`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
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`New York, NY 10028
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`Tel: (650) 812-3400
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`Tel: (212) 988-1076
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`Fax: (650) 812-3444
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`Fax: (646) 619-4161
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`
`
`
`
`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 CORRECTED 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
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`CASE CBM2013-00013
`Patent 8,037,158
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`Table of Contents
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`I.
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`Introduction ..................................................................................................... 1
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`II. Objections to Grounds for Eligibility for Covered Business Method
`
`Patent Review ................................................................................................. 1
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`III. Patent Owner’s Response to 35 U.S.C. § 101 Issues ................................... 12
`
`IV. The Claims of the ‘158 Patent and their Construction ................................. 17
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`A. Web application .................................................................................. 18
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`B.
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`Service network atop the World Wide Web ...................................... 24
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`C. Web user input device ........................................................................ 27
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`D. Utilizing a routed transactional data structure that is both
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`complete and non-deferred ................................................................ 28
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`The routing occurring in response to the subsequent signals............. 37
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`Object Routing ................................................................................... 38
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`E.
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`F.
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`G. Distributed on-line service information bases .................................... 42
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`H. Virtual Information Store ................................................................... 42
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`I.
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`Point Of Service Application ............................................................. 44
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`V. Grounds Under Section 103 ......................................................................... 57
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`i
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`A. Obviousness in General ...................................................................... 57
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`B.
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`The Prior Art, Alone Or In Combination, Does Not Include
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`Elements ............................................................................................. 57
`
`Of Claims 1-3 And 11, As Properly Construed. ........................................... 57
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`C. Hindsight Combination of Lawlor and Computerworld .................... 63
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`VI. Claims 1 – 6 and 11 Are Not Indefinite. ...................................................... 65
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`VII. Conclusion .................................................................................................... 68
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`CERTIFICATION OF SERVICE (37 CFR 42.6(e), 42.105(a)) ............................ 70
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`ii
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`TABLE OF AUTHORITIES
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`
`
`Cases
`
`American Piledriving Equipment, Inc. v. Geoquip, Inc., 637 F.3d 1324, 1331 (Fed.
`
`Cir. 2011) .............................................................................................................. 29
`
`Bicon, 441 F.3d at 950 ............................................................................................. 43
`
`Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) ......................... 16
`
`CLS Bank Intern. v. Alice Corp. Pty. Ltd., 685 F. 3d 1341 (Fed. Cir. 2012) .......... 16
`
`Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1532–33 (Fed.
`
`Cir. 1987) .............................................................................................................. 16
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) ............... 29
`
`Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir.
`
`1998) ..................................................................................................................... 29
`
`Renishaw, 158 F.3d at 1248 ..................................................................................... 39
`
`U.S. Surgical Corp., 103 F.3d at 1568 .............................................................. 34, 39
`
`Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562 (Fed. Cir. 1991 ................. 16
`
`
`
`iii
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`Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562 (Fed. Cir. 1991) ................ 16
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`CASE CBM2013-00013
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`Statutes
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`§ 42.301(a) ................................................................................................................. 9
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`35 U.S.C. § 101 ........................................................................................................ 12
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`35 U.S.C. § 103 ........................................................................................................ iv
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`http://www.uspto.gov/web/patents/classification/uspc705/sched705.pdf ............... 11
`
`Regulations
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`77 Fed. Reg. 48734 at 48739 ................................................................................... 10
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`
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`iv
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`CORRECTED LIST OF EXHIBITS
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`
`
`PREVIOUS
`EXHIBIT
`NO(s)
`
`CORRECTED
`EXHIBIT NO.
`PURSUANT
`TO ORDER
`TO
`CORRECT
`PAPERS OF
`02/03/2014
`PI-NET 2001 PI-NET 2001
`
`PI-NET 2003 PI-NET 2003
`
`PI-NET 2004 PI-NET 2004
`
`PI-NET 2005 PI-NET 2005
`
`Complaint for Declaratory Judgment of Patent Non-
`Infringement; Demand for Jury Trial No. CV13-
`1248 EDL (N.D. Cal)
`PI-NET 2002 PI-NET 2002 Motion to Dismiss Pursuant to Fed. R. Civ. P.
`12(b)(1), Or In The Alternative, For More Definite
`Statement Pursuant to Fed. R. Civ. P. 12(e) No.
`CV13-1248 EDL (N.D. Cal)
`SAP’s Opposition to Pi-Net’s Motion to Dismiss No.
`CV13-1248 EDL (N.D. Cal)
`Stipulation and Order Vacating Case Management
`Conference and Rescheduling Hearing for Motion to
`Dismiss No. CV13-1248 EDL (N.D. Cal)
`Plaintiff Pi-Net International, Inc.’s Answering Brief
`in Opposition to Defendants’ Motion for Partial
`Summary Judgment of Indefiniteness C.A. No. 12-
`355-RGA
`PI-NET 2006 PI-NET 2006 Maria Aapan, Five Key Questions About Retail
`Banking’s Future, American Banker (Mar. 12, 2013,
`1:49 PM ET)
`http://www.americanbanker.com/issues/178_49/five-
`big-questions-for-the-future-of-retail-banking-
`1057441-1.html?pg=2
`Provisional Patent Application (Serial No.
`
`PI-NET 2007 PI-NET 2007
`
`
`
`v
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`
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`
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`PI-NET 2008 PI-NET 2008
`PI-NET 2009 PI-NET 2009
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`CASE CBM2013-00013
`Patent 8,037,158
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`60/006634).
`Prosecution History for U.S. Patent No. 5,778,178
`Excerpts From Prosecution History of U.S. Patent
`No. 8,037,158, Previously Submitted (C.A. No. 12-
`355-RGA)
`PI-NET 2010 PI-NET 2010 Declaration of Michael Bardash Previously
`Submitted (C.A. No. 12-355-RGA)
`PI-NET 2011 PI-NET 2011 U.S. Patent No. 5,778,178
`PI-NET 2012 PI-NET 2012
`(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
`(http://en.wikipedia.org/wiki/Data_structure)
`http://www.webopedia.com/DidYouKnow/Internet/
`2002/Web_vs_Internet.asp
`Removed
`(http://en.wikipedia.org/wiki/Web_application)
`(previously filed).
`“Web Applications - What is a Web Application”
`(http://webtrends.about.com/od/webapplications/a/
`web_application.htm) (previously filed).
`Prosecution History of Parent 8,108,492 Patent
`‘158 Prosecution History, Amendment of December
`27, 2010 at page 11 and the whole document
`(previously filed).
`
`PI-NET 2013 PI-NET 2013
`
`PI-NET 2014 PI-NET 2014
`PI-NET 2015 PI-NET 2015
`PI-NET 2016 PI-NET 2016
`
`PI-NET 2017 PI-NET 2017
`PI-NET 2018 PI-NET 2018
`
`PI-NET 2019 PI-NET 2019
`
`PI-NET 2020 PI-NET 2020
`PI-NET 2021
`Exhibit 1002
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`vi
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`Patent Owner’s Response to the Petition Under 37 C.F.R. 42.120
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`I.
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`Introduction
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`On March 22, 2013, Petitioner, SAP America, Inc. ("Petitioner") requested that the
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`Board initiate a covered business method patent review to review claims 1 – 6, and
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`11 of U.S. Patent 8,037,158 ("the ‘158 Patent"). In its Decision of September 19,
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`2013 (“Decision”), the Board instituted a covered business method patent review
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`of claims 1 – 3 and 11 "as unpatentable under 35 U.S.C. § 101 and 35 U.S.C. § 103
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`and based on Petitioner’s challenges to claims 1 – 6 and 11 under 35 USC § 112
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`(b).”
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`Pursuant to 37 C. F. R. §§ 42.120 and 42.300(a), the following will set forth the
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`response of Pi-Net International, Inc. (“Patent Owner”), to the petition, addressing
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`those grounds for unpatentability not already denied by the Board.
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`II. Objections to Grounds for Eligibility for Covered Business Method
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`Patent Review
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`The ‘158 patent is not available for review because it does not meet the threshold
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`requirements for a CBM Review. None of the Pi-Net Patents are business method
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`patents within the jurisdictional limits of the AIA statute. Petitioner has not
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`demonstrated the applicability of CBM Review. The claims of the ‘158 Patent are
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`1
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`directed to technology and not to business methods. Patent Owner respectfully
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`Patent 8,037,158
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`submits that no CBMR should be instituted by the PTAB.
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`Claim 1 is reproduced below, showing in brackets the constructions of certain
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`terms by the Board in the Decision:1
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`1. A method for performing a real time Web transaction from a Web application [a
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`software program that can be accessed by an internet user] over a digital network
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`atop the Web, the method comprising:
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`providing a Web page for display on a computer system coupled to an input
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`device;
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`providing a point-of-service application as a selection within the Web page,
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`wherein the point-of-service application provides access to both a
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`checking and savings account, the point-of-service application operating
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`in a service network atop the World Wide Web [a network on which
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`services other than underlying network communication services are
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`provided over the internet];
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`1 Patent Owner suggests certain changes be made to these claim constructions, as
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`discussed in § IV, below, but such suggested changes do not change the following
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`analysis.
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`2
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`accepting a first signal from the Web user input device to select the point-of-
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`service application;
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`accepting subsequent signals from the Web user input device; and
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`transferring funds from the checking account to the savings account in real-
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`time utilizing a routed transactional data structure that is both complete
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`and non-deferred [using a data structure that facilitates switching a user
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`who selects a transactional program to a service provider program that
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`provides immediate processing], in addition to being specific to the
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`point-of-service application, the routing occurring in response to the
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`subsequent signals.
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`As set forth in Rule 42.301 (b), the following must be considered in determining
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`whether claimed subject matter is for a “technological invention":
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`whether the claimed subject matter as a whole recites a technological feature
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`that is novel and nonobvious over the prior art and solves a technical
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`problem using a technical solution.
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`This definition of a "technological invention" could not fit claim 1 more perfectly,
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`for several reasons. First, during the prosecution of the ‘158 patent, the prior art
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`was distinguished specifically based upon several of the foregoing technological
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`distinctions, which have been underlined in claim 1, above. As noted during the
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`3
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`prosecution history of the ‘158 patent (in the amendment that lead to the allowance
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`of the ‘158 patent), the above technical features distinguished the claimed
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`invention from the prior art as follows:
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`“Web transactions from Point-of-Service Web applications
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`from a Web page, as in the Applicant’s claims. Taking into
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`account the Examiner’s objections, Applicant respectfully
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`modified Claims 1-5, 7-13, 15-17, 53, 55-59, 72, 74-75, 78-79
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`and 83-85, so as to distinguish between mere Web browsing as
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`a Web transaction as in Bettencourt versus Web transactions
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`from Point-of-Service (see in the priority chain of this patent
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`application the parent U.S. Patent No. 5,778,178:6:45-46; Fig.
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`5C) Web applications (see 5,778,178:2:42) across a service
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`network (see 5,778,178:5:51-53) atop the Web, utilizing
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`object routing (5,778,178:6:23-32;7:46-9:39) or routing of a
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`transactional data structure (see 5,778,178:8:35; Fig. 5D)
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`specific to a Web application (see 5,778,178:2:42) across the
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`Web, as
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`in Applicant’s patent application. Applicant
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`respectfully notes that “content” in mere Web browsing is
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`distinguished from Web applications or online services (See
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`parent Patent 5,778,178:1:63-64) atop the Web and has
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`4
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`modified the claims appropriately. These modifications to the
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`claims, as amended, should clarify and should distinguish the
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`claims
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`in Applicant’s current patent application
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`from
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`DeBettencourt and overcome
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`the Examiner’s objections.
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`Applicant respectfully requests the Examiner to issue the
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`patent, as the claims are currently in condition for allowance.”
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`Amendment of December 27, 2010 [Pi-Net 2021 hereto] at page 11 (emphasis
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`added).
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`Thus, claim 72, which became independent claim 1 of ‘158 patent, was specifically
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`distinguished from the prior art based on the technical features set forth in the
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`claim.
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`Second, the subject matter of claim 1 "as a whole," recites at least the following
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`technological features, which solve technological problems, using technological
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`solutions:
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`• Technological claim limitations: A method for performing a real time Web
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`transaction from a Web application [a software program that can be
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`accessed by an internet user] over a digital network atop the Web; the point-
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`of-service application operating in a service network atop the World Wide
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`5
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`Web [a network on which services other than underlying network
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`communication services are provided over the internet]
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`o Technological features/solution: performing a Web transaction - not in
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`general - but specifically from a Web application in a network that
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`runs atop the World Wide Web, i.e., a network that does not involve
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`underlying network communication services.
`o This solves the “technological problem,” as stated in the subject ‘158
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`and parent patent specifications at ‘158:5:30-51; Fig. 5D and U.S.
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`Patent No. 5,778,178 (‘178) at 178:5:31-53, in particular, “…If user
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`100 is a Web user, however, there is no current mechanism for
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`performing a robust, real-time transaction with the bank, as illustrated
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`in FIG. 4A. CGI scripts provide only limited two-way capabilities, as
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`described above. Thus, due to this lack of a robust mechanism by
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`which real-time Web transactions can be performed, the bank is
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`unable to be a true “Web merchant,” namely a merchant capable of
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`providing complete transactional services on the Web.
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`According to one embodiment of the present invention, as illustrated
`
`in FIG. 4B, each merchant that desires to be a Web merchant can
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`provide real-time transactional capabilities to users who desire to
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`6
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`access the merchants' services via the Web. This embodiment includes
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`a service network running on top of a facilities network, namely the
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`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
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`their POSvc application access to checking and savings accounts, user
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`100 will be able to perform real-time transactions against his checking
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`and savings accounts. Thus, if user 100 moves $500 from his
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`checking account into his savings account, the transaction will be
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`performed in real-time, in the same manner the transaction would
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`have been performed by a live teller at the bank or an ATM machine.
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`Therefore, unlike his prior access to his account, user 100 now has the
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`capability to do more than browse his bank account. The ability to
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`perform these types of robust, real-time transactions from a Web
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`client is a significant aspect of the present invention.” (‘158:7:1-14)
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`• Technological claim limitations: Utilizing a routed transactional data
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`structure that is both complete and non-deferred [using a data structure that
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`facilitates switching a user who selects a transactional program to a service
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`7
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`provider program that provides immediate processing]; the routing
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`occurring in response to subsequent signals.
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`o Technological features/solution: performing the web transaction - not
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`in general - but using a transactional data structure that is (1) routed,
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`(2) complete and (3) non-deferred [using a data structure that
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`facilitates switching a user who selects a transactional program to a
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`service provider program that provides immediate processing]; the
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`routing2 occurs in response to input from the web user.
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`o This solves the “technological problem,” as stated in the subject ‘158
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`and parent patent specifications at ‘158:5:30-51; 5:60-65; 6:11-15;
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`6:24-32; 8:29-37; 1:22-2:37; 7:10-14 and U.S. Patent No.
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`5,778,178:5:31-53; 5:58-61; 6:8-12; 6:21-29; 1:22-2:31; 7:13-17 and
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`8:23-31.
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`The existence of the foregoing technological features/solutions – which
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`specifically were relied upon for patentability in view of the prior art – clearly
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`2 Even incorporating the Board’s construction of a “routed data structure” into the
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`claim, the claim so construed still explicitly requires the routing of a data structure.
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`‘158 patent, col. 10, line 14.
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`8
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`removes the subject matter set forth in claim 1 from the definition of a "covered
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`business method patent" in § 42.301(a).
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`Although claim 1 is broader than claim 4 – which the Board determined complied
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`with 35 U.S.C. § 101 – claim 1 is no different in kind than claim 4. Just like claim
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`4, which does not cover all practical applications of web transactions, and thus
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`recites a technical solution - object routing - claim 1 does not cover all practical
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`methods of web transactions. It only covers those transactions that employ the
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`technological solutions as set forth above, including the routing of a data structure.
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`The Board found that the "object routing" limitation of claim 4 "meaningfully
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`limit[ed] the claimed method for performing a real time Web transaction."
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`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
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`solution. But that same limitation, although in slightly different language – "routed
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`transactional data structure" and "routing occurring in response to the subsequent
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`signals" is explicitly set forth in claim 1, and accordingly, the same rationale
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`should apply to claim 1 as it applies to claim 4. There is no principled distinction
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`between the technological solutions of “object routing” and “data structure
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`9
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`
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`routing.”3 And, as mentioned, this specific, technical limitation was the basis for
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`distinguishing claim 1 (originally claim 72) from the prior art.
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`Further, in addition to the above, the fact that claim 1 of the ‘158 patent should not
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`be subject to CBM review is further supported by the Definitions Of Covered
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`Business Method Patent And Technological Invention, 77 Fed. Reg. 48734 at
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`48739, which, although not determinative, states in part:
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`Accordingly, patents subject to covered business method patent review are
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`anticipated to be typically classifiable in class 705.
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`Class 705 is defined as follows:
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`“This is the generic class for apparatus and corresponding methods for
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`performing data processing operations, in which there is a significant change
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`in the data or for performing calculation operations wherein the apparatus or
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`method is uniquely designed for or utilized in the practice, administration, or
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`management of an enterprise, or in the processing of financial data.”
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`3 As noted in § IV, below, the reasonable construction of the term “data structure”
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`is, in fact “a type of object.”
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`10
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`This class also provides for apparatus and corresponding methods for
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`performing data processing or calculating operations in which a charge for
`
`goods or services is determined.
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`* * * *
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`http://www.uspto.gov/web/patents/classification/uspc705/sched705.pdf
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`The ‘158 patent, however, was classified in class 709, which is “Electrical
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`Computers And Digital Processing Systems: Multicomputer Data Transferring”
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`(http://www.uspto.gov/web/patents/classification/uspc709/defs709.htm)
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`(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
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`are routed for the purpose of performing business transactions should not affect the
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`basic fact that a technological solution is claimed.
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`There is still additional evidence that the invention of claim 1 was viewed by the
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`USPTO as being directed to a technological innovation in the prosecution history
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`of the ‘158 patent. On October 19, 2009, the USPTO required restriction between
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`five groups of claims, including the claims that ultimately became the claims of the
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`‘158 patent. The examiner stated, with regard to all of the groups:
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`4 In fact the field of search did not even include class 705.
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`11
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`“Because these inventions are distinct for the reasons given
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`above and have acquired a separate status in the technological
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`complex art, examination of all inventions would impose
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`serious burden to the examiner. Accordingly, restriction for
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`examination purposes as indicated is proper.”
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`Restriction requirement of October 19, 2009 (attached as PI-NET 2009), 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
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`patent as requested by Petitioner.
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`III. Patent Owner’s Response to 35 U.S.C. § 101 Issues
`
`
`Before addressing the elements of claim 1, it is important to note that the Board
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`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
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`decision, the Board properly referred to clear and specific reasons why claims 4-6
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`12
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`were not subject to such review. In particular, the Board referred to the fact that
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`claim 4 recited the use of "object routing." The Board specifically noted that
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`"object routing" "is a specific technique that plays a significant part in carrying out
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`the invention recited in claim 4." Id., p. 21. Thus, the Board was able to conclude
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`that claim 4 was both statutory under § 101 and not subject to review.
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`Claim 1 passes muster under § 101 for the same reasons as claim 4. The Board’s
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`decision with regard to claims 1-3 and 11 is respectfully believed to be incorrect.
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`And Petitioner's analysis of claim 1 is in error, because it ignores critical language
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`in claim 1, in direct violation of clear Federal Circuit precedents.
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`For example, in discussing claim 1, at pages 19 – 23, of its petition, Petitioner
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`completely ignores critical claim language which establishes, beyond dispute, the
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`statutory nature of the claim 1. Petitioner completely ignores the fact that claim 1
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`requires that transactions be accomplished through the routing of transactional data
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`structures. In fact, Petitioner's analysis of claim 1 does not even mention the words
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`"routing," "data structure," "a service network atop the World Wide Web," or the
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`like. Although the routing of transactional “data structures” limitation in claim 1
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`may be slightly different from the "object routing" limitation of claim 4, it is no
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`different in kind from that limitation, which the Board has already determined to
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`be statutory subject matter.5 Even including the Board’s construction of "a routed
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`data structure," claim 1 still specifically requires that the structure be routed, as set
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`forth at column 10, line 14. Just like "object routing," of claim 4, the "routing"
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`limitations of claim 1 play a significant part in carrying out the invention. Indeed,
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`the "routing" limitations were among the reasons claim 72 (now claim 1) was
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`allowed in view of the prior art, as discussed above.
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`In its decision at page 20, the Board took the position that "claim 1 recites an
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`abstract concept without limiting the transactional data structure," and that
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`therefore the Board was "persuaded that Petitioner has demonstrated that it is more
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`likely than not that claim 1 recites unpatentable subject matter under 35 USC §
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`101." Patent Owner respectfully disagrees. While "data structure" of claim 1 may
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`be slightly different from the "object" of claim 4, it is a “physical” software
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`structure just like the “object” of claim 4. (See the discussion of the definitions of
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`“object” and “data structure” in § IV, below, which is instructive on this point.)
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`The data structure is routed in claim 1, just like the object is routed in claim 4.
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`5 As noted in § IV, below, the reasonable construction of the term “data structure”
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`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.
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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 clea