UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`UBISOFT ENTERTAINMENT S.A. AND SQUARE ENIX,
`Petitioners
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`
`
`
`
`
`
`
`IPR2017-01839
`PATENT 6,324,578
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`UBISOFT ENTERTAINMENT S.A. AND SQUARE ENIX,
`Petitioners
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`
`
`
`
`
`
`
`IPR2017-01839
`PATENT 6,324,578
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`
`
`
`Tables of Contents
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`I.
`INTRODUCTION ..................................................................................... 1
`II. OVERVIEW OF THE ’578 PATENT ..................................................... 1
`A.
`Priority Date of the ’578 Patent......................................................... 6
`III. PERSON OF ORDINARY SKILL IN THE ART .................................. 7
`IV. ARGUMENT .............................................................................................. 7
`A.
`Claim Construction ........................................................................... 8
`B.
`The Petition Should Be Denied In Its Entirety Because The
`Proposed Combination(s) Do Not Disclose All Elements of
`the Independent Claims ................................................................... 21
`1.
`The Petition Fails 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”
`as Required by Independent Claims 1, 16, and 17 ............... 22
`The Petition Fails to Show that a POSITA Would
`Have Modified Kasso From Its Three Separate and
`Dedicated Servers to A Single Server that Provides
`“an application launch program associated with an
`application program” From an “authorized user” as
`Required by Independent Claims 15, 31, and 46 .................. 25
`THE SUPREME COURT IS CURRENTLY REVIEWING THE
`V.
`CONSTITUTIONALITY OF INTER PARTES REVIEW
`PROCEEDINGS 29
`VI. CONCLUSION ........................................................................................ 30
`
`
`
`2.
`
`
`
`ii
`
`
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc Luxembourg
`
`S.A. (“Patent Owner”) submits this Preliminary Response to the Petition for Inter
`
`Partes Review (“the Petition”) of U.S. Patent No. 6,324,578 (“the ’578 Patent”) filed
`
`by Ubisoft Entertainment S.A. and Square Enix. (“Petitioners”).
`
`Petitioners contend that its proposed combinations render obvious the
`
`challenged claims of the ’578 Patent. However, Petitioners fail at least to show that
`
`“HotJava Views” of Kasso and JavaStation discloses “installing an application”, and
`
`the Petition also fails to show that a person of ordinary skill in the art would have
`
`modified Kasso into a single-server system that combines its three separate and
`
`dedicated servers. Therefore, at least because the Petition cannot show that the
`
`independent Claims of the ’578 Patent are not patentable, the Petition should be
`
`denied in its entirety.
`
`The Board should also deny institution because this proceeding would violate
`
`Patent Owner’s constitutional rights. Patent Owner presents a constitutional
`
`challenge now to preserve the issue pending the Supreme Court’s decision in Oil
`
`States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 137 S. Ct. 2239 (2017).
`
`II. OVERVIEW OF THE ’578 PATENT
`The ’578 Patent recognized that in a “distributed processing computer
`
`environment, control over software, such as application programs, is more difficult
`
`1
`
`
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`than where a mainframe operated by an administrator is used, particularly for large
`
`organizations with numerous client stations and servers distributed widely
`
`geographically and utilized by a large number of users.” EX1001, 1:45-51. The ’578
`
`Patent further observed that “[t]he combinations of network connections, differing
`
`hardware, native applications and network applications makes portability of
`
`preferences or operating environment characteristics which provide consistency
`
`from workstation to workstation difficult.” Id., 2:18-22.
`
`For example, the ’578 Patent provides the following scenario and problem in
`
`the prior art: “a user may, in a first session, access the network utilizing a high speed
`
`connection and a workstation with a high resolution color monitor to execute an
`
`application and then, in a later session, access the network to execute the same
`
`application from a mobile computer with a monochrome display and a low speed
`
`modem connection to the network. Thus, session content, such as color display data
`
`or preferences associated with the application, which may have been appropriate for
`
`the first session, may be inappropriate or inefficient in a later session.” Id., 2:24-34.
`
`The ’578 Patent further notes that in the prior art, “[e]fforts to address mobility
`
`of uses in a network have included efforts to provide preference mobility such as,
`
`for example, Novell's Z.E.N.works™, Microsoft's “Zero Administration” initiative
`
`for Windows® and International Business Machines Corporation's (IBM's)
`
`2
`
`
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`Workspace On Demand™. However, these solutions each typically require pre-
`
`installation of software at the workstation to support their services.” And might even
`
`require a homogenous networking environment where the server and workstation
`
`are utilizing the same operating system. Id., 2:35-49. Another approach to
`
`centralized management “is the traditional mainframe model, such as with the IBM
`
`3270 system, or an X Windows environment. However, in each of these approaches,
`
`the client device is treated as a dumb terminal with execution of the applications
`
`occurring at the server rather than the client.” Id., 2:50-55.
`
`The ’578 Patent understood that each of the prior art “mobility” systems
`
`“typically do not address the full range of complications which may arise in a
`
`heterogeneous network utilizing differing devices and connections. The 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., 3:5-11.
`
`The ’578 Patent addressed those technological problems (among others), in
`
`part, by “providing two program files for each configurable application program
`
`which are provided to a network server station which operates as an on-demand
`
`server for software deployment and may also act as the application server. The on-
`
`demand server makes the first, or configuration manager, program available to an
`
`3
`
`
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`administrator classified user (either remotely at a client station or at a direct interface
`
`to the server station) to provide an interface to establish preferences for the
`
`configurable preferences of the application program which have been designated as
`
`administrator only settable. The on-demand server also provides a second, or
`
`application launcher, program to client stations on the network and served by the on-
`
`demand server. The application launcher program not only provides for a user
`
`interface to execute the application program itself but also allows a user to specify
`
`one or more of the configurable parameters of the application program.” Id., 3:51-
`
`67.
`
`Then, “[t]he application launcher program first determines the user identity
`
`(ID) and provides the user information to the server along with the request to initiate
`
`execution of the application program. The application program is then executed
`
`using stored values for the user and administrator set preferences or, if no
`
`preferences have yet been obtained for the particular user (or new preferences are
`
`desired), user preferences are obtained before initiating execution of the application
`
`program itself. A profile manager program on the on-demand server provides a user
`
`interface and maintains profile information for each client (hardware related) and
`
`user (preferences) for all managed configurable application programs available on
`
`the on-demand server.” Id., 4:6-18.
`
`4
`
`
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`Of the challenged claims, Claims 1, 15, 16, 17, 31, 32, and 46 are independent
`
`claims. For the convenience of the Board, Claim 1 is 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 configurable
`preferences responsive to a request from the one of the plurality of
`authorized users.
`While the independent claims recite analogous limitations and largely use the
`
`same claim language, there are significant enough differences to preclude the
`
`argument that Claim 1 is perfectly representative of all claims. Nevertheless, Patent
`
`Owner has endeavored to show how Petitioner has not met its threshold burden with
`
`respect to claim language that appears in all the challenged claims.
`
`Figure 2 (reproduced below) of the ’578 Patent illustrates certain features
`
`recited in the independent claims.
`
`5
`
`
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`
`
`A.
`Priority Date of the ’578 Patent
`The '578 Patent is titled “Methods, systems and computer program products
`
`for management of configurable application programs on a network”, filed on
`
`December 14, 1998. Ex. 1001 at [54], [22]. The '578 Patent issued from U.S. Patent
`
`6
`
`
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`Application No. 09/211,529. Thus, the effective filing date for the '578 Patent is
`
`December 14, 1998, which is the filing date of its application. The '578 Patent issued
`
`on November 28, 2001 and was originally assigned to the International Business
`
`Machines Corporation (“IBM”). Ex. 1001 at [73].
`
`III. PERSON OF ORDINARY SKILL IN THE ART
`The Petition alleges that “[a] person of ordinary skill in the field of computer
`
`networking at the time of the alleged invention, December 14, 1998, (“POSITA”)
`
`would have at least (1) an undergraduate degree in computer science, computer
`
`engineering, or related field or equivalent years working experience, and (2) 1-2
`
`years’ experience
`
`in networking environments,
`
`including management of
`
`application programs in a network environment.” Pet. at 1-2. To simplify issues
`
`before the Board at this preliminary stage, Patent Owner does not presently dispute
`
`that definition of POSITA.
`
`IV. ARGUMENT
`The Petition presents the following challenges against the ’578 Patent:
`
`Ground
`1
`
`Claims
`1, 6-9, 11-17, 22-25, 27-32,
`37-40, 42-46
`
`2
`
`2-5, 10, 18, 20-21, 26, 33,
`35-36, 41
`
`
`
`Reference(s)
`Statute
`103(a) Obvious over Kasso [EX1002]
`in view of JavaStation [EX1003]
`under §103(a)
`103(a) Obvious over Kasso in view of
`JavaStation in further view of
`Sanders [EX1004]
`
`7
`
`
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`The Petition alleges obviousness of Claims 1-18, 20-33, and 35-46. Petitioners
`
`have the burden of proof to establish they are entitled to their requested relief. 37
`
`C.F.R. § 42.108(c). Because the Petition only presents theories of obviousness,
`
`Petitioner must demonstrate a reasonable likelihood that at least one of the
`
`challenged patent claims would have been obvious in view of the art cited in the
`
`Petition. Petitioner “must 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). For
`
`at least the reasons set forth herein, the Petition does not meet this burden and
`
`therefore institution should be denied.
`
`A. Claim Construction
`Although the Petition does not mention the statute, the Petition appears to
`
`identify certain claim limitations as written in “means-plus-function” form and
`
`invoking pre-AIA 35 U.S.C. § 112, ¶ 6. Of the challenged claims, Claims 16, 17, 20-
`
`25, 27-33, 35-39, and 42-46 have limitations subject to 35 U.S.C. § 112, ¶ 6. Thus,
`
`for Claims 16, 17, 20-25, 27-33, 35-39, and 42-46, Patent Owner agrees that the
`
`Board should look to the ’578 Patent specification to determine the corresponding
`
`structure and its equivalents for the “means for …” limitations recited in challenged
`
`Claims 16, 17, 20-25, 27-33, 35-39, and 42-46. However, as will be described in
`
`detail below, many of Petitioners’ proposed constructions are erroneous in a variety
`
`8
`
`
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`of ways.
`
`For the sake of clarity and for the Board’s convenience, the table below
`
`identifies structure disclosed in the ’578 Patent corresponding to the “means for”
`
`limitations recited in Claims 16, 17, 20-25, 27-33, 35-39, and 42-46.
`
`Claim Language
`
`Function
`
`Means for installing …
`(Claims 16, 17, 30, 32,
`45)
`
`Means for distributing an
`application launcher
`
`“installing an
`application program
`having a plurality of
`configurable
`preferences and a
`plurality of authorized
`users on the server”
`(Claim 16); “installing
`an application program
`having a plurality of
`configurable
`preferences and a
`plurality of authorized
`users on a server
`coupled to the network”
`(Claims 17, 32);
`“installing a second
`application program
`having a second
`plurality of configurable
`preferences and a
`second plurality of
`authorized users on the
`server” (Claims 30, 45)
`“distributing an
`application launcher
`
`9
`
`Corresponding structure
`in the ’578 Patent
`A server programmed to
`make an application
`program accessible and
`executable. EX1001, 4:24-
`26, 8:48-54.
`
`A server programmed to
`distribute an application
`
`
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`Corresponding structure
`in the ’578 Patent
`launcher program to a
`client. EX1001, 8:21-22,
`9:63-64.
`
`A client programmed to
`display an icon associated
`with an application
`program on the client
`screen. EX1001, 10:54-56.
`A server programmed to
`obtain preferences
`associated with a user of
`an application program.
`EX1001, 8:55-57.
`
`Claim Language
`
`Function
`
`program … (Claims 16-
`17, 21, 28-30, 32, 36, 43-
`45)
`
`Means for displaying an
`icon associated with the
`application program on a
`screen of the client
`(Claims 21, 36)
`Means for obtaining a
`user set of configurable
`preferences
`
`program associated with
`the application program
`to the client” (Claim
`16); “distributing an
`application launcher
`program associated with
`the application program
`to a client coupled to
`the network” (Claims
`17, 32); “distributing
`the application launcher
`program associated with
`the application program
`to a second client
`coupled to the network”
`(Claims 28-29, 43-44);
`“distributing a second
`application launcher
`program associated with
`the second application
`program to the client
`coupled to the network”
`(Claims 30, 45).
`“displaying an icon
`associated with the
`application program on
`a screen of the client”
`
`“obtaining a user set of
`the plurality of
`configurable
`preferences from one of
`the plurality of
`authorized users
`
`10
`
`
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`Corresponding structure
`in the ’578 Patent
`
`A server or client
`programmed to obtain a
`set of preferences
`associated with an
`administrator. EX1001,
`4:9-11, 4:34-37, 4:40-45,
`4:53-56, 5:19-22, 5:31-36,
`8:61-63, 9:66-10:1, 10:29-
`31.
`
`Claim Language
`
`Function
`
`executing the
`application launcher
`program” (Claims 16-
`17, 32); “obtaining a
`second user set of the
`plurality of configurable
`preferences from a
`second one of the
`plurality of authorized
`users executing the
`application launcher
`program” (Claims 27,
`42); “obtaining a second
`user set of the second
`plurality of configurable
`preferences from one of
`the second plurality of
`authorized users
`executing the second
`application launcher
`program” (Claims 30,
`45).
`“obtaining an
`administrator set of the
`plurality of configurable
`preferences from an
`administrator” (Claims
`16-17, 32); “obtaining a
`second administrator set
`of the second plurality
`of configurable
`preferences from an
`administrator” (Claims
`30, 45).
`
`11
`
`Means for obtaining an
`administrator set of
`configurable preferences
`(Claims 16-18, 30, 32-33,
`45)
`
`
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`Corresponding structure
`in the ’578 Patent
`A server or client
`programmed to provide a
`configuration manager
`program that is executed
`by an administrator, to set
`configurable preferences.
`EX1001, 8:59-9:1.
`
`A server programmed to
`obtain a stored user set
`and administrator set of
`configurable preferences
`and providing an instance
`of an application program.
`EX1001, 10:6-15.
`
`a client programmed to
`execute an application
`program using obtained
`user set and administrator
`set configurable
`preferences through an
`application launcher
`program. EX1001, 10:30-
`37.
`
`Claim Language
`
`Function
`
`Means for obtaining an
`administrator set of the
`plurality of configurable
`preferences from an
`administrator executing
`the configuration
`manager program
`(Claims 18, 33)
`Means for providing an
`instance (Claims 16-17,
`20, 22-24, 32, 35, 37-39)
`
`Means for executing the
`application program
`using the obtained user
`set and the administrator
`set of the plurality of
`configurable preferences
`responsive to a request
`from the one of the
`plurality of authorized
`users through the
`application launcher
`program (Claims 20, 35)
`
`obtaining an
`administrator set of the
`plurality of configurable
`preferences from an
`administrator executing
`the configuration
`manager program
`
`“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” (claims 16, 17,
`and 32)
`executing the
`application program
`using the obtained user
`set and the
`administrator set of the
`plurality of configurable
`preferences responsive
`to a request from the
`one of the plurality of
`authorized users
`through the application
`launcher program
`
`12
`
`
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`Corresponding structure
`in the ’578 Patent
`A server programmed to
`retrieve a user set and
`administrator set of
`configurable preferences
`from a storage device.
`EX1001, 4:52-56, 9:66-
`10:1.
`A server programmed to
`determine if the requesting
`user is authorized for the
`application program.
`EX1001, 10:9-11, 11:3-8.
`
`A server or client
`programmed to obtain
`default values for any
`preferences that are
`determined to require
`default values. EX1001,
`9:30-37.
`
`A client programmed to
`execute an application
`program using the
`obtained user set and
`administrator set of
`configurable preferences.
`EX1001, 10:29-31.
`
`Claim Language
`
`Function
`
`Means for retrieving the
`stored user set and the
`stored administrator set
`from the storage device
`(Claims 22, 37)
`
`retrieving the stored
`user set and the stored
`administrator set from
`the storage device
`
`Means for determining if
`a user requesting
`execution of the
`application program is
`one of the plurality of
`authorized users (Claim
`23)
`Means for obtaining
`default preference values
`for any of the plurality of
`configurable preferences
`which are not specified
`by the user set or the
`administrator set (Claims
`24, 39)
`Means for executing …
`(Claims 27, 30, 42, 45)
`
`determining if a user
`requesting execution of
`an application program
`is one of a plurality of
`authorized users
`
`obtaining default
`preference values for
`any of a plurality of
`configurable
`preferences which are
`not specified by a user
`set or an administrator
`set
`“executing the
`application program
`using the obtained
`second user set and the
`administrator set of the
`plurality of configurable
`preferences responsive
`to a request from the
`second one of the
`plurality of authorized
`users” (Claims 27, 42);
`“executing the second
`
`13
`
`
`
`Claim Language
`
`Function
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`Corresponding structure
`in the ’578 Patent
`
`A server programmed to
`distribute a configuration
`manager program.
`EX1001, 8:50-51, 9:63-
`64.
`A storage device or
`database. EX1001, 9:66-
`10:1, 10:19-22, 10:37-46.
`
`application program
`using the obtained
`second user set and the
`second administrator set
`of the second plurality
`of configurable
`preferences responsive
`to a request from the
`one of the second
`plurality of authorized
`users” (Claims 30, 45)
`distributing a
`configuration manager
`program
`
`storing an obtained user
`set and an obtained
`administrator set on a
`storage device coupled
`to a server
`
`Means for distributing a
`configuration manager
`program (Claims 18, 33)
`
`Means for storing the
`obtained user set and the
`obtained administrator set
`on a storage device
`coupled to the server
`(Claims 22, 37)
`Means for receiving an
`application launcher
`associated with the
`application program from
`the server (Claims 16, 31,
`46)
`Means for providing a
`user set of preferences
`(Claims 16, 31, 46)
`
`receiving an application
`launcher associated with
`an application program
`from a server
`
`A client programmed to
`receive an application
`program. EX1001, 10:50-
`51.
`
`
`
`“providing to the server
`a user set of the
`plurality of configurable
`preferences from one of
`the plurality of
`authorized users
`
`A client having an
`application launcher
`program, programmed to
`obtain preferences from a
`user and provide user
`preferences to a server.
`
`14
`
`
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`Corresponding structure
`in the ’578 Patent
`EX1001, 9:5-13, 10:16-
`29, 11:9-14, 11:14-22,
`12:6-7.
`
`A client programmed to
`request a server to execute
`or provide an instance of
`an application program
`using the obtained user set
`and administrator set of
`configurable preferences.
`EX1001, 10:30-37, 10:58-
`11:8.
`
`Claim Language
`
`Function
`
`Means for requesting
`(Claims 16, 31, 46)
`
`executing the
`application launcher
`program” (Claim 16);
`“providing a user set of
`the plurality of
`configurable
`preferences from one of
`a plurality of authorized
`users executing the
`application launcher
`program to the server”
`(Claims 31, 46)
`“requesting that the
`server initiate execution
`of the application
`program using the
`obtained user set and
`the administrator set of
`the plurality of
`configurable
`preferences responsive
`to a request from the
`one of the plurality of
`authorized users”
`(Claim 16); “requesting
`that the server provide
`an[] instance of the
`application program and
`a stored user set and an
`administrator set of the
`plurality of configurable
`preferences for use in
`executing the
`application program
`
`15
`
`
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`Corresponding structure
`in the ’578 Patent
`
`Claim Language
`
`Function
`
`responsive to a request
`from the one of the
`plurality of authorized
`users” (Claims 31, 46)
`
`
`
`As stated above, Petitioners’ proposed constructions are improper in numerous
`
`ways. Enumerated below are further examples of at least some of the ways
`
`Petitioners’ proposed constructions fail.
`
`a. “Means for Installing (Claims 16, 17, 30, 32, 45)” Pet. at 2-3
`Without any explanation or support, Petitioners point to a completely different
`
`patent (the ’466 patent) for the structure of “means for installing”. See Pet. at 2-3.
`
`The Petition merely alleges that “[t]he ’466 includes instructions for performing
`
`installation/configuration of application programs …”, and further alleges that the
`
`required structure for the claims of the ’578 Patent are “depicted in Fig. 5 and
`
`described at 13:1-23 of the ’466”. Pet. at 3. However, 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. Regardless, even a cursory examination of
`
`the ’466 patent shows that Petitioners’ reliance is misplaced – the ’466 patent
`
`specification states “FIG. 5 is a flowchart illustrating configuration operations for
`
`application program distribution and execution according to an embodiment of the
`
`16
`
`
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`present invention”. EX1006, 6:18-20 (emphasis added).
`
`In sum, not only does the Petition’s reliance on Figure 5 of the ’466 patent fail
`
`because Petitioners provide no support or explanation for its improper attempt to
`
`incorporate an embodiment of a different patent, but the Petition further fails because
`
`the ’466 patent itself discloses that its Figure 5 relates to configuration operations
`
`(of just one embodiment), and not “installing” as recited by the claim language of
`
`the ’578 Patent. For this reason alone, the Petition should be denied.
`
`b. “means for displaying an icon associated with the application
`program on a screen of the client …” (Claims 21 and 36) Pet. at 4
`Petitioners improperly attempt to import unrecited and unnecessary function
`
`and structure into the claim language. First, while the Petition does not make clear
`
`with it describes as the function, the claim language is clear that the “wherein” clause
`
`is not part of the “means for” limitation. The claim language, including the wherein
`
`clause recites: “means for displaying an icon associated with the application program
`
`on a screen of the client and wherein the one of the plurality of authorized users
`
`executes the application launcher program by selecting the displayed icon”. There is
`
`a clear separation between the “means for” limitation and the following “wherein”
`
`clause that starts a separate limitation. Next, because the “wherein” clause is not a
`
`part of the “means for” limitation, the structure proposed by Petitioners to require
`
`“and 2) receive a selection of the displayed application launcher program icon” (Pet.
`
`17
`
`
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`at 4), is necessarily wrong and improper. Petitioners’ proposed construction here
`
`should be rejected, and thus provides an additional basis for the patentability of
`
`Claims 21 and 36.
`
`c. “Means for Obtaining an Administrator Set of Configurable
`Preferences (Claims 16-18, 30, 32-33, 45)” Pet. at 6-7
`Although the Petition identifies the correct function, i.e., obtaining an
`
`administrator set, or a second administrator set, of configurable preferences,
`
`Petitioners again attempt to improperly incorporate unnecessary and extraneous
`
`limitations. Specifically, the Petition seeks to require structure to “establish
`
`configurable preferences of the application program designated as an administrator
`
`only settable to be stored at the server”. Pet. at 6; see also Pet. at 7. Petitioners
`
`provide no support for its imposition of that limitation, because there is none. In fact,
`
`the specification emphasizes that the claims should not be limited in the way
`
`Petitioners seek:
`
`“In one embodiment of the present invention, obtained user sets
`and obtained administrator sets are stored on a storage device
`coupled to the server and retrieved from the storage device”
`EX1001, 4:52-56.
`“The administrator set of preferences for the application
`program is obtained by server 22 at block 76 and is stored on a
`storage device coupled to server 22.”
`EX1001, 9:66-10:1.
`“it is to be understood that the present invention may also be
`provided utilizing a storage device that is shared between a
`
`18
`
`
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`plurality of servers 22, 22’ or by separate but synchronized
`databases of preferences values at each of the two servers.”
`EX1001, 10:38-42.
`Thus, Petitioners’ proposed and improper recitation of the required structure
`
`here should be rejected, which provides an additional basis for denial of the Petition.
`
`d. “Means for Providing an Instance (Claims 16-17, 20, 22-24, 32, 35,
`37-39)” Pet. at 7-10
`Here, as the Petition agrees, the stated function is “providing an instance of
`
`the application program and a stored user set and 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” (Claims 16, 17, and
`
`32). See Pet. at 7 (emphasis added). However, Petitioners again propose and recite
`
`additional and unnecessary structure by requiring “the client station (Claims 16, 17)
`
`or code/software (Claim 32) is programmed to 4) execute a selected application
`
`program using the retrieved user set and administrator set of configurable
`
`preferences.” Pet. at 8. The “for use in executing” clause merely provides an
`
`intended use, not additional function or structure. There is nothing in the stated
`
`function that requires any function or structure of any clients.
`
`The error in Petitioners’ proposed structure is further emphasized by the
`
`express “means for executing” limitations of Claims 20 and 35: “means for
`
`executing the application program using the obtained user set and the administrator
`
`19
`
`
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`set of the plurality of configurable preferences responsive to a request from the one
`
`of the plurality of authorized users through the application launcher program”.
`
`Additionally, Claims 27, 30, 42, and 45 also have “means for executing” limitations
`
`(See e.g. Pet. at 10). The phrase “means for executing” stands in contrast to merely
`
`“for use in executing”, the latter is not a stated function that requires any additional
`
`structure. Thus, Petitioners’ proposed and erroneous recited structure here should
`
`also be rejected, and therefore provides an additional basis for the denial of the
`
`Petition, and provides additional basis for patentability of Claims 16-17, 20, 22-24,
`
`32, 35, 37-39.
`
`e. “means for obtaining default preference values for any of the
`plurality of configurable preferences which are not specified by the
`user set or the administrator set” (Claims 24 and 39) Pet. at 9-10
`The Petition proposes and recites unnecessarily limiting and extraneous
`
`structure: “and 2) if default values are required, obtain them from memory, and
`
`equivalents thereof.” Pet. at 9-10. However, there is nothing in the specification (or
`
`in the Petition) to support the limitation that the default values are to be obtained
`
`“from memory”. For example, a passage in the specification enumerates a wide
`
`variety of ways default values may be obtained:
`
`“The default values may be obtained from a storage device
`coupled to server 22. Various approaches may be utilized for
`specifying default values. For example, an application vendor
`may ship a file with the application program that specifies the
`
`20
`
`
`
`IPR2017-01839
`U.S. Patent 6,324,578
`
`default values. Alternatively, an administrator could store
`preferences at the all user group level providing default values
`for all users and/or groups. In another embodiment, the
`application itself may contain default values coded into the
`application allowing the application itself to provide default
`values
`if no
`stored default values
`are
`available.”
`EX1001, 9:36-46 (emphasis added).
`Therefore, Petitioners’ proposed recitation of structure is improper and should
`
`be rejected, which provides an additional basis denial of the Petition.
`
`Petitioners cannot prove invalidity 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). Petitioners’
`
`erroneous interpretation of the claims of the ’578 Patent provides an independent
`
`and basis to deny the Petition. Regardless, as will be described below, the Petition
`
`fails to show the proposed combinations discloses each element of the challenged
`
`claim, and therefore provides
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
