UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BITDEFENDER INC.
`Petitioner
`
`v.
`
`UNILOC USA, INC.
`Patent Owner
`____________
`
`Case IPR2017-
`Patent 6,510,466
`
`Title: Methods, Systems and Computer Program Products for Centralized
`management of Application Programs on a Network
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,510,466
`CHALLENGING CLAIMS 1, 2, 7-9, 15-17, 22-24, 30, and 35-37
`UNDER 35 USC §312 AND 37 CFR §42.100 ET SEQ.
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BITDEFENDER INC.
`Petitioner
`
`v.
`
`UNILOC USA, INC.
`Patent Owner
`____________
`
`Case IPR2017-
`Patent 6,510,466
`
`Title: Methods, Systems and Computer Program Products for Centralized
`management of Application Programs on a Network
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,510,466
`CHALLENGING CLAIMS 1, 2, 7-9, 15-17, 22-24, 30, and 35-37
`UNDER 35 USC §312 AND 37 CFR §42.100 ET SEQ.
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`A. EXHIBIT LIST ............................................................................................ vii
`I. COMPLIANCE WITH FORMAL REQUIREMENTS ...................................... 1
`A. Grounds for Standing (37 CFR § 42.104(a)) .................................................. 1
`B. Mandatory Notices (37 C.F.R. §42.8(a)(1)) ................................................... 1
`a. Real Parties-In-Interest (37 CFR § 42.8(b)(1)) ............................................... 1
`b. Related Matters (37 CFR § 42.8(b)(2)) ........................................................... 2
`c. Counsel and Service Information (37 CFR § 42.8(b)(3)-(4)) ......................... 3
`C. Statement of Precise Relief Requested ........................................................... 4
`II. REASONABLE LIKELIHOOD TO PREVAIL ............................................... 4
`III.
`IDENTIFICATION OF CHALLENGE ........................................................... 4
`A. Prior Art Publications ....................................................................................... 4
`B.
`CFR § 42.22(a)(1)) ................................................................................................ 5
`IV. INVALIDITY OF THE ‘466 PATENT ........................................................... 6
`A.
`Introduction .................................................................................................... 6
`B. Technology Background ................................................................................ 7
`C. Prosecution History of the ‘466 patent ......................................................... 10
`
`Identification of Challenge (37 CFR § 42.104(b)) and Relief Requested (37
`
`ii
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`
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`
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`Asserted Method Claims 1, 2 and 7, Deferral of Ruling on Means-Plus-Function
`
`Infringement Allegations in E.D. Tex. Action ............................................. 12
`D.
`E. E. D. Tex. District Court Ruling of Invalidity under 35 USC 101 of Then-
`Claims 15 and 22 ................................................................................................. 15
`F. Art and Person of Ordinary Skill in the Art .................................................. 16
`V. CLAIM CONSTRUCTION ............................................................................. 17
`A. Application program .................................................................................... 18
`B.
`Installing ....................................................................................................... 18
`C. Means-plus-function terms ........................................................................... 18
`VI. DETAILED EXPLANATIONS OF THE CHALLENGES .......................... 25
`A. Overview of Kasso, Raduchel, Bennett and Olsen ...................................... 25
`B. Ground 1: Claims 1, 7-8, 15-16, 22-23, and 35-36 are obvious under 35 USC
`§103 over Kasso in view of Raduchel ................................................................. 28
`C. Ground 2: Claims 2, 17 and 30 are obvious under 35 USC §103 over Kasso
`in view of Raduchel and Bennett ......................................................................... 52
`D. Ground 3: claims 9, 24 and 37 are obvious under 35 USC §103 over Kasso
`in view of Raduchel and Olsen ............................................................................ 57
`VII. CONCLUSION ............................................................................................. 63
`
`iii
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`
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`TABLE OF AUTHORITIES
`
`Cases
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`Page
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`Uniloc v. BitDefender LLC et al., 2:16-cv-00394-RWS (ED Texas 2016)
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`2
`
`Uniloc v. AVG Technologies USA. Inc., 2:16-cv-00393-RWS (ED Texas 2016) 2
`
`Uniloc v. Piriform Inc, 2:16-cv-00396-RWS (ED Texas 2016)
`
`Uniloc v. Ubisoft, Inc., 2:16-cv-00397-RWS (ED Texas 2016)
`
`Uniloc v. Kaspersky Lab, Inc., 2:16-cv-00871-RWS (ED Texas 2016)
`
`Uniloc v. Square Enix, Inc., 2:16-cv-00872-RWS (ED Texas 2016)
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`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 2016
`
`2
`
`2
`
`2
`
`2
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`17
`
`In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316, 97
`
`USPQ2d 1737, 1747 (Fed. Cir. 2011)
`
`19
`
`In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011) 19
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`B. Braun Medical Inc., v. Abbott Laboratories, 124 F.3d 1419, 1424, 43 USPQ2d
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`1896, 1900 (Fed. Cir. 1997)
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`19
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`Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211,
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`68 USPQ2d 1263, 1268 (Fed. Cir. 2003)
`
`19
`
`Default Proof Credit Card System, Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291,
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`75 USPQ2d 1116 (Fed. Cir. 2005)
`
`19
`
`Statutes
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`35 USC § 101………………………………………………..………………….15
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`iv
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`35 USC § 102……………………………………...……..…………….4, 25, 27, 28
`..n.n.u4,25,27,28
`35USC§lozuunuunuunuunuunuunuunmuuuuuu
`
`35 USC § 103……………………………………..……………4, 10, 11, 28, 52, 57
`.u.u.u.4,1o,11,28,52,57
`35USC§loauunuunuunuunumunuunuum.
`
`35 USC § 112 ¶ 6…………………………………………………………………18
`35USC§112fi6munuunuunuunuunumunuunuunuunuunuunum
`
`18
`
`35 USC § 312………………………………………………………….…………..B
`35USC§3lzuunuunuunuunuunuunuunuunuunuunumuuunuum
`
`B
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`35 USC § 314(a)……………………………………………………………………4
`35USC§3humunuunuunu“nuunuunuunuunuunuunuunuunuunu
`
`
`
`v
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`Rules
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`
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`37 CFR § 42.8(b)(1)……………………………………………..…………………1
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`37 CFR § 42.8(b)(2)………………………………………………..………………2
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`37 CFR § 42.8(b)(3-4)………………………………………………………...……3
`
`37 CFR § 42.22……………………………………………………….……………4
`
`37 CFR § 42.22(a)(I)……………………………………………….………………5
`
`37 CFR § 42.24……………………………………………………….……………A
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`37 CFR § 42.100(b)………………………………………………………………18
`
`37 CFR § 42.104(a)…………………………………………..…………………….1
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`37 CFR § 42.104(b)…………………………………………..………...………5, 20
`
`37 CFR § 42.104(b)(3)……………………………………………………………20
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`
`
`vi
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`
`
`A. EXHIBIT LIST
`
`
`
`Exhibit 1001: US Patent No. 6,510,466 (“’466”)
`
`Exhibit 1002: ‘466 Prosecution (File) History (“File History”)
`
`Exhibit 1003: Complaint in Uniloc USA, Inc. and Uniloc Luxembourg, S.A. v.
`
`BitDefender LLC et al., Case No. 2:16-cv-00394-RWS, E.D. Tex. (“E.D. Tex.
`
`Complaint”)
`
`Exhibit 1004: Proof of Service in Uniloc USA, Inc. v. BitDefender LLC et al.,
`
`Case No. 2:16-cv-00394-RWS, E.D. Tex. (“Proof of Service”)
`
`Exhibit 1005: Docket Control Order for Uniloc USA, Inc. v. BitDefender LLC et
`
`al., Case No. 2:16-cv-00394-RWS, E.D. Tex. (“Docket Control Order”)
`
`Exhibit 1006: Memorandum Opinion and Order issued on 3/28/2017 by Judge
`
`Robert W. Schroeder III in Uniloc USA, Inc. v. BitDefender LLC et al., Case No.
`
`2:16-cv-00394-RWS, E.D. Tex. (“Opinion”)
`
`Exhibit 1007: USPTO Assignment Record for Ownership Transfer from
`
`International Business Machines (IBM) to Uniloc Luxembourg SA
`
`Exhibit 1008: Declaration of Dr. Thomas Day (“Day Declaration”)
`
`Exhibit 1009: US Patent No. 5,832,505 (“Kasso”)
`
`Exhibit 1010: US Patent No. 6,338,138 (“Raduchel”)
`
`Exhibit 1011: US Patent No. 5,615,367 (“Bennett”)
`
`Exhibit 1012: US Patent No. 5,905,860 (“Olsen”)
`
`vii
`
`
`
`
`
`
`
`
`
`Exhibit 1013: IBM On-Demand Handbook
`
`Exhibit 1014: US Patent No. 6,189,051 (“Oh”)
`
`Exhibit 1015: US Patent No. 6,115,040 (“Bladow”)
`
`Exhibit 1016: US Patent No. 5,708,709 (“Rose”)
`
`Exhibit 1017: US Patent No. 6,182,142 (“Win”)
`
`Exhibit 1018: Bitdefender Total Security 2016 User Manual
`
`Exhibit 1019: Bitdefender Antivirus for Mac User Manual
`
`Exhibit 1020: Bitdefender Mobile Security User Manual
`
`Exhibit 1021: Decision Denying Institution of Inter Partes Review in IPR 2017-
`
`00184, filed for US Patent No. 7,069,293 (“‘293 IPR Decision”)
`
`Exhibit 1022: US Patent No. 6,404,433 (“Ruff”)
`
`Exhibit 1023: US Patent No. 5,765,205 (“Breslau”)
`
`Exhibit 1024: Declaration of Leonard Laub submitted in IPR 2017-00184, filed for
`
`US Patent No. 7,069,293.
`
`
`
`viii
`
`
`
`
`
`Petitioner hereby requests that the United States Patent and Trademark
`
`Office proceed with an inter partes review (IPR) of claims 1, 2, 7-9, 15-17, 22-
`
`24, 30, and 35-37 of U.S. Patent No. 6,510,466 (“the ’466 patent”) (Ex. 1001).
`
`I. COMPLIANCE WITH FORMAL REQUIREMENTS
`A. Grounds for Standing (37 CFR § 42.104(a))
`
`In accordance with 37 CFR § 42.104(a), Petitioner certifies that the ‘466
`
`patent is available for inter partes review. Petitioner further certifies that
`
`Petitioner is not barred or estopped from requesting an inter partes review
`
`challenging the ‘466 patent on the grounds identified in this Petition.
`
`Concurrently filed herewith are a Power of Attorney and an Exhibit List under
`
`§42.10(b) and §42.63(e), respectively.
`
`B. Mandatory Notices (37 C.F.R. §42.8(a)(1))
`
`Pursuant to 37 C.F.R. §42.8, Petitioner provides the following mandatory
`
`disclosures.
`
`a. Real Parties-In-Interest (37 CFR § 42.8(b)(1))
`
`The real parties-in-interest in this matter are:
`
` BitDefender Inc., a Florida corporation resulting from the conversion into a
`
`corporation of BitDefender LLC, a Florida limited liability company, and
`
` BitDefender Holding BV, a Netherlands limited liability company and parent of
`
`BitDefender Inc.,
`
`1
`
`
`
`
`
`(collectively, “BitDefender” or “Petitioner”).
`
`b. Related Matters (37 CFR § 42.8(b)(2))
`
`The ‘466 patent is owned by Uniloc Luxembourg, S.A., and exclusively
`
`licensed to Uniloc USA Inc. (collectively, “Uniloc” or “Patent Owner”) Ex.
`
`1003 (E.D. Tex. Complaint)
`
`Patent Owner has asserted the ‘466 patent in Uniloc USA, Inc. et al. v.
`
`BitDefender Holding BV et al., E.D. Tex. 2:16-cv-00394-RWS, filed on April
`
`12, 2016. Ex. 1003 (E.D. Tex. Complaint). BitDefender LLC was served with
`
`the complaint in the action on April 25, 2016. (Ex. 1004, Proof of Service). A
`
`Markman hearing is scheduled for 6/15/2017, and a trial is scheduled to begin
`
`on 4/16/2018. Ex. 1005 (Docket Control Order).
`
`Other actions filed by Patent Owner in the Eastern District of Texas
`
`alleging infringement of the ‘466 patent include actions against:
`
`
`
`
`
`
`
`
`
`
`
`AVG Technologies USA. Inc., Case No. 2:16-cv-00393-RWS
`
`Piriform Inc, Case No. 2:16-cv-00396-RWS
`
`Ubisoft, Inc., Case No. 2:16-cv-00397-RWS
`
`Kaspersky Lab, Inc., Case No. 2:16-cv-00871-RWS
`
`Square Enix, Inc., Case No. 2:16-cv-00872-RWS
`
`Petitioner is not aware of any pending prosecution of the ‘466 patent.
`
`2
`
`
`
`
`
`On April 18, 2017, the Patent Trial and Appeal Board issued a Decision
`
`Denying Institution of Inter Partes Review in IPR 2017-00184, filed for US
`
`Patent No. 7,069,293 (‘293). The ‘293 patent issued from a divisional
`
`application claiming the benefit of the filing date of the application that matured
`
`into the ‘466 patent. Ex. 1021 (‘293 IPR Decision).
`
`c. Counsel and Service Information (37 CFR § 42.8(b)(3)-
`
`(4))
`
`Address all e-mails and telephone calls to the lead and back up counsel
`
`listed below:
`
`Lead Counsel
`Name: Andrei D. Popovici
`Reg. No. 42,401
`andrei@apatent.com
`Direct: 650-530-9989 x1
`
`
`
`Back-up Counsel
`Name: Mihai H. Murgulescu
`Reg. No. 72,512
`mihai@apatent.com
`Direct: 408-667-7655
`
`Address all surface mail communications to:
`
`Andrei D. Popovici
`Mihai H. Murgulescu
`4030 Moorpark Ave. Suite 108
`San Jose, CA 95117
`Please direct all correspondence regarding this proceeding to the lead
`
`counsel at the address listed above. Petitioner also consents to electronic service
`
`by e-mail to andrei@apatent.com for this proceeding.
`
`3
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`
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`
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`The Patent Trial and Appeal Board is hereby authorized to charge any fee
`
`deficiencies and credit any overpayments forthis proceeding to Deposit Account
`
`50-2888 (Customer Number 23574).
`
`C. Statement of Precise Relief Requested
`
`In accordance with 37 CFR § 42.22, Petitioner respectfully requests
`
`cancellation of claims 1, 2, 7-9, 15-17, 22-24, 30, and 35-37 of the ’466 patent.
`
`II.
`
`REASONABLE LIKELIHOOD TO PREVAIL
`This Petition, in accordance with 35 USC §314(a), establishes a
`
`reasonable likelihood that Petitioner will prevail with respect to at least one of
`
`the claims challenged in this petition because the Petition provides evidence and
`
`supporting reasoning showing that each of claims 1, 2, 7-9, 15-17, 22-24, 30,
`
`and 35-37 of the ’466 patent is unpatentable under 35 USC §102 and/or §103.
`
`III.
`
`IDENTIFICATION OF CHALLENGE
`A. Prior Art Publications
`
`Petitioner relies on the following prior art publications:
`
`Exhibit 1009: US Patent No. 5,832,505 (“Kasso”)
`
`Exhibit 1010: US Patent No. 6,338,138 (“Raduchel”)
`
`Exhibit 1011: US Patent No. 5,615,367 (“Bennett”)
`
`Exhibit 1012: US Patent No. 5,905,860 (“Olsen”)
`
`4
`
`
`
`
`
`B. Identification of Challenge (37 CFR § 42.104(b)) and Relief
`
`Requested (37 CFR § 42.22(a)(1))
`
`Petitioner challenges claims 1, 2, 7-9, 15-17, 22-24, 30, and 35-37 (“the
`
`challenged claims”) of the ’466 patent. Petitioner requests institution of an inter
`
`partes review of the challenged claims on the grounds set forth in the table
`
`below, and requests that the challenged claims be found unpatentable and be
`
`canceled. The Petition explains in detail the reasons why the challenged claims
`
`are unpatentable under the relevant statutory grounds and includes an
`
`identification of where each element can be found in the cited prior art and the
`
`relevance of that prior art. Additional explanation and support for each ground
`
`of rejection is set forth in the Declaration of Dr. Thomas A. Day (Ex. 1008, Day
`
`Declaration).
`
`Table of challenged claims
`
`Claim
`
`Type
`
`Ground
`
`1, 7, 8 Method
`15, 22,
`Means-plus-function, system
`35
`16, 23,
`36
`2
`
`Means-plus-function,
`program product
`Method
`
`computer
`
`17
`
`30
`
`Means-plus-function, system
`
`Means-plus-function,
`program product
`
`computer
`
`5
`
`1: Kasso and Raduchel
`1: Kasso and Raduchel
`
`1: Kasso and Raduchel
`
`2: Kasso, Raduchel, and
`Bennett
`2: Kasso, Raduchel, and
`Bennett
`2: Kasso, Raduchel, and
`Bennett
`
`
`
`
`
`9
`
`24
`
`37
`
`IV.
`
`Method
`
`Means-plus-function, system
`
`3: Kasso, Raduchel, and
`Olsen
`3: Kasso, Raduchel, and
`Olsen
`3: Kasso, Raduchel, and
`Means-plus-function,
`Olsen
`program product
`INVALIDITY OF THE ‘466 PATENT
`A.
`Introduction
`
`computer
`
`The challenged independent claims 1, 15, and 16 are directed to a method,
`
`system, and computer program product, respectively, for managing the
`
`distribution of software over a network. In particular, claim 1 is directed to a
`
`method for management of application programs on a network including a
`
`server and a client comprising the steps of: installing a plurality of application
`
`programs at the server; receiving at the server a login request from a user at the
`
`client; 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 (e.g. icons) associated with a set of the plurality
`
`application programs installed at the server for which the user is authorized;
`
`receiving at the server a selection of one of the plurality of application programs
`
`from the user desktop interface; and providing an instance of the selected one of
`
`the plurality of application programs to the client for execution responsive to the
`
`selection. Claims 15 and 16 are corresponding system and computer program
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`product claims in means-plus-function format.
`
`6
`
`
`
`
`
`B. Technology Background
`
`The application that matured into the ‘466 patent was filed by
`
`International Business Machines Corporation (IBM) in December 1998.
`
`The growth of the Internet, and networking generally, during the mid to
`
`late 1990s led to a number of significant changes in computing. For example,
`
`ubiquitous availability of network connectivity and increasing connection speeds
`
`led a number of vendors, including Oracle, Sun Microsystems, IBM, and others,
`
`to promote thin clients and/or network computers. Such client computers had
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`limited local storage space in the form of a relatively limited disk drive or no
`
`disk drive at all. Limiting local storage would save manufacturing costs, and
`
`allow computing
`
`to be standardized on
`
`the server side
`
`in enterprise
`
`environments. The machines could function with limited local storage space by
`
`downloading resources on-demand, when needed. As one example, in 1995,
`
`Breslau et al. recognized and provided a solution to the problem of distribution
`
`of programs to remote computers that do not possess enough storage capacity to
`
`maintain local copies of all potentially necessary programs. Ex. 1023 (Breslau)
`
`1:22-25.
`
`In 1995, Sun Microsystems released Java, a group of technologies
`
`intended to facilitate cross-platform software development. Sun’s slogan for
`
`Java was “Write Once, Run Anywhere.” With Java, any application compiled to
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`7
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`
`
`
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`run within the Java Virtual Macine (JVM) operating environment would run on
`
`any machine so-equipped, regardless of underlying operating system, thus
`
`facilitating the deployment of software in heterogeneous networks. Such an
`
`application, — in the case where the host JVM was running on a client
`
`workstation — was commonly called an applet. A Java applet could be
`
`launched from a webpage displayed by a browser, and, after launching, could
`
`appear within the browser window or within a separate window. The applet was
`
`normally executed within a task separate from that of the browser itself. Ex.
`
`1008 (Day Declaration) at ¶20.
`
`By 1998, online distribution of software, including Java applets, was well
`
`known. Ex. 1023 (Breslau) 1:22-25, Ex. 1009 (Kasso) 5:20-6:15, Ex. 1010
`
`(Raduchel), Abstract, Ex. 1008 (Day Declaration) at ¶21. Associating
`
`applications to users rather than merely client machines was also known. Ex.
`
`1010 (Raduchel) 3:30-44, Ex. 1011 (Olsen) 8:1-4, Ex. 1008 (Day Declaration)
`
`at ¶21. In addition, the individual elements of the challenged claims were
`
`known, and within the level of skill of a POSA at the time. See for example Ex.
`
`1009 (Kasso), Ex. 1010 (Raduchel), and Ex. 1013 (IBM On-Demand
`
`Handbook).
`
`The ‘466 patent purports to be aimed at providing mobility to users and
`
`hardware portability. Ex. 1001 (‘466), Abstract. The Background section notes
`
`8
`
`
`
`
`
`that individual users may move from location to location and need to access the
`
`network from different client stations at different times. Id. 1:50-52. The
`
`Background section further states that prior art mobility systems typically will
`
`not present application choices associated with the user and for which the user is
`
`authorized but instead present information associated with the particular client
`
`workstation. Id. 3:12-15. With respect to the prior-art Systems Management
`
`Server (SMS) software from Microsoft, the Background section states that an
`
`application cannot be automatically deleted from the client station’s desktop or
`
`automatically upgraded the next time the user starts the application. Id. 1:63-65,
`
`2:4-7. The Background section also states that various prior art approaches do
`
`not address the full range of complications which may arise in a heterogeneous
`
`network. Id. 3:9-11. Furthermore, the Background section states that such prior
`
`art approaches fail to provide a seamless integration of application access and
`
`session characteristics across heterogeneous networks, and that such solutions
`
`may, at most, reduce network administration only after initial installation on
`
`each workstation. Id. 3: 21-25. The Background section also states that prior
`
`art software distribution systems typically require various steps in the
`
`installation process to occur at different locations rather than allowing the entire
`
`process to be controlled from a single point for an entire managed network
`
`environment. Id. 3:31-36. The ‘466 patent includes multiple references to Java
`
`9
`
`
`
`
`
`and Java applets, including for example in Fig. 10 and at 5:44-48. The ‘466
`
`patent also includes numerous references to “on-demand,” for example at 6:62-
`
`64. The Summary section states that it is an object of the ‘466 invention to
`
`accommodate various types of hardware operating under different operating
`
`systems across client stations, Id. 3:51-54, and that this and other objects are
`
`provided by a server that provides applications on-demand to a user logging in
`
`to a client supported by the server. Id. 3:55-60. The client is described as a
`
`network computer or a full function personal computing device. Id. 9:31-33.
`
`C. Prosecution History of the ‘466 patent
`
`In an Office Action mailed 03/28/2001, the Examiner issued a rejection of
`
`the claims under 35 USC 103(a) as obvious over Oh (Ex. 1014) in view of
`
`Bladow (Ex. 1015). Ex. 1002 (File History), Office Action mailed 03/28/2001
`
`at 3. In response, IBM added new claims and argued, inter alia, that the claims
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`were directed to systems in which a variety of application programs can be
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`maintained at the server, and an instance of a selected one of the application
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`programs may be provided as needed to a user logged onto a client device.
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`Thus, individual application programs are provided to the user as needed where
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`they are executed at a client device rather than having the application program
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`execute at the server responsive to a request from a user. Id. Amendment filed
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`5/31/2001 at 7-8. IBM also stated that Oh relates to an application programming
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`10
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`
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`environment in which applications are installed in advance and later run on
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`individual computers, not to a client-server environment, where instances of an
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`application are provided to requesting users on demand only after users have
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`logged in and had their authority to use a program verified. Id. Amendment
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`filed 5/31/2001 at 10.
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`In a second non-final Office Action, the Examiner issued a rejection of
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`the claims under 35 USC 103(a) as obvious over Rose (Ex. 1016) in view of Win
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`(Ex. 1017). Ex. 1002 (File History), Office Action mailed 08/13/2001 at 2. In
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`response, IBM argued that the cited references failed to teach a user desktop
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`interface associated with the user, or desktop display regions associated with
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`application programs. Id., Amendment filed 10/23/2001 at 1. IBM also
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`distinguished Rose by pointing out that Rose relates to the distribution of
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`applications to be repeatedly executed at a client. Id., Amendment filed
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`10/23/2001 at 5. IBM stated that “Rose are not even relevant to the environment
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`of the present invention where instances of the application programs are
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`provided from a server “on demand” each time execution is requested by a user.
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`Rose is, instead, merely a distribution approach for client resident programs and
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`one of skill in the art would not look to a reference directed to the problems of
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`such an environment for direction in the distinct art of server based “on-
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`demand” application programs.” Id., Amendment filed 10/23/2001 at 6.
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`11
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`
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`The Examiner did not find the submitted argument persuasive, and issued
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`a Final Office Action reiterating the previous rejections. Id. Office Action
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`mailed 02/22/2002 at 2 and 6. IBM submitted a Response after Final arguing,
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`inter alia, that an instance of the application is provided from the server for
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`execution at the client, and that thus, the application programs may be
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`maintained at the server and provided to clients when needed for execution. Id.
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`Response filed 03/25/2002 at 2. IBM then appealed, and filed an Appeal Brief
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`in which it reiterated its arguments, including arguments disclaiming the
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`distribution of client resident programs as in Rose, as distinct from server-based
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`“on-demand” application programs. Id. Appeal Brief filed 5/16/2002 at 8.
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`In response, the Examiner issued a Notice of Allowance. Id. Notice of
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`Allowance mailed 08/13/2002.
`
`In 2016, an assignment of the ‘466 patent from IBM to Patent Owner was
`
`recorded in the records of the United States Patent Trademark Office. Ex. 1007.
`
`D.
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`Infringement Allegations in E.D. Tex. Action
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`In its District Court complaint, Patent Owner alleged that Petitioner
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`directly infringes at least claims 1, 2, 7, 15, and 22 of the ‘466 patent through its
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`software licensing and delivery system, which software and associated backend
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`server architecture inter alia allows for installing application programs on a
`
`server, receiving a login request, establishing a user desktop, receiving a
`
`12
`
`
`
`
`
`selection of one or more programs displayed in the user desktop and providing a
`
`program for execution. Ex. 1003 (E.D. Tex. Complaint) at 7.
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`Patent Owner listed in its complaint, among others, the following
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`screenshots as representative, at least in part, of how Petitioner’s software
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`licensing and delivery system works:
`
`
`
`
`
`
`
`13
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`
`
`
`
`
`
`
`
`The screenshots included in Patent Owner’s complaint point to the
`
`delivery of BitDefender Total Security 2016, BitDefender Antivirus for Mac,
`
`and BitDefender Mobile Security as informative regarding Patent Owner’s
`
`
`
`infringement allegations.
`
`14
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`
`
`
`
`BitDefender Total Security 2016, BitDefender Antivirus for Mac, and
`
`BitDefender Mobile Security are client-resident programs, designed to be
`
`repeatedly executed at a client once installed. Ex. 1008 (Day Declaration) at ¶4.
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`Thus, Patent Owner apparently alleges that a system performing the
`
`distribution of client-resident programs infringes at least claims 1, 2, 7, 15 and
`
`22 of the ‘466 patent.
`
`E. E. D. Tex. District Court Ruling of Invalidity under 35 USC 101
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`of Then-Asserted Method Claims 1, 2 and 7, Deferral of Ruling on
`
`Means-Plus-Function Claims 15 and 22
`
`On March 28, 2017, Judge Robert W. Schroeder III
`
`issued a
`
`Memorandum Opinion and Order (“Opinion”) in Uniloc USA, Inc. v.
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`BitDefender LLC et al., Case No. 2:16-cv-00394-RWS, E.D. Tex. Ex. 1006.
`
`The Opinion was issued in response to a Motion to Dismiss for Failure to State a
`
`claim filed by Petitioner, and held that method claims 1, 2 and 7 of the ‘466
`
`patent are invalid under 35 USC 101 as directed to ineligible subject matter. Id.
`
`at 2, 20. Petitioner’s motion originally challenged the patent eligibility of all
`
`claims of the ’466 patent, but the motion was subsequently limited to challenge
`
`only the ‘466 claims that Patent Owner actually asserted at the time: claims 1, 2,
`
`7, 15 and 22. Id. at 6. Patent Owner subsequently asserted claims 8-9, 16-17,
`
`23-24, 30, and 35-37, which are not addressed by the Opinion.
`
`15
`
`
`
`
`
`Petitioner alleged that the asserted claims are directed to the abstract idea
`
`of “managing the distribution of software over a network.” Id. at 9. Patent
`
`Owner argued that the claims are directed to a specific implementation of a
`
`solution to a problem in the software arts. Id. at 9. In particular, Patent Owner
`
`argued that the present inventions remedied [certain] deficiencies [in the prior
`
`art] by providing ‘a seamless integration of application access and session
`
`characteristics across heterogeneous networks.’ Id. at 10.
`
`The Opinion stated that, even though claim construction had not yet
`
`occurred, there was no legitimate claim construction dispute in the case that
`
`would have frustrated the Court’s ability to rule on the motion. Id. at 8, 12.
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`The Court held that the method claims at issue, 1, 2 and 7, are directed to
`
`abstract ideas and do not provide an inventive concept. Id. at 12, 16, and 17.
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`The court also noted that means-plus-function claims generally have a narrower
`
`scope than non-means-plus-function claims, and Petitioner had not shown that
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`the latter were representative of the asserted means-plus-function claims. Id.
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`The Court denied Petitioner’s motion for the asserted means-plus-function
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`claims (15 and 22) without prejudice and invited Petitioner to re-file their
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`motion after claim construction. Id. at 7, 20.
`
`F. Art and Person of Ordinary Skill in the Art
`
`16
`
`
`
`
`
`A person of ordinary skill in the art at the time of the alleged invention of
`
`the ’466 patent (“POSA”) would have held at least a Bachelor of Science or
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`higher degree in electrical engineering or computer science, and at least three
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`years of experience with client-server systems. Ex. 1008 (Day Declaration) at
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`¶17. Additional education may compensate for less experience and vice-versa.
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`The relevant field of the ’466 patent is computing, and particularly client-server
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`computing. Id at ¶17. This art is predictable. Id. at ¶17.
`
`V.
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`CLAIM CONSTRUCTION
`Claim terms in inter partes review are ordinarily given their broadest
`
`reasonable interpretation consistent with the specification (BRI). 37 CFR
`
`42.100(b), Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).
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`Below are proposed constructions and corresponding support for
`
`this
`
`proceeding. Any claim terms not included in the following discussion should be
`
`given their broadest reasonable construction in light of the specification.
`
`The proposed constructions are not, and should not be viewed as, a
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`concession by Petitioner as to the proper scope of any claim term in any
`
`litigation. The proposed constructions are not a waiver of any argument in any
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`litigation or this proceeding that claim terms in the ‘466 Patent are indefinite or
`
`otherwise invalid, should be construed differently, or that additional claim terms
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`require construction. In particular, petitioner does not waive any potential
`
`17
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`
`
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`arguments in litigation that the instant claims are invalid as indefinite due to lack
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`of a structure and/or lack of clear linking of a structure for means-plus-function
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`terms.
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`A. Application program
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`“Application program” is defined by the ‘466 patent as “code associated
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`with underlying program functions.” Ex. 1001 (‘466) 14:24-26.
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`B.
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`Installing
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`Installing is distinct from configuring (registering). Installing was
`
`interpreted during the prosecution of the ‘466 patent, under the BRI standard, as
`
`storing, an interpretation that was not contested by the patent applicant. Ex.
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`1002 (File History) Office Action mailed 08/13/2001 at 2, Office Action mailed
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`2/22/2002 at 2. The specification repeatedly distinguishes installing from
`
`configuring (registering) (“install and register,” “install and register,” “install
`
`and register,” “installs the program and configures (registers) it”) (emphases
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`added). Ex. 1001 4:15-16, 4:20, 17:46, 18:28-29. Thus, installing does not
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`include configuring (registering).
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`C. Means-plus-function terms
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`The challenged claims
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`include a number of means-plus-function
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`limitations subject to 35 USC 112 ¶6. Below are identifications of the specific
`
`18
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`
`
`
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`portions of the specification that describe the structure, materials, or acts
`
`corresponding to each claimed function. 37 CFR 42.104(b)(3).
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`A general-purpose computer, by itself, may be sufficient as corresponding
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`structure for general computing functions such as storing, which can be achieved
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`by any general purpose computer without special programming. In re Katz
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`Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316, 97 USPQ2d
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`1737, 1747 (Fed. Cir. 2011). For other functions, “when the disclosed structure
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`is a computer programmed to carry out an algorithm, the disclosed structure is
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`not the general purpose computer, but rather that special purpose computer
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`programmed to perform the disclosed algorithm.” In re Aoyama, 656 F.3d 1293,
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`1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011). A structure corresponds to a
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`function only if the specification or prosecution history clearly links or
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`associates that structure to the function. B. Braun Medical Inc., v. Abbott
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`Laboratories, 124 F.3d 1419, 1424, 43 USPQ2d 1896, 1900 (Fed. Cir. 1997).
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`Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205,
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`1211, 68 USPQ2d 1263, 1268. The corresponding structure must be found and
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`clearly linked in the specification itself, and not in material incorporated by
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`reference. Default Proof Credit Card System, Inc. v
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