Trials@uspto.gov
`571-272-7822
`
`Paper No. 7
`Entered: November1, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BITDEFENDERINC.,
`Petitioner,
`
`V.
`
`UNILOC USA,INC.,
`Patent Owner.
`
`Case IPR2017-01315
`Patent 6,510,466 Bl
`
`Before MIRIAM L. QUINN, ROBERT J. WEINSCHENK,and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Partial Institution of Inter Partes Review
`35 US.C. § 314 and 37 CFR. § 42.108
`
`
`571-272-7822
`
`Paper No. 7
`Entered: November1, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BITDEFENDERINC.,
`Petitioner,
`
`V.
`
`UNILOC USA,INC.,
`Patent Owner.
`
`Case IPR2017-01315
`Patent 6,510,466 Bl
`
`Before MIRIAM L. QUINN, ROBERT J. WEINSCHENK,and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Partial Institution of Inter Partes Review
`35 US.C. § 314 and 37 CFR. § 42.108
`
`
`
`IPR2017-01315
`Patent 6,510,466 Bl
`
`BitDefenderInc. (“Petitioner”) filed a Petition pursuant to
`
`35 U.S.C. §§ 311-319 requesting an inter partes review ofclaims 1, 2, 7-9,
`
`15-17, 22-24, 30, and 35-37 of U.S. Patent No. 6,510,466 B1, issued on
`January 21, 2003 (Ex. 1001, “the 466 patent”). Paper 1 (“Pet.”). Uniloc
`USA,Inc. (“Patent Owner”)! filed a Preliminary Response. Paper 6
`(‘Prelim. Resp.”). Applying the standard set forth in 35 U.S.C.§ 314(a),
`which requires demonstration of a reasonable likelihood that Petitioner
`
`would prevail with respect to at least one challenged claim, we grant
`
`Petitioner’s request and institute an inter partes review of claims 1, 2, and 7—
`
`9, but not of claims 15-17, 22—24, 30, and 35-37.
`
`I. BACKGROUND
`
`A. The ’466 Patent (Ex. 1001)
`The °466 patent relates to management of application programs on a
`network including a server supporting client stations. Ex. 1001, at [57]. The
`’466 patent states that user mobility and hardware portability are provided
`by establishing a user desktop interface responsiveto a user login request.
`Id. Responsive to a request from the user on the user desktop screen at the
`client, a selected application program is provided from the serverto the
`
`client. Id.
`
`Figure 1 of the ’466 patent is reproduced below.
`
`' We note that the Preliminary Responseidentifies only Uniloc Luxembourg
`S.A. as the patent owner (Prelim. Resp. 1), but Patent Owner’s Mandatory
`Notice identifies both Uniloc USA,Inc. and Uniloc Luxembourg S.A. as
`Patent Ownerin this case. Paper 4, 1. Petitioner states that the “*466 patent
`is owned by Uniloc Luxembourg, S.A., and exclusively licensed to Uniloc
`USAInc.” Pet. 2.
`
`2
`
`
`
`IPR2017-01315
`Patent 6,510,466 Bl
`
`Client
`
`Client
`
`Figure 1 illustrates a computer network according to an embodimentofthe
`invention. Jd. at 6:57—60. In particular, network managementserver20is
`connected to on-demand servers 22 and 22’ which are in turn connected to
`
`client stations 24 and 24’ and 26 and 26’ respectively. Jd. at 6:60—7:6.
`
`Figure 8 of the ’466 patent is reproduced below.
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`FIG. 8
`
`Tivoli Distribution
`
`
`Provide Software
`
`
`Accessto Tivoli
`Server
`
`
`
`
`Specify Direcotories
`for Software and
`Program
`
`
`Information
`
`
`
`Execute Pre-
`Distribution
`Program
`
`
`
`
`Distribute Software
`to Specified OD
`Servers
`
`
`Execute After
`Distribution
`
`Program
`
`Update Profile
`ManagementList
`of OD Server
`
`110
`
`112
`
`114
`
`116
`
`118
`
`120
`
`Figure 8 is a flowchart illustrating operations for application program
`distribution and execution in a network managementserver environment.
`
`Id. at 6:28-31. In particular, in block 110, an application program to be
`distributed is placed by a system administrator on a disk or storage deviceat
`a network managementserver such as a Tivoli server. Jd. at 17:52-55. At
`
`block 112, the application program source and destination programsare
`specified, and a pre-distribution program is run (if specified) at block 114.
`Id. at 17:55-60. The application program is then distributed to the on-
`
`demandservers at block 116, and any specified after-distribution programs
`
`are executed at block 118. Jd. at 17:60—-18:7.
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`B. Illustrative Claims
`
`Ofthe challenged claims, claims 1, 15, and 16 are independent claims.
`Claim1is directed to a method for management of application programs on
`a network including a server and a client; claim 15 is directed to an
`application program management system for managing the same; and claim
`16 is directed to a computer program product for managing the same. Claim
`
`15 is illustrative and is reproduced below.
`
`15. An application program management system for
`managing application programs on a network including a server
`and a client comprising:
`meansforinstalling a plurality of.application programsat
`the server;
`meansforreceiving at the server a login request from a
`user at the client;
`meansfor 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 programsinstalled at the server for which the useris
`authorized;
`meansforreceiving at the server a selection of one of the
`plurality of application programs from the user desktop
`interface; and
`meansfor providing an instanceofthe selected one of the
`plurality of application programsto the client for execution
`responsive to the selection.
`
`Id. at 22:57-23:8.
`
`C. Related Proceedings
`
`Petitioner and Patent Owneridentify a related litigation in the Eastern
`
`District of Texas involving the °466 patent, titled Uniloc USA, Inc. etal. v.
`BitDefender Holding BV et al., 2:16-cv-00394-RWS(E.D. Tex.). Pet. 2;
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`Paper4, 2. Petitioner also identifies other litigation filed in the Eastern
`District of Texas involving the °466 patent against other defendants. Pet. 2.
`Petitioner further identifies another inter partes review regardinga related
`
`patent, for which institution was denied: IPR2017-00184. Jd. at 3.
`
`D. References
`Petitioner relies on the following references:
`. “Kasso” (US 5,832,505; issued Nov. 3, 1998) (Ex. 1009);
`. “Raduchel” (US 6,338,138 B1; issued Jan. 8, 2002) (Ex. 1010);
`. “Bennett” (US 5,615,367; issued Mar. 25, 1997) (Ex. 1011); and
`. “Olsen” (US 5,905,860; issued May 18, 1999) (Ex. 1012).
`E. Grounds Asserted
`
`BhWNWNO
`
`Petitioner challenges the patentability of the ’466 patent claims on the
`
`following grounds:
`|—retrencesy|——_pasis__|__claimes)—_|
`
`
`
`
`Kasso and Raduchel 35 U.S.C. § 103(a)|1, 7, 8, 15, 16, 22, 23,
`
`
`
`35, and 36
`
`
`2. 17. and 30
`Kasso, Raduchel, and
`
`
`Bennett
`
`
`
`Petitioner also rclics on expert testimony from Thomas A. Day (Ex.
`
`Kasso, Raduchel, and Olsen|35 U.S.C. § 103(a) 9, 24, and 37
`
`35 U.S.C. § 103(a)
`
`1008, “Day Decl.”).
`
`Il. ANALYSIS
`
`A. Claim Construction
`In an inter partes review,claim termsin an unexpired patent are
`construed according to their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
`
`6
`
`
`
`IPR2017-01315
`Patent 6,510,466 Bl
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144-46 (2016). Under
`
`that standard, claim terms are generally given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art, in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007). There are, however, two exceptionsto that rule: “1)
`
`when a patenteesets out a definition and acts as his own lexicographer,” and
`
`2) when the patentee disavowsthe full scope of a claim term either in the
`
`specification or during prosecution.” See Thorner v. Sony Computer Entm't
`
`Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`
`Petitioner proposes constructions of “application program,”
`
`“installing,” and means-plus-function terms recited in the claims. Pet. 18—
`
`25. Patent Owneraddresses Petitioner’s proposed constructions of some of
`
`these terms. Prelim. Resp. 6-16. Other than the constructions of
`“application program,”“installing,” and“meansforinstalling a plurality of
`application programsat the server” discussed below, we determine explicit
`construction of any other term is not necessary to resolve the issues before
`
`us. 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”).
`
`1. “application program” '
`
`Petitioner contends “application program”is “defined by the ‘466
`
`patent as ‘code associated with underlying program functions.” Pet. 18
`(citing Ex. 1001, 14:24-26). Patent Owner contendsthat Petitioner has
`proposed a different construction in pending district court litigation. Prelim.
`Resp. 6-8. Patent Owner doesnot propose a construction, but acknowledges
`that the claim construction standards in district court and proceedings before
`
`
`
`IPR2017-01315
`Patent 6,510,466 Bl
`
`the Board recognizethat “the explicit lexicography of the inventor should
`
`govern claim construction.” Jd. at 7-8.
`
`Based on the current record and at this stage of the proceeding, we
`
`agree with Petitioner’s proposed construction. The ’466 patent states: “As
`used herein, the term ‘application program’ generally refers to the code
`
`associated with the underlying program functions, for example, Lotus Notes
`
`or a terminal emulator program.” Ex. 1001, 14:24-27. That definition is
`
`consistent with the language of the independent claims whichrecite
`“providing an instance of the selected one ofthe plurality of application
`programstothe clientfor execution responsive to the selection.” Jd. at 23:6—
`
`8 (emphasis added).
`Patent Ownerrelies only on a purportedly inconsistent construction
`proposedbyPetitioner in district court, but does not propose a construction
`of its own. Based on the current record andat this stage of the proceeding,
`
`we construe “application program”as “code associated with underlying
`
`application program functions.”
`
`2. “installing”
`
`Petitioner contends “installing” does not include “configuring
`(registering).” Pet. 18. In support, Petitioner points to the recitations in the
`specification that distinguish betweeninstalling and registering or
`configuring. Jd. (citing Ex. 1001, 4:15—-16, 4:20, 17:46, 18:28-29).
`Although Petitioner does not propose a construction for“installing,”
`Petitioner notes that “installing” was interpreted as storing during
`prosecution of the application that led to the °466 patent. Jd. On the other
`hand, Patent Owner contendsit would create ambiguity for the Boardto
`construe “installing” in terms of what it is not, and that Petitioner does not
`
`
`
`IPR2017-01315
`Patent 6,510,466 Bl
`
`sufficiently justify its implicit construction of “installing” as “storing.”
`
`Prelim. Resp. 8—9.
`
`Weagree with Petitioner that the ’466 patent distinguishes between
`
`installation and configuration or registration. E.g., Ex. 1001, 4:15—16
`
`(“install and register the application program on the on-demandserver”),
`
`4:20 (“install and register the program”), 18:27—29 (“{A]n administrator
`
`both sends a new application packageto all supported on-demandservers
`
`and installs the program and configures (registers) it to be available for
`use.”). We determine we neednot further construe “installing”to resolve
`
`the issues beforeusat this stage of the proceeding.
`
`For the reasons discussed above, we determinethat “installing” does
`
`not encompass“configuring” or “registering” as those termsare used in the
`°466 patent, and wedonotfurther construe “installing” at this stage of the
`
`proceeding.
`
`3.
`
`“meansfor installing a plurality ofapplication programsat
`the server”
`
`In our analysis of “meansforinstalling a plurality of application
`programsat the server,” we recognizethat construing a means-plus-function
`limitation requiresfirst defining the particular function of the limitation and
`then identifying the correspondingstructure for that function in the
`specification. Golight Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1333-34
`(Fed. Cir. 2004). Further, under 37 C.F.R. § 42.104(b)(3),“the petition must
`set forth .
`.
`. [h]ow the challenged claim is to be construed,” including
`identifying “the specific portions ofthe specification that describe the
`structure, material, or acts corresponding to each claimed function,” where
`
`the claim to be construed contains a “means-plus-function or step-plus-
`
`function limitation as permitted under 35 U.S.C. § 112(f).”
`9
`
`
`
`IPR2017-01315
`Patent 6,510,466 Bl
`
`The parties appearto agree the function ofthis limitation is “installing
`
`a plurality of application programsat the server.” See Prelim. Resp. 10.
`
`Petitioner contends that the correspondingstructure for “meansforinstalling
`
`a plurality of application programsat the server” is a server processor, CRM
`
`(computer readable medium), or a network drive accessible to a server. Pet.
`
`20. Other than citations to the °466 patent, Petitioner does not provide
`
`argument, explanation, or expert testimony in support of its proposed
`corresponding structure. Jd. Patent Ownerpoints out that Petitioner fails to
`
`identify an “algorithmic structure disclosed in the ’466 patent”for this
`
`limitation. Prelim. Resp. 13.
`
`Weagree with Patent Ownerthat Petitioner has notidentified
`sufficient correspondingstructure for this limitation. Petitioner cites Jn re
`
`Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316
`(Fed. Cir. 2011) as holding that a “general-purpose computer, by itself, may
`be sufficient as corresponding structure for general computing functions
`
`such as storing, which can be achieved by any general purpose computer
`without special programming.” Pet. 19. Petitioner also recognizes that
`
`“when the disclosed structure is a computer programmedto carry out an
`algorithm, the disclosedstructure is not the general purpose computer, but
`rather that special purpose computer programmedto perform the disclosed
`algorithm.” Jd. (quoting In re Aoyama, 656 F.3d 1293, 1297 (Fed.Cir.
`2011)). Petitioner contends “meansforinstalling a plurality of application
`programsatthe server”falls within the Katz exception, and so identifies
`only general purpose hardware with no algorithm. Pet. 20, 31.
`In Katz, the Federal Circuit found that “[a]bsent a possible narrower
`
`construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ .. . those
`
`10
`
`
`
`IPR2017-01315
`Patent 6,510,466 Bl
`
`functions can be achieved by any general purpose computer withoutspecial
`
`programming.” 639 F.3d at 1316. The Federal Circuit, however, has
`
`characterized the exception in Katz as a “narrow” one. EON Corp. IP
`
`Holdings LLC v. AT & T Mobility LLC, 785 F.3d 616, 621 (Fed. Cir. 2015);
`
`Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed.
`
`Cir. 2012). In particular, the Federal Circuit stated that “a microprocessor
`
`can serve as structure for a computer-implemented function only where the
`
`claimed function is ‘coextensive’ with a microprocessoritself” (i.e., where
`
`the claimed function is a “basic function[] of a microprocessor”). EON
`
`Corp., 785 F.3d at 622-23.
`
`Here, Petitioner provides no evidenceor factually-supported
`
`explanation to support its apparent argumentthat “installing a plurality of
`application programsat the server”is a basic function of a microprocessor.
`
`Based on the current record, we determinethatit is not. Specifically, we
`
`note that the *466 patent discusses specifying a destination location for the
`software and receiving access information as part of the process for an
`application program to be distributedto(i.e., installed at) a server. Thus,
`based on the current record, we determine that the recited function is more
`
`than a basic function of a microprocessor. We, therefore, do not adopt
`
`Petitioner’s proposed correspondingstructure.
`
`Patent Ownerprovides the following proposed corresponding
`
`structure for this limitation: “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.” Prelim. Resp. 10. Patent
`
`Ownerparticularly highlights Figure 8 of the ’466 patent in which an
`
`11
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`application program is “received . ... and installed at the on-demandserver.”
`
`Id. at 13-14 (citing Ex. 1001, Fig. 8, 17:52-18:32). Petitioner contends that
`
`because“installing is distinct from configuring (registering), structure
`
`corresponding to the function of configuring (registering) is not clearly
`
`linked to the function of installing.” Pet. 21.
`
`Asdiscussed above, we agree with Patent Ownerthat the
`
`corresponding structure must include an algorithm for performingthe recited
`
`function, and we agree with Petitioner that “installing” does not encompass
`
`configuring or registering. A structure disclosed in the specification
`
`qualifies as “corresponding”structure only if the specification or prosecution
`
`history clearly links or associates that structure to the function recited in the
`
`claim. B. Braun Med, Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir.
`1997). The “clear linkage or association”in the specification of the structure
`to the function recited in the claim is determined based on the understanding
`
`of an artisan of ordinary skill. See AllVoice Computing PLC v. Nuance
`
`Commce’ns, Inc., 504 F.3d 1236, 1242 (Fed. Cir. 2007). Of the
`
`corresponding structure proposed by Patent Owner, we determine that only
`the portion of Figure 8 related to installation and its associated description in
`the ’466 patent have the requiredclear linkage or association to the recited
`function. Specifically, we find that while Figure 4 mentions a “New App.,”
`
`and the cited description mentions “a new software application for
`
`installation on server system 22,” neither discloses an algorithm for the
`
`recited “installing.” Ex. 1001, Fig. 4, 12:25-30. Wefurther find that
`
`Figures 5 and 9C explicitly refer to configuration operations and not
`
`installation. /d. at 6:19-21, 13:1-23, 20:1-59. Wealso find that the
`
`portions of Figure 8 that involve execution of after-distribution programs
`
`12
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`and update of configuration information also involve configuration and not
`
`installation.
`
`/d. at 18:3-18.
`
`Wedetermine the remainderof Figure 8 (i.e., steps 112-116) and the
`
`associated description of those steps in the 466 patent (Ex. 1001, 17:55—67)
`
`have the required clear linkage or association to the recited function. Thus,
`
`we determine the correspondingstructure for this claim limitation includes,
`
`at least, an algorithm for specifying application program source and
`
`destination locations, executing a pre-distribution program (if specified), and
`
`distributing the application program software to an on-demandserver (and
`
`equivalents of such an algorithm). Ex. 1001, Fig. 8, steps 112-116, 17:55—
`67.
`|
`
`Claim 16 recites “computer readable program code means”for
`
`performing the recited functions, which triggers a rebuttable presumption
`that § 112 76 applies. Williamsonv. Citrix Online, LLC, 792 F.3d 1339,
`1349 (Fed. Cir. 2015). Petitioner appears to contend that this presumptionis
`
`not rebutted because it provides the same correspondingstructure forthis
`
`limitation for both claims 15 and 16. Pet. 20. Patent Owner appearsto
`
`6 becauseitis
`contend claim 16 does not invoke pre-AIA 35 U.S.C. § 112
`directed to ““{a] computer program product’ comprising ‘a computer-
`readable storage medium’ having encoded therein ‘computer-readable
`program code’ for carrying out specifically-recited limitations.” Prelim.
`Resp. 9. We note, however, that Patent Owner’s quotations omit the term
`
`“means,” and Patent Ownerdoesnot persuasively address that recitation to
`
`overcome the presumption.
`
`Becauseneither party has rebutted the presumptionthat § 112 6
`applies to the “computer readable program code means,” for purposesofthis
`
`13
`
`
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`IPR2017-01315
`Patent 6,510,466 Bl
`
`Decision, we addressthis term as recited in claim 16 as a means-plus-
`
`function term. Accordingly, the limitation “computer readable program
`
`meansforinstalling a plurality of application programsat the server”has, at
`
`a minimum,the same correspondingstructure as the similar limitation of
`
`claim 15 discussed above.
`
`B.
`
`Legal Principles
`
`A claim is unpatentable under 35 U.S.C. § 103(a)if the differences
`
`between the subject matter sought to be patented and the prior art are such
`
`that the subject matter as a whole would have been obviousat the time the
`
`invention was madeto a person having ordinary skill in the art to which said
`
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousnessis resolved on the basis of underlying
`
`factual determinations including: (1) the scope and contentof the prior art;
`
`(2) any differences between the claimed subject matter andthe priorart;
`
`(3) the level of ordinary skill in the art; and (4) when in the record, objective
`
`evidence of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1,
`
`17-18 (1966). In that regard, an obviousness analysis “need not seek out
`
`precise teachings directed to the specific subject matter of the challenged
`
`claim, for a court can take accountofthe inferences and creative steps that a
`
`person ofordinary skill in the art would employ.” KSR, 550 U.S. at 418.
`
`C.
`
` Asserted Obviousness over Kasso and Raduchel
`
`1. Overview ofKasso and Raduchel
`
`Kassoistitled “Computer System for Managing and Configuring
`
`Application Properties and Enabling System Administrator to Override
`
`Certain User-Set or Host Properties,” and wasfiled on April 2, 1997 and
`
`14
`
`
`
`IPR2017-01315
`Patent 6,510,466 Bl
`
`issued on November3, 1998. Ex. 1009, at [54], [22], [45]. Petitioner
`
`contends Kassois prior art underat least 35 U.S.C. §§ 102(a) and 102(e).
`
`Pet. 25.
`
`Figure 2 of Kasso is reproduced below.
`
`214
`
`216
`
`224
`
`226
`
`
`
` FINAL HOST
`PROPERTIES
`
`USER
`PROPERTIES
`
`Figure 2 depicts a hardware environment with a plurality of network
`
`computers (NC) 200, 202. Ex. 1009, 4:46-47. When NC 200 powerson,it
`
`locates JavaOS boot server (JBS) 206 and downloads an operating system
`
`and a Selector program. Jd. at 4:54—55, 5:21-30. Once the host begins
`
`executing JavaOS, the user enters a username and password, and the JavaOS
`
`requests Network Information Server (NIS) 230 to verify the validity of the
`
`usernameand password. Jd. at 5:35—41. The JavaOSthen passes control to
`
`the Selector, which establishes a connection to HTTP server 208 to access
`
`application programs 240 on HTTPserver 208.
`
`/d. at 5:54—63.
`
`15
`
`
`
`IPR2017-01315
`Patent 6,510,466 BI
`
`Figure 5 of Kasso is reproduced below.
`
`402
`
`420
`
`LO HELP
`
`H W T JAVA
`
`:
`
`ews
`
`SS
`
`C)
`
`BASICS
`
`Js PROPERTIES
`
`FEEDBACK
`
`Agour
`
`EZ
`
`SS
`
`106oUF
`
`410
`
`Fig. 5
`
`Figure 5 depicts main screen 402 displayed by Selector at NC 200. Jd. at
`5:63.* Each application program is represented on main screen 402 by an
`icon 404, 406. Jd. at 5:63-66. For example, Kasso explains that when a
`user clicks on mailbox icon 406,° the MailView Java applet loadsitself into
`
`the RAM of the network computer, and then executes and runs on the
`
`network computer.
`
`/d. at 6:1-12.
`
`? Althoughin the cited portion Kassorefers to Figure 4,it is clear from the
`reference numbersthat Figure 5 is actually described.
`3 Althoughin the cited portion Kassorefers to both “mailbox icon 404”(Ex.
`1009, 6:1) and “mailbox icon 406”(id. at 6:5), it is clear from both the
`context and from Figure 5 that both references refer to “mailbox icon 406.”
`16
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
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`Raduchelis titled “Network-Based Authentication of Computer
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`User,” and issued on January 8, 2002. Ex. 1010, at [54], [45]. Petitioner
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`contends Raduchel is prior art underat least under 35 U.S.C. § 102(e).
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`Pet. 27.
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`2. Obviousness
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`Petitioner contends that claims 1, 7, 8, 15, 16, 22, 23, 35, and 36
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`would have been obvious over Kasso and Raduchel. Pet. 28-52. We have
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`reviewed the information provided byPetitioner, including the relevant
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`portions of the supporting Day Declaration (Ex. 1008), along with Patent
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`Owner’s arguments and evidence, and are persuaded, based on the current
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`record, that Petitioner has demonstrated a reasonable likelihood of prevailing
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`on this obviousness challenge for claims 1, 7, and 8, but not for claims 15,
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`16, 22, 23, 35, and 36.
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`a. Claims 15, 16, 22, 23, 35, and 36
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`For independent claims 15 and 16, we determined abovethat
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`Petitioner had notidentified sufficient correspondingstructure for “means
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`for installing a plurality of application programsat the server.” In its
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`asserted ground, Petitioner addresses the limitations of claims 1, 15, and 16
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`together. Pet. 28-52. Forthis limitation, although Petitioner contends
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`Kasso has application programsstored at a server’s storage device,
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`Petitioner does not address whether this teaching meets the corresponding
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`structure discussed above(i.e., steps 112—116 of Figure 8 and the associated
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`description (Ex. 1001, 17:55-67) (and their equivalents)). Pet. 30-31.
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`Because Petitioner has not shown Kasso describes the corresponding
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`structure for performing “installing a plurality of application programsat the
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`server,” we determine Petitioner has not shown a reasonable likelihood of
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`17
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`IPR2017-01315
`Patent 6,510,466 Bl
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`prevailing on its challenge to independent claims 15 and 16 and claims 22,
`23, 35, and 36 depending therefrom.
`|
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`b. Claims 1, 7, and 8
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`For claim 1, Petitioner relies primarily on the teachings of Kasso.
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`Although Kassoteaches twodistinct servers, HTTP server 208 and NIS
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`server 230, Petitioner contends “it would have been obvious to implement
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`the authentication functionality described for the NIS server 230 on the
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`HTTPserver 208 of Kasso, so that the HTTP server 208 would have
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`received authentication requests” or “to receive authentication requests at
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`HTTPserver 208, which would then offload the authentication functionality
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`to NIS server 230.” Pet. 32.
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`Petitioner provides reasons why these modifications would have been
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`obvious. For example, Petitioner contends the single server approach(1) is
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`consistent with Kasso’s embodiment in Figure 1 which implements the
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`invention on a single computer system (Pet. 33 (citing Ex. 1009, 4:1-43));
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`(2) would save costs and simplify the system architecture (id. at 33-34
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`(citing Ex. 1008 § 28)); and (3) would involve
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`the simple substitution of one known elementfor another (a
`server implementing two functions for two servers
`implementing the functions separately) to obtain predictable
`results, applying a knowntechnique (authentication) to a known
`device (delivery server) ready for improvementto yield
`predictable results, and choosing from a finite number of
`identified, predictable solutions (single server and multi-server
`implementations for authentication and application delivery),
`with a reasonable expectation of success
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`(id. at 34 (citing Ex. 1008 § 29)). Petitioner relies on Raduchelas teaching
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`configuring the user desktop interface accordingtoalist of applications for
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`18
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`IPR2017-01315
`Patent 6,510,466 Bl
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`which the useris authorized, and provides reasonsa person ofordinary skill
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`in the art would have combinedthat teaching with the teachings of Kasso
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`(e.g., to simplify the user display and reduce error messages caused by user
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`interactions with unavailable applications). Pet. 38-39 (citing Ex. 1008
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`4 42). Petitioner also relies on Raduchel as teaching distribution oftransient
`programs. Jd. at 42.
`Wehave reviewed the information provided by Petitioner, including
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`the relevant portions of the supporting Day Declaration (Ex. 1008), along
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`with Patent Owner’s arguments and evidence, and are persuaded, based on
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`the current record, that Petitioner has demonstrated a reasonable likelihood
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`of prevailing on this obviousness challenge for claim 1.
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`Patent Ownerarguesthat Petitioner has not shown Kassoteaches
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`“receiving at the server a login request from a userat a client.” Prelim.
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`Resp. 17-25. In particular, Patent Owner contends Petitioner relies on two
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`distinct servers in Kasso as teaching the recited “server” and
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`“inappropriately attempts to conflate into one server what Kasso expressly
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`separates by intended design.” Jd. at 17. Patent Ownerfurther contendsthat
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`Petitioner’s proposed modifications for this claim term are legally improper
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`because they rely on general knowledge of a person of ordinary skill in the
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`art which is not in the form ofprior art patents and printed publications. Jd.
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`at 17-18 (citing 35 U.S.C. § 311(b); 37 C.F.R. § 42.104(b)). Patent Owner
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`also contends“[t]here is simply no teaching, suggestion, or motivation in the
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`cited references themselves that would haveled [a person ofordinary skill in
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`the art] to deviate from the express teachings in Kassoto arriveat all the
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`limitations for the claimed ‘server.’” Jd. at 19.
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`19
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`IPR2017-01315
`Patent 6,510,466 Bl
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`Weare not persuaded by these arguments. We determinethat
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`Petitioner’s contentions do not run afoul of 35 U.S.C. § 311(b) and 37
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`C.F.R. § 42.104(b) because its contentions for this limitation rely on the
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`teachings of Kasso, a patent. Neither the statute nor our rules prohibit a
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`petitioner from relying on allegedly obvious modifications to teachingsin
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`prior art patents and printed publications. In addition, the Supreme Court
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`has rejected a restrictive application of the teaching, suggestion, motivation
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`test on which Patent Ownerappearsto rely. KSR, 550 U.S. 398 at 407.
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`Patent Ownerfurther contends Petitioner has not provided a sufficient
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`factual basis foreither of its proposed modifications. Prelim. Resp. 19-25.
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`Regarding the proposed single server modification, Patent Owner contends:
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`(1) Kasso’s Figure 1 embodiment does not suggest the proposed
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`modification because it does not involve client-server communication(id. at
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`19-20); (2) Kasso’s description of “separate, dedicated servers would lead a
`[person of ordinary skill in the art] away from attempting to utilize a single
`server instead”(id. at 20 (citing Jn re Gurley, 27 F.3d 551, 553 (Fed. Cir.
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`1994))); (3) modifying Kasso to use a single server would eliminate the
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`enhanced security associated with using dedicated servers (id. at 21, 22); and
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`(4) Petitioner provides insufficient support for its contention that a single
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`server would save costs and simplify system architecture (id. at21). We are
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`not persuaded by these arguments based on the current record, andfind that
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`Petitioner has identified sufficient reasoning that satisfies the reasonable
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`likelihood threshold to support that performing the recited functions on a
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`single server would have been an obvious modification to Kasso (Pet. 32-34
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`(citing Ex. 1008 4 28-30).
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`20
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`IPR2017-01315
`Patent 6,510,466 B1
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`Atthis juncture, we disagree with Patent Owner that Kasso’s
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`description of separate, dedicated servers teaches away from a single server.
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`See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that priorart
`does not teach away from claimed subject matter merely by disclosing a
`different solution to a similar problem unlessthe prior art alsocriticizes,
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`discredits, or otherwise discourages the solution claimed). In addition,
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`although Patent Owneridentifies a potential disadvantage of the single
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`server modification, “just because better alternatives exist in the prior art
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`does not meanthat an inferior combinationis inapt for obviousness
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`purposes.” /n re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (citation
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`omitted). Because we conclude Petitioner has provided sufficient reasoning
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`that satisfies the reasonable likelihood threshold to support the single server
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`modification, we need not address the proposed offload modificationat this
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`stage of the proceeding.
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`Thus, we determine that Petitioner has sufficiently shown underthe
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`reasonable likelihood threshold that Kasso teaches “receiving at the server a
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`login request from a userat a client,” as recited in claim 1, at this stage of
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`the proceeding.
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`Patent Ownernext contends Petitioner has not shownthe cited
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`references teach “establishing a user desktop interface at the client
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`associated with the user responsive to the login request from the user, the
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`desktop interface including a plurality of display regions associated with a
`set of the plurality of applications programsinstalled at the server,”as
`recited in claim 1. Prelim. Resp. 25-28. Specifically, Patent Owner
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`reiterates its arguments related to Kasso’s separate servers. Id. at 25-27.
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`For the reasons discussed above, we do not find those arguments persuasive.
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`21
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`IPR2017-01315
`Patent 6,510,466 B1
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`Patent Owneralso contendsthat Petitioner has not adequately shown
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`Kasso’s application programsare “installed at the server” because Petitioner
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`has not explained why“installing”is distinct from “configuring” and
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`“registering” but is equivalent to “storing.” Jd. at 27-28. As discussed
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`above in Section II.A.2., we determine that “installing” does not encompass
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`“configuring”or “registering” as those terms are
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