UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UBISOFT, INC. AND SQUARE ENIX, INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`IPR2017-01290
`PATENT 6,510,466
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`UBISOFT, INC. AND SQUARE ENIX, INC.,
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`
`
`
`
`
`
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`IPR2017-01290
`PATENT 6,510,466
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`IPR2017-01290
`U.S. Patent 6,510,466
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`Tables of Contents
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`1
`1
`4
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`5
`6
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`9
`13
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`13
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`14
`18
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`21
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`27
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`28
`29
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`
`INTRODUCTION
`I.
`II. OVERVIEW OF THE '466 PATENT
`III. LEVEL OF ORDINARY SKILL IN THE ART
`IV. THE PETITION FAILS TO ESTABLISH A REASONABLE
`LIKELIHOOD THAT AT LEAST ONE OF THE CHALLENGED
`CLAIMS IS UNPATENTABLE
`Claim Construction
`
`“means for installing a plurality of application programs at
`1.
`the server”
`Other “means for …” limitations
`Beauregard claims reciting “computer readable program
`code means for …”
` No Prima Facie Obviousness for “means for installing a plurality
`of application programs at the server”
` No Prima Facie Obviousness for the “establishing” limitations
` No Prima Facie Obviousness for “means for providing an
`instance of the selected one of the plurality of application
`programs to the client for execution responsive to the selection”
`The Petition Presents No Claim-Specific Challenges Against
`Independent Claims 1 and 16
`No Prima Facie Obviousness for Additional Limitations recited
`in the Dependent Claims
`CONCLUSION
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`2.
`3.
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`V.
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`ii
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`IPR2017-01290
`U.S. Patent 6,510,466
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`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc Luxembourg
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`S.A. (“Patent Owner”) submits this Preliminary Response to the Petition for Inter
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`Partes Review (“the Petition”) of U.S. Patent No. 6,510,466 (“the '466 Patent”) filed
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`by Ubisoft, Inc. and Square Enix, Inc. (“Petitioner”).
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`The Board should deny the Petition in its entirety because of procedural and
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`substantive defects. First, the Petition relies on faulty claim constructions that
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`Petitioner fails to even apply. Finally, due in part to the faulty claim constructions,
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`the Petition fails to “specify where each element of the claim is found in the prior art
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`patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
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`In view of the reasons presented herein, the Petition should be denied in its
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`entirety as failing to meet the threshold burden of proving there is a reasonable
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`likelihood that at least one challenged claim is unpatentable.
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`II. OVERVIEW OF THE '466 PATENT
`The '466 Patent is titled “Methods, Systems and Computer Program Products
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`for Distribution of Application Programs to a Target Station on a Network.” EX1001
`
`at [54]. The '466 Patent issued from U.S. Patent Application No. 09/211,528, filed
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`December 14, 1998. The '466 Patent issued on January 21, 2003, after five years of
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`thorough prosecution, and was originally assigned to the International Business
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`Machines Corporation (“IBM”). EX1001 at [45], [73].
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`1
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`U.S. Patent 6,510,466
`The '466 Patent relates to centrally managing the provision of application
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`programs within a heterogeneous computer network environment. EX1001, 1:21-
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`23; 3:24-36; 5:37-6:9; see also EX2001 (Dr. DiEuliis) ¶¶ 22-38. An application
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`program (or simply “application”) is software written to perform a particular
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`function for a user and is distinguishable from, for example, the operating system of
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`a particular device, system-level software designed to operate the network, etc.
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`EX2001 (Dr. DiEuliis) ¶¶ 25-26 (citing EX1001, 14:24-31).
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`As of 1998, designers of heterogeneous computer networks for large
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`enterprises were confronted with various problems including, for example, users
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`who login at different times from different client devices on the network—i.e., a
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`roaming user. EX2001 (Dr. DiEuliis) ¶¶ 30-34. Around that same timeframe,
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`computer network designers were also confronted with the problems of efficiently
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`distributing and updating applications throughout the enterprise network, while
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`maintaining consistency among roaming users as to both application updates and the
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`application of preferences. Id.
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`The '466 teaches innovative solutions to those problems, among others. As
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`disclosed in the ‘466 Patent, for example, the IBM inventors had reduced to practice
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`various embodiments that enable a roaming user to access the user’s authorized
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`applications from any client on the network, while consistently providing the user’s
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`own selected preferences for those applications and maintaining application updates
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`2
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`U.S. Patent 6,510,466
`in a manner transparent to the user. EX2001 (Dr. DiEuliis) ¶ 35. In certain
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`embodiments, application programs are provided on an as-needed basis and
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`specifically-adapted to the specific client the user happens to be accessing at the
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`time. EX1001, 11:4-8.
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`Claims 1, 15, and 16 are the independent claims of the '466 Patent. For the
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`convenience of the Board, independent Claim 15 is reproduced below:
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`15. An application program management system for managing
`application programs on a network including a server and a client
`comprising:
`[a] means for installing a plurality of programs at the server;
`[b] means for receiving at the server a login request from a user at the
`client;
`[c] means for establishing a user desktop interface at the client
`associated with the user responsive to the login request from the
`user, the desktop interface including a plurality of display regions
`associated with a set of the plurality of applications programs
`installed at the server for which the user is authorized; and
`[d] means for receiving at the server a selection of one of the plurality
`of application programs from the user desktop interface; and
`[e] means for providing an instance of the selected one of the plurality
`of application programs to the client for execution responsive to
`the selection.
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`Figure 1 (copied below) of the '466 Patent illustrates certain features recited
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`in the independent claims.
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`3
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`U.S. Patent 6,510,466
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`III. LEVEL OF ORDINARY SKILL IN THE ART
`The Petition alleges that “[a] person of ordinary skill in the field of computer
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`networking at the time of the alleged invention, December 14, 1998, (“POSITA”)
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`would have had at least an undergraduate degree, in computer science, computer
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`engineering, or a related field or an equivalent number of years of working
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`experience.” Pet. 2; see also EX1006 ¶ 25. The Petition further alleges that “a
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`POSITA would have at least one to two years of experience in networking
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`4
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`U.S. Patent 6,510,466
`environments, including at least some experience with management of application
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`programs in a network environment.” Id.
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`It is unclear whether Petitioner had intended that “an equivalent number of
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`years of working experience” could include the “at least one to two years of
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`experience in networking environments.” Assuming inclusion was the intent, and to
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`simplify issues before the Board at this preliminary stage, Patent Owner does not
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`presently dispute that definition of POSITA as it is understood. See EX2001 (Dr.
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`DiEuliis) ¶¶ 45-46.
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`IV. THE PETITION FAILS TO ESTABLISH A REASONABLE
`LIKELIHOOD THAT AT LEAST ONE OF THE CHALLENGED
`CLAIMS IS UNPATENTABLE
`The Petition alleges obviousness of Claims 1-2, 7-8, 15-17, 22-23, 30, 35-36:
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`Obvious over Sonderegger [EX1002] in view of Hughes [EX1003], Franklin
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`[EX1004], and the NAL White Paper [EX1005] under §103(a).
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`Petitioner has the burden of proof to establish they are entitled to their
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`requested relief. 37 C.F.R. § 42.108(c). Because the Petition only presents theories
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`of obviousness, Petitioner must demonstrate a reasonable likelihood that at least one
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`of the challenged patent claims would have been obvious in view of the art cited in
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`the Petition. Petitioner “must specify where each element of the claim is found in
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`the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
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`U.S. Patent 6,510,466
`For at least the reasons set forth herein, the Petition does not meet this burden and
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`therefore should be dismissed.
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` Claim Construction
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`Although the Petition does not mention the statute, the Petition appears to
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`identify certain claim limitations as written in “means-plus-function” form and
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`invoking pre-AIA 35 U.S.C. § 112, ¶ 6. Specifically, the Petition proposes that the
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`Board look to the '466 Patent specification to determine the corresponding structure
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`and its equivalents for the “means for …” limitations and the “computer readable
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`program code means for …” limitations recited in independent Claims 15 and 16,
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`respectively. Notably, the Petition does not differentiate between those two expressly
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`distinguished independent claims. Petitioner evidently overlooked that Claim 16 is
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`distinctly written in Beauregard1 form and is directed to a specifically-claimed article
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`of manufacture: “[a] computer program product” comprising “computer-readable
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`program code” for carrying out specifically-recited limitations.
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`Given that the Petition only attempts to raise substantive arguments with
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`respect to independent Claim 15, and then exclusively refers to those same arguments
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`in challenging independent Claims 1 and 16, the table below identifies structure
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`disclosed in the '466 Patent corresponding to the “means for” limitations recited in
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`Claim 15.
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`1 In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).
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`6
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`Claim Language
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`Function
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`“means for installing a
`plurality of application
`programs at the server”
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`installing a plurality of
`application programs at
`the server
`
`“means for receiving at
`the server a login request
`from a user at the client”
`
`receiving at the server a
`login request from a
`user at the client
`
`“means for establishing a
`user desktop interface at
`the client associated with
`the user responsive to the
`login request from the
`user, the desktop
`interface including a
`plurality of display
`regions associated with a
`set of the plurality of
`
`establishing a user
`desktop interface at the
`client associated with
`the user responsive to
`the login request from
`the user, the desktop
`interface including a
`plurality of display
`regions associated with
`a set of the plurality of
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`7
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`U.S. Patent 6,510,466
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`Corresponding structure
`in the '466 Patent
`a processor executing
`computer program
`instructions, as described
`in 12:1-24, implementing
`the algorithms described
`in connection with FIG. 4,
`FIG. 5, FIG. 8, and FIG.
`9C and at 12:25-30, 13:1-
`23, 14:24-53, 17:17-51,
`18:3-32, 20:1-59
`a processor executing
`computer program
`instructions, as described
`in col. 12:1-24,
`implementing the
`algorithms described in
`connection with FIG. 4
`(e.g., block 234) and FIG.
`6 (e.g., blocks 262-264)
`and at 9:58-61, 10:38-43,
`10:57-11:3, 12:32-47,
`12:53-67, 13:24-56
`a processor executing
`computer program
`instructions, as described
`in col. 12:1-24,
`implementing the
`algorithms described in
`connection with browser
`or desktop 226 of FIG. 3,
`FIG. 4 (e.g., block 234),
`and FIG. 6 (e.g., block
`
`
`
`application programs
`installed at the server for
`which the user is
`authorized”
`
`application programs
`installed at the server
`for which the user is
`authorized
`
`“means for receiving at
`the server a selection of
`one of the plurality of
`application programs
`from the user desktop
`interface”
`
`receiving at the server a
`selection of one of the
`plurality of application
`programs from the user
`desktop interface
`
`“means for providing an
`instance of the selected
`one of the plurality of
`application programs to
`the client for execution
`responsive to the
`selection”
`
`providing an instance of
`the selected one of the
`plurality of application
`programs to the client
`for execution responsive
`to the selection
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`U.S. Patent 6,510,466
`270) and at 8:12-22, 9:39-
`52, 9:62-10:2, 11:50-55,
`12:37-61, 13:24-37,
`13:50-56, 13:62-14:1,
`14:8-17, 14:53-15:20
`a processor executing
`computer program
`instructions, as described
`in col. 12:1-124,
`implementing the
`algorithms described in
`connection with FIG. 4
`(e.g., blocks 238-240) and
`FIG. 7 (e.g., block 280)
`and at col. 9:30-33, 9:52-
`57, 12:61-67, 14:24-46,
`15:23-27, 15:56-16:24
`a processor executing
`computer program
`instructions, as described
`in col. 12:1-24,
`implementing the
`algorithms described in
`connection with FIG. 4
`(e.g., blocks 238-240) and
`FIG. 7 (e.g., block 290)
`and at col. 9:42-52, 11:4-
`8, 12:61-67, 14:24-31,
`15:66-16:12, 16:23-25,
`16:53-56
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`As shown in the table above, the Petition overlooks significant disclosure, and
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`indeed the claim language itself, in offering a different and myopic view of the
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`disclosed structure corresponding to the “means for” limitations recited in Claim 15.
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`Certain dispositive differences are explained further below with reference to the claim
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`language “means for installing a plurality of application programs at the server”.
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`1.
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`“means for installing a plurality of application programs at the
`server”
`Either by neglect or intentional misdirection, the Petition avoids significant
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`disclosure in the '466 Patent addressing the explicit and unambiguous functionality:
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`“installing a plurality of application programs at the server”. For example, the
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`Petition neglects to bring to the Board’s attention the following informative
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`statement from '466 Patent: “[a]s used herein, the term ‘application program’
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`generally refers to code associated with the underlying program functions, for
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`example, Lotus Notes or a terminal emulator program.” EX1001, 14:24-27; see also
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`EX2001 (Dr. DiEuliis) ¶¶ 24-29. As will be shown, the Petition relies exclusively
`
`on so-called “objects” within a directory that to do not fit the above definitional
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`description.
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`In another passage ignored in Petitioner’s claim construction analysis, the '466
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`Patent refers to the flowchart illustrated in Figure 8 in describing a preferred
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`embodiment for installing application programs at an “on-demand server” (22,22').
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`See generally EX1001, Figure 8 and accompanying description at 17:52-18:32.
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`According to the embodiment described with reference to Figure 8, each application
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`program is distributed to the on-demand server 22,22' in packetized from, where the
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`application program is itself installed (as opposed to just an object representation
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`9
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`thereof). EX1001, 17:60-63 (“The application program software is then distributed
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`by Tivoli™ server 20 to specified on-demand servers 22, 22' at block 116.”); see
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`also id., 4:12-14 (“Application programs are distributed as file packages (packets)
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`to on-demand servers.”); 4:24-25 (“A plurality of application programs are installed
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`at the server.”); see also EX2001 (Dr. DiEuliis) ¶¶ 43, 52-57. After the application
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`is received and installed at the on-demand server 22,22', a profile-management
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`directory is then updated with information corresponding to the installed application
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`programs. See, e.g., EX1001, Figure 8 (steps 118 and 120 and accompanying
`
`descriptions); id., 18:1-32.
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`Thus, the '466 Patent expressly differentiates the following two distinct
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`processes: (1) installing application programs at the on-demand server; and (2)
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`subsequently configuring a distinct directory to include information representative
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`of the installed application programs. See, e.g., 18:1-32 (“an administrator both
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`sends a new application package to all supported on-demand servers and installs the
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`program and configures (registers) it to be available for use.”).
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`This distinction in the description is also unambiguously reflected in the
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`claims. For example, while Claim 15 recites “means for installing a plurality of
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`application programs at the server, Claim 17 (depending from Claim 15) further
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`recites “means for maintaining application management information for the plurality
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`of applications at the server”. Under the doctrine of claim differentiation, those two
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`distinct limitations cannot be conflated together as referring to the exact same thing.
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`Contrary to the teachings of the '466 Patent and the explicit claim language,
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`the Petition interprets “installing a plurality of application programs” as referring
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`exclusively to configuring a NetWare Directory Services (“NDS”) database with
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`representative information concerning application programs. More specifically, the
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`Petition identifies the following disclosure in the '466 Patent as the corresponding
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`“structure” for “installing a plurality of application programs at the server”:
`
`1) accept definitions of the application that describe the location and
`description of the application (block 250);
`2) accept definitions of users and groups that will access the system
`and the specific application (block 252);
`3) accept control specifications defining which users and groups are
`authorized to access the new or updated application (block 256);
`4) obtain license policy information from an administrator or through
`an import file (block 254); and
`input definitions and
`the
`5) update a database
`to maintain
`specifications for the new or updated application in a format
`accessible to the server (block 258).
`
`Pet. 3.
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`Noticeably absent from Petitioner’s list is any reference to the disclosed
`
`structure for installing multiple application programs at the on-demand server. The
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`Petition essentially attempts to read out of the claims the recitation “installing a
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`plurality of application programs at the server” by rewriting that limitation, instead,
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`as configuring a NDS database with information that merely represents application
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`programs. The '466 Patent—and indeed the unambiguous claim language itself—
`
`proscribes such an interpretation.
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`Notably, one of Petitioner’s co-defendants in litigation has also filed a Petition
`
`against the '466 Patent in which that petitioner recognized in its section addressing
`
`claim construction that “[i]nstalling is distinct from configuring (registering).”
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`Bitdefender Inc., v. Uniloc USA, Inc., Case No. IPR2017-01315, Paper 1, at p. 18.
`
`That petition collected the following quotations from the '466 Patent: “[t]he
`
`specification repeatedly distinguishes installing from configuring (registering)
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`(‘install and register,’ ‘install and register,’ ‘install and register,’ ‘installs the
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`program and configures (registers) it’) (emphases added). Ex. 1001 4:15-16, 4:20,
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`17:46, 18:28-29. Thus, installing does not include configuring (registering).” Id.,
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`(underlining original). Contrary to that intrinsic evidence recognized by another
`
`petitioner, the present Petition attempts to conflate installing a plurality of
`
`application programs with registering/configuring a database.
`
`Petitioner cannot prove obviousness through application of an erroneous
`
`construction, especially one that Petitioner’s co-defendants overtly reject as
`
`unreasonable. See Mentor Graphics Corp., v. Synopsys, Inc., IPR2014-00287, 2015
`
`WL 3637569, at *11 (P.T.A.B. June 11, 2015), aff'd sub nom. Synopsys, Inc. v.
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`Mentor Graphics Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016) (finding Petitioner’s
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`claim construction unreasonable in light of the specification, and therefore, denying
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`Petition as tainted by reliance on an incorrect claim construction). Petitioner’s
`
`erroneous interpretation of “means for installing a plurality of application programs
`
`at the server” provides an independent and fully-dispositive basis to dismiss the
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`Petition in its entirety and at the preliminary stage.
`
`2. Other “means for …” limitations
`Because virtually every limitation recited in the challenged independent
`
`claims of the '466 Patent expressly refers to the plurality of application programs
`
`installed at the server, Petitioner’s erroneous claim construction taints the entire
`
`Petition. This compounded error is explained further below in addressing additional
`
`claim limitations that are not disclosed or suggested in the cited references.
`
`3.
`
`Beauregard claims reciting “computer readable program code
`means for …”
`Independent Claim 16 and its dependent claims are expressly written in the
`
`manner that invokes the seminal case In re Beauregard, 53 F.3d 1583 (Fed. Cir.
`
`1995). Those Beauregard claims are each directed to a specifically-claimed article
`
`of manufacture: “[a] computer program product” comprising “computer-readable
`
`program code” for carrying out specific processes.
`
`The Petition appears to take the position that the claim language “computer
`
`readable program code means for” invokes pre-AIA § 112, ¶6. But in every instance,
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`the Petition identifies the corresponding structure as “code/software” encoded within
`
`the claimed “computer program product”. Pet. 2-9. Thus, the Petition appears to
`
`acknowledge that the corresponding structure is expressly recited in the claim
`
`language itself, which would suggest the recitation “computer readable program
`
`code means for” does not invoke pre-AIA § 112, ¶ 6.
`
` No Prima Facie Obviousness for “means for installing a plurality
`of application programs at the server”
`The proposed Sonderegger-Hughes combination does not render obvious
`
`“means for installing a plurality of application programs at the server”, as recited in
`
`independent Claims 15 and its dependent claims. Ignoring the lexicography in the
`
`specification that “application program” refers to executable “code”, the Petition
`
`relies exclusively on the teachings in Sonderegger and Hughes directed to
`
`configuring a NDS database with “objects” that are merely representative of distinct
`
`application programs residing elsewhere on the network. The Petition summarizes
`
`its proposed combination as follows:
`
`It would have been obvious to a person having ordinary skill in the
`art at the time of the alleged invention to implement the Novell
`Netware 4.1 Directory Services software, as described
`in
`Sonderegger, using the detailed teachings of Hughes. EX1006,
`Madisetti Dec. at ¶46. A skilled artisan would have been motivated
`to look to Hughes, for example, for guidance on designing and
`installing user and group objects in the NetWare 4.1 Directory
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`Services database. EX1006, Madisetti Dec. at ¶46; see also, e.g.,
`EX1003, Hughes
`at Cover
`(“The Only Authoritative,
`Comprehensive, Expert Guide to Netware 4.1”), Preface (“This
`book is your comprehensive design and implementation guide to
`NetWare 4.1.
`
`Pet. 26-27 (emphasis added); see also id. at p. 19 (collecting a numbered list of
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`allegedly disclosed features related to the database objects); Section IV.A.1, supra,
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`addressing Petitioner’s erroneous claim construction.
`
`This Preliminary Response addresses Petitioner’s sole theory of “installing
`
`user and group objects” and respectfully notes that the Board is not free to adopt
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`alternative arguments on behalf of Petitioners. In re Magnum Oil Tools Int'l, Ltd.,
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`829 F.3d 1364, 1381 (Fed. Cir. 2016) (“[W]e find no support for the PTO's position
`
`that the Board is free to adopt arguments on behalf of petitioners that could have
`
`been, but were not, raised by the petitioner during an IPR. Instead, the Board must
`
`base its decision on arguments that were advanced by a party, and to which the
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`opposing party was given a chance to respond.”).
`
`As explained above in addressing this implicitly-injected claim construction
`
`issue, the '446 Patent specification expressly distinguishes installing multiple
`
`application programs at an on-demand server from subsequently configuring a
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`separate directory with information that is merely representative of the installed
`
`application programs. It follows from that unambiguous disclosure that merely
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`updating a NDS database with object entries (e.g., “user and group objects”) that are
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`representative of application programs is not the functional equivalent of “installing
`
`a plurality of application programs at the server” as claimed. EX2001 (Dr. DiEuliis)
`
`¶¶ 102-05.
`
`The conclusion of nonobviousness is further bolstered by the undisputed and
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`explicit distinction in the cited references themselves between database objects and
`
`the separately-located application programs those objects represent. EX2001 (Dr.
`
`DiEuliis) ¶¶ 67-69. The Petition concedes “user and group objects 51” are “inputted
`
`definitions and specifications … for the new or updated application ….” Pet. 23; see
`
`also id., 19-20 (listing attributes for the application object in Sonderegger). The
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`Petition also collects quotations from Sonderegger confirming the identified objects
`
`merely “represent” resources that reside elsewhere on the network. Id. (quoting
`
`EX1002, 2:59-61 (“The resources represented in the modified database include
`
`application programs such as word processors and spreadsheets, that reside on the
`
`network.”); see also EX1006 ¶ 40, Madisetti Declaration (“Each application object
`
`represents one application program”).
`
`According to Sonderegger, representing resources as object entries in a NDS
`
`database “provides network administrators with an efficient and effective way to
`
`determine what resources are available on the network” and where those remote
`
`resources are located. Pet. 23 (quoting EX1002, 2:52-54); see also id. at 45
`
`16
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`IPR2017-01290
`U.S. Patent 6,510,466
`(acknowledging that “the file path attribute of the application object” is used to
`
`determine the distinct and separately-located “executable code for the application”).
`
`Hughes is cited in the Petition ostensibly because it “provides further details
`
`on the purpose and properties of user and/or group objects and guides an
`
`administrator in creating such objects using the NetWare Administrator software.”
`
`Id. at 24. Those teachings are inapposite here because, as explained above, the claim
`
`language requires “installing a plurality of application programs”, not storing objects
`
`that merely represent application programs. Thus, even if it were proper to combine
`
`those teachings in Hughes with Sonderegger, such combination is nevertheless
`
`distinguishable from the claimed “installing” limitations. EX2001 (Dr. DiEuliis) ¶¶
`
`100-105. Moreover, Dr. DiEuliis explains at length why there would have been no
`
`motivation to modify Sonderegger based on the outmoded teachings in Hughes,
`
`which Sonderegger is expressly designed to improve upon. EX2001 (Dr. DiEuliis)
`
`¶¶ 93-99 (concluding, inter alia, that “a POSITA, upon reading Sonderegger, would
`
`have been led away from going back to Hughes’s teachings which, according to
`
`Sonderegger, did not support application objects, and needed to be improved. See
`
`also above at § 9 (¶¶ 76-77).”).
`
`At least because the '466 Patent and the references cited in the Petition all
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`expressly distinguish between application programs and mere database
`
`representations
`
`thereof, configuring a NDS database with representative
`
`17
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`
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`IPR2017-01290
`U.S. Patent 6,510,466
`information is not the functional equivalent of “installing a plurality of application
`
`programs at the server”, as recited in independent 15. That substantive deficiency
`
`also taints the challenge of independent Claims 1 and 16 because separate arguments
`
`are not provided for those claims. See, e.g., Pet. 15 (“See Element 15(a)”). EX2001
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`(Dr. DiEuliis) ¶¶ 102-05.
`
`The Board should dismiss the Petition in its entirety and at the preliminary
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`stage for fails to establish prima facie obviousness for the limitation “installing a
`
`plurality of application programs at the server”, as recited in each challenged claim.
`
` No Prima Facie Obviousness for the “establishing” limitations
`The proposed Sonderegger-Hughes combination does not render obvious
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`“means for establishing a user desktop interface at the client associated with the user
`
`responsive to the login request from the user, the desktop interface including a
`
`plurality of display regions associated with a set of the plurality of applications
`
`programs installed at the server for which the user is authorized”, as recited in
`
`independent Claim 15. EX2001 (Dr. DiEuliis) ¶¶ 114-15. The “establishing”
`
`limitations expressly refer to “the plurality of application programs installed at the
`
`server”; and the analysis in the Petition, therefore, is tainted at least by the above-
`
`identified distinction between installed application programs at a server and mere
`
`database representations thereof. Id.
`
`18
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`IPR2017-01290
`U.S. Patent 6,510,466
`Petitioner does not articulate how or why it proposes combining Sonderegger
`
`and Hughes for the “establishing” limitations. Rather, the Petition offers the
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`following ambiguous statement: “Sonderegger and Hughes disclose establishing a
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`desktop environment and associated application launcher (i.e., user desktop
`
`interface) at the client associated with the user when the ‘user logs on’ (i.e.,
`
`responsive to the login request from the user) that includes application icons (i.e.,
`
`display regions) associated with a set of application programs installed at the server
`
`(see Element 15(a)) for which the user is authorized.” That conclusory statement
`
`leaves the Board and Patent Owner guessing as to why both references are relied
`
`upon for this claim language, which portions of their respective teachings are
`
`intended to be combined, and how those portions are intended to be combined. The
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`alleged motivation to combine provides no insight here because Petitioner merely
`
`offers the following ipse dixit statement: “[f]or the reasons discussed in Elements
`
`15(a) and 15(b), it would have been obvious to combine the teachings of
`
`Sonderegger and Hughes and a skilled artisan would have been motivated to do so.”
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`Pet. 39-40. The Petition does not and cannot meet its threshold evidentiary burden
`
`with such ambiguous and conclusory statements.
`
`In any event, the cited portions of Sonderegger and Hughes (whether
`
`considered individually or collectively) do not render obvious the “establishing”
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`limitations. EX2001 (Dr. DiEuliis) ¶¶ 114-15. The cited portions of Sonderegger,
`
`19
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`
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`IPR2017-01290
`U.S. Patent 6,510,466
`for example, disclose that the icon displayed on a user’s desktop points to an
`
`application object previously inputted to the NDS database, as opposed to separately
`
`located application programs. Pet. 35-36 (collecting quotations and citations to
`
`EX1002); see also EX1002 11:16-18 (“the new application object 49’s icon data is
`
`stored in a file by calling NWDSOpenStream(), _lwrite(), and close().”); 12:55-57
`
`(“a user is allowed to resize the window displaying the application object icons”);
`
`12:67-13:1 (“the user is allowed to manually refresh the application object 49 icons
`
`displayed on the desktop 52”), 13:25-29 (“Using the present invention’s icon
`
`attribute to hold an additional copy of some or all of this icon data allows icons for
`
`all of the application objects 49 that are visible to the user to be obtained from the
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`central database 38.”); EX2001 (Dr. DiEuliis) ¶¶ 102-03.
`
`Hughes does not cure this deficiency. If anything, Hughes only confirms that
`
`the icons displayed on a desktop point to application objects inputted to the NDS
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`database. Pet. 37-39 (collecting quotations and citations to EX1003); see also
`
`EX2001 (Dr. DiEuliis) ¶ 104. Because the cited references expressly distinguish
`
`application objects from application programs, as explained above, desktop icons
`
`that point to application objects do not constitute “a plurality of display regions
`
`associated with a set of the plurality of applications programs installed at the server”.
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`EX2001 (Dr. DiEuliis) ¶¶ 102-04.
`
`20
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`IPR2017-01290
`U.S. Patent 6,510,466
`For the foregoing additional and independent reasons, there is no a prima facie
`
`case of obviousness for “means for establishing a user desktop interface at the client
`
`associated with the user responsive to the login request from the user, the desktop
`
`interface including a plurality of display regions associated with a set of the plurality
`
`of applications programs installe
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