Case 2:19-cv-00395-J
`NITED STATES
`
`
`
`145-2 Filed
`Document
`PATENT AND TRADEMARK
`
`10/20/20 Page 1 of 7 PagelD #: 6507
`OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`WWW.Uspto. gov
`
`CONFIRMATION NO.
`
`ATTORNEY DOCKETNO.
`
`HOLA-005-US4
`
`O17
`
`APPLICATION NO.
`
`15/957,945
`
`ISSUE DATE
`
`04/09/2019
`
`PATENTNO.
`
`10257319
`
`131926
`
`7590
`
`03/20/2019
`
`MayPatents Ltd. c/o Dorit Shem-Tov
`P.O.B 7230
`Ramat-Gan, 5217102
`ISRAEL
`
`ISSUE NOTIFICATION
`
`The projected patent numberand issue date are specified above.
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(applicationfiled on or after May 29, 2000)
`
`The Patent Term Adjustmentis 0 day(s). Any patent to issue from the above-identified application will include
`an indication of the adjustment on the front page.
`
`If a Continued Prosecution Application (CPA) wasfiled in the above-identified application, the filing date that
`determines Patent Term Adjustmentis the filing date of the most recent CPA.
`
`Applicant will be able to obtain more detailed information by accessing the Patent Application Information
`Retrieval (PAIR) WEBsite (http://pair.uspto.gov).
`
`Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the Office
`of Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee payments
`should be directed to the Application Assistance Unit (AAU) of the Office of Data Management (ODM)at
`(571)-272-4200.
`
`APPLICANT(s) (Please see PAIR WEBsite http://pair.uspto.gov for additional applicants):
`
`WEB SPARK LTD., Netanya, ISRAEL;
`Derry Shribman, Tel Aviv, ISRAEL;
`Ofer Vilenski, Moshav Hadar Am, ISRAEL;
`
`The United States represents the largest, most dynamic marketplace in the world andis an unparalleled location
`for business investment, innovation, and commercialization of new technologies. The USA offers tremendous
`resources and advantages for those who invest and manufacture goods here. Through SelectUSA, our nation
`works to encourage and facilitate business investment. To learn more about why the USA is the best country in
`the world to develop technology, manufacture products, and grow your busindsapwmimiatekabiba,. 2008
`1R103 (Rev. 10/09)
`NetNut Ltd. v. Bright Data Ltd Code200 et al. v. Luminati NetKgr
`IPR2021-01492, EX. 2005
`IPR2020-01266 Page GOT
`
`Page 1 of 7
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`Case 2:19-cv-00395-JRG Document 145-2 Filed 10/20/20 Page 2 of 7 PagelD #: 6508
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`ATTY.'S DOCKET: HOLA-005-US4
`
`In re Application of:
`
`Derry Shribman eft al.
`
`Appln. No.: 15/957,945
`
`Filed: April 20, 2018
`
`For: System providing faster
`and more efficient
`data communication
`
`~~weweweSsweWw
`
`)
`
`Confirmation No.
`
`7917
`
`Art Unit:
`
`2459
`
`Examiner: Nguyen, Minh Chau
`
`Washington, D.C.
`
`October 18, 2018
`
`RESPONSE / AMENDMENT:
`
`Honorable Commissioner for Patents
`U.S. Patent and Trademark Office
`Randolph Building, Mail Stop Amendments
`401 Dulany Street
`Alexandria, VA
`22314
`
`Sir:
`
`In response to the Office Action of September 5,
`
`2018 (“Action”):
`
`Remarks/Arguments begin on page 2 of this paper.
`
`Luminati Exhibit 2008
`NetNut Ltd. v. Bright Data Ltd Code200 et al. v. Luminati N:
`TKS,
`4
`IPR2021-01492, EX. 2005
`IPR2020-01266 Page 002
`Page 2 of 7
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`

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`Case 2:19-cv-00395-JRG Document 145-2 Filed 10/20/20 Page 3 of 7 PagelD #: 6509
`
`Appln. No. 15/957,945
`Reply to Office action of September 5, 2018
`
`REMARKS / ARGUMENTS
`
`The
`
`examiner’s
`
`action
`
`dated
`
`September
`
`By
`
`2018
`
`(“Action”) has been received and its contents carefully noted.
`
`Office Action, pages 2-4
`
`Claims 1-29 are rejected under 35 U.S.C.
`
`101 because
`
`the claimed invention lacks patentable utility.
`
`Response.
`
`a. Claim 1
`
`is considered abstract since it describes “abstract
`
`idea which similar
`
`to the concept of
`
`remotely accessing and
`
`retrieving user specified information”. The Action is based on
`
`over generalization of the abstract
`
`idea and oversimplification
`
`of
`
`the recited claim functions
`
`and
`
`is untethered from the
`
`actual
`
`language of
`
`the claims. The Examiner has provided no
`
`facts and/or evidence to support
`
`the Examiner's determination
`
`that
`
`the recited structure and mechanism is an abstract
`
`idea.
`
`It is noted that Alice framework cautions that "describing the
`
`claims at such a high level of abstraction and untethered from
`
`the language of the claims all but ensures that
`
`the exceptions
`
`to$ 101 swallow the rule." Enfish, LIC v. Microsoft Corp.,
`
`822
`
`F.3d 1327, 1337 (Fed. Cir. 2016).
`
`In particular,
`
`claim 1
`
`also
`
`recites
`
`sending
`
`a
`
`received content
`
`to a server, which cannot be part of “the
`
`concept of
`
`remotely accessing and retrieving user specified
`
`information”. Hence,
`
`the Action fails to consider the claims as
`
`a whole, while it is noted that
`
`the claims should be analyzed
`
`“..
`
`in their entirety to ascertain whether their character as a
`
`whole is directed to excluded subject matter.” (Emphasis added)
`
`Internet Patents Corp.,
`
`790
`
`F.3d
`
`at
`
`1346.
`
`Further,
`
`the
`
`information exchanged over
`
`the network relates to routing or
`
`-2-
`Luminati Exhibit 2008
`NetNut Ltd. v. Bright Data Ltd Code200 et al. v. Luminati N:
`TKS,
`,
`IPR2021-01492, EX. 2005
`IPR2020-01266 Page 003
`Page 3 of 7
`
`

`

`Case 2:19-cv-00395-JRG Document 145-2 Filed 10/20/20 Page 4 of 7 PagelD #: 6510
`
`Appln. No. 15/957,945
`Reply to Office action of September 5, 2018
`
`handling OTHER information, which is similar
`
`to the case of
`
`Enfish,
`
`822 F.3d at 1336,
`
`118 USPQ2d at 1689, where claims to
`
`self-referential
`
`table
`
`for
`
`a
`
`computer
`
`database were
`
`not
`
`directed to an abstract
`
`idea. It is noted that
`
`the claims here
`
`are even less abstract
`
`since the steps
`
`involves not only a
`
`single generic computer, but
`
`few types of devices
`
`(servers /
`
`clients) communicating over a network.
`
`b. The rejection is based on the case of “Int. Vent. V. Erie
`
`Indemnity
`
`‘002
`
`patent”.
`
`It
`
`is
`
`noted
`
`that
`
`this
`
`case
`
`(Intellectual Ventures I LLC v. Erie Indemnity Co.,
`
`850 F.3d
`
`1315, 1327 (Fed. Cir. 2017))
`
`involved organizing and accessing
`
`records
`
`through the creation of
`
`an index-searchable database
`
`(i.e.,
`
`locating information in a database). Claim 1
`
`is not
`
`involved in any database in general,
`
`and any organizing and
`
`hence
`
`this
`
`case
`
`is
`
`not
`
`accessing
`
`records
`
`in particular,
`
`analogous
`
`to
`
`the
`
`claims
`
`herein. Specifically,
`
`the
`
`claim
`
`discloses a server
`
`receiving information from another server
`
`via a client device, which is unique and solves
`
`a specific
`
`problem such as anonymity when fetching information.
`
`Hence,
`
`in light of the specification’s description of
`
`the problem and the inventors’ solution,
`
`the claimed invention,
`
`as described in paragraphs
`
`0004-0012 of
`
`the
`
`corresponding
`
`publication
`
`2018/0241851,
`
`solves
`
`a
`
`problem of
`
`Internet
`
`congestion,
`
`faster
`
`and more efficient
`
`content
`
`transport
`
`by
`
`improving the operation of peer-to-peer networking arrangement
`
`using a management server,
`
`in contrast
`
`to ‘creating and using
`
`an index’, which is the heart of the invention - “the heart of
`
`the claimed invention lies in creating and using an index to
`
`search for
`
`and retrieve data ..
`
`an abstract
`
`concept”
`
`([Cf.
`
`Intellectual Ventures I v. Erie Indemnity Company,
`
`850 F.3d,
`
`1315, 1328 (Fed. Cir. 2017)].
`
`= 3 =
`Luminati Exhibit 2008
`NetNut Ltd. v. Bright Data Ltd Code200et al. v. Luminati NERAQKS,Ld),
`IPR2021-01492, EX. 2005
`IPR2020-01266 Page 004
`Page 4 of 7
`
`

`

`Case 2:19-cv-00395-JRG Document 145-2 Filed 10/20/20 Page 5 of 7 PagelD #: 6511
`
`Appln. No. 15/957,945
`Reply to Office action of September 5, 2018
`
`Hence, similar to the PTAB decision in appeal 2017-011163 dated
`
`May 9,
`
`2018,
`
`the Examiner’s
`
`interpretation of
`
`the claims as
`
`being directed to an abstract
`
`idea of creating an index and
`
`using that
`
`index
`
`to search for
`
`and
`
`retrieve data
`
`is
`
`an
`
`oversimplification of
`
`the claims,
`
`as
`
`the claims do not
`
`even
`
`mention the creation of an index or the use of such an index or
`
`searching and retrieving data, not do the claim mention the
`
`words
`
`‘index’ or ‘search’.
`
`c. As admitted in the Action,
`
`the claims
`
`involve
`
`specific
`
`networking of physical elements
`
`such as servers and clients,
`
`connected via various networks forming a specific structure and
`
`relationships, which are physical apparatuses,
`
`and are NOY a
`
`‘generic computer’ as stated in the Action. Under Bilski’s MoT
`
`test,
`
`a claimed process can be patent-eligible under § 101 if:
`
`(1)
`
`(2)
`
`ait
`
`ais
`
`tied to a particular machine or apparatus;
`
`or
`
`the
`
`process
`
`transforms
`
`a particular
`
`article
`
`into
`
`a
`
`different state or thing.” (See Bilski, 545 F.3d at 954 (citing
`
`Gottschalk v. Benson, 409 U.S. 63, 70 (1972)).
`
`d.
`
`The Action states that
`
`the arrangement
`
`claimed provides
`
`‘conventional
`
`computer
`
`functions’,
`
`‘conventional
`
`computer
`
`implementation’,
`
`‘generic
`
`computer,
`
`generic
`
`computer
`
`components, or
`
`a programmed computer’. However,
`
`the Examiner
`
`does not sufficiently establish that
`
`the "ordered combination"
`
`of the recited elements also fails to "'transform the nature of
`
`the claim'
`
`into a patent-eligible application." Alice,
`
`134 §S.
`
`Ct. at 2355.
`
`"[A]n inventive concept can be found in the non-
`
`conventional and nongeneric arrangement of known, conventional
`
`pieces,"
`
`even if
`
`these pieces constitute generic computer-
`
`related components. Bascom Global
`
`Internet v. AT&T Mobility
`
`LLC,
`
`827 F.3d 1341,
`
`1350
`
`(Fed. Cir. 2016). Specifically,
`
`the
`
`-4-
`Luminati Exhibit 2008
`NetNut Ltd. v. Bright Data Ltd Code200 et al. v. Luminati N:
`TKS,
`,
`IPR2021-01492, EX. 2005
`IPR2020-01266 Page 005
`Page 5 of 7
`
`

`

`Case 2:19-cv-00395-JRG Document 145-2 Filed 10/20/20 Page 6 of 7 PagelD #: 6512
`
`Appln. No. 15/957,945
`Reply to Office action of September 5, 2018
`
`claimed components as a combination perform functions that are
`
`not merely generic -
`
`It
`
`is respectfully submitted that
`
`the
`
`conventional
`
`arrangement
`
`involves
`
`fetching data by a client
`
`device from a server device, while the claims disclose a server
`
`receiving information from another server via a client device,
`
`which is unique and solves a specific problem such as anonymity
`
`when fetching information.
`
`e.
`
`It
`
`is noted that “For computer-implemented inventions like
`
`the claimed invention,
`
`the question in the second step is
`
`whether
`
`the
`
`computer
`
`implementation of
`
`the
`
`abstract
`
`idea
`
`involves
`
`"more
`
`than performance of
`
`'well-understood,
`
`routine,
`
`[and]
`
`conventional
`
`activities
`
`previously
`
`known
`
`to
`
`the
`
`industry.'"” Content Extraction & Transmission LLC v. Wells
`
`Fargo Bank.
`
`It
`
`is noted that
`
`"Whether
`
`something is well-
`
`understood,
`
`routine, and conventional
`
`to a skilled artisan at
`
`the time of the patent is a factual determination." Berkheimer
`
`1369
`
`(Fed. Cir. 2018),
`
`and the
`
`v. HP
`
`Inc.,
`
`881 F.3d 1360,
`
`Action
`
`provides
`
`no
`
`factual
`
`evidence
`
`regarding
`
`to
`
`‘“well-
`
`understood,
`
`routine,
`
`and conventional”,
`
`as
`
`required by USPTO
`
`memorandum dated April
`
`19,
`
`2018,
`
`entitled:
`
`“Changes
`
`in
`
`Examination Procedure Pertaining to Subject Matter Eligibility,
`
`Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
`
`Inc.)”.
`
`f.
`
`It
`
`is respectfully submitted that
`
`in a decision of Appeal
`
`2017-010768 dated May 4,
`
`2018
`
`(from application 14/288,506),
`
`claims were
`
`similarly found
`
`to be patent eligible being
`
`“directed to a
`
`technical
`
`improvement
`
`in the
`
`communication
`
`between computers”. Similarly,
`
`in a decision of Appeal 2017-
`
`007566 dated May 17, 2018 (from application 14/268,145), claims
`
`were Similarly
`
`found
`
`to
`
`be
`
`patent
`
`eligible
`
`since
`
`they
`
`-5-
`Luminati Exhibit 2008
`NetNut Ltd. v. Bright Data Ltd Code200 et al. v. Luminati N
`i-00149134
`IPR2021-01492, EX. 2005
`IPR2020-01266 Page 006
`Page 6 of 7
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`

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`Case 2:19-cv-00395-JRG Document 145-2 Filed 10/20/20 Page 7 of 7 PagelD #: 6513
`
`Appln. No. 15/957,945
`Reply to Office action of September 5, 2018
`
`‘facilitates the cooperation of “multiple different kind of
`
`computers.”’, and using intermediate computers.
`
`g.
`
`It
`
`is further noted that software is not automatically an
`
`abstract
`
`idea, even if performance of a software task involves
`
`an underlying mathematical calculation or
`
`relationship. See,
`
`e.g., Thales Visionix,
`
`Inc. v. United States,
`
`850 F.3d 1343,
`
`121
`
`USPQ2da
`
`1898,
`
`1902
`
`(“That
`
`a mathematical
`
`equation
`
`is
`
`required to complete the claimed method and system does not
`
`doom the claims to abstraction.”, and also in MPEP §2106.04 (a)
`
`Abstract Ideas [R-08.2017]. Further, although the claims recite
`
`‘servers and devices’
`
`the individual steps of
`
`the method are
`
`NOT BEING capable of being performed by
`
`a person,
`
`either
`
`mentally or with paper and pencil, which renders the method not
`
`abstract.
`
`[See CyberSource Corp. v. Retail Decisions,
`
`Inc.,
`
`654
`
`F.3d 1366, 1372 (Fed. Cir. 2011)].
`
`h. On page 6 of
`
`the Action,
`
`the Action admits that
`
`the claims
`
`provides:
`
`™“.. an improvement
`
`for an information/communication
`
`exchange system in a network”
`
`(Emphasis added). Hence,
`
`the
`
`Action
`
`itself
`
`admits
`
`to various
`
`improvements
`
`in various
`
`technologies and fields, and to solve a problem unique to the
`
`
`
`
`
`
`
`Internet technology'=and,and computer thus, amounts to
`
`
`
`
`
`
`
`Significantly more than an abstract
`
`idea. This
`
`is similar
`
`to
`
`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257-59,
`
`113 USPO2d
`
`1097,
`
`1106-07
`
`(Fed. Cir.
`
`2014),
`
`the claims are
`
`admitted by the Office to be directed to a “solution [that] is
`
`necessary rooted in computer
`
`technology in order to overcome a
`
`problem specifically arising
`
`in
`
`the
`
`realm of
`
`computer
`
`networks”.
`
`-6-
`Luminati Exhibit 2008
`NetNut Ltd. v. Bright Data Ltd Code200 et al. v. Luminati N:
`TKS,
`,
`IPR2021-01492, EX. 2005
`IPR2020-01266 Page 007
`Page 7 of 7
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