Trials@uspto.gov
`571-272-7822
`
`Paper 13
`Entered: January 21, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ADOBEINC.,
`Petitioner,
`
`V.
`
`EXPRESS MOBILE, INC.,
`Patent Owner.
`
`IPR2021-01225
`Patent 9,928,044 B2
`
`Before JEFFREY S. SMITH, AARON W. MOORE,and
`KRISTI L. R. SAWERT,Administrative Patent Judges.
`
`SAWERT,Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of /nter Partes Review
`35 US.C. § 314
`
`
`571-272-7822
`
`Paper 13
`Entered: January 21, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ADOBEINC.,
`Petitioner,
`
`V.
`
`EXPRESS MOBILE, INC.,
`Patent Owner.
`
`IPR2021-01225
`Patent 9,928,044 B2
`
`Before JEFFREY S. SMITH, AARON W. MOORE,and
`KRISTI L. R. SAWERT,Administrative Patent Judges.
`
`SAWERT,Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of /nter Partes Review
`35 US.C. § 314
`
`
`
`IPR2021-01225
`Patent 9,928,044 B2
`
`I. INTRODUCTION
`
`AdobeInc.(“Petitioner’’) filed a Petition for inter partes review of
`
`claims 1, 3,5, 6, 11, 13, 15, 17, 19, 20, 25, and 27 of U.S.Patent
`No.9,928,044 B2 (Ex. 1001, “the °044 patent”). Paper 2 (“Pet.”). Express
`
`Mobile, Inc. (“Patent Owner’’), filed a Preliminary Response. Paper 9
`
`(“Prelim. Resp.”). On our authorization, Petitioner filed a Reply (Paper 11)
`
`and Patent Ownerfiled a Sur-Reply (Paper 12).
`
`Under35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to
`
`institute an inter partes review if “the information presented in the
`
`petition .. . and any response. .
`
`. showsthat there is a reasonable likelihood
`
`that the petitioner would prevail with respectto at least 1 of the claims
`
`challengedin the petition.” 35 U.S.C. § 314(a). After considering the
`
`Petition, the Preliminary Response, the Reply, the Sur-Reply, and the
`
`evidence of record, we determine the information presented does not show a
`
`reasonable likelihood that Petitioner would prevail in establishing the
`
`unpatentability of at least one of the challenged claimsof the ’044 patent.
`
`Accordingly, we do notinstitute an inter partes review of claims1, 3, 5, 6,
`
`11, 13, 15, 17, 19, 20, 25, and 27 of the ’044 patent on the grounds asserted
`
`in the Petition.
`
`Il. BACKGROUND
`
`A. Related Matters
`
`Theparties identify several district court proceedings involving the
`
`’044 patent. Pet. 92-96; Paper 4, 2-6 (Patent Owner’s Mandatory Notices).
`
`The parties also identify several Board proceedings involving the ’044
`
`patent and related patents. Pet. 92; Paper 4, 2, 6-7.
`
`
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`Patent 9,928,044 B2
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`B. Real Parties in Interest
`
`Petitioner identifies Adobe Inc. and X.CommerceInc. asreal parties
`
`in interest. Pet. 92. Patent Owneridentifies Express Mobile, Inc., as the real
`
`party in interest. Paper4, 2.
`
`C. Overview ofthe ’044 patent
`
`The technicalfield of the ’044 patent relates to a platform for
`
`authoring software code for mobile devices. Ex. 1001, 1:6—8. A user of the
`
`authoring platform providesinstructions for a mobile device in the form of
`
`device-specific instructions, referred to as a Player, and device-independent
`
`instructions, referred to as an Application. Jd. at 5:13-19. The authoring
`
`tool can producea plurality of Players for different devices, and a plurality
`
`of Applications for displaying pages on the devices. Jd. at 5:46-55. The
`
`Player transforms device-independentinstructions of the Application into
`
`device-specific instructions that are executable by the device. Jd. at 5:60—
`
`63. Thus, the authoring tool can be used to design device-independent
`
`Applications, and can generate Players that specific devices then use to
`
`generate displays from the Applications. Jd. at 6:17-21.
`
`
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`IPR2021-01225
`Patent 9,928,044 B2
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`Figure 2A is reproduced below.
`Players
`
`y
`110
`
`Authoring
`Platform
`
`
`
`
`Applications
`
`Load Registry
`
`120
`
`Server
`
`
`
`Access
`
`220
`Registry
`
`
`WebComponent
`
`
`Registry
`
`
`Deploy
`
`Registry
`Applications
`
`
`
`
`
`4219
`Player
`
`Response
`Director
`
`Content
`
`Request Proxy
`
`HTTP/XML
`
`Request
`
`and
`Response
`230
`
`
`
`
`
`Web Service
`
`FIG. 2A
`
`Fig. 2A “is a schematic of an embodimentof system illustrating
`the communications between different system components.”
`Ex. 1001, 2:21-23.
`
`Figure 2A illustrates the communications between different system
`
`components. Jd. at 2:21-23. Authoring platform 110 generates one or more
`
`Players which are provided to response director 210. Jd. at 8:15-17. Device
`
`130 requests a Player from response director 210, and receives andinstalls
`
`the Player. Jd. at 8:18-20. Web service 230 is a plurality of services
`
`obtainable over the Internet. Jd. at 8:26-27. Each webserviceis identified
`
`in an entry in weh componentregistry 220, Jd. at 8:26-30. Web component
`registry 220 is provided through server 120to authoring platform 110 so that
`a user of the authoring platform may bind webservices 230 to elements to
`
`be displayed on device 130. Jd. at 8:30-34. A web componentregistry 220
`
`4
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`IPR2021-01225
`Patent 9,928,044 B2
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`for each registered web service 230 is loaded into authoring platform 110.
`
`Id. at 8:62-64. The userof the authoring platform can then assign
`
`components of any web service 230 to an Application without any need to
`write code. Id. at 8:64-66.
`
`D. The Challenged Claims
`
`Petitioner challenges claims 1, 3, 5, 6, 11, 13, 15, 17, 19, 20, 25, and
`27 ofthe ’044 patent. Pet. 1. Claim 1 (directed to a system) and claim 15
`(directed to a method) are independent. Claim 1 is reproduced below.
`
`1. A system for generating code to provide content on a display
`of a device, said system comprising:
`
`computer memory storing:
`
`a) symbolic namesrequired for evoking one or more web
`componentseachrelated to a set of inputs and outputs of
`a web service obtainable over a network, where the
`symbolic namesare character strings that do not contain
`either a persistent address or pointer to an output value
`accessible to the web service, where each symbolic name
`has an associated data format class type correspondingto
`a subclass of User Interface (UI) objects that support the
`data format type of the symbolic name, and where each
`symbolic name hasa preferred UI object, and
`
`b) an address of the web service;
`
`an authoring tool configuredto:
`
`define a UI object for presentation on the display,
`
`wheresaid defined UI object corresponds to a web
`componentincluded in said computer memory
`selected from a group consisting of an input of the
`webservice and an output of the webservice,
`where each defined UI objectis either:
`
`1) selected by a user of the authoringtool; or
`
`
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`IPR2021-01225
`Patent 9,928,044 B2
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`2) automatically selected by the system as the preferred
`UI object corresponding to the symbolic name of the web
`componentselected by the user of the authoring tool,
`
`access said computer memory to select the symbolic name
`corresponding to the web componentofthe defined UI object,
`
`associate the selected symbolic name with the defined UI object,
`where the selected symbolic nameis only available to UI
`objects that support the defined data format associated with that
`symbolic name,
`
`store information representative of said defined UI object and related
`settings in a database;
`
`retrieve said information representative of said one or more said UI
`object settings stored in said database; and
`
`build an application consisting of one or more web page views from at
`least a portion of said database utilizing at least one player,
`wheresaid player utilizes information stored in said database to
`generate for the display of at least a portion of said one or more
`web pages,
`
`wherein whenthe application and player are provided to the device
`and executed on the device, and
`
`whentheuser ofthe device provides one or moreinput values
`associated with an input symbolic name to an input of the
`defined UI object, the device provides the user provided one or
`more input values and corresponding input symbolic name to
`the webservice, the web service utilizes the input symbolic
`nameand the user provided one or more input values for
`generating one or more output values having an associated
`output symbolic name,
`
`and the player receives the output symbolic name and corresponding
`one or more output values and providesinstructions for the
`display of the device to present an output value in the defined
`UI object.
`
`Ex. 1001, 37:48-38:40.
`
`
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`IPR2021-01225
`Patent 9,928,044 B2
`
`a
`
`E. Asserted Evidence
`
`Petitioner submits the following evidence:
`
`
`
`Declaration of Ian Cullimore, Ph.D.
`US. Patent Publ. No. 2007/0118844 A1 (published May 24,
`2007) (“Huang”)
`
`
`1007
`USS. Patent Publ. No. 2006/0200749 A1 (published Sept. 7,
`
`2006)
`(“‘Shenfield”
`.
`
`1002
`1005
`
`
`
`F. Asserted Ground of Unpatentability
`Petitioner asserts the following ground of unpatentability:
`
`
`
`Claims Challenged_|35 U.S.C. §
`1, 3, 5; 6, 11, 13, 15, 17,
`1
`
`
`
`
`19, 20, 25, and 27
`103(a)
`Huang, Shenfield
`
`Pet. 2.
`
`I. ANALYSIS
`Petitioner contends that claims 1, 3, 5, 6, 11, 13, 15, 17, 19, 20, 25,
`
`and 27 of the ’044 patent are unpatentable under 35 U.S.C. § 103 as obvious
`
`overprior-art references Huang and Shenfield. A patent claim is
`
`unpatentable under § 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 obviousatthe time the invention was madeto 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 (2007). The question of obviousnessis
`
`resolved on the basis of underlying factual determinations, including (1) the
`
`' The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125
`Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’044
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, werefer to the pre-AIA version of 35 U.S.C. § 103.
`
`7
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`Patent 9,928,044 B2
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`scope and content of the prior art; (2) any differences between the claimed
`
`subject matter and the priorart; (3) the level of ordinary skill in the art; and
`(4) whenin evidence, objective indicia of non-obviousness.” Graham v.
`
`John Deere Co., 383 U.S. 1, 17-18 (1966).
`
`“Tn an [inter partes review], the petitioner has the burden from the
`
`onset to show with particularity why the patent it challengesis
`
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`
`. the evidence that supports the
`.
`petitions to identify “with particularity .
`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`
`inter partes review).
`
`A. Level of Ordinary Skill in the Art
`
`Weconsiderthe asserted grounds of unpatentability in view of the
`
`understanding of a person of ordinary skill in the art. In assessing the level
`
`of ordinary skill in the art, various factors may be considered, including the
`
`“type of problems encountered in theart; prior art solutions to those
`
`problems; rapidity with which innovations are made; sophistication ofthe
`
`technology; and educational level of active workersin the field.” Jn re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Access.,
`
`Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).
`
`‘“{O]Jne or more factors may predominate.” Jd.
`
`? With respect to the fourth Graham factor, the parties at this time do
`not present arguments or evidence regarding objective indicia of non-
`obviousness. Therefore, the obviousness analysis at this stage of the
`proceeding is based onthe first three Graham factors.
`8
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`IPR2021-01225
`Patent 9,928,044 B2
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`Citing the Declaration of Dr. Cullimore, Petitioner contends that an
`
`ordinarily skilled artisan at the time of the invention “would have had a B.S.
`
`in Computer Science, Computer Engineering, or equivalent, plus two years
`
`working experience.” Pet. 3 (citing Ex. 1002 4 15). Petitioner also contends
`
`that “[m]ore education can supplementpractical experience and vice-versa.”
`
`Id. Patent Ownerdoes not propose an alternative assessmentofthe level of
`
`ordinary skill in the art. See generally Prelim. Resp.
`
`To the extent necessary, and for this Decision, we adopt Petitioner’s
`
`assessmentofthe level of ordinary skill in the art as it is consistent with the
`
`°044 patent andthe asserted prior art. See Okajima v. Bourdeau, 261 F.3d
`
`1350, 1355 (Fed. Cir. 2001).
`
`B. Claim Construction
`
`In this inter partes review, we apply the same claim construction
`standard that would be usedin a civil action under 35 U.S.C. § 282(b).
`37 C.F.R. § 42.100(b). In applying this standard, we generally give claim
`
`terms their ordinary and customary meaning as would be understood by an
`
`ordinarily skilled artisan at the time of the invention andin the context of the
`
`entire patent disclosure. See id.; see also Phillips v. AWH Corp., 415 F.3d
`
`1303, 1312-14 (Fed. Cir. 2005) (en banc).
`
`Petitionerlists the constructions of certain claim terms in co-pending
`
`district-court litigations, and contendsthat “district courts’ constructions are
`
`stipulated or consistent with the intrinsic record.” Je. at 10-12. Patent
`
`Ownerdoesnot propose construing any claim terms. See generally Prelim.
`
`Resp. Because our determination below is not impacted by Petitioner’s
`
`proposed claim constructions, we need not expressly construe any claim
`
`term for this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim
`
`9
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`Patent 9,928,044 B2
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`terms in controversy need to be construed, and only to the extent necessary
`
`to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`C. The Asserted Prior Art
`
`Before turning to Petitioner’s asserted grounds of unpatentability, we
`
`provide a brief summary of the asserted references.
`
`1. Huang
`
`Huang discloses a system for using web servicesas a data source for a
`
`software application. Ex. 1005, code (57). Figure 1A, reproduced below,
`
`shows an example of the system.
`
`104
`
`Application Designer
`
`110
`
`FIG. 1A
`
`FIG. 1A “is an illustrative drawing of a system for developing
`and executing browser-based applications.” Ex. 1005 4 9.
`
`Figure 1A includes Application Designer 104 and Application Player
`
`106. Id. | 40. Application Designer 104 is a computer program that
`
`provides a user interface that allows a user to create application 111. Jd.
`
`10
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`
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`Patent 9,928,044 B2
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`Application Player 106 is a computer program that executes application 111,
`
`receives values from webservices, sends values to web services, and
`
`invokes other operations provided by web services. Id. Server 120 receives
`
`webservice interaction requests from designer 104, such as a request for a
`
`list of objects provided by a webservice, and interacts with web services
`
`provided by specific vendors. Jd. | 43. The components of server 120
`
`include generic web service object model 130 (“WSObject”) and web
`
`service factory application programming interface 132 (“WSFactory API”).
`
`Id. 44. WSFactory API 132 includes WSObjectMapping 123, which
`
`maps, or converts, generic WSObject 130 to vendor-specific adapters, such
`as Siebel Webservice adapter 134 for interacting with Siebel web service
`
`140. Id. The mapping between generic WSObject 130 and the vendor-
`specific adapters is represented as WSObject XML definition 126, also
`referred to as an XML mappingfile. Jd.
`
`An example ofthe flow of data between an application component
`
`and a webserviceis shown in Figure 1B, reproduced below. Id. 4 57.
`
`ll
`
`
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`IPR2021-01225
`Patent 9,928,044 B2
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`4120
`
`Web Service Object
`174
`
`104 ~
`
`
`
` Browser
`Server WS Factory
`130
`
`
` Generic WS Object
`
`
`171
`Application
`Component 475
`
`
` 192
`Altribute
`
`
`
`
`
`195 Delete
`
`
`
`
`154
`
`Vendor-Specific
`WS Object
`
`Vendor Web Service
`153
`
`155 Attribute
`
`Web Service Object
`
`144~|Web Service Object
`
`143
`
`Binding
`
`Application
`Component
`t
`
`FIG. 1B
`
`Fig. 1B “is an illustrative drawing of a binding between an
`application component and a webservice.” Ex. 1005 4 10.
`
`Figure 1B showsapplication component 170, including value 192,
`
`which maybeset by a useras a value of a text box or a drop-downlist. Jd.
`
`4.57. Application component 170 is associated with script 196, which can
`
`access value 192. Jd. Script 196 invokes engine 111 to perform web service
`
`interactions, such as setting and getting the value of webserviceattribute
`
`155 associated with web service object 153 provided by vendor webservice
`
`156. Id. Each vendor webservice 156 has a vendor-specific data model. /d.
`
`To allow designer 104 and player 106 to be vendor-independent and work
`
`with multiple web services without the need for vendor-specific code,
`
`generic WSObject 130 is provided to WSFactory server 120, which maps
`
`the generic WSObject to vendor-specific object 154. Jd. Each vendor-
`
`12
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`specific object is mapped to the generic webservices object by a definition
`
`stored in the XML mappingfile. Jd. 74. Applications interact with the
`
`generic webservices object and need not contain hard-coded dependencies
`
`on vendorspecific objects. Id.
`
`2. Shenfield
`
`Shenfield relates to “[a] system and method for converting a page-
`
`based application to a component based application configured for execution
`
`on a device.” Ex. 1007, code (57). According to Shenfield, page-based
`
`applications on web browsers“ha[d] a disadvantage of requesting pages
`
`(screen definitions in HTML) from the Web Service, which hinders the
`
`persistence of data contained in the screens.” Jd. 95. Shenfield states that
`
`the disclosed conversion system and method transforms page-based
`
`applications to component-based applications “that can be run on client
`
`devices having a wide variety of runtime environments, as well as having a
`
`reduced consumptionof device resources.” Id.
`Shenfield’s system comprises an“analyzer module for assembling a
`set of page metadata representing at least a portion of a selected page from
`99 ce
`
`the series of pages of the page-based application,”
`
`“a data conversion
`
`module for converting the embedded data elements into a data component,”
`
`“a message conversion module for converting the embedded messaging
`
`elements into a message component,” and “a dependency modulefor
`
`generating a dependency link associated with an event correspondingto the
`
`embedded elements.” Jd. 4 8. Shenfield states that the dependency link
`
`describes “a workflow of the components in respect to operation of the
`
`component based application when executed on a userinterface of the
`
`device.” Id.
`
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`D. Asserted Obviousness over Huang and Shenfield
`
`Petitioner contends that claims 1, 3, 5, 6, 11, 13, 15, 17, 19, 20, 25,
`
`and 27 of the ’044 patent are unpatentable under 35 U.S.C. § 103(a) as
`
`obvious over Huangin view of Shenfield. Pet. 1, 12-83. In particular,
`
`Petitioner contends that Huang in combination with Shenfield teaches or
`
`suggests each and every limitation of the challenged claims.
`
`/d. Patent
`
`Owneropposes, relying on the Declaration of Kevin C. Almeroth, Ph.D.
`
`(Ex. 2003). Prelim. Resp. 8-29. In particular, Patent Owner arguesthat
`
`Huang andShenfield fail to teach or suggest several claim limitations,
`
`including (1) “the device provides the user provided one or more input
`
`values and corresponding input symbolic name to the web service,”id. at
`
`11-19; and (2) “the web service utilizes the input symbolic name andthe
`
`user provided one or moreinput values,” id. at 19-22. We address these
`
`limitations below.
`
`1. “the device provides the user provided one or more input values and
`corresponding input symbolic nameto the web service”
`
`Claim 1 recites that “the device provides the user provided one or
`
`more input values and corresponding input symbolic name to the web
`
`service.” Ex. 1001, 38:30—33, Petitioner contends that Huang discloses or
`
`renders this limitation obvious. Pet. 68-69. Petitioner does not rely on any
`
`of the teachings of Shenfield for this claim limitation.
`
`Specifically, Petitionermaps the claimed “device” as a computer that
`
`hosts “Internet Browser 101,” id. at 67, and the claimed “symbolic name”to
`
`the name of a webservice object, such as “OpportunityName,”as disclosed
`
`by Huang,id. at 68. Petitioner contends that an ordinarily skilled artisan
`
`would have understoodthat “Huang discloses that the user provides one or
`
`more input values associated with an input symbolic nameto an input ofthe
`
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`defined UI object because the user provides input to the webservice, e.g., for
`
`setting an attribute of a web service object, which has a symbolic name
`
`(‘input symbolic name’) such as ‘OpportunityName.’” Jd. (citing Ex. 1005,
`
`Fig. 4A). Petitioner contends that an ordinarily skilled artisan “would
`
`further have understood that data value sent to web services would be
`
`associated with symbolic names of the web service attribute boundto the
`
`application component because the web service would needthis identifier to
`
`locate the attribute to which the data relates.” Jd. at 68-69 (citing Ex. 1002
`
`q 226).
`
`Pointing to Figure 1D, Petitioner contends that “Huang showsthatthe
`
`device provides the user provided one or more input values and
`
`corresponding input symbolic nameto the web service.” Id. (citing
`
`Ex. 1005, Fig. 1D). In particular, Petitioner contends that Figure 1D shows
`
`that “the value of the application component(‘BigCorp’) and the associated
`
`symbolic name (‘OppName’) is sent to the web service, depending on the
`
`nature of the bindings.” Jd. at 69 (citing Ex. 1002 | 227; Ex. 1005 { 67).
`
`Patent Owner, in response, argues that Huangfails to teach or suggest
`
`this claim limitation because Huang’s device does not provide “anything,
`
`including ‘one or more input values and corresponding input symbolic
`
`name’ ‘to the webservice,” as required by claim 1.” Prelim. Resp. 12 (citing
`
`Ex. 2003 7 43). Specifically, Patent Owner argues that Huang’s device
`running the application player does not provide symbolic namesto the web
`service, but instead, interacts with a generic web service object on an
`
`intermediary server. Jd. at 13 (citing Ex. 1005 4 57; Ex. 2003 43). Patent
`
`Ownercontendsthat this intermediary server converts the generic web
`
`service object and provides the result of the conversion to the web service.
`Id. at 14 (citing Ex. 1005 4 57). Thus, according to Patent Owner, the device
`
`15
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`provides the input symbolic name to an intermediary server, which uses
`
`mapping to convert the input symbolic name, and then provides the
`
`converted nameto the web service. Jd. at 14-15 (citing Ex. 2003 {J 43-44).
`
`Patent Owneralso argues that Petitioner has not adequately explained
`
`how Huang’s device provides the input symbolic nameto the webservice.
`
`Id. at 17-19. Patent Ownercontends that Dr. Cullimore’s statement—that
`
`an ordinarily skilled artisan “would have understood from Huang’s
`
`disclosures that Huang’s system associates the input value to the bound
`symbolic name,and both are sent to the web service because a POSITA
`would understood that raw data without any identifying information could
`
`nat he used hy a web service because the web service would have been
`
`unable to identify to what attribute the value relates”—is unsupported, and
`
`that Huang does not teach providing the symbolic name to the web service.
`
`Id. at 17 (quoting Ex. 1002 § 226). Patent Owner also contendsthat
`
`Petitioner’s conclusion—that providing the symbolic name from the device
`
`to the web service would have been obvious—relies on hindsight and fails to
`account for Huang’s intermediary server andits function of converting
`
`information between the device and the webservice. /d. at 17-18 (citing
`
`Ex. 1005 § 169; Ex. 2003 4 47). Patent Owner contendsthat, to the extent
`
`Huang’s device provides any input symbolic name,it only providesit to the
`
`intermediary server, which uses mapping to convert the name beforeitis
`
`provided to the webservice. Jd. at 18 (Ex. 2003 § 47).
`
`Weagree with Patent Owner. Aswestated previously,
`
`Huang discloses that each vendor-specific object is mapped to
`the generic webservice object by a definition stored in an XML
`mapping file. Huang discloses that WSObjectMapping 123
`converts generic WS Object Model 130 to a vendor-specific
`adaptor, such as Siebel Web Service Adaptor 134 for interacting
`
`16
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`
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`IPR2021-01225
`Patent 9,928,044 B2
`
`140. Contrary to Petitioner’s
`with Siebel Web Service
`contention, Huang does not necessarily provide the claimed
`“input symbolic name” to the web service.
`Instead, Huang
`converts the input symbolic nameto a vendor-specific adaptor,
`and uses the vendor specific adaptor to interact with the web
`service. Therefore, on this record, we are not persuaded that
`Petitioner has sufficiently shown for institution that Huang
`teaches or suggests “the device provides. .
`. [the] corresponding
`input symbolic nameto the webservice”as recited in claim 1.
`IPR2021-00711, Paper 7 (“the 709 Decision”), 15—16 (citations omitted).
`
`Althoughthe Petition filed in IPR2021-00711 (‘the 711 Petition,”
`
`Paper 1) presented an inherency argument, and Petitioner here presents an
`
`obviousness argument, we donotfind this distinction persuasive, because
`
`the reasoning in both Petitions is similar. For example, Petitioner’s expert
`
`contendshere that “Huang’s system associates the input value to the bound
`
`symbolic name, and both are sent to the web service because [an ordinarily
`skilled artisan] would have understood that raw data without any identifying
`
`information could not be used by a webservice because the webservice
`
`would be unable to identify to what attribute the value relates.” Ex. 1002
`
`4 226; see also Pet. 68-69. This is substantially the same as the argument
`
`madein the 711 Petition—i.e., that “without the input symbolic name,
`
`Huang’s binding-based technique .
`
`.
`
`. would not be able to resolve which
`
`webservice object to modify in response to the user’s request.” 711
`
`Petition, 70. In this case, as in the 711 Petition, Petitioner does not address
`
`Huang’s disclosure of an intermediate server that converts a generic WS
`
`Object Model to a vendor-specific adaptor, then uses the vendor-specific
`
`adaptorto interact with the web service. On this record, wefind that the
`
`webservice, which receives a vendor-specific adaptor from the intermediate
`
`server, already knowsto whatattribute the value corresponds, without being
`
`17
`
`
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`IPR2021-01225
`Patent 9,928,044 B2
`
`modified in the manner proposed by Petitioner. See Ex. 2003 ff] 46-47.
`
`Thus, a person of ordinary skill would not have had motivation to modify
`
`Huangsothat “the device provides. .
`
`. [the] input symbolic name to the web
`
`service” as claimed.
`
`Further, we agree with Patent Owner that Huang teaches away from
`
`the device providing the symbolic name to the web service. Patent Owner
`contends that Huang teaches away from a devicedirectly communicating
`with a web service because Huang discloses that “[t]hat approach requires
`
`the application to know details about each vendorspecific object, and ties
`
`the application to a particular web services vendor.” Prelim. Resp. 4—5
`
`(quoting Ex. 1005 { 74). In contrast, Petitioner, citing the same paragraph of
`
`Huang, contends that Huangteachesthat the application on the device can
`
`call vendorspecific objects directly, which teaches that conversionis not
`
`required. Reply 3 (citing Ex. 1005 { 74).
`
`“A reference may besaid to teach away whenaperson ofordinary
`
`skill, upon reading the reference .
`
`.
`
`. would beled in a direction divergent
`
`from the path that was taken by the applicant.” In re Fulton, 391 F.3d 1195,
`
`1201 (Fed. Cir. 2004). What the prior art teaches and whetherit teaches
`
`toward or away from the claimed invention are determinationsoffact.
`Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1088
`
`(Fed. Cir. 1995). Paragraph 74 of Huang,in its entirety, discloses:
`
`One approachto invoking the web service object would be tocall
`vendor-specific objects directly from applications.
`That
`approach requires the application to know details about each
`vendorspecific object, and ties the application to a particular web
`services vendor. Therefore a generic web services object is
`introduced. Each vendor-specific object is mapped to the generic
`webservices object by a definition stored in an XML mapping
`file. Applications interact with the generic web services object
`
`18
`
`
`
`IPR2021-01225
`Patent 9,928,044 B2
`
`and need not contain hard-coded dependencies on vendor
`specific objects.
`Ex. 1005 ¥ 74. In this paragraph, Huangis discussing the problem with
`
`calling a vendor-specific object directly from an application, and describing
`a solution ofmapping each vendor-specific object to a generic webservices
`object. Jd. Huang teachesthat with this solution, applications need not
`contain hard-coded dependencies on vendorspecific objects. Jd. Huang
`teaches that this solution allows the designer and the player to be vendor-
`
`independent and work with multiple web services without the need for
`
`vendor-specific code in the designer, player, or internet browser. Jd. § 57.
`
`A person of ordinary skill, upon reading Huang’s teaching that mapping
`
`each vendor-specific object to a generic web services object allows the
`
`designer and player to be vendor-independent, whereas calling vendor-
`
`specific objects without such mapping does not, would beled in a direction
`
`divergent from the path of“the device provides. .
`
`. [the] input symbolic
`
`nameto the webservice”that was taken by the applicant. Fulton, 391 F.3d
`
`at 1201.
`
`Lastly, we do not agree with Petitioner’s contention that Figure 1D of
`
`Huang showsan “express disclosure[] of this limitation” because the value
`
`“BigCorp” and term “OppName”are shown in the device and the web
`
`service. Reply 2-4; Pet. 69. Figure 1D, similar to Figure 1B, showsthat an
`
`intermediate server converts generic object 130 to vendor-specific object
`154 using mapping 123. Ex. 1005 757; see id. { 44.
`|
`2. “the web service utilizes the input symbolic name and the user provided
`one or more input values”
`
`Claim 1 also recites that “the web service utilizes the input symbolic
`
`name.” Ex. 1001, 38:33-34. Petitioner contends that Huang discloses or
`
`19
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`
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`IPR2021-01225
`Patent 9,928,044 B2
`
`rendersthis limitation obvious. Pet. 69. Petitioner does not rely on any of
`
`the teachings of Shenfield for this claim limitation.
`
`Specifically, Petitioner contends that an ordinarily skilled artisan
`
`would have understood that Huang teachesthis limitation because “Huang
`
`discloses that an output of a web service can depend on an input value.” Jd.
`
`at 70 (citing Ex. 1005 § 62; Ex. 1002 4 229). Petitioner also contendsthat
`
`by “requir[ing] both an input value andan identifier to understand what
`
`informationit is receiving,” Huang’s web service “thus utilizes the input
`
`symbolic name and the user provided one or more input values for
`
`generating one or more output values.” Id. (citing Ex. 1002 §] 224-226).
`
`Patent Owner, in response, arguesthat “the input symbolic name”
`
`receives antecedent basis earlier in the claim, and thus, must be “provided by
`
`the device.” Prelim. Resp. 19. Patent Ownerarguesthat, as with the
`
`previous claim limitation, the web service of Huang “never receives the
`
`input symbolic name from the device” and thus, the web service “can never
`
`utilize it.” Jd. (citing Ex. 2003 ¥ 49).
`
`Again, we agree with Patent Owner. Because the webservice of
`
`Huang receives a converted name from the intermediary server, rather than
`
`“the input symbolic name” from the device as claimed, we are not persuaded
`
`that Petitioner has sufficiently shown that Huang teachesthis limitation.
`
`Supra § WI.D.1.
`
`3. Summary
`
`For these reasons, we determinethat Petitionerfails to sufficiently
`
`showforinstitution that Huang teaches or suggests each of these disputed
`
`limitations of claim 1. As noted above,Petitioner does not rely on the
`
`teachings of Shenfield for these limitations. Petitioner’s reliance on
`
`Shenfield for other claim limitations doesnot cure the deficiencies with
`
`20
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`IPR2021-01225
`Patent 9,928,044 B2
`
`respect to the two disputed claim limitations discussed above. The
`
`remaining challenged claims 3, 5, 6, 11, 13, 15, 17, 19, 20, 25, and 27
`
`contain or depend from a claim containing limitations similar to those
`
`recited in claim 1. Because Petitioner has not shown sufficiently for
`
`institution a reasonable likelihood of prevailing with respect to claim 1, we
`also determinethat Petitioner also has not shown sufficiently for institution a
`
`reasonablelikelihood of prevailing with respect to claims 3, 5, 6, 11, 13, 15,
`
`17, 19, 20, 25, and 27.
`
`IV. CONCLUSION
`
`For the foregoing reasons, we determinethat the information
`
`presented in the Petition does not establishthat there is a reasonable
`
`likelihood that Petitioner would prevail with respect to obviousness of
`
`claims 1, 3, 5, 6, 11, 13, 15, 17, 19, 20, 25, and 27 of the ’044 patent. Thus,
`
`we do notinstitute an inter part
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