Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: February 1, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UBISOFT, INC. and SQUARE ENIX, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01839
`Patent 6,324,578 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, BARBARA A. BENOIT, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`

`

`IPR2017-01839
`Patent 6,324,578 B1
`
`I. INTRODUCTION
`
`Ubisoft, Inc. and Square Enix, Inc. (“Petitioner”)1 filed a Petition for
`
`inter partes review of claims 1–18, 20–33, and 35–46 of U.S. Patent No.
`
`6,324,578 B1 (Ex. 1001, “the ’578 patent”). Paper 3 (“Pet.”). Uniloc USA,
`
`Inc. and Uniloc Luxembourg S.A. (“Patent Owner”) filed a Preliminary
`
`Response.2 Paper 7 (“Prelim. Resp.”). Institution of an inter partes review
`
`is authorized by statute when “the information presented in the petition . . .
`
`and any response . . . shows that there is a reasonable likelihood that the
`
`petitioner would prevail with respect to at least 1 of the claims challenged in
`
`the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon
`
`consideration of the Petition and Preliminary Response, we conclude the
`
`information presented does not show there is a reasonable likelihood that
`
`Petitioner would prevail in establishing the unpatentability of any of claims
`
`1–18, 20–33, and 35–46 of the ’578 patent.
`
`A. Related Matters
`
`The parties indicate that the ’578 patent is the subject of several court
`
`proceedings. Pet. 68; Paper 4, 2.
`
`B. The ’578 Patent
`
`The ʼ578 patent relates to application program management on a
`
`computer network. Ex. 1001, 1:22–24. In particular, the invention is
`
`
`
`1 The Petition identifies Ubisoft, Inc. and Square Enix, Inc. as real parties-in-
`interest, and that “[a]dditional real parties in interest may include Ubisoft
`Entertainment, S.A., Square Enix of America Holdings, Inc., and Square
`Enix Holdings Co., Ltd.” Pet. 68.
`2 Patent Owner identifies Uniloc Luxembourg S.A. and exclusive licensee
`Uniloc USA, Inc. as real parties-in-interest. Paper 4, 1.
`
`2
`
`

`

`IPR2017-01839
`Patent 6,324,578 B1
`
`directed to methods and systems for management of configurable application
`
`programs on a computer network which allows a mix of user and system
`
`administrator defined configurable preferences to be associated with specific
`
`application programs. Id. at 3:39–45. An application program having
`
`configurable preferences and authorized users is installed on a server. Id. at
`
`4:24–26. An application launcher program associated with the application
`
`program is distributed to a client. Id. at 4:26–28. A user set of preferences
`
`associated with an authorized user executing the application launcher
`
`program and an administrator set of preferences is obtained. Id. at 4:28–33.
`
`The application program is then executed using obtained user set and
`
`administrator set of preferences. Id. at 4:33–39.
`
`C. Illustrative Claims
`
`Petitioner challenges claims 1–18, 20–33, and 35–46 of the ’578
`
`patent. Claims 1, 15, 16, 17, 31, 32, and 46 are independent claims. Claims
`
`1 and 17 are reproduced below.
`
`1. A method for management of configurable application
`programs on a network comprising the steps of:
`
`installing an application program having a plurality of
`configurable preferences and a plurality of authorized users on
`a server coupled to the network;
`
`distributing an application launcher program associated
`with the application program to a client coupled to the network;
`
`obtaining a user set of the plurality of configurable
`preferences associated with one of the plurality of authorized
`users executing the application launcher program;
`
`obtaining an administrator set of the plurality of
`configurable preferences from an administrator; and
`
`executing the application program using the obtained
`user set and the obtained administrator set of the plurality of
`
`3
`
`

`

`IPR2017-01839
`Patent 6,324,578 B1
`
`configurable preferences responsive to a request from the one
`of the plurality of authorized users.
`
`Id. at 14:63–15:13.
`
`17. An application management system for a network
`comprising:
`
`means for installing an application program having a
`plurality of configurable preferences and a plurality of
`authorized users on a server coupled to the network;
`
`means for distributing an application launcher program
`associated with the application program to a client coupled to
`the network;
`
`means for obtaining a user set of the plurality of
`configurable preferences from one of the plurality of authorized
`users executing the application launcher program;
`
`means for obtaining an administrator set of the plurality
`of configurable preferences from an administrator; and
`
`means for providing an instance of the application
`program and a stored user set and the administrator set of the
`plurality of configurable preferences for use in executing the
`application program responsive to a request from the one of the
`plurality of authorized users.
`
`Id. at 17:23–17:41.
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts that claims 1–18, 20–33, and 35–46 are unpatentable
`
`based on the following grounds (Pet. 1):
`
`4
`
`

`

`IPR2017-01839
`Patent 6,324,578 B1
`
`References
`
`Basis
`
`Challenged Claims
`
`Kasso3 and JavaStation4
`
`§ 103(a)
`
`Kasso, JavaStation, and
`Sanders5
`
`§ 103(a)
`
`1, 6–9, 11–17, 22–25, 27–32,
`37–40, and 42–46
`2–5, 10, 18, 20, 21, 26, 33, 35,
`36, and 41
`
`II. DISCUSSION
`
`A. Claim Construction
`
`Pursuant to 37 C.F.R. § 42.100(b), Petitioner avers that the ’578
`
`patent will expire on December 14, 2018, within 18 months of entry of the
`
`Notice of Filing Date Accorded the Petition (Paper 6), and requests that the
`
`’578 claims be construed under Phillips v. AWH Corp., 415 F.3d 1303, 1327
`
`(Fed. Cir. 2005). Pet. 2. Patent Owner does not dispute that the ’578 patent
`
`will expire within 18 months from the entry of the Notice of Filing Date
`
`Accorded to the Petition. Nor does Patent Owner oppose a Phillips type
`
`construction. Prelim. Resp. 2–13. For purposes of this decision, we grant
`
`Petitioner’s request and construe the claims as though the ’578 patent has
`
`expired.
`
`For claims of an expired patent, the Board’s claim interpretation is
`
`similar to that of a district court. See In re Rambus, Inc., 694 F.3d 42, 46
`
`(Fed. Cir. 2012). “In determining the meaning of the disputed claim
`
`limitation, we look principally to the intrinsic evidence of record, examining
`
`the claim language itself, the written description, and the prosecution
`
`
`
`3 U.S. Patent No. 5,832,505, issued Nov. 3, 1998 (Ex. 1002) (“Kasso”).
`4 JavaStation Software Environment for Developers (JSE 1.0.2) (June 1997)
`(Ex. 1003) (“JavaStation”).
`
`5 U.S. Patent No. 5,734,831, issued Mar. 31, 1998 (Ex. 1004) (“Sanders”).
`
`5
`
`

`

`IPR2017-01839
`Patent 6,324,578 B1
`
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips). There is,
`
`however, a presumption that a claim term carries its ordinary and customary
`
`meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
`
`Cir. 2002).
`
`“means for installing”
`
`
`
`Independent claim 16 recites “means for installing an application
`
`program having a plurality of configurable preferences and a plurality of
`
`authorized users on the server.” Independent claim 17 includes a similar
`
`phrase. Independent claim 32 recites “computer readable program code
`
`means for installing an application program having a plurality of
`
`configurable preferences and a plurality of authorized users on a server
`
`coupled to the network.” The parties agree that the “means for installing”
`
`limitation recited in each of claims 16, 17, and 32 is a means-plus-function
`
`limitation and should be construed under 35 U.S.C. § 112, sixth paragraph.
`
`Pet. 2–3; Prelim. Resp. 8.
`
`Pursuant to 37 C.F.R. § 42.104(b)(3), Petitioner must propose a
`
`construction under 35 U.S.C. § 112, sixth paragraph, for any means-plus-
`
`function limitation, “identify[ing] the specific portions of the specification
`
`that describe the structure, material, or acts corresponding to each claimed
`
`function.”6 Petitioner argues that the corresponding structure for the “means
`
`for installing” is a server (for claims 16 and 17) or code/software (for
`
`
`
`6 37 C.F.R. § 42.104(b)(3) refers to § 112(f). Section 4(c) of the Leahy-
`Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011)
`(“AIA”), re-designated 35 U.S.C. § 112, sixth paragraph, as 35 U.S.C.
`§ 112(f). Because the ’578 patent has a filing date before September 16,
`2012 (effective date of AIA), we use the citation § 112, sixth paragraph.
`
`6
`
`

`

`IPR2017-01839
`Patent 6,324,578 B1
`
`claim 32) programmed to execute steps depicted in Figure 5 and described at
`
`column 13, lines 1 to 23 of U.S. Patent 6,510,466 B1 (Ex. 1006; “the ’466
`
`patent”), and equivalents thereof. Pet. 3. Petitioner further argues that the
`
`server or code/software is programmed to:
`
`1) accept definitions of the application that describe the location
`and description of the application (path directory and file name
`for the application (EX1006, ’466 block 250 [of Figure 5],
`13:2–7); 2) accept definitions of users and groups that will
`access the system and the specific application (block 252);
`3) accept control specifications defining which user/group
`authorization to access the new/updated application (block
`256); and 4) update a database to maintain the input definitions
`and specifications for the new/updated application in a format
`accessible to the server (block 258).
`
`Id. (emphasis omitted).
`
`
`
`Patent Owner disagrees with Petitioner. In particular, Patent Owner
`
`argues that the Petition provides no support nor any explanation as to how
`
`the alleged description of the ’466 patent is related to the claims of the ’578
`
`patent, and that even if the ’466 patent is related, Petitioner’s reliance on the
`
`description therein is misplaced. Id. at 16–17. Patent Owner argues that the
`
`corresponding structure is a server programmed to make an application
`
`program accessible and executable. Prelim. Resp. 9 (citing Ex. 1001, 4:24–
`
`26, 8:46–54).
`
`We agree with the parties’ contentions that the “means for installing,”
`
`recited in claims 16, 17, and 32, should be construed according to 35 U.S.C.
`
`§ 112, sixth paragraph. See Williamson v. Citrix Online, LLC, 792 F.3d
`
`1339, 1348 (Fed. Cir. 2015) (en banc) (“[T]he use of the word ‘means’ in a
`
`claim element creates a rebuttable presumption that § 112, para. 6 applies.”).
`
`At the outset, both parties agree, as do we, that the corresponding structure
`
`7
`
`

`

`IPR2017-01839
`Patent 6,324,578 B1
`
`includes programming, e.g., software. We disagree, however, with Patent
`
`Owner that the corresponding structure is found at column 4, lines 24 to 26
`
`and column 8, lines 48 to 54 of the ’578 patent. The description found at
`
`column 4, lines 24 to 26 describes “[a]n application program having a
`
`plurality of configurable preferences and a plurality of authorized users is
`
`installed on a server coupled to the network,” but does not describe the
`
`means for installing, contrary to Patent Owner’s assertions. The other
`
`description that Patent Owner directs us to (Ex. 1001 8:48–54) is a reference
`
`to Figure 2, block 54, regarding distributing the configuration manager
`
`applet to a client station. Neither describes the corresponding algorithm or
`
`code for the means for installing.
`
`We find the following description from the ’578 patent to be pertinent
`
`to the disputed phrase:
`
`Referring now to the flowchart of FIG. 2, operations for
`distribution of a[n] application program having configurable
`preferences and implementing management of configurable
`application programs on a network according to an embodiment
`of the present invention will now be described. At block 50, an
`application program having a plurality of configurable
`preferences and a plurality of authorized users is installed on
`server 22 coupled to network 10. This may be accomplished,
`for example, by placing the application program compact disc
`(CD) in a compact disc read only memory (CD ROM) drive
`coupled to on-demand server 22. Alternatively, as is described
`in U.S. patent application Ser. No. 09/211,528 with reference to
`FIGS. 5–7, the application program may be provided to on-
`demand server 22 from a central location such as TivoliTM
`server 20.
`
`Ex. 1001, 7:50–65.
`
`8
`
`

`

`IPR2017-01839
`Patent 6,324,578 B1
`
`The 09/211,528 application described above matured into the ’466
`
`patent Petitioner refers to in the Petition.7 We determine that the above,
`
`however, fails to describe the sufficient structure, e.g., what both parties
`
`appear to agree includes software for installing an application program. For
`
`example, and with respect to the ’578 patent, and as described above, there
`
`is no algorithm described for installing an application program. The ’578
`
`patent, however, incorporates by reference description from the ’466 patent.8
`
`Thus, we also look to the ’466 patent to determine if there is sufficient
`
`structure for the recited means, but determine that the descriptions of Figures
`
`5–7 of the ’466 patent are not directed to installing an application program.
`
`Rather, the figures and descriptions are directed to other operations, such as
`
`configuration, login, and access operations. See, e.g., Ex. 1006, 6:18–27.
`
`For these reasons, we determine that neither the ’578 patent nor the
`
`incorporated portion of the ’466 patent provides sufficient structure for the
`
`means for installing.
`
`In sum, the corresponding structure for the “means for installing”
`
`includes software with no sufficiently described algorithm for the software.
`
`
`
`7 Neither party indicates that the original application that matured into the
`’466 patent was altered during prosecution. Thus, we look to the submitted
`Exhibit 1006 of the ’466 patent regarding Figures 5–7.
`8 A host document may incorporate other materials by reference, however,
`the “host document must identify with detailed particularity what specific
`material it incorporates and clearly indicate where that material is found in
`the various documents.” Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d
`1370, 1378 (Fed. Cir. 2007) (citing Cook Biotech Inc. v. Acell, Inc., 460 F.3d
`1365, 1376 (Fed. Cir. 2006)). For purposes of this decision only, we assume
`that the ’578 patent properly incorporates by reference the description with
`respect to Figures 5–7 of the ’466 patent in connection with the means for
`installing.
`
`9
`
`

`

`IPR2017-01839
`Patent 6,324,578 B1
`
`It is well established that “the corresponding structure for a § 112 ¶ 6 claim
`
`for a computer-implemented function is the algorithm disclosed in the
`
`specification.” Aristocrat Techs. Austl. Pty Ltd. vs. Int’l Game Tech., 521
`
`F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417
`
`F.3d 1241, 1249 (Fed. Cir. 2005)). Both parties’ proposed structure includes
`
`software, but “[s]imply reciting ‘software’ without providing some detail
`
`about the means to accomplish the function is not enough.” Finisar Corp. v.
`
`DirecTV Grp., Inc., 523 F.3d 1323, 1340–41 (Fed. Cir. 2008); see also
`
`Blackboard, Inc. v. Desire2Learn, 574 F.3d 1371, 1382 (Fed. Cir. 2009)
`
`(holding disclosed “access control manager” insufficient structure to
`
`perform “means for assigning access to and control of the data”). Neither
`
`party directs us to any description, whether in prose, flow chart, or any other
`
`manner, that provides sufficient structure for installing an application
`
`program. See Finisar, 523 F.3d at 1340. Nor is it enough that a hypothetical
`
`person of ordinary skill in the art would know how to design software for
`
`installing an application program. See Blackboard, 574 F.3d at 1385–86.
`
`Some type of algorithm would be required to complete the function of
`
`installing an application program, but neither party has identified such an
`
`algorithm in the Specification.
`
`For these reasons, the parties have not sufficiently identified a
`
`structure (e.g., algorithm) corresponding to the function recited in claims 16,
`
`17, and 32, as required for such a computer-implemented function. Thus,
`
`we are unable to construe independent claims 16, 17, or 32, or any of claims
`
`18 and 20–30 that depend from claim 17, or any of claims 33 and 35–45 that
`
`depend from claim 32, for purposes of this Decision. See In re Aoyama, 656
`
`F.3d 1293, 1298 (Fed. Cir. 2011).
`
`10
`
`

`

`IPR2017-01839
`Patent 6,324,578 B1
`
`
`
`“means for receiving”
`
`
`
`Independent claim 31 recites “means for receiving an application
`
`launcher program associated with an application program having a plurality
`
`of configurable preferences from a server coupled to the network.”
`
`Independent claim 46 recites “computer readable program code means for
`
`receiving an application launcher program associated with an application
`
`program having a plurality of configurable preferences from a server
`
`coupled to the network.” Petitioner argues that the phrase in claims 31 and
`
`46 is a means-plus-function limitation and should be construed under 35
`
`U.S.C. § 112, sixth paragraph. Pet. 11.
`
`Petitioner contends the recited function is “receiving an application
`
`launcher program associated with an application program having a plurality
`
`of configurable preferences from a server coupled to the network.” Id.
`
`Petitioner asserts that the corresponding structure is a client (claim 31) or
`
`code/software (claim 46) programmed to receive an application launcher
`
`program, and equivalents. Id. (citing Ex. 1001, Fig. 4 (block 90), 10:50–51).
`
`Patent Owner does not dispute Petitioner’s proposed construction. Prelim.
`
`Resp. 14.
`
`We agree that the “means for receiving,” recited in claim 31, and the
`
`“computer readable program code means for receiving” recited in claim 46
`
`should be construed according to 35 U.S.C. § 112, sixth paragraph. We also
`
`agree that the corresponding structure includes software (e.g., a client
`
`programmed), but we determine the parties have identified no sufficiently
`
`described algorithm for the software.
`
`11
`
`

`

`IPR2017-01839
`Patent 6,324,578 B1
`
`The parties only direct attention to two brief descriptions of the
`
`“means for receiving.” One is block 90 of Figure 4 and the other is found at
`
`column 10, lines 50–51. Block 90 and the passage to which we are directed,
`
`however, describe the function, not a corresponding structure. Indeed,
`
`neither describes in prose, flow chart, or any other manner, sufficient
`
`structure for the means for receiving. For these reasons, the parties have not
`
`sufficiently identified a structure (e.g., algorithm) corresponding to the
`
`function recited in claims 31 or 46. Thus, we are unable to construe
`
`independent claims 31 and 46, for purposes of this Decision. For those
`
`claims which we are unable to construe, we determine that there is not a
`
`reasonable likelihood that Petitioner would prevail in establishing the
`
`unpatentability of those claims, and, therefore, deny institution with respect
`
`to those claims.
`
`For purposes of this decision we need not expressly construe any
`
`other claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`
`795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed
`
`that are in controversy, and only to the extent necessary to resolve the
`
`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`
`in the context of an inter partes review).
`
`B. Principles of Law
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`12
`
`

`

`IPR2017-01839
`Patent 6,324,578 B1
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`C. Asserted Obviousness of Claims over Kasso and JavaStation
`
`Petitioner contends claims 1, 6–9, and 11–15 are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over Kasso and JavaStation. Pet.
`
`15–49.
`
`1. Kasso
`
`Kasso is directed to a computer program product for managing and
`
`configuring application program properties. Ex. 1002, 3:58–60. Figure 2 is
`
`reproduced below.
`
`
`
`13
`
`

`

`IPR2017-01839
`Patent 6,324,578 B1
`
`
`
`Figure 2 of Kasso is a block diagram of a networked computer
`
`
`
`environment.
`
`
`
`As seen from above, each of a plurality of network computers 200,
`
`202, is coupled using a conventional network communication link 210 to a
`
`local area network 204. Id. at 4:46–49. A JavaOS boot server (JBS) 206
`
`also is coupled to the local area network and provides or distributes an
`
`operating system, such as the JavaOS operating system to a client that is
`
`logically remote from the JBS 206, such as network computer 200. Id. at
`
`4:54–59. This enables network computer 200 to receive the operating
`
`system, load it, and begin executing it. An HTTP server 208 is coupled to
`
`local area network and has a mass storage device that stores documents for
`
`delivery and display by a client logically remote from the HTTP server 208,
`
`such as network computer 200. Id. at 4:59–65. Documents stored on server
`
`208 can be files formatted using Hypertext Markup Language (HTML), i.e.,
`
`14
`
`

`

`IPR2017-01839
`Patent 6,324,578 B1
`
`World Wide Web pages, or other data files such as property lists. Id. at
`
`4:65–5:1. The appearance and behavior of a host such as 200, and the
`
`currently executing application, are governed by configuration files or
`
`property lists that reside on server 208. Id. at 6:19–23.
`
`2. JavaStation
`
`According to Petitioner, JavaStation, dated June 1997, appears in the
`
`Internet Archive’s Wayback Machine as being publicly available by August
`
`1997, and qualifies as prior art under 35 U.S.C. § 102(b). Pet. 15–16 (citing
`
`Ex. 1003, Ex. 10089 ¶ 26). In its Preliminary Response, Patent Owner does
`
`not challenge JavaStation as prior art. For purposes of this decision, we
`
`assume without deciding that JavaStation is prior art.
`
`JavaStation describes HotJava Views, which enables client-
`
`administration. Ex. 1003, 27. Through the use of HotJava Views, a group
`
`environment can be customized and users added or deleted from a group. Id.
`
`at 27–29.
`
`3. Discussion
`
`Petitioner asserts that Kasso in combination with JavaStation renders
`
`obvious claims 1, 6–9, and 11–15. Pet. 15–49. Claim 1 recites “installing
`
`an application program having a plurality of configurable preferences and a
`
`plurality of authorized users on a server coupled to the network.” Although
`
`Petitioner asserts that Kasso in combination with JavaStation meets
`
`“installing an application program having a plurality of configurable
`
`
`
`9 Exhibit 1005 is a declaration of Dr. Scott Bennett, retired academic
`librarian, whose testimony Petitioner relies on regarding the authenticity and
`public accessibility of JavaStation. Ex. 1008 ¶¶ 2, 26.
`
`15
`
`

`

`IPR2017-01839
`Patent 6,324,578 B1
`
`preferences and a plurality of authorized users on a server coupled to the
`
`network,” Petitioner does not explain how that is so.
`
`For the disputed limitation, Petitioner directs attention to its
`
`explanation for claim 17 and the “means for installing an application
`
`program” limitation recited in that claim. Pet. 17, 24–32. Petitioner argues
`
`that Kasso discloses managing and configuring application program
`
`properties and that the administrator may assign users to specific groups
`
`through “group definition files” and application program properties may be
`
`assigned to defined groups. Id. at 24–25 (citing Ex. 1002, 9:44–10:8, 10:64–
`
`11:39, 13:3–15, Tables 2, 4, and 5). Petitioner further contends that Kasso is
`
`implemented through HotJava Views software and relies on JavaStation for
`
`the specific mechanism used for setting up users, groups, and software to be
`
`managed using HotJava Views. Id. at 25.
`
`Petitioner further contends that JavaStation discloses the function of
`
`installing an application program “as the Views Manager administrative tool
`
`enables an administrator to configure the HotJava Views software, set up
`
`and manage users and applications, and make an application recognized and
`
`available to users at JavaStation clients served by a Webtop/HTTP server.”
`
`Id. at 25–26 (citing Ex. 1003, 9–10, 27–49). The remainder of Petitioner’s
`
`explanation is with respect to the structure for performing the claimed
`
`function. See, e.g., Pet. 26–32.
`
`We agree with Patent Owner that Petitioner has failed to show that the
`
`proposed combination of Kasso and JavaStation discloses “installing an
`
`application program having a plurality of configurable preferences and a
`
`plurality of authorized users on a server coupled to the network.” Prelim.
`
`Resp. 22–24. We further determine that Petitioner’s showing is premised on
`
`16
`
`

`

`IPR2017-01839
`Patent 6,324,578 B1
`
`its construction of the “means for installing” discussed above to mean
`
`configuring and not installing, and that nowhere in the Petition does
`
`Petitioner explain how either Kasso or JavaStation, or the combination of the
`
`two, teach or suggest installing an application program having a plurality of
`
`configurable preferences and a plurality of authorized users on a server as
`
`claimed. Pet. 24–32. For example, Petitioner contends that JavaStation
`
`discloses the disputed function since the Views Manager administrative tool
`
`enables an administrator to configure the HotJava Views software, set up
`
`and manage users and applications, and make an application recognized and
`
`available to users at JavaStation clients served by a Webtop/HTTP server.
`
`But Petitioner fails to explain sufficiently how the functions of enabling an
`
`administrator to configure, set up and manage users and applications, and
`
`make an application recognized and available, meet the function of
`
`“installing an application program” as claimed. Accordingly, we are not
`
`persuaded that Petitioner has established a reasonable likelihood that
`
`Petitioner would prevail in its challenge to claims 1, 6–9, and 11–14.
`
`Independent claim 15 does not recite the installing step and we
`
`address that claim separately. Claim 15 recites “receiving an application
`
`launcher program associated with an application program having a plurality
`
`of configurable preferences from a server.” Petitioner relies on its showing
`
`for independent claim 31 to meet its showing with respect to claim 15. Id. at
`
`20, 58. The showing with respect to the phrase in claim 31 (identified by
`
`Petitioner as 31(a)) that most resembles the disputed claim 15 phrase,
`
`however, refers to the showing made for claim elements 16(b)(i) and 17(b).
`
`Id. at 58. The phrases of independent claims 16(b)(i) and 17(b), however,
`
`are different than the disputed claim 15 phrase. For instance, claim 17
`
`17
`
`

`

`IPR2017-01839
`Patent 6,324,578 B1
`
`recites “means for distributing an application launcher program associated
`
`with the application program to a client coupled to the network.” This is
`
`what Petitioner refers to as element 17(b). Id. at 33. That phrase, however,
`
`is not the same as the claim 15 limitation of “receiving an application
`
`launcher program associated with an application program having a plurality
`
`of configurable preferences from a server.” Petitioner has not explained, in
`
`any way, why a showing with respect to “distributing an application
`
`launcher” satisfies Petitioner’s requirement to show “receiving an
`
`application launcher program.” We will not assume that the two phrases are
`
`equivalent. In addition, claim 15 includes “having a plurality of
`
`configurable preferences” which is absent from the allegedly corresponding
`
`element 17(b) phrase. There is no accounting for, with respect to element
`
`17(b) “having a plurality of configurable preferences.”
`
`Claim 16 recites “means for receiving an application launcher
`
`program associated with the application program from the server,” which
`
`Petitioner refers to as element 16(b)(i). Id. at 21. That language, however,
`
`is not the same as the disputed phrase and is missing the language “having a
`
`plurality of configurable preferences” recited in claim 15. The showing with
`
`respect to element 16(b)(i) refers back to the showing with respect to
`
`element 17(b), which we determine, as explained above is not sufficient for
`
`claim 15. Moreover, the additional explanation with respect to element
`
`16(b)(i) does not address the language found in claim 15 of “having a
`
`plurality of configurable preferences.” Id. at 21–22. Petitioner has not
`
`accounted for the additional language, or the whole disputed phrase in the
`
`context of claim 15.
`
`18
`
`

`

`IPR2017-01839
`Patent 6,324,578 B1
`
`For all of the above reasons, we are not persuaded that Petitioner has
`
`established a reasonable likelihood that Petitioner would prevail in its
`
`challenge to claims 1, 6–9, and 11–15 as unpatentable under 35 U.S.C.
`
`§ 103(a) as obvious over Kasso and JavaStation.10
`
`D. Obviousness of claims over Kasso, JavaStation, and Sanders
`
`Petitioner contends claims 2–5 and 10 are unpatentable under
`
`35 U.S.C. § 103 as obvious over Kasso, JavaStation, and Sanders. Pet. 59–
`
`68. Claims 2–5 and 10 depend from claim 1. As explained above, we are
`
`not persuaded that Petitioner has established a reasonable likelihood that
`
`Petitioner would prevail in its challenge to claim 1 as unpatentable under
`
`35 U.S.C. § 103(a) as obvious over Kasso and JavaStation. Accordingly, we
`
`are not persuaded that Petitioner has established a reasonable likelihood that
`
`Petitioner would prevail in its challenge to claims 2–5 and 10, which depend
`
`from claim 1.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that Petitioner has not
`
`demonstrated a reasonable likelihood it would prevail in establishing the
`
`unpatentability of the challenged claims of the ’578 patent.
`
`IV. ORDER
`
`For the foregoing reasons, it is
`
`
`
`10 Because we find Petitioner has not shown a reasonable likelihood of
`prevailing on this challenge for the reasons discussed above, we do not reach
`Patent Owner’s other arguments as to this challenge.
`
`19
`
`

`

`IPR2017-01839
`Patent 6,324,578 B1
`
`ORDERED that the Petition is denied as to all challenged claims, and
`
`no trial is instituted.
`
`
`
`
`
`For PETITIONER:
`
`Eric A. Buresh
`Mark C. Lang
`Kathleen D. Fitterling
`ERISE IP P.A.
`eric.buresh@eriseip.com
`mark.lang@eriseip.com
`kathleen.fitterling@eriseip.com
`
`For PATENT OWNER:
`
`Brett Mangrum
`Ryan Loveless
`James Etheridge
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`Sean Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`20
`
`