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
`
`_____________________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`CORRECTED RESPONSE TO PETITION
`
`
`
`

`

`
`
`
`TABLE OF CONTENTS
`
`CBM2013-00013
`Patent 8,037,158
`
`TABLE OF AUTHORITIES ................................................................................... iii
`
`LIST OF EXHIBITS ................................................................................................ iv
`
`I. 
`
`II. 
`
`Introduction ...................................................................................................... 1 
`
`Argument ......................................................................................................... 1 
`
`A. 
`
`PO’s alternative constructions should not be adopted. ......................... 1 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`8. 
`
`“Web Application” ...................................................................... 1 
`
`“service network atop the World Wide Web” ............................ 3 
`
`“Web user input device” ............................................................. 4 
`
`“utilizing a routed transactional data structure that is both
`complete and non-deferred” ........................................................ 4 
`
`“object routing” ........................................................................... 6 
`
`“individual networked objects” ................................................... 7 
`
`“virtual information store” .......................................................... 8 
`
`“POSvc application” ................................................................... 8 
`
`B. 
`
`Claims 1-3 and 11 are unpatentable under 35 U.S.C. § 101. ................ 9 
`
`1. 
`
`2. 
`
`Claims 1-3 and 11 are abstract .................................................... 9 
`
`PI-NET’s contention that SAP and the Board ignored
`steps that “play a significant part in permitting the
`claimed method to be performed” is erroneous. ....................... 10 
`
`C. 
`
`Under the proper constructions, the challenged claims of the
`’158 patent are unpatentable. .............................................................. 11 
`
`1. 
`
`Lawlor in view of Computerworld teaches “utilizing a
`routed transactional data structure that is both complete
`and non-deferred” and a “web application.” ............................. 11 
`
`
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`2. 
`
`CBM2013-00013
`Patent 8,037,158
`
`SFCU in view of Electronic Banking teaches “utilizing a
`routed transactional data structure that is both complete
`and non-deferred” and a “web application.” ............................. 14 
`
`D. 
`
`Claims 1-6 and 11 are indefinite. ........................................................ 15 
`
`III.  Conclusion ..................................................................................................... 15 
`
`
`
`
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`- ii -
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`CBM2013-00013
`Patent 8,037,158
`
`TABLE OF AUTHORITIES
`
`Cases 
`Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc.,
`555 F.3d 984, 993 (Fed.Cir.2009) ………………………………………………………...13
`
`Perfect Web Techs. v. Info USA, Inc.,
`(Fed. Cir. 2009) …………………………………………………………………………...13
`
`
`Wyers v. Master Lock Co.,
`616 F.3d at 1240 (Fed. Cir. 2010)……………………………………………………...13
`
`
`Rules 
`37 C.F.R.§42.6(a)(3)………………………………………………………..……....8
`
`
`Other Authorities 
`77 Fed. Reg. 157 (August 14, 2012) ……………………………………………..10
`
`
`
`
`- iii -
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`

`

`
`
`SAP
`
`Exhibit No.
`
`SAP 1001
`
`
`SAP 1002
`
`SAP 1003
`
`
`SAP 1004
`
`
`SAP 1005
`
`
`SAP 1006
`
`
`SAP 1007
`
`
`
`
`SAP 1010
`
`
`SAP 1011
`
`
`SAP 1012
`
`
`
`
`
`LIST OF EXHIBITS
`
`CBM2013-00013
`Patent 8,037,158
`
`Document Description
`
`U.S. Patent No. 8,0137,158 to Arunachalam (filed Oct. 30,
`2007; issued Oct. 11, 2011) (“the ’158 patent”).
`
`Prosecution History of U.S. Patent No. 8,037,158
`
`Declaration of Dr. Marvin Sirbu (including Curriculum Vitae of
`Dr. Sirbu, attached as Appendix A; “Requirements for Internet
`Hosts—Communication Layers” by Braden as Appendix B;
`and, “Stanford Federal Credit Union Pioneers Online Financial
`Services” published by Business Wire as Appendix C).
`
`Lipis, A. H. et al., “Electronic Banking,” The Stock Market, 4th
`Edition, John Wiley & Sons, New York, 1985, 227 pages.
`
`Stanford Federal Credit Union Pioneers Online Financial
`Services
`
`U.S. Patent No. 5,220,501 to Lawlor et al. (filed Mar. 15, 1984;
`issued Mar. 3, 1987).
`
`Computerworld, June 26, 1995
`
`Currently Filed
`
`Declaration of Dr. Marvin Sirbu in Support of Petitioner’s
`Reply to Patent Owner’s Corrected Response to Petition.
`
`Patent Owner’s Corrected Response in proceeding IPR2013-
`00194 filed Feb. 5, 2014, Paper No. 34
`
`PI-Net v. JP Morgan Chase Joint Claim Construction Chart,
`Case 1:12-cv-00356-RGA
`
`- iv -
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`

`
`I.
`
`Introduction
`
`
`
`CBM2013-00013
`Patent 8,037,158
`
`The Board, in granting the instant covered business method review, found
`
`that Petitioner, SAP, has presented a compelling case for finding the challenged
`
`claims (claims 1-6 and 11) of the ’158 patent unpatentable. In response to the
`
`Board’s well-reasoned decision, Patent Owner (“PO”) provides a lengthy,
`
`confusing response unsupported by expert testimony or extrinsic evidence and
`
`premised on improper claim constructions and erroneous interpretations of the
`
`applied prior art. PO furthermore fails to provide any support to refute a finding
`
`that claims 1-6 and 11 are non-statutory and indefinite.
`
`II. Argument
`A.
`PO’s alternative constructions should not be adopted.
`Recognizing the weakness in its position, PO premises its Response solely
`
`on overly narrow and unsupported constructions of eight terms: “Web application,”
`
`“service network atop the World Wide Web,” “Web user input device,” “utilizing a
`
`routed transactional data structure that is both complete and non-deferred,” “object
`
`routing,” “individual networked objects,” “virtual information store,” and “POSvc
`
`application.”
`
` The Board should reject PO’s constructions because PO’s
`
`constructions are inconsistent with the specification, import limitations into the
`
`claims, and introduce further ambiguity into the claims.
`
`1.
`
`“Web Application”
`
`- 1 -
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`CBM2013-00013
`Patent 8,037,158
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`PO urges the Board to reconsider its construction of this term and instead
`
`adopt PO’s construction – “an application that is a Web client in a Web browser.”
`
`The Board should reject PO’s construction because it is contradictory to the
`
`specification. Nowhere does the specification describe that “a Web client [can be]
`
`in a Web browser.” To the contrary, the specification states that “[w]eb browsers
`
`are software interfaces that run on Web clients.” (SAP 1001, ’158 patent, 1:31-32.)
`
`And in a related proceeding, PO proposed a construction of this term that is
`
`broader than the construction presented in this proceeding. (See SAP 1012, p. 8.)
`
`In its Response, PO merely argues without any support from the
`
`specification or any expert testimony that the Board’s construction of this term is
`
`improper. PO relies on two extrinsic sources that do not support its position. First,
`
`PO quotes Wikipedia for the proposition that a “web application” is “any
`
`application that uses a web browser as a client.” (Response, Paper 33, p. 19.)
`
`Second, PO quotes an article that states that a “client” is an application into which
`
`a user enters information and that “the client runs in a web browser.” (Paper 33, p.
`
`19.) From these two quotes, PO asserts that a web application is “an application
`
`that runs as a Web client in a Web browser.” (Paper 33, p. 20.) However, neither of
`
`these quotes supports a “web application” as being a client. To the contrary, the
`
`first quote defines a web application in relation to the particular type of client it
`
`serves. And the second quote merely states that instead of the entire web browser
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`- 2 -
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`CBM2013-00013
`Patent 8,037,158
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`serving as the client, the client “runs in a web browser.” PO’s citations to the
`
`specification and the prosecution history of the ’158. Patent also fail to define a
`
`“web application” and instead relate to a point-of-service (“POSvc”) application.
`
`(See Paper 33, pp. 20-21.) However, as already pointed out by the Board, claim 1
`
`recites offering one or more Web applications as point-of-service applications and
`
`this suggests that “web application” encompasses more than point-of-service
`
`applications. (See Paper 15, pp. 13-14.) Finally, PO, without merit, criticizes the
`
`Board’s definition of “web application,” i.e., a software program that can be
`
`accessed by an Internet user, because this construction allegedly encompasses an
`
`Internet-accessible database. (Paper 33, p. 23.) But PO has not provided any
`
`evidence that a “database” is a software application , and thus encompassed by the
`
`Board’s construction. Applications that manage “Internet-accessible databases”
`
`are software applications, but the database itself is a collection of data. (SAP 1010,
`
`Sirbu Dec., ¶ 23.)
`
`“service network atop the World Wide Web”
`
`2.
`PO asks the Board to further narrow its construction by requiring (1) that the
`
`network runs “within the application layer of the OSI model” and (2) that the
`
`provided services “are provided over the World Wide Web.” PO’s proposed
`
`construction improperly imports limitations into the claims. Nothing in the ’158
`
`patent requires the “service network” to be limited to “run[] within the application
`
`- 3 -
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`CBM2013-00013
`Patent 8,037,158
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`layer of the OSI model.” (SAP 1010, ¶ 24.) Further, the addition of “on which the
`
`services are provided over the World Wide Web” is contrary to the specification of
`
`the ’158 patent, which mentions “service network” three times: (1) “a service
`
`network running on top of a facilities network, namely the Internet, the Web or
`
`email networks.” (’158 patent, 5:59-61); (2) “Five components interact to provide
`
`this service network functionality, namely an exchange..” (Id. at 6:1-4); and (3)
`
`“Exchange 501 creates and allows for the management (or distributed control) of a
`
`service network, operating within the boundaries of an IP-based facilities
`
`network.” (Id. at 6:30-33.)
`
`“Web user input device”
`
`3.
`PO asks the Board to modify its construction to mean “the same input device
`
`as that coupled to the computer system on which the Web page is displayed.”
`
`(Paper 33, pp. 27.) However, PO’s construction is improperly limiting in a manner
`
`unsupported by
`
`the specification or
`
`the claim
`
`language. PO’s proposed
`
`construction attempts to limit the input device to a particular display, i.e., the one
`
`on which the web page is displayed. However, the claim and specification does not
`
`limit the input device in such a manner. (SAP 1010, ¶ 26.)
`
`4.
`
`“utilizing a routed transactional data structure that is both
`complete and non-deferred”
`
`PO asks the Board to modify is construction to mean “using a type of
`
`transaction object that is routed and which contains the information necessary for a
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`- 4 -
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`CBM2013-00013
`Patent 8,037,158
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`complete, real-time transaction.” (Paper 33, pp. 29-36.) PO proposes that each of
`
`the following terms should be construed separately: (1) routed, (2) data structure,
`
`(3) complete, and (4) non-deferred. (See id.) PO’s proposed modified construction
`
`is unsupported by the claims or the specification, and the Board’s construction
`
`should stand.
`
`Regarding the term “routed,” PO alleges that “the claim phrase speaks of
`
`routing ‘a data structure’ not a user.” (Paper 33, p. 30.) However, claim 1 explicitly
`
`recites “utilizing a routed transactional data structure” and does not recite the
`
`actual routing of the data structure. (SAP 1001, 10:11-12; SAP 1010, ¶ 28.) In fact,
`
`PO’s arguments relating to routing a data structure is evidence that only through
`
`amending the claims can the claim mean what the PO asserts. A person of ordinary
`
`skill in the art (“POSA”), would have understood that the routed data structure is
`
`utilized to facilitate the process of transferring funds from a checking account to a
`
`savings account. (Id.) The access to the accounts is provided by the point-of
`
`service application selected by accepting a signal from the web user input device,
`
`and any routing that takes place, is in response to subsequent signals from the web
`
`user input device. (Id.)
`
`PO alleges that the term “data structure” should mean “a type of object” (See
`
`Paper 33, p. 32.) However, claim 1 makes no reference to an object and does not
`
`specify any form of data structure. PO bases its position on col. 8, lines 27-29 of
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`- 5 -
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`CBM2013-00013
`Patent 8,037,158
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`the ’158 patent. (See Paper 33, p. 32.) However, this excerpt merely states that
`
`each type of object may have a data structure. There is no support for the data
`
`structure being the actual object. (SAP 1010, ¶¶ 29-30.) Further, the additional
`
`excerpts relied upon by PO only support the notion that an object may be a type of
`
`transactional data structure. (See Paper 33, pp. 32-33.) Additionally, the Wikipedia
`
`definition cited by PO clearly states that records are among the simplest data
`
`structures, indicating that there are multiple types of data structures. (See Paper 33,
`
`p. 33.)
`
`PO argues that “complete” should mean “contains the information necessary
`
`for the transaction”, and “non-deferred” should mean “the opposite of deferred” or
`
`“real-time.” (Paper 33, p. 35.) However, there is simply no support within the ’158
`
`patent that limits these terms to the PO’s proposed definitions. (SAP 1010, ¶ 31.)
`
`“object routing”
`
`5.
`PO asks the Board to further narrow its construction by requiring “the
`
`routing of individual networked objects from a selected transactional application
`
`on a Web page to the processing provided by the service provider.” (Paper 33, pp.
`
`38-40.) PO argues that “the plain language of the claim refers to “object routing”
`
`not “user routing” (Paper 33, p. 38.) PO’s position is incorrect.
`
`Placing the word “object” before “routing” supports the plain language
`
`meaning of using objects to route, per the Board’s construction. PO could have
`
`- 6 -
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`CBM2013-00013
`Patent 8,037,158
`
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`written the claim using the term “routing objects” but chose not do so.
`
`Furthermore, PO argues that “object routing” refers to the routing of objects from a
`
`“selected transactional application on a Web page to the processing provided by
`
`the service provider.” (Paper 33, pp. 38–39.) PO cites to the following portions of
`
`the ’158 Patent: 7:1–14, 2:50–52, and 2:42–48, but none of these cites discusses
`
`routing from a selected transactional application on a Web page. (See Paper 33, p.
`
`40.) Instead, these portions describe object routing that occurs using the World
`
`Wide Web. (SAP 1010, ¶ 32.)
`
`“individual networked objects”
`
`6.
`PO introduces a construction for “individual networked objects” to mean
`
`“the information entries and attributes in a DOLSIB.” (Paper 33, pp. 41-42.)
`
`However, the ’158 Patent makes clear that the use of a DOLSIB in routing objects
`
`is merely one of a number of different embodiments, reciting, “One embodiment
`
`of the present invention utilizes TMP and distributed on-line service information
`
`bases (DOLSIBs) to perform object routing. Alternatively . . .” (SAP 1001, 7:61–
`
`65; SAP 1010, ¶ 33, emphasis added.) In addition, PO alleges that the term is
`
`explicitly defined at col, 8, lines 1-3 of the ’158 patent, which states “the
`
`networked object identity identifies the information entries and attributes in the
`
`DOLSIB as individual networked objects.” However, this portion of the ’158
`
`Patent describes a “networked object identity,” not “individual networked objects.”
`
`- 7 -
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`

`
`
`
`“virtual information store”
`
`7.
`PO asks the Board to further narrow its construction by requiring that the
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`CBM2013-00013
`Patent 8,037,158
`
`information store be “transient” and “temporarily created.” (Paper 33, pp. 42-44.)
`
`While the specification states that a virtual information store is created (see SAP
`
`1001, 2:52-54), there is no support for the creation of the virtual information store
`
`being transient and temporary (SAP 1010, ¶ 35.) Additionally, PO’s argument that
`
`the virtual information store is not “real” is incorrect. (See Paper 33, p. 43.) A
`
`POSA, would have clearly understood that the virtual information store that is
`
`recited in claim 6 is indeed “real,” since it is used when transferring funds. (SAP
`
`1010, ¶ 35.)
`
`“POSvc application”
`
`8.
`PO refers the Board to an 8+ page argument in its Response filed in case no.
`
`IPR2013-00194 (“’194 Response”). This amounts to an improper attempt to
`
`incorporate arguments by reference to bypass the page limits for a response. 37
`
`C.F.R. § 42.6(a)(3). Thus, the Board should limit PO’s arguments for this term to
`
`what was presented in the Response.
`
`Unclear as to what this term, a term “coined by the inventor,” actually means
`
`in the context of the ‘158 patent, PO presents two alternate constructions. Both
`
`PO’s constructions should be rejected. The first construction improperly imports
`
`limitations from the specification into the claims and was rejected by the Board as
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`- 8 -
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`CBM2013-00013
`Patent 8,037,158
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`unsupported in the Board’s Institution Decision. (SAP 1010, ¶¶ 36-38.) The
`
`second construction similarly seeks to incorporate the “Web” into the construction
`
`of POSvc application arguing that “it is clear from the claim as a whole, and from
`
`the specification, . . . that the user of the POSvc application is a Web user.” (Paper
`
`No. 36, p. 47, emphasis in original.) Because nothing in the ‘158 patent requires
`
`the incorporation of the “Web” in the construction of “POSvc application” (see
`
`SAP 1010, ¶ 38), PO’s second construction should also be rejected.
`
`B. Claims 1-3 and 11 are unpatentable under 35 U.S.C. § 101.
`PO alleges that claims 1-3 and 11 are not abstract. The basis of PO’s
`
`allegations are flawed claim construction arguments and an erroneous allegation
`
`that the Board ignored steps of claim 1 that play a significant part in permitting the
`
`claimed method to be performed.
`
`Claims 1-3 and 11 are abstract
`
`1.
`PO alleges that the abstract idea of claim 1 (i.e. performing fund transfers
`
`from a checking account to a savings account) is patentable because of the claim
`
`term “routed transactional data structure.” (See Paper 33, pp. 13-14.) However, as
`
`discussed above in Section II.D, PO’s proposed construction for “routed
`
`transactional data structure” is flawed, because claim 1 never requires the actual
`
`routing of the data structure. Therefore, the Board’s construction of the claim term
`
`should be maintained. As determined by the Board, the proper construction of
`
`- 9 -
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`CBM2013-00013
`Patent 8,037,158
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`“utilizing a routed data structure that is both complete and non-deferred” means
`
`“using a data structure that facilitates switching a user who selects a transactional
`
`application
`
`to a
`
`service provider program
`
`that provides
`
`immediate
`
`processing.”(Paper 15, p. 16, emphasis added.) It is clear under the Board’s
`
`construction that claim 1 does not require the routing of transactional data
`
`structures, as alleged by PO and thus claim 1 recites an activity that is purely
`
`financial in nature and abstract.
`
`2.
`
`PI-NET’s contention that SAP and the Board ignored steps
`that “play a significant part in permitting the claimed method
`to be performed” is erroneous.
`
`Claim 1 is also not directed to a technological invention, as it does not recite
`
`a technical solution to a technical problem. Legislative history counsels towards a
`
`narrow definition of “technical” problems and solutions. 77 Fed. Reg. 157, p.
`
`48735-48736 or 48753. Simply reciting technological features or combining
`
`known technology in a new way for processing is not sufficient.
`
`PO alleges that “claim 1 includes important recitations which the Board
`
`ignored. (See Paper 33, pp. 15-16.) However, the Board did not err nor remove any
`
`concrete limitations from claim 1, as alleged by PO. Consistent with the Board’s
`
`ruling in the Decision, claim 1 recites an abstract concept without limiting the
`
`transactional data structure. (Paper 15, p. 20.) As noted by the Board, “in order for
`
`the addition of a machine to impose a meaningful limit on the scope of a [method]
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`- 10 -
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`CBM2013-00013
`Patent 8,037,158
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`claim, it must play a significant part in permitting the claimed method to be
`
`performed, rather than function solely as an obvious mechanism for permitting a
`
`solution to be achieved more quickly.” (Paper 15, p. 20.) Here, using the Board’s
`
`constructions, it is clear that claim 1 does not include any limitations which
`
`remove it from the abstract realm. Claim 1 covers an abstract idea with scant,
`
`indirect references to well-known components, avoids specifying any particular
`
`technological implementation, and is nonetheless directly applicable to financial
`
`activity. In fact the claims are directed to solving financial problems not solving
`
`technological problems. The only references in the challenged claims to anything
`
`remotely technological are indirect references to well-known routine technology,
`
`namely, a web page, a computer system, input device, network, and data structure.
`
`Indeed, there is nothing technological at all in claim 1.
`
`C. Under the proper constructions, the challenged claims of the ’158
`patent are unpatentable.
`
`PO’s arguments over Lawlor in view of Computerworld and SFCU in view
`
`of Electronic Banking are premised solely on its improper claim constructions.
`
`When considered under the proper constructions, claims 1-3 and 11 are obvious
`
`over Lawlor and Computerworld, as well as over SFCU and Electronic Banking.
`
`1.
`
`Lawlor in view of Computerworld teaches “utilizing a routed
`transactional data structure that is both complete and non-
`deferred” and a “web application.”
`
`- 11 -
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`CBM2013-00013
`Patent 8,037,158
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`PO does not respond to the Board’s conclusion that, under the Board’s
`
`construction, Lawlor in view of Computerworld teaches “utilizing a routed
`
`transactional data structure that is both complete and non-deferred.” As discussed
`
`above, PO’s proposed construction should not be adopted. Lawlor discloses that
`
`once the user has input the desired source and destination accounts “a transfer
`
`confirmation message is displayed on the terminal screen after entry of the
`
`necessary information indicating that the transfer has been accepted by the central
`
`processor.” (SAP 1006, Lawlor, 34:60-63.) Lawlor further discloses a “routing
`
`module 80C” which “permits efficient routing of transactions to the appropriate
`
`module for servicing.” (Id. at 20:27-28.) Thus, Lawlor’s routing module 80C is a
`
`structure that facilitates switching a user who selects a transactional application to
`
`a service provider program that provides immediate processing.
`
`PO also does not respond to the Board’s conclusion that, under the Board’s
`
`construction, Lawlor in view of Computerworld teaches a “web application.” As
`
`discussed above, PO’s proposed construction should not be adopted.
`
`Computerworld teaches accessing of banking over the Internet using Netscape
`
`Navigator, which is analogous to a software program that can be accessed by an
`
`Internet user. (See SAP 1007, Computerworld, p. 1.) Lawlor discloses providing a
`
`POSvc application (i.e., the transfer funds option) as a selection within a page. As
`
`discussed above a POSvc application is one example of a web application. (See
`
`- 12 -
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`CBM2013-00013
`Patent 8,037,158
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`SAP 1006, 32:67-33:2; 41:35-40; SAP 1010, ¶ 41.) Computerworld also describes
`
`that similar services were performed using Web pages, such as the Security First
`
`Network Bank Web page. (SAP 1007, p. 1; SAP 1010, ¶ 41.)
`
`PO further argues, without any expert testimony, that Lawlor and
`
`Computerworld would not be obvious to combine. (See Paper 33, pp. 57, 63-65.)
`
`SAP’s expert, Dr. Sirbu, confirms that nothing within the teachings of Lawlor or
`
`Computerworld would preclude a POSA from combining the teachings of the
`
`references when using logic, judgment, and common sense. (SAP 1010, ¶ 42.)
`
`It is well settled that “the references themselves need not provide a “specific
`
`hint or suggestion” of the alteration needed to arrive at the claimed invention; the
`
`analysis “may include recourse to logic, judgment, and common sense available to
`
`a person of ordinary skill that do not necessarily require explication in any
`
`reference or expert opinion.” Perfect Web Techs. v. Info USA, Inc., 587 F.3d 1324,
`
`1329 (Fed. Cir. 2009). In particular, the Court emphasizes that “where all of the
`
`limitations of the patent were present in the prior art references, and the invention
`
`was addressed to a ‘known problem,’ ‘ KSR ... compels [a determination of]
`
`obviousness.’” Wyers v. Master Lock Co., 616 F.3d at 1240 (citing Ball Aerosol &
`
`Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed.Cir.2009)).
`
`Here, all of the limitations of claim 1 are present in the prior references of Lawlor
`
`- 13 -
`
`

`

`CBM2013-00013
`Patent 8,037,158
`
`
`in view of Computerworld, and the ’158 patent addressed the known problem of
`
`transferring funds between accounts.
`
`2.
`
`SFCU in view of Electronic Banking teaches “utilizing a
`routed transactional data structure that is both complete and
`non-deferred” and a “web application.”
`
`PO does not respond to the Board’s conclusion that, under the Board’s
`
`construction, SFCU in view of Electronic Banking teaches “utilizing a routed
`
`transactional data structure that is both complete and non-deferred.” As discussed
`
`above, PO’s proposed construction should not be adopted. Electronic Banking
`
`teaches “utilizing a routed transactional data structure that is complete and non-
`
`deferred.” Electronic Banking states, “when the customer indicates to the network
`
`controller that he or she wishes to engage in home banking (by pushing the button
`
`on the keypad…the network controller sets up a direct connection between the
`
`financial switch (FS) bank and the customer.” (Id. at p. 140.) Additionally,
`
`Electronic Banking discloses that when a transaction is performed, the Fed Wire
`
`network that manages the transfer of funds, immediately affects an institution’s
`
`available funds. (See Id. at 174.)
`
`PO also does not respond to the Board’s conclusion that, under the Board’s
`
`construction, SFCU in view of Electronic Banking teaches a “web application.” As
`
`discussed above, PO’s proposed construction should not be adopted. Electronic
`
`Banking states that “when a customer initially accesses the system…the customer
`
`- 14 -
`
`

`

`CBM2013-00013
`Patent 8,037,158
`
`
`may access the many different services that the network controller offers by
`
`selecting from among categories listed on an index menu. One of these categories
`
`is the bank’s home banking service…” (SAP 1004, Electronic Banking, p. 140.)
`
`Electronic Banking’s home banking application is the recited “web application.”
`
`(SAP 1010, ¶¶ 44-45.)
`
`D. Claims 1-6 and 11 are indefinite.
`As discussed above, there is no support for PO’s construction of the claim
`
`term “routed transactional data structure” and the construction is overly narrow.
`
`Since the term “routed transactional data structure” is not a term used in the art and
`
`the specification does not provide a definition, a POSA could not meaningfully
`
`determine the precise scope of the claim term. (SAP 1010, ¶ 46.)
`
`III. Conclusion
`For the reasons in the Petition and above, claims 1-6 and 11 of the ’158
`
`patent should be canceled.
`
`Respectfully submitted,
`
`Date: April 20, 2014
`
`
`
`
`
`
`
`
`/Lori A. Gordon/
`By:
` Lori A. Gordon (Reg. No. 50,633)
`Michael Q. Lee (Reg. No. 35, 239)
`Joseph M. Beauchamp (Reg. No. 46,544)
`Attorneys for SAP
`
`
`
`
`
`- 15 -
`
`

`

`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e))
`
`
`
`The undersigned hereby certifies that the above-captioned “PETITIONER’S
`
`REPLY TO PATENT OWNER’S CORRECTED RESPONSE TO PETITION”
`
`was served in its entirety on April 20, 2014, upon the following parties via email:
`
`Tam Thanh Pham, Reg. No. 50565
`LEWIS ROCA ROTHGERBER LLP
`2440 W. El Camino Real, Sixth Floor
`Mountain View, CA 94040
`Tel.: 650.391.1386
`Fax: 650.687.8492
`tpham@lrrlaw.com
`Pi-Net_PTAB@lrrlaw.com
`
`Lauren May Eaton, Reg. No. 68214
`LEWIS ROCA ROTHGERBER LLP
`2440 W. El Camino Real, Sixth Floor
`Mountain View, CA 94040
`Tel.: 650.391.1395
`Fax: 650.687.8492
`Pi-Net_PTAB@lrrlaw.com
`
`Colby B. Springer, pro hac vice
`LEWIS ROCA ROTHGERBER LLP
`2440 W. El Camino Real, Sixth Floor
`Mountain View, CA 94040
`Tel.: 650.391.1394
`cspringer@lrrlaw.com
`Pi-Net_PTAB@lrrlaw.com
`
`
`Date: __April 20, 2014_______
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`Bryan Boyle, Reg. No. 52644
`CARR & FERRELL LLP
`120 Constitution Drive
`Menlo Park, CA 94025
`Tel.: 650.812.3465
`Fax: 650.812.3444
`bboyle@carrferrell.com
`
`Lawrence B. Goodwin, Reg. No. 29642
`LAWRENCE B. GOODWIN, P.C.
`525 East 86th Street, Suite 5H
`New York, NY 10028
`Tel.: 212.988.1076
`Fax: 646.619.4161
`LawrenceGoodwinPC@gmail.com
`
`Gerald P. Dodson, Reg. No. 32787
`CARR&FERRELL LLP
`120 Constitution Drive
`Menlo Park, CA 94025
`Tel.: 650.812.3496
`Fax: 650.812.3444
`jdodson@carrferrell.com
`
`STERNE, KESSLER,
`GOLDSTEIN & FOX P.L.L.C.
`__/Lori A. Gordon/_____________
`Lori A. Gordon
`Registration No. 50,633
`Attorney for Petitioner
`
`