “whitepapers.html”) in order to
`
`promote more efficient navigation. (Id. at 34.)
`
`III. Jones and Fox Disclose “Information Extracted From Said Information
`Repository”
`
`Claims 9-10 and 19-20 of the ’229 patent recite that the contents of certain
`
`derived containers comprise “information extracted from said information
`
`repository.” As explained in the Petition, that extracted information corresponds to
`
`the NAME attribute from the URL discussed above. (Petition at 39-41.) The
`
`patent owner asserts that the NAME attribute is “hard-coded into the structure
`
`definition file,” and thus was somehow not “extracted” from the information
`
`
`
`
`-7-
`
`
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00523
`repository. (Resp. at 29-30.)
`
`The patent owner’s argument appears to read “extracted” to require some
`
`kind of computerized process in which the information repository is analyzed and
`
`parsed to extract information to place into the derived containers. But the claim
`
`imposes no such requirement.
`
` The broadest reasonable interpretation of
`
`“extracted” in this context is simply “obtained” or “derived.” (Random House
`
`Webster’s College Dictionary (2000), Ex. 1032, at 467 (“extract . . . to derive;
`
`obtain”).) The claims do not recite any mechanism for obtaining information from
`
`the information repository –
`
`let alone require some kind of unclaimed
`
`computerized extraction process. The patent owner’s expert agreed, in fact, that
`
`information could be extracted before a derived container is even created. (Onnen
`
`Tr., Ex. 1029, 67:16-23.) This confirms that the extraction could be performed
`
`manually, separate from the creation of the derived containers by the software.2
`
`The patent owner’s argument also defies common sense. It would have been
`
`obvious to a person of ordinary skill in the art to create the NAME attribute for the
`
`2 The patent owner confusingly points to statements in the ’229 specification
`
`regarding the “selection criteria attribute” of claims 15 and 17 as causing “dynamic
`
`extraction.” (Resp. at 37.) These disclosures are irrelevant because claims 9-10
`
`and 19-20 do not recite a “selection criteria attribute,” nor do they require
`
`“dynamic” extraction or recite anything that “causes” extraction.
`
`
`
`
`
`-8-
`
`
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00523
`URL in Jones (e.g. “VRML) by “extracting” that attribute from the underlying
`
`HTML document to which the URL refers (e.g. “whitepapers.html”). Fox
`
`specifically describes using such a technique to create a master table of contents
`
`for existing HTML documents. (Ex. 1004, at 363.) The patent owner tellingly
`
`does not offer any alternative for creating the LABEL attribute in Jones other than
`
`“extracting” it from the underlying HTML document.
`
`The cited prior art fully discloses “contents” of “derived containers”
`
`comprising “information extracted from the information repository.”
`
`IV. Jones and Forta Are Combinable for Claims 15 and 17
`
`Claims 15 and 17 recite the ability of a container definition node to include a
`
`“selection criteria attribute.” The Petition combined Jones with Forta for this
`
`claimed feature. Forta teaches the ability to incorporate Structured Query
`
`Language (“SQL”) commands into a file that is processed by a program to extract
`
`information from a database and dynamically create a web page. (Petition at 51-
`
`52.) The Petition explained that a person of ordinary skill in the art would have
`
`found it obvious to combine Forta with Jones, which would have allowed “the
`
`TOC entries in Jones (i.e. the claimed ‘derived containers’) to query a database to
`
`extract information from a database or other information repository when the TOC
`
`is displayed.” (Id. at 53.) The Petition identified a number of reasons why it
`
`would have been advantageous to incorporate the database querying functionality
`
`
`
`
`
`-9-
`
`
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00523
`of Forta into Jones. (Id. at 53-54.)
`
`The patent owner presents a series of arguments as to why, according to the
`
`patent owner, a skilled artisan would not have combined Jones with Forta. Many
`
`of these arguments are premised on the idea that it would be difficult to physically
`
`combine the two software systems. (Resp. at 40-41 (“It would be difficult for a
`
`software developer to combine these two different dynamic HTML generation
`
`systems.”); Resp. at 42 (“[I]t would not have been obvious to a person of ordinary
`
`skill in the art how the two servers could be combined to cooperatively generate a
`
`single web page without having the results of one server obliterate the results of
`
`the other.”).) These arguments are meritless for several reasons.
`
`First, the patent owner’s arguments misstate the proposed combination. The
`
`Petitioner never argued that the entire ColdFusion hardware and software system
`
`of Forta would have to be physically incorporated into Jones. The Petition instead
`
`showed that a person of ordinary skill in the art would have found it obvious to
`
`substitute the static LABEL attribute in Jones with a dynamic SQL query from a
`
`database, as taught by Forta. (Petition at 53.) The Petition also demonstrated that
`
`it would have trivial to incorporate such functionality into Jones. (Id. at 54-55
`
`(citing Klausner Decl., Ex. 1002, ¶ 130).) The patent owner does not dispute this.
`
`In fact, as Forta itself explains, SQL “is designed to be both easy to learn and
`
`extremely powerful.” (Forta, Ex. 1005, 028.)
`
`
`
`
`
`-10-
`
`
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00523
`The gist of the patent owner’s arguments is that the systems of Jones and
`
`Forta might be difficult to physically combine. But as the Federal Circuit has
`
`explained: “It is well-established that a determination of obviousness based on
`
`teachings from multiple references does not require an actual, physical substitution
`
`of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012); In re Sneed,
`
`710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of
`
`the references be physically combinable to render obvious the invention under
`
`review.”). The patent owner’s arguments are therefore meritless.
`
`The patent owner also contends that “a person of ordinary skill in the art at
`
`the time of the invention would have found the TOC of Jones to be functionally
`
`adequate and not in need of improvement.” (Resp. at 39-40.) The patent owner
`
`offers no evidence to support this assertion. As explained in the Petition, a person
`
`of ordinary skill in the art would have appreciated that the techniques in Forta
`
`could have improved the TOC system in Jones by ensuring that the user of Jones
`
`received the most current information from the on-line support library, and by
`
`preventing the system administrator from having to manually modify the structure
`
`definition file (190) each time the content of the support library changes. (Petition
`
`at 53-54.) Forta itself provides multiple express motivations for such a
`
`combination. (Id.) The patent owner does not refute them.
`
`
`
`
`
`
`
`-11-
`
`
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00523
`In a variance of its physical combinability arguments discussed above, the
`
`patent owner’s expert asserts that “trying to track changes to the NAME attributes
`
`would have been a challenge in 1999” and that “[e]ven today, over 15 years later,
`
`Google does not track or allow a user to query the NAME attributes within web
`
`pages.” (Onnen Decl., Ex. 2003, ¶ 101.) The patent owner’s expert provides no
`
`support for these claims. With respect to the ability to “track changes to the
`
`NAME attributes,” the patent owner offers no explanation as to why that would be
`
`required (technically or otherwise) in a proposed combination of Jones and Forta.
`
`Moreover, factually speaking, the patent owner’s expert was wrong. Even a
`
`trivial search using Google shows that that search engine tracks changes to NAME
`
`attributes. The image below shows the results of a Google search for “brooklyn
`
`bridge history construction,” showing that it contains a hyperlink to a URL with a
`
`NAME attribute (“https://en.wikipedia.org/wiki/Brooklyn_ Bridge#Construction”),
`
`thereby providing the ability to “jump to” a specific section of a web page from the
`
`search results page:
`
`
`
`
`
`
`
`-12-
`
`
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00523
`
`
`
`(See
`
`https://www.google.com/search?q=brooklyn+bridge+history+construction
`
`(highlight added).) As this search indicates, far from being unusual (or not being
`
`done at all, as patent owner’s expert claimed), the NAME attribute is clearly taken
`
`into consideration when determining and providing search results. When pressed
`
`at his deposition, despite the statements in his declaration, the patent owner’s
`
`expert conceded that he actually did not know that Google search results include
`
`hyperlinks to named anchors. (Onnen Tr., Ex. 1029, 34:16-18.) As Google
`
`blogposts discussed at the deposition of the patent owner’s expert explain, Google
`
`search results have included this feature since 2009. (Ex. 1030 (“Jump to the
`
`-13-
`
`
`
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00523
`information you want right from the search snippets,” Google Official Blog, dated
`
`September 25, 2009); Ex. 1031 (“Using named anchors to identify sections on your
`
`pages,” Google Webmaster Central Blog, dated September 25, 2009).) In short,
`
`storing information about web pages in a database is hardly unusual, nor was it in
`
`1999.
`
`Thus, for the reasons explained above, the patent owner has not identified
`
`any basis, in the face of the ample rationale provided in the Petition, to disturb the
`
`Board’s finding that the relevant teachings of Jones and Forta are fully combinable.
`
`V. The Patent Owner’s Proposed Construction of “Derived Container”
`Should be Rejected
`
`The patent owner proposes that the phrase “derived container” should be
`
`construed as “a data structure capable of executing a query based on an attribute
`
`from one or more corresponding container definition nodes.” (Resp. at 44-45.) Its
`
`proposed construction should be rejected.
`
`To begin with, the patent owner concedes that every derived container as
`
`claimed need not execute a query. (Resp. at 46 (“This is not to say that each and
`
`every ‘derived container’ must execute a query, but instead that a ‘derived
`
`container’ must be capable of doing so.”).) The patent owner does not explain
`
`why every derived container must be capable of executing a query when it admits
`
`that “[i]f the ‘derived container’ is not at a leaf node, a query may not be
`
`executed.” (Resp. at 47.)
`
`
`
`
`-14-
`
`
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00523
`The patent owner relies on statements from the specification about the terms
`
`“leaf node” and “selection criteria attribute” as purported support for its
`
`construction. (Resp. at 46-48.) But the claims are clear that not every derived
`
`container must be a “leaf node” or include a “selection criteria attribute.” Claim 8,
`
`for example, nowhere recites either of those terms. In fact, of the challenged
`
`claims, the term “leaf node” is only recited in claim 17 and the term “selection
`
`criteria attribute” is recited only in claims 15 and 17. The term “derived
`
`container,” however, is recited in all of the claims of the ’229 patent. Thus, even if
`
`the patent owner were correct that a derived container that is a “leaf node” or that
`
`comprises a “selection criteria attribute” is capable of executing a query, requiring
`
`that all derived containers be capable of executing a query would improperly
`
`import that limitation into every instance of “derived container” in the claims. The
`
`patent owner’s proposed construction should be rejected.
`
`A. Even Under the Patent Owner’s Proposed Construction of
`“Derived Container,” the Cited Prior Art Discloses It
`
`In any event, even if the Board re-construes the phrase “derived container”
`
`to include a requirement that a derived container is capable of executing a query,
`
`Jones still discloses it. More specifically, the patent owner’s expert explained that
`
`a “query” in the patent owner’s proposed construction is “a request for information
`
`along with the criteria of what you’re looking for sent over to the information
`
`repository. The information repository, then, looks at the criteria of which you’re
`
`
`
`
`-15-
`
`
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00523
`searching for and then returns the information from the information repository that
`
`matches that input criteria.” (Onnen Tr., Ex. 1029, 52:15-21.)
`
`This is exactly what happens when a hyperlink in the Jones TOC is clicked.
`
`When the hyperlink is clicked, an HTTP request is sent to a web server to, for
`
`example,
`
`ask
`
`for
`
`the
`
`web
`
`page
`
`at
`
`the
`
`URL
`
`“/Technology/whitepapers.html#VRML.” (Petition at 25 (citing Jones, 5:22-26);
`
`see also Jones, 1:52-56 (describing HTTP).) As the patent owner’s expert
`
`explained, an HTTP request includes criteria in the form information to identify to
`
`a web server the web page being asked for, and the web server uses that criteria to
`
`determine the correct information to return:
`
`Q So let’s say I'm viewing a Web page and [sic] a Web browser, and
`the Web page has a hyperlink to another Web page. If I click that link,
`typically the Web browser will send an HTTP GET request to the
`target Web server to ask for the Web page, right?
`A That’s correct.
`Q And when the target Web server receives the GET request, the
`server will make a determination as to whether it can provide the Web
`page, right?
`A Correct.
`Q And if the Web server can provide it, the server will respond to the
`request with a copy of that Web page, right?
`A It responds back to the browser, the initiating browser, with a copy
`of the Web page, correct.
`
`
`
`
`
`-16-
`
`
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00523
`Q And if the Web server does not have that web page, the server
`might return an error page to the Web browser instead, right?
`A Correct. 404, common.
`
`. . .
`An HTTP GET request includes information to identify a Web page
`that’s being asked for, right?
`A Yeah. The Web page, the browser, is asking the server to -- to
`respond with, yes.
`Q Okay.
`And the Web server uses that information to determine whether it can
`provide the Web page, right?
`A Yes.
`
`(Onnen Tr., Ex. 1029, 64:15-65:10, 67:6-15.) As the patent owner’s expert
`
`explains in the passage above, an HTTP request for a web page is a “query”
`
`because it includes criteria, including the name of the web page, that is sent to a
`
`web server and used by the web server to determine the information to return to the
`
`requester.
`
`Thus, even under the patent owner’s proposed construction of derived
`
`container as “a data structure capable of executing a query based on an attribute
`
`from one or more corresponding container definition nodes,” Jones still discloses
`
`derived containers. In short, as explained in the Petition, a node in a structure
`
`definition file corresponds to the claimed “container definition node.” (Petition at
`
`27-28.) The node includes a URL attribute that is used to create a hyperlinked
`
`
`
`
`
`-17-
`
`
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00523
`entry (i.e., “derived container”) in the TOC. (Petition at 29-30.) And the
`
`hyperlinked entry, when clicked, executes an HTTP request (“query”) with that
`
`URL information.
`
`VI. Conclusion
`
`For all of the foregoing reasons, the Board should reject the patent owner’s
`
`arguments and enter a final decision finding claims 8-10, 13, 15 and 17-20 invalid
`
`under 35 U.S.C. § 103 based on the prior art cited in the Petition.
`
`
`
`Dated: February 2, 2016
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`
`
`By:
`
`
`
`
`Respectfully submitted,
`
`
`/Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioner
`ServiceNow, Inc.
`
`
`
`
`
`-18-
`
`
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00523
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
`attached PETITIONER’S REPLY, including all exhibits (Nos. 1029-1032) and
`related documents, are being served via electronic mail on the 2nd day of February,
`2016, the same day as the filing of the above-identified document in the United
`States Patent and Trademark Office/Patent Trial and Appeal Board, upon the
`patent owner’s attorneys of record:
`
`
`
`
`David L. Cavanaugh (David.Cavanaugh@wilmerhale.com)
`
`Owen Allen (Owen.Allen@wilmerhale.com)
`
`Joseph F. Haag (Joseph.Haag@wilmerhale.com)
`
`Evelyn C. Mak (Evelyn.Mak@wilmerhale.com)
` WHIPDocketStaff@wilmerhale.com
`
`
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`
`DATED: FEBRUARY 2, 2016
`
`COOLEY LLP
`ATTN: Heidi L. Keefe
`Patent Docketing
`1299 Pennsylvania Ave. NW,
`Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`
`
`
`-1-
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
