CASE CBM2013-00013
`Patent 8,037,158
`
`Filed on behalf of Pi-Net International, Inc.
`By: Bryan Boyle
`
`and Lawrence B. Goodwin
`
`Carr & Ferrell LLP
`
`Lawrence B. Goodwin, P.C.
`525 East 86th Street, Suite 5H
`
`120 Constitution Drive
`
`
`Menlo Park, CA 94025
`
`New York, NY 10028
`
`Tel: (650) 812-3400
`
`Tel: (212) 988-1076
`
`Fax: (650) 812-3444
`
`Fax: (646) 619-4161
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`SAP AMERICA, INC.
`Petitioner
`
`v.
`
`PI-NET INTERNATIONAL, INC.
`Patent Owner
`_____________________
`CASE CBM2013-00013
`Patent 8,037,158
`_____________________
`
`PATENT OWNER’S RESPONSE TO THE PETITION
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`

`

`CASE CBM2013-00013
`Patent 8,037,158
`
`Table of Contents
`
`I. 
`II. 
`
`Introduction .................................................................................................................... 1 
`Objections to Grounds for Eligibility for Covered Business Method
`Patent Review ................................................................................................................ 1 
`Patent Owner’s Response to 35 U.S.C. § 101 Issues ......................................... 12 
`II 
`IV.   The Claims of the ‘158 Patent and their Construction....................................... 17 
`A.   Web application .................................................................................. 18 
`B. 
`Service network atop the World Wide Web ...................................... 24 
`C.  Web user input device ........................................................................ 27 
`D.  Utilizing a routed transactional data structure that is both
`complete and non-deferred ................................................................ 28 
`The routing occurring in response to the subsequent signals............. 37 
`E. 
`Object Routing ................................................................................... 38 
`F. 
`G.  Distributed on-line service information bases .................................... 42 
`H.  Virtual Information Store ................................................................... 42 
`I. 
`Point Of Service Application ............................................................. 44 
`V.   Grounds Under Section 103 ..................................................................................... 57 
`A.  Obviousness in General ...................................................................... 57 
`The Prior Art, Alone Or In Combination, Does Not Include
`B. 
`Elements Of Claims 1-3 And 11, As Properly Construed. ................ 58 
`C.  Hindsight Combination of Lawlor and Computerworld .................... 63 
`VI.  Claims 1 – 6 and 11 Are Not Indefinite. ............................................................... 66 
`VII.  Conclusion .................................................................................................................... 68 
`CERTIFICATION OF SERVICE (37 CFR 42.6(e), 42.105(a)) ................................. 70 
`
`
` 
`
`i
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`CASE CBM2013-00013
`Patent 8,037,158
`
`TABLE OF AUTHORITIES
`
`Cases 
`American Piledriving Equipment, Inc. v. Geoquip, Inc., 637 F.3d 1324, 1331 (Fed.
`Cir. 2011) .............................................................................................................. 30
`
`Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) ...... 16, 32, 44, 61
`
`CLS Bank Intern. v. Alice Corp. Pty. Ltd., 685 F. 3d 1341 (Fed. Cir. 2012) .......... 17
`
`Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed.Cir.2005) .. 69
`
`Haemonetics Corp. v. Baxter Healthcare Corp., 607 F. 3d 776, 783 (Fed. Cir.
`2010) ..................................................................................................................... 68
`
`Halliburton Energy Services, Inc. v. MI LLC, 514 F. 3d 1244, 1250 (Fed. Cir.
`2008) ..................................................................................................................... 69
`
`Hearing Components, Inc. v. Shure Inc., 600 F. 3d 1357, 1366 (Fed. Cir. 2010) .. 70
`
`Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1532–33 (Fed.
`Cir. 1987) ........................................................................................... 16, 17, 32, 61
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) ............... 29
`
`Power-One, Inc. v. Artesyn Technologies, Inc., 599 F. 3d 1343, 1350 (Fed. Cir.
`2010) ..................................................................................................................... 68
`
`Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir.
`1998) .............................................................................................................. 30, 40
`
`Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1373 (Fed. Cir.
`2011) ..................................................................................................................... 70
`
`U.S. Surgical Corp., 103 F.3d at 1568 ........................................................ 35, 36, 41
`
`Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562 (Fed. Cir. 1991 .... 16, 32, 61
`
`Statutes 
`35 U.S.C. § 101 .......................................................................................................... 9
`
` 
`
`ii
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`CASE CBM2013-00013
`Patent 8,037,158
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`35 U.S.C. § 103 .......................................................................................................... 1
`
`35 USC § 112 (b) .......................................................................................... 1, 70, 71
`
`37 C. F. R. §§ 42.120 and 42.300(a) ......................................................................1, 9
`
`Regulations 
`77 Fed. Reg. 48734 at 48739 ................................................................................... 10
`
`
`
`
`
` 
`
`
`
`iii
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`CASE CBM2013-00013
`Patent 8,037,158
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`LIST OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`Exhibit 1002
`
`PI-NET 2008
`
`PI-NET 2009
`
`PI-NET 2010
`
`PI-NET 2012
`
`PI-NET 2013
`
`PI-NET 2014
`
`‘158 Prosecution History, Amendment of December 27, 2010 at
`page 11 and the whole document (previously filed)
`Prosecution History for U.S. Patent No. 5,778,178 (previously
`filed)
`Excerpts From Prosecution History of U.S. Patent No.
`8,037,158, Previously Submitted (C.A. No. 12-355-RGA)
`(previously filed)
`Bardash Decl. of April 1, 2013, Para. 46 and whole document,
`Previously Submitted (C.A. No. 12-355-RGA) (previously
`filed)
`(http://www.uspto.gov/web/patents/classification/
`uspc705/sched705.htm)
`(http://www.uspto.gov/web/patents/classification/
`uspc709/defs709.htm)
`http://www.webopedia.com/TERM/V/virtual.html
`
`PI-NET 2015
`
`(http://en.wikipedia.org/wiki/Data_structure)
`
`PI-NET 2016
`
`PI-NET 2017
`
`PI-NET 2018
`
`PI-NET 2019
`
`PI-NET 2020
`
`
`
` 
`
`http://www.webopedia.com/DidYouKnow/Internet/2002/
`Web_vs_Internet.asp
`Easttom Declaration of November 25, 2013,
`Pi-Net International, Inc. v. JP Morgan Chase & Co, No. 1:12-
`cv-00282 (D. Del) Previously Submitted
`(http://en.wikipedia.org/wiki/Web_application)
`
`“Web Applications - What is a Web Application”
`(http://webtrends.about.com/od/webapplications/
`a/web_application.htm)
`Prosecution History of Parent 8,108,492 Patent
`
`iv
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`CASE CBM2013-00013
`Patent 8,037,158
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`
`
`Patent Owner’s Response to the Petition Under 37 C.F.R. 42.120
`
`I.
`
`Introduction
`
`On March 22, 2013, Petitioner, SAP America, Inc. ("Petitioner") requested that the
`
`Board initiate a covered business method patent review to review claims 1 – 6, and
`
`11 of U.S. Patent 8,037,158 ("the ‘158 Patent"). In its Decision of September 19,
`
`2013 (“Decision”), the Board instituted a covered business method patent review
`
`of claims 1 – 3 and 11 "as unpatentable under 35 U.S.C. § 101 and 35 U.S.C. § 103
`
`and based on Petitioner’s challenges to claims 1 – 6 and 11 under 35 U.S.C. § 112
`
`(b).”
`
`Pursuant to 37 C. F. R. §§ 42.120 and 42.300(a), the following will set forth the
`
`response of Pi-Net International, Inc. (“Patent Owner”), to the petition, addressing
`
`those grounds for unpatentability not already denied by the Board. 
`
`II. Objections to Grounds for Eligibility for Covered Business Method
`
`Patent Review
` 
`
`The ’158 patent is not available for review because it does not meet the threshold
`
`requirements for a CBM Review. None of the Pi-Net Patents are business method
`
`patents within the jurisdictional limits of the AIA statute. Petitioner has not
`
`demonstrated the applicability of CBM Review. The claims of the ‘158 Patent are
`
`1
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`

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`CASE CBM2013-00013
`Patent 8,037,158
`
`directed to technology and not to business methods. Patent Owner respectfully
`
`submits that no CBMR should be instituted by the PTAB. 
`
`Claim 1 is reproduced below, showing in brackets the constructions of certain
`
`terms by the Board in the Decision:1
`
`1. A method for performing a real time Web transaction from a Web application [a
`
`software program that can be accessed by an internet user] over a digital network
`
`atop the Web, the method comprising:
`
`providing a Web page for display on a computer system coupled to an input
`
`device;
`
`providing a point-of-service application as a selection within the Web page,
`
`wherein the point-of-service application provides access to both a
`
`checking and savings account, the point-of-service application operating
`
`in a service network atop the World Wide Web [a network on which
`
`services other than underlying network communication services are
`
`provided over the internet];
`
`                                                            
`1 Patent Owner suggests certain changes be made to these claim constructions, as
`
`discussed in § IV, below, but such suggested changes do not change the following
`
`analysis.
`
`2
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`CASE CBM2013-00013
`Patent 8,037,158
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`accepting a first signal from the Web user input device to select the point-of-
`
`service application;
`
`accepting subsequent signals from the Web user input device; and
`
`transferring funds from the checking account to the savings account in real-
`
`time utilizing a routed transactional data structure that is both complete
`
`and non-deferred [using a data structure that facilitates switching a user
`
`who selects a transactional program to a service provider program that
`
`provides immediate processing], in addition to being specific to the
`
`point-of-service application, the routing occurring in response to the
`
`subsequent signals.
`
`As set forth in Rule 42.301 (b), the following must be considered in determining
`
`whether claimed subject matter is for a “technological invention":
`
`whether the claimed subject matter as a whole recites a technological feature
`
`that is novel and nonobvious over the prior art and solves a technical
`
`problem using a technical solution.
`
`This definition of a "technological invention" could not fit claim 1 more perfectly,
`
`for several reasons. First, during the prosecution of the ‘158 patent, the prior art
`
`was distinguished specifically based upon several of the foregoing technological
`
`distinctions, which have been underlined in claim 1, above. As noted during the
`
`3
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`CASE CBM2013-00013
`Patent 8,037,158
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`prosecution history of the ‘158 patent (in the amendment that lead to the allowance
`
`of the ‘158 patent), the above technical features distinguished the claimed
`
`invention from the prior art as follows:
`
`“Web transactions from Point-of-Service Web applications
`
`from a Web page, as in the Applicant’s claims. Taking into
`
`account the Examiner’s objections, Applicant respectfully
`
`modified Claims 1-5, 7-13, 15-17, 53, 55-59, 72, 74-75, 78-79
`
`and 83-85, so as to distinguish between mere Web browsing as
`
`a Web transaction as in Bettencourt versus Web transactions
`
`from Point-of-Service (see in the priority chain of this patent
`
`application the parent U.S. Patent No. 5,778,178:6:45-46; Fig.
`
`5C) Web applications (see 5,778,178:2:42) across a service
`
`network (see 5,778,178:5:51-53) atop the Web, utilizing
`
`object routing (5,778,178:6:23-32;7:46-9:39) or routing of a
`
`transactional data structure (see 5,778,178:8:35; Fig. 5D)
`
`specific to a Web application (see 5,778,178:2:42) across the
`
`Web, as
`
`in Applicant’s patent application. Applicant
`
`respectfully notes that “content” in mere Web browsing is
`
`distinguished from Web applications or online services (See
`
`parent Patent 5,778,178:1:63-64) atop the Web and has
`
`4
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`CASE CBM2013-00013
`Patent 8,037,158
`
`modified the claims appropriately. These modifications to the
`
`claims, as amended, should clarify and should distinguish the
`
`claims
`
`in Applicant’s current patent application
`
`from
`
`DeBettencourt and overcome
`
`the Examiner’s objections.
`
`Applicant respectfully requests the Examiner to issue the
`
`patent, as the claims are currently in condition for allowance.”
`
`Amendment of December 27, 2010 [Exhibit 1002 hereto] at page 11 (emphasis
`
`added).
`
`Thus, claim 72, which became independent claim 1 of ‘158 patent, was specifically
`
`distinguished from the prior art based on the technical features set forth in the
`
`claim.
`
`Second, the subject matter of claim 1 "as a whole," recites at least the following
`
`technological features, which solve technological problems, using technological
`
`solutions:
`
`• Technological claim limitations: A method for performing a real time Web
`
`transaction from a Web application [a software program that can be
`
`accessed by an internet user] over a digital network atop the Web; the point-
`
`of-service application operating in a service network atop the World Wide
`
`5
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`CASE CBM2013-00013
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`Web [a network on which services other than underlying network
`
`communication services are provided over the internet]
`
`o Technological features/solution: performing a Web transaction - not in
`
`general - but specifically from a Web application in a network that
`
`runs atop the World Wide Web, i.e., a network that does not involve
`
`underlying network communication services.
`o This solves the “technological problem,” as stated in the subject ‘158
`
`and parent patent specifications at ‘158:5:30-51; Fig. 5D and U.S.
`
`Patent No. 5,778,178 (‘178) at 178:5:31-53, in particular, “…If user
`
`100 is a Web user, however, there is no current mechanism for
`
`performing a robust, real-time transaction with the bank, as illustrated
`
`in FIG. 4A. CGI scripts provide only limited two-way capabilities, as
`
`described above. Thus, due to this lack of a robust mechanism by
`
`which real-time Web transactions can be performed, the bank is
`
`unable to be a true “Web merchant,” namely a merchant capable of
`
`providing complete transactional services on the Web.
`
`According to one embodiment of the present invention, as illustrated
`
`in FIG. 4B, each merchant that desires to be a Web merchant can
`
`provide real-time transactional capabilities to users who desire to
`
`6
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`CASE CBM2013-00013
`Patent 8,037,158
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`access the merchants' services via the Web. This embodiment includes
`
`a service network running on top of a facilities network, namely the
`
`Internet, the Web or e-mail networks.” (Underscoring added)
`
`“Each Web merchant may choose the types of services that it would
`
`like to offer its clients. In this example, if Bank decided to include in
`
`their POSvc application access to checking and savings accounts, user
`
`100 will be able to perform real-time transactions against his checking
`
`and savings accounts. Thus, if user 100 moves $500 from his
`
`checking account into his savings account, the transaction will be
`
`performed in real-time, in the same manner the transaction would
`
`have been performed by a live teller at the bank or an ATM machine.
`
`Therefore, unlike his prior access to his account, user 100 now has the
`
`capability to do more than browse his bank account. The ability to
`
`perform these types of robust, real-time transactions from a Web
`
`client is a significant aspect of the present invention.” (‘158:7:1-14)
`
`• Technological claim limitations: Utilizing a routed transactional data
`
`structure that is both complete and non-deferred [using a data structure that
`
`facilitates switching a user who selects a transactional program to a service
`
`7
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`CASE CBM2013-00013
`Patent 8,037,158
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`provider program that provides immediate processing]; the routing
`
`occurring in response to subsequent signals.
`
`o Technological features/solution: performing the web transaction - not
`
`in general - but using a transactional data structure that is (1) routed,
`
`(2) complete and (3) non-deferred [using a data structure that
`
`facilitates switching a user who selects a transactional program to a
`
`service provider program that provides immediate processing]; the
`
`routing2 occurs in response to input from the web user.
`
`o This solves the “technological problem,” as stated in the subject ‘158
`
`and parent patent specifications at ‘158:5:30-51; 5:60-65; 6:11-15;
`
`6:24-32; 8:29-37; 1:22-2:37; 7:10-14 and U.S. Patent No.
`
`5,778,178:5:31-53; 5:58-61; 6:8-12; 6:21-29; 1:22-2:31; 7:13-17 and
`
`8:23-31.
`
`The existence of the foregoing technological features/solutions – which
`
`specifically were relied upon for patentability in view of the prior art – clearly
`
`                                                            
`2 Even incorporating the Board’s construction of a “routed data structure” into the
`
`claim, the claim so construed still explicitly requires the routing of a data structure.
`
`‘158 patent, col. 10, line 14.
`
`8
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`CASE CBM2013-00013
`Patent 8,037,158
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`removes the subject matter set forth in claim 1 from the definition of a "covered
`
`business method patent" in § 42.301(a).
`
`Although claim 1 is broader than claim 4 – which the Board determined complied
`
`with 35 U.S.C. § 101 – claim 1 is no different in kind than claim 4. Just like claim
`
`4, which does not cover all practical applications of web transactions, and thus
`
`recites a technical solution - object routing - claim 1 does not cover all practical
`
`methods of web transactions. It only covers those transactions that employ the
`
`technological solutions as set forth above, including the routing of a data structure.
`
`The Board found that the "object routing" limitation of claim 4 "meaningfully
`
`limit[ed] the claimed method for performing a real time Web transaction."
`
`September 19 decision at 21. This decision is believed to have been based, at least
`
`in part, on the notion that the use of object routing is a technological technique and
`
`solution. But that same limitation, although in slightly different language – "routed
`
`transactional data structure" and "routing occurring in response to the subsequent
`
`signals" is explicitly set forth in claim 1, and accordingly, the same rationale
`
`should apply to claim 1 as it applies to claim 4. There is no principled distinction
`
`between the technological solutions of “object routing” and “data structure
`
`9
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`CASE CBM2013-00013
`Patent 8,037,158
`routing.”3 And, as mentioned, this specific, technical limitation was the basis for
`
`distinguishing claim 1 (originally claim 72) from the prior art.
`
`Further, in addition to the above, the fact that claim 1 of the ‘158 patent should not
`
`be subject to CBM review is further supported by the Definitions Of Covered
`
`Business Method Patent And Technological Invention, 77 Fed. Reg. 48734 at
`
`48739, which, although not determinative, states in part:
`
`Accordingly, patents subject to covered business method patent review are
`
`anticipated to be typically classifiable in class 705.
`
`Class 705 is defined as follows:
`
`“This is the generic class for apparatus and corresponding methods for
`
`performing data processing operations, in which there is a significant change
`
`in the data or for performing calculation operations wherein the apparatus or
`
`method is uniquely designed for or utilized in the practice, administration, or
`
`management of an enterprise, or in the processing of financial data.”
`
`                                                            
`3 As noted in § IV, below, the reasonable construction of the term “data structure”
`
`is, in fact “a type of object.”
`
`10
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`CASE CBM2013-00013
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`This class also provides for apparatus and corresponding methods for
`
`performing data processing or calculating operations in which a charge for
`
`goods or services is determined.
`
`* * * *
`
`http://www.uspto.gov/web/patents/classification/uspc705/sched705.pdf
`
`The ‘158 patent, however, was classified in class 709, which is “Electrical
`
`Computers And Digital Processing Systems: Multicomputer Data Transferring”
`
`(http://www.uspto.gov/web/patents/classification/uspc709/defs709.htm)
`
`(underscoring added), which would be expected for a technology specifically
`
`claiming the routing of data structures.4 And of course, the fact that the structures
`
`are routed for the purpose of performing business transactions should not affect the
`
`basic fact that a technological solution is claimed.
`
`There is still additional evidence that the invention of claim 1 was viewed by the
`
`USPTO as being directed to a technological innovation in the prosecution history
`
`of the ‘158 patent. On October 19, 2009, the USPTO required restriction between
`
`five groups of claims, including the claims that ultimately became the claims of the
`
`‘158 patent. The examiner stated, with regard to all of the groups:
`
`                                                            
`4 In fact the field of search did not even include class 705.
`
`11
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`CASE CBM2013-00013
`Patent 8,037,158
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`“Because these inventions are distinct for the reasons given
`
`above and have acquired a separate status in the technological
`
`complex art, examination of all inventions would impose
`
`serious burden to the examiner. Accordingly, restriction for
`
`examination purposes as indicated is proper.”
`
`Restriction requirement of October 19, 2009 (attached as Exhibit 1002), page 3
`
`(emphasis added).
`
`In summary, it could hardly be clearer that the invention of claim 1 of the ‘158
`
`patent, and the claims that depend therefrom, recite, as a whole, technological
`
`features that are novel and unobvious over the prior art and that solve technical
`
`problems using technical solutions. As such, Patent Owner respectfully requests
`
`that the Board not institute Covered Business Method Patent Review of the ‘158
`
`patent as requested by Petitioner.
`
`Patent Owner’s Response to 35 U.S.C. § 101 Issues
`
`II
` 
`
`Before addressing the elements of claim 1, it is important to note that the Board
`
`specifically declined to institute a review based upon challenges to claims 4 – 6
`
`under §101. Decision of September 19, 2013, pages 20 – 22. In making this
`
`decision, the Board properly referred to clear and specific reasons why claims 4-6
`
`12
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`CASE CBM2013-00013
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`were not subject to such review. In particular, the Board referred to the fact that
`
`claim 4 recited the use of "object routing." The Board specifically noted that
`
`"object routing" "is a specific technique that plays a significant part in carrying out
`
`the invention recited in claim 4." Id., p. 21. Thus, the Board was able to conclude
`
`that claim 4 was both statutory under § 101 and not subject to review.
`
`Claim 1 passes muster under § 101 for the same reasons as claim 4. The Board’s
`
`decision with regard to claims 1-3 and 11 is respectfully believed to be incorrect.
`
`And Petitioner's analysis of claim 1 is in error, because it ignores critical language
`
`in claim 1, in direct violation of clear Federal Circuit precedents.
`
`For example, in discussing claim 1, at pages 19 – 23, of its petition, Petitioner
`
`completely ignores critical claim language which establishes, beyond dispute, the
`
`statutory nature of the claim 1. Petitioner completely ignores the fact that claim 1
`
`requires that transactions be accomplished through the routing of transactional data
`
`structures. In fact, Petitioner's analysis of claim 1 does not even mention the words
`
`"routing," "data structure," "a service network atop the World Wide Web," or the
`
`like. Although the routing of transactional “data structures” limitation in claim 1
`
`may be slightly different from the "object routing" limitation of claim 4, it is no
`
`different in kind from that limitation, which the Board has already determined to
`
`13
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`CASE CBM2013-00013
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`be statutory subject matter.5 Even including the Board’s construction of "a routed
`
`data structure," claim 1 still specifically requires that the structure be routed, as set
`
`forth at column 10, line 14. Just like "object routing," of claim 4, the "routing"
`
`limitations of claim 1 play a significant part in carrying out the invention. Indeed,
`
`the "routing" limitations were among the reasons claim 72 (now claim 1) was
`
`allowed in view of the prior art, as discussed above.
`
`In its decision at page 20, the Board took the position that "claim 1 recites an
`
`abstract concept without limiting the transactional data structure," and that
`
`therefore the Board was "persuaded that Petitioner has demonstrated that it is more
`
`likely than not that claim 1 recites unpatentable subject matter under 35 USC §
`
`101." Patent Owner respectfully disagrees. While "data structure" of claim 1 may
`
`be slightly different from the "object" of claim 4, it is a “physical” software
`
`structure just like the “object” of claim 4. (See the discussion of the definitions of
`
`“object” and “data structure” in § IV, below, which is instructive on this point.)
`
`The data structure is routed in claim 1, just like the object is routed in claim 4.
`
`                                                            
`5 As noted in § IV, below, the reasonable construction of the term “data structure”
`
`is, in fact “a type of object.”
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`Again, even substituting the Board’s construction of "a routed transactional data
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`structure," the claim still requires routing of that data structure.
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`Claim 1 includes important recitations, including the transferring of the funds
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`accomplished through the use of "a routed transactional data structure"; the use of
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`a data structure that is "complete and non-deferred"; and that the routing of the data
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`structure must occur "in response to the subsequent signals." There is no doubt that
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`these specific recitations "play a significant part in permitting the claimed method
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`to be performed," and in distinguishing from the prior art.
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`There is no doubt that claim 1, with these limitations, recites much more than an
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`abstract concept. Far from an abstract concept, the claimed method calls for the
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`performance of a web transaction - not in general or in the abstract - but using a
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`transactional data structure that is (1) routed, (2) complete and (3) non-deferred
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`[using a data structure that facilitates switching a user who selects a transactional
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`program to a service provider program that provides immediate processing]; far
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`from an abstract concept, the claimed method calls for the performance of a Web
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`transaction - not in general or in the abstract - but specifically from a Web
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`application in a network that runs atop the World Wide Web, i.e., a network that
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`does not involve underlying network communication services. The claimed
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`method therefore cannot preempt the abstract idea of web transactions. It passes
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`muster under § 101.
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`It is believed that the only way the Board could have arrived at its conclusion
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`regarding claim 1was to ignore the foregoing and perhaps other specific recitations
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`in claim 1. (Indeed, as already noted, Petitioner did not even mention the
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`foregoing critical limitations in its discussion of this issue.) Patent Owner
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`respectfully submits that this was improper under very clear Federal Circuit
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`precedent. “Claims must be ‘interpreted with an eye toward giving effect to all
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`terms in the claim.’ Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir.
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`2006) (underscoring added).” “Generally, ‘[a]ll the limitations of a claim must be
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`considered meaningful.’ Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562
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`(Fed. Cir. 1991) (citing Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d
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`1528, 1532–33 (Fed. Cir. 1987)) (underscoring added).
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`This is particularly true in the context of an analysis under § 101. As set forth in
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`CLS Bank Intern. v. Alice Corp. Pty. Ltd., 685 F. 3d 1341 (Fed. Cir. 2012):
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`“Any claim can be stripped down, or simplified, removing all of its concrete
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`limitations, until at its core, something that could be characterized as an abstract
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`idea is revealed. But nothing in the Supreme Court's precedent, nor in ours,
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`allows a court to go hunting for abstractions by ignoring the concrete, palpable,
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`tangible, and otherwise not abstract invention the patentee actually claims. It is
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`fundamentally improper to paraphrase a claim in overly simplistic generalities
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`in assessing whether the claim falls under the limited "abstract ideas" exception
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`to patent eligibility under 35 U.S.C. § 101. Patent eligibility must be evaluated
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`based on what the claims recite, not merely on the ideas upon which they are
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`premised. In assessing patent eligibility, a court must consider the asserted
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`claim as a whole.”
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`Id. at 1351-52. It is respectfully submitted that the Board erred in removing the
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`concrete limitations of claim 1, such as the routed data structures, or the point of
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`service application running on – and only on – a particular OSI model layer, layer
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`7, (see ‘158:5:13-17) over the Web, until, at its core, only something that could be
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`characterized as an abstract idea remained. Patent Owner respectfully requests that
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`the Board judge patentability under § 101 based on what the claims specifically
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`recite, not merely on the ideas upon which they are premised. It is believed that
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`when the Board evaluates claim 1 in this manner, it will readily conclude that it
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`passes muster under § 101 with flying colors. And, of course, all claims that
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`depend from claim 1 do as well.
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`IV. The Claims of the ‘158 Patent and their Construction
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`In its Decision, the Board construed the following language: "Web application,"
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`"service network atop the World Wide Web," "Web user input device," "utilizing a
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`routed transactional data structure that is both complete and non-deferred," "the
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`routing occurring in response to the subsequent signals," "object routing,"
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`"distributed online service information bases," “virtual information store" and
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`(Board’s Decision to Institute in CBM2013-00013 at p. 19. “See also IPR2013-
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`00194”) "point-of-service application." Patent Owner will address those
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`constructions in order. See Expert Opinions from Bardash and Easttom. (Exhs.
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`2010, 2017)
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`A. Web application
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`PTAB’s construction:
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` “a software program, that can be accessed by an internet user”
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`Patent Owner’s construction:
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`“an application that is a Web client in a Web browser.”
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`In its preliminary response to Petitioner's second request for a CBM review of the
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`‘158 patent, CBM2014–00013, Patent Owner asserted a construction of "web
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`application" to be "an application on the World Wide Web." Although this
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`construction is believed to be sufficient with regard to the issues presented with
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`respect to the ‘158 patent, it has become clear that a complete construction of "web
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`application" requires consideration of the issues presented in the companion cases
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`– IPR2013-00194 and IPR2013-00195, and for consistency, Patent Owner presents
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`such further construction herein.
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`“Web application” is a term that is used in the specification and claims that has a
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`well-defined meaning in the art, namely “an application that is a Web client in a
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`Web browser.” This is confirmed by many experts in the field, as reflected in
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`Wikipedia (http://en.wikipedia.org/wiki/Web_application) and
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`the article by
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`Daniel Nations on “Web Applications - What
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`is a Web Application”
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`(http://webtrends.about.com/od/webapplications/a/web_application.htm),  attached
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`as Exhibits 2018 and 2019, which have defined a Web application as follows:
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`“