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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`IPR2017-1315
`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
`
`
`
`
`
`
`UBISOFT, INC. AND SQUARE ENIX, INC.,
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`
`
`
`
`
`
`
`IPR2017-1315
`PATENT 6,510,466
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`
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`
`
`
`
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`Tables of Contents
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`IPR2017-1315
`U.S. Patent 6,510,466
`
`1
`1
`4
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`5
`6
`6
`8
`9
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`17
`18
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`19
`22
`25
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`25
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`29
`
`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
`
`“application program”
`1.
`2.
`“installing”
`3.
`The “means for …” terms
` No Prima Facie Obviousness for “receiving at the server a login
`request from a user at a client” (Ground 1; independent
`Claims 1, 15, 16)
`No legal basis for the proposed modifications
`No
`factual basis
`for
`the proposed “single-server”
`modification
`No factual basis for the proposed “offload” modification
`3.
`The foregoing deficiencies affect all the challenged claims
`4.
` No Prima Facie Obviousness 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” (Ground 1; independent Claims 1, 15, 16)
` No Prima Facie Obviousness for the Challenged Dependent
`Claims
`No Prima Facie Obviousness for “maintaining application
`management information for the plurality of applications at
`29
`the server” (Ground 2; dependent Claims 17 and 30)
`Error! Bookmark not defined.
`INSERT
`1.
`CONCLUSION
`33
`Exhibit Table for Patent Owner Preliminary Response to Petition
`
`1.
`2.
`
`1.
`
`V.
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`
`
`Exhibit
`Ex. 2001
`
`Description
`Declaration of Dr. Val DiEuliis
`
`ii
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`
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`IPR2017-1315
`U.S. Patent 6,510,466
`
`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”).
`
`The Board should deny the Petition in its entirety for at least three overarching
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`reasons, each one involving reversible legal error injected by the Petition. First, the
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`Petition relies on claim constructions it has since unequivocally repudiated in
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`arguments made before the district court. Second, Petitioner improperly attempts to
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`combine disparate teachings of a cited reference and in a manner inconsistent with
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`those expressly distinguished teachings. Third, the alleged flaw in the cited art that
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`ostensibly prompted the proposed modifications had not been recognized in the art
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`itself. Thus, there would have been no reason to modify as proposed, regardless
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`whether such modifications could have been done.
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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
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`1
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`
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`IPR2017-1315
`U.S. Patent 6,510,466
`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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`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. An application program (or simply “application”) is software
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`written to perform a particular function for a user and is distinguishable from, for
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`example, the operating system of a particular device, system-level software designed
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`to operate the network, etc.
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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. Around that same timeframe, computer network designers were also
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`confronted with the problems of efficiently distributing and updating applications
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`throughout the enterprise network, while maintaining consistency among roaming
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`users as to both application updates and the application of preferences.
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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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`2
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`
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`IPR2017-1315
`U.S. Patent 6,510,466
`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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`in a manner transparent to the user. In certain embodiments, application programs
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`are provided on an as-needed basis and specifically-adapted to the specific client the
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`user happens to be accessing at the 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.
`
`3
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`IPR2017-1315
`U.S. Patent 6,510,466
`Figure 1 (copied below) of the '466 Patent illustrates certain features recited
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`in the independent claims.
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`
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`The Petition alleges that “[a] person of ordinary skill in the art at the time of
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`the alleged invention of the '466 patent (“POSA”) would have held at least a
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`Bachelor of Science or higher degree in electrical engineering or computer science,
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`and at least three years of experience with client-server systems.” Pet. 17. The
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`4
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`IPR2017-1315
`U.S. Patent 6,510,466
`Petition further alleges that “Additional education may compensate for less
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`experience and vice-versa. The relevant field of the '466 patent is computing, and
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`particularly client-server computing.” Id.
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`For purposes of this Preliminary Response, and to streamline the issues
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`presented to the Board, Patent Owner does not dispute Petitioner’s allegations
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`concerning a person of ordinary skill in the art (“POSITA”). Notably, Dr. DiEuliis
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`testifies that he meets at least those qualifications for a POSITA set forth in the
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`Petition. EX2001, Dr. DiEuliis Declaration, at ¶¶ 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 presents the following challenges against the '466 Patent:
`
`Ground
`1
`2
`3
`
`Claims
`1,7-8, 15-16, 22-23, 35-36
`2, 17, 30
`9, 24, 37
`
`
`Petitioner has the burden of proof to establish it is entitled to the requested
`
`Statute
`103
`103
`103
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`Reference(s)
`Kasso1 and Raduchel2
`Kasso, Raduchel, and Bennett3
`Kasso, Raduchel, and Olsen4
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`relief. 37 C.F.R. § 42.108(c). Because the Petition only presents theories of
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`obviousness, Petitioner must demonstrate a reasonable likelihood that at least one of
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`the challenged patent claims would have been obvious in view of the art cited in the
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`
`1 EX1009, U.S. Patent No. 5,832,505 (“Kasso”).
`2 EX1010, U.S. Patent No. 6,338,138 (“Raduchel”).
`3 EX1011, U.S. Patent No. 5,615,367 (“Bennett”).
`4 EX1012, U.S. Patent No. 5,905,860 (“Olsen”).
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`5
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`IPR2017-1315
`U.S. Patent 6,510,466
`Petition. Petitioner “must specify where each element of the claim is found in the
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`prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). For
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`at least the reasons set forth herein, the Petition does not meet this burden and
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`therefore institution should be denied.5
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` Claim Construction
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`Pursuant to 37 C.F.R. § 42.100(b), and for the purposes of this review, Patent
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`Owner construes the claim language such that the claims are given their broadest
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`reasonable interpretation (“BRI”) in light of the specification of the '466 Patent.
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`Petitioner submits constructions for the claim terms “application program” and
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`“installing” which introduce certain deficiencies described below. In addition,
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`Petitioner identifies certain claims as written in means-plus-function form. While
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`Patent Owner agrees in principle that independent Claim 15 and its dependent claims
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`invoke pre-AIA 35 U.S.C. § 112, ¶6, the Petition injects disputes over the relevant
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`corresponding structure disclosed in the '466 Patent, as explained further below.
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`1.
`“application program”
`The Petition states “‘[a]pplication program’ is defined by the '466 patent as
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`‘code associated with underlying program functions.’ Ex. 1001 ('466) 14:24-26.”
`
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`5 While the deficiencies of the Petition identified herein provide a sufficient basis to
`dismiss the Petition in its entirety, Patent Owner hereby expressly reserves the right
`to address other deficiencies of the Petition in a full Response to the extent trial is
`instituted for any challenged claim.
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`6
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`IPR2017-1315
`U.S. Patent 6,510,466
`Pet. 18. During litigation, however, Petitioner argued that “application programs”
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`should be construed, instead, to mean “application level software program code for
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`underlying application level functions that executes locally at the client as a separate
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`application from the browser”. In doing so, Petitioner emphasized “definitional
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`statements and disclaimers in the Specifications and relevant file histories of the
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`Asserted Patents” (including the '766 Patent). Ubisoft, Inc. et al. v. Uniloc USA, Inc.
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`et al., Case No. 2:16-cv-00393-RWS (lead case), Dkt. No. 150, at p. 5; see also id.
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`n.6 (citing U.S. Patent No. 6,510,466 at 14:24-26, which shares a specification in
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`common with the '766 Patent).
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`Although explicit lexicography should govern when disclosed, it is unclear
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`how the specification could expressly define “application program” in two entirely
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`different ways. Petitioner conveniently argues in district court that the disclosed
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`lexicography is narrow, presumably with the aim to advance a noninfringement
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`theory; and then Petitioner inconsistently argues before the Board that the same
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`lexicography is broader, but only if the issue is patentability. There is a century-old
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`old maxim that patent claims may not be treated as a “nose of wax” and interpreted
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`one way for purposes of avoiding infringement and another way for challenging
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`patentability. White v. Dunbar, 119 U.S. 47, 51 (1886).
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`Petitioner cannot have it both ways and should be estopped from attempting
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`to do so. To be clear, Petitioner’s discrepancy cannot be rescued by invoking the
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`7
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`IPR2017-1315
`U.S. Patent 6,510,466
`broadest reasonable interpretation standard applied before the Board. The claim
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`construction standards applied before the Board and in court converge on the well-
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`established rule that the explicit lexicography of the inventor should govern claim
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`construction.
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`Should the Board adopt Petitioner’s alleged lexicography proposed in
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`litigation, the Petition would be deficient as failing to identify any “application level
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`software program code for underlying application level functions that executes
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`locally at the client as a separate application from the browser”. For example,
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`nothing in the Petition or the citations contained therein disclose or suggest that the
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`web-based “applets” relied upon in presenting an obviousness challenge are
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`application programs that execute separate from the browser.
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`2.
`“installing”
`The Petition identifies “installing” as a claim term that requires construction
`
`yet it does not offer any proposed definition. Instead, the Petition argues that
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`“[i]nstalling is distinct from configuring (registering).” Pet. 18. The parties’ present
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`dispute does not warrant ambiguously construing “installing” only in terms of what
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`it purportedly is not. Furthermore, in presenting its obviousness challenge, Petitioner
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`takes the implicit position that “installing” and “storing” are synonymous, though
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`the Petition makes no attempt to justify such a construction. That deficiency taints
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`8
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`IPR2017-1315
`U.S. Patent 6,510,466
`Petitioner’s analysis, as explained further below in addressing the recitations
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`containing the “installing” term.
`
`3.
`The “means for …” terms
`Although the Petition does not mention the statute, the Petition appears to
`
`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. Patent Owner agrees that the Board should
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`look to the '466 Patent specification to determine the corresponding structure and its
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`equivalents for the “means for …” limitations recited in challenged Claims 15, 17,
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`and 22-24.
`
`The Petition does not, however, explain the basis for its implicit conclusion
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`that, under the broadest reasonable interpretation, independent Claim 16 also invokes
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`pre-AIA 35 U.S.C. § 112, ¶6 and should be limited by the same system-based
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`structure identified for Claim 15. Unlike the “system” context recited in Claim 15,
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`independent Claim 16 is written in Beauregard6 form and is unambiguously directed
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`to a distinct article of manufacture: “[a] computer program product” comprising “a
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`computer-readable storage medium” having encoded therein “computer-readable
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`program code” for carrying out specifically-recited limitations. Petitioner appears to
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`concede the challenged claims written in Beauregard form expressly recite the
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`corresponding structure within the claim language itself. Pet. 20 (“For claims 16, 30,
`
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`6 In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).
`
`9
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`IPR2017-1315
`U.S. Patent 6,510,466
`and 35-37, directed to a computer program product comprising a computer-readable
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`medium (CRM), the corresponding specification structure includes a computer-
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`readable storage medium storing instructions ….”).
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`Regardless whether the expressly-differentiated independent Claims 15 and 16
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`are both properly interpreted as invoking means-plus-function construction under
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`pre-AIA 35 U.S.C. § 112, ¶6, Claim 16 would nevertheless remain patentable for the
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`reasons presented herein with respect to Claim 15. 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. The Petition does not differentiate between Claim 15 and Claim 16 in
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`identifying what it refers to as limiting “algorithmic structures” corresponding to
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`specific claim limitations; and a separate table for Claim 16 is therefore not provided
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`in this Response. Id.
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`Claim Language
`
`Function
`
`“means for installing a
`plurality of application
`programs at the server”
`
`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
`
`10
`
`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
`
`
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`IPR2017-1315
`U.S. Patent 6,510,466
`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
`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
`
`“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
`application programs
`installed at the server for
`which the user is
`authorized”
`
`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
`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
`
`11
`
`
`
`“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
`
`IPR2017-1315
`U.S. Patent 6,510,466
`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
`
`
`As shown in the table above, the Petition overlooks significant disclosure, and
`
`indeed the claim language itself, in offering a different and myopic view of the
`
`disclosed structure corresponding to the “means for” limitations recited in Claim 15.
`
`Petitioner cannot prove obviousness through application of an erroneous
`
`construction. 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.
`
`Mentor Graphics Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016) (finding Petitioner’s
`
`claim construction unreasonable in light of the specification, and therefore, denying
`
`Petition as tainted by reliance on an incorrect claim construction). Petitioner’s
`
`erroneous interpretation of the corresponding structure in the '466 Patent provides
`
`an independent and fully-dispositive basis to dismiss the Petition in its entirety and
`
`at the preliminary stage. Examples of limitation-specific errors in the Petition are
`
`explained further below.
`
`12
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`
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`IPR2017-1315
`U.S. Patent 6,510,466
`“means for installing a plurality of application
`programs at the server”
`The Petition asserts the only structure disclosed in the '466 Patent for
`
`a.
`
`“installing a plurality of application programs at the server” is (1) “server processor”
`
`(citing EX1001, 12:1-24, 20:60-21:9); (2) a computer-readable medium or “CRM”
`
`(citing id., 3:39-54; and (3) a “network driver accessible to server” (citing id., 4:24-
`
`27). Pet. 20. Noticeably absent from Petitioner’s list of components and citations is
`
`any reference to the algorithmic structure disclosed in the '466 Patent. For example,
`
`in a passage ignored in Petitioner’s claim construction analysis, the '466 Patent refers
`
`to the flowchart illustrated in Figure 8 in describing a preferred embodiment for
`
`installing application programs at an “on-demand server” (22,22'). See generally
`
`EX1001, Figure 8 and accompanying description at 17:52-18:32.
`
`According to the embodiment described with reference to Figure 8, each
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`application program is received (e.g., in packetized from) and installed at the on-
`
`demand server 22,22'. EX1001, 17:60-63 (“The application program software is then
`
`distributed by Tivoli™ server 20 to specified on-demand servers 22, 22' at block
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`116.”); see also id., 4:12-14 (“Application programs are distributed as file packages
`
`(packets) to on-demand servers.”); 4:24-25 (“A plurality of application programs are
`
`installed at the server.”). After the application is received and installed at the on-
`
`demand server 22,22', a profile-management directory is then updated with
`
`13
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`IPR2017-1315
`U.S. Patent 6,510,466
`information corresponding to the installed application programs. See, e.g., EX1001,
`
`Figure 8 (steps 118 and 120 and accompanying descriptions); id., 18:1-32.
`
`The Petition makes no mention of the algorithmic structure illustrated and
`
`described with reference to Figure 8. The Petition also makes no mention of other
`
`relevant algorithmic structure in the '466 Patent identified in the table above.
`
`b.
`
`“means for receiving at the server a login request
`from a user at the client”
`The Petition asserts the only structure disclosed in the '466 Patent for
`
`“receiving at the server a login request from a user at the client” is (1) “Java-enabled
`
`web browser or desktop which provides an operating environment for network-client
`
`applications” (citing EX1001, 11:52-55); (2) “application launcher implemented as
`
`a Java applet downloaded to the client and executed to establish a user desktop
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`interface” (citing id., Fig. 3 at 226, Fig. 6 at 270, 12:37-45); and (3) “code
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`implementing each display region as an icon” (citing, id. 14:55-58). Pet. 21. The
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`Petition evidently seeks to structurally limit this limitation to a JAVA™-based
`
`implementation only. Without conceding that such a narrowing construction
`
`comports with the '466 Patent, Patent Owner submits construction of this term is not
`
`necessary because the present Response provides ample grounds for the Board to
`
`deny institution independent of Petitioner’s proposed construction.
`
`To the extent the Board is inclined to construe this term, however, the citations
`
`provided in the Petition overlook significant structural disclosure corresponding to
`
`14
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`IPR2017-1315
`U.S. Patent 6,510,466
`“receiving at the server a login request form a user at the client.” For example, as
`
`indicated in the table above, the Petition at least ignores algorithmic structure
`
`illustrated and described with reference to Figures 4 and 6 of the '466 Patent: “Log
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`in operations from block 236 of FIG. 4 will now be further described with reference
`
`to the embodiment of the flowchart of FIG. 6.” EX1001, 13:24-26.
`
`c.
`
`“means for receiving at the server a selection of one
`of the plurality of application programs from the
`user desktop interface”
`The Petition asserts the structure for “receiving at the server a selection of one
`
`of the plurality of application programs from the user desktop interface” should be
`
`limited to “code configured to receive a Hyper-Text Transfer Protocol (HTTP) client
`
`request for a Universal Resource Locator (URL) that points to the location of an
`
`applet to be executed.” Pet. 22 (citing EX1001, 9:42-43, 9:52-57). In doing so,
`
`Petition fixates on certain preferential aspects of a particular embodiment, while
`
`ignoring the remainder of the disclosure. Indeed, the same paragraph cited in the
`
`Petition unambiguously states “[s]uch requests may be made utilizing conventional
`
`Hyper-Text Transfer Protocol (HTTP) communications or other suitable protocols.”
`
`EX1001, 9:55-57 (emphasis added). Further, as shown in the table above, the
`
`Petition overlooks significant disclosure in the '466 Patent directed to corresponding
`
`structure for this limitation. In any event, Petitioner has failed to establish prima
`
`facie obviousness even if the Board were to apply Petitioner’s construction.
`
`15
`
`
`
`d.
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`IPR2017-1315
`U.S. Patent 6,510,466
`“means for providing an instance of the selected one
`of the plurality of application programs to the client
`for execution responsive to the selection”
`In addressing the alleged structure 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 merely offers the same conclusory statement and citation
`
`as it did for the distinct limitation “receiving at the server a selection ….” However,
`
`the '466 Patent proscribes conflating at least the algorithmic structure for those
`
`limitations together by expressly reciting both “means” in the same independent
`
`Claim 15. Further, as shown by the citations in the table above, the '466 Patent
`
`further differentiates the respective structures for “receiving … a selection” and
`
`“providing an instance” by separately describing both with reference to the same
`
`flowchart. See, e.g., Fig. 7, blocks 280 and 290, respectively.
`
`e.
`
`limitations recited
`Other “means for”
`challenged dependent claims
`The Petition also erroneously interprets other “means for” limitations recited
`
`in the
`
`in the challenged dependent claims. Because the Petition has not met its burden with
`
`respect to any challenged independent claim, and for the sake of brevity, those
`
`additional errors are not discussed here.
`
`16
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`
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`IPR2017-1315
`U.S. Patent 6,510,466
` No Prima Facie Obviousness for “receiving at the server a login
`request from a user at a client” (Ground 1: independent Claims 1,
`15, 16)
`The Petition does not present a prima facie case of obviousness for the
`
`recitation “means for receiving at the server a login request from a user at a client”,
`
`as recited in independent Claim 15. Pointing exclusively to Kasso and no other cited
`
`reference, the Petition relies on two admittedly-distinct and separate elements as
`
`allegedly satisfying the claimed “server”: (1) the HTTP Server 208 and (2) the NIS
`
`Server 230. In doing so, the Petition inappropriately attempts to conflate into one
`
`server what Kasso expressly separates by intended design. Kasso explicitly teaches
`
`away from Petitioner’s hindsight reconstruction. The Board should deny the Petition
`
`as failing to “specify where each element of the claim is found in the prior art patents
`
`or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4) (emphasis added).
`
`The Petition initially alleges “the HTTP server 208 of Kasso corresponds to
`
`the claimed server” that receives the login request, among other limitations. Pet. 29.
`
`Petitioner then refutes its own theory by admitting the HTTP Server 208 in Kasso
`
`does not receive login requests. Rather, “the NIS Server 230 receives login requests”
`
`and, by intended design, is admittedly “distinct from the HTTP server 208”. Pet. 32.
`
`Petitioner attempts to inoculate its already fatal admissions by proposing two
`
`alternative rewrites of the disclosure in Kasso addressing authentication. Pet. 32-36.
`
`First, Petitioner proposes a so-called “single-server” modification, in which Petition
`
`17
`
`
`
`IPR2017-1315
`U.S. Patent 6,510,466
`argues “it would have been obvious to implement the authentication functionality
`
`described for the NIS server 230 on the HTTP server 208 of Kasso” instead. Pet. 32.
`
`Second, Petitioner proposes a so-called “offload” modification, in which Petitioner
`
`argues “it would have been obvious to receive authentication requests at HTTP
`
`server 208, which would then offload the authentication functionality to NIS server
`
`230.” Id. Those two alternatively-proposed deviations from the express disclosure
`
`in Kasso are legally and factually baseless and should be rejected.
`
`1.
`No legal basis for the proposed modifications
`As a matter of law, Petitioner has not and cannot justify its impermissible
`
`hindsight reconstruction merely by offering conclusory statements concerning what
`
`would have been obvious based on alleged extraneous knowledge of a POSITA. Cf.
`
`Pet. 32. This is because general knowledge of a POSITA is not “prior art or a printed
`
`publication” and cannot properly be substituted in for contrary teachings in a cited
`
`reference. See 35 U.S.C. § 311(b); see also 37 C.F.R. § 42.104(b)(4) (requiring
`
`petitions to “specify where each element of the claim is found in the prior art patents
`
`or printed publications relied upon”) (emphasis added); In re Sang Su Lee, 277 F.3d
`
`1338, 1345 (Fed. Cir. 2002); K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362,
`
`1365-66 (Fed. Cir. 2014) (finding the P.T.A.B. correctly rejected conclusory
`
`assertions of what would have been common knowledge in the art).
`
`18
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`
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`IPR2017-1315
`U.S. Patent 6,510,466
`There simply is no teaching, suggestion, or motivation in the cited references
`
`themselves that would have led POSITA to deviate from the express teachings in
`
`Kasso to arrive at all the limitations for the claimed “server” recited in Claim 15.
`
`2.
`No factual basis for the proposed “single-server” modification
`In a relevant decision, the Board concluded “it is not enough that the prior art
`
`reference … includes multiple, distinct teachings that the artisan might somehow
`
`combine to achieve the claimed invention.”). Luye Pharma Group Ltd. v. Alkermes
`
`Pharma Ireland, Ltd., Case No. IPR2016-01095, Paper No. 40 (P.T.A.B. Nov. 30,
`
`2016).
`
`Contrary to what Petitioner argues, Kasso does not “suggest” in its description
`
`of Figure 1 that the alternative embodiment of Figure 2 may be modified by
`
`combining the distinct servers into a single server. See Pet. 33. Kasso distinguishes
`
`its “computer system” in Figure 1 from the alternative “networked computer model”
`
`in Figure 2 at least on the basis that only the latter involves client-server
`
`communication over a network. See, e.g., EX1009 (Kasso), 4:46-53. Not
`
`surprisingly, the description of Figure 1 does not mention any client-server
`
`communication or any server functionality because no server or network is needed
`
`for that standalone-computer embodiment. It is nonsensical to conclude that if the
`
`teachings of Figure 1 are applied to those of Figure 2, then a single computer would
`
`operate as both client and server by needlessly sending and receiving client-server
`
`19
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`
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`IPR2017-1315
`U.S. Patent 6,510,466
`communications to itself. In short, the no-server description of Figure 1 does not
`
`provide evidentiary support for the “single-server” modification proposed in the
`
`Petition.
`
`Moreover, Kasso expressly states how the teachings of Figure 1 are to be
`
`applied to Figure 2, if at all, by identifying the computer system of Figure 1 as
`
`corresponding only to a network computer (i.e., client) of Figure 2. Id. (“Each of the
`
`network computers may be configured in the form of computer system 100[.]”). That
`
`disclosure proscribes interpreting a single computer system (100) of Figure 1 as
`
`corresponding, instead, to every client (e.g., 200 and 202) of Figure 2, let alone to
`
`all the clients and to every distinct server (e.g., 208, 230, 232) of Figure 2.
`
`Second, Kasso’s explicit description of separate, dedicated servers would lead
`
`a POSITA away from attempting to utilize a single server instead. In re Gurley, 27
`
`F.3d 551, 553 (Fed. Cir. 1994) (A prior art reference teaches away from the claimed
`
`invention when a person of ordinary skill, upon reading the reference, “would be led
`
`in a direction divergent from the path t
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