Trials@uspto.gov Paper No. 15
`571-272-7822 Date Entered: September 19, 2013
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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
`____________
`
`
`
`
`Before, KARL D. EASTHOM, JONI Y. CHANG, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
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`
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`

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`Case CBM2013-00013
`Patent 8,037,158
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`BACKGROUND
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`Pursuant to 35 U.S.C. § 321 and § 18 of the America Invents Act (AIA),
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`SAP America, Inc. (“Petitioner”) requests that the Patent Trial and Appeal Board
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`initiate a Covered Business Method Patent Review to review claims 1-6, and 11
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`(“the challenged claims”) of U.S. Patent 8,037,158 (“the ´158 Patent”). We have
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`jurisdiction under 35 U.S.C. § 324. The standard for instituting a Covered
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`Business Method Review is the same as that for a Post-Grant Review. § 18(a)(1)
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`of the AIA. The standard for instituting Post-Grant Review is set forth in 35
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`U.S.C. § 324(a), which provides the following:
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`THRESHOLD – The Director may not authorize a post-grant review to be
`instituted unless the Director determines that the information presented in
`the petition filed under [35 U.S.C. §] 321, if such information is not
`rebutted, would demonstrate that it is more likely than not that at least 1 of
`the claims challenged in the petition is unpatentable.
`
` Petitioner contends that pursuant to 37 C.F.R. §§ 42.301 and 42.304(a), the
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`´158 Patent meets the definition of a covered business method patent and does not
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`qualify as a technological invention. (Pet. 5-8). Petitioner further contends that
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`claims 1-6, and 11 fail to comply with the patentable subject matter requirements
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`of 35 U.S.C. § 101 (Pet. 13-20), that the challenged claims are invalid under
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`35 U.S.C. § 103 (Pet. 24-61) and under 35 U.S.C. § 112(b). (Pet. 75-80).
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`We institute a covered business method patent review based on Petitioner’s
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`challenges to claims 1-3 and 11 as unpatentable under 35 U.S.C. § 101 and
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`35 U.S.C. § 103 and based on Petitioner’s challenges to claims 1-6 and 11 under
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`35 U.S.C. § 112(b).
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`
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`PENDING LITIGATION
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`A person may not file a petition for a Covered Business Method Patent
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`Review “unless the person or the person’s real party in interest or
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`privy has been sued for infringement of a patent or has been charged with
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`infringement under that patent.” (§18 (a)(1)(B) of the AIA). The ´158 Patent is
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`the subject of a number of cases pending in U.S. District Courts in Delaware, the
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`Central District of California, and the Northern District of California.
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`STANDING
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`Petitioner argues that it has standing to petition for covered business method
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`patent review because Patent Owner sued Petitioner’s customer, Citizens Financial
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`Group (“Citizens”), accusing Citizens of infringing claims 1-6 and 11 of the ´158
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`Patent in the U.S. District Court for the District of Delaware. Pet. 9. In addition,
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`Petitioner has sought declaratory judgment of non-infringement of the ´´158 patent
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`in a separate action filed by Petitioner in the U.S. District Court for the Northern
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`District of California (the declaratory judgment action).
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`Patent Owner argues that Petitioner does not have standing under 37 C.F.R.
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`§ 42.302, stating that SAP is not a privy of Citizens and that the Petitioner’s
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`standing to bring the declaratory action is in dispute. Prelim. Resp. 2-4.
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`“The core functions of the ‘real party-in interest’ and ‘privies’ requirement is
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`to assist members of the Board in identifying potential conflicts, and to assure
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`proper application of the statutory estoppel provisions. Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012). “The latter, in turn, seeks to
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`protect patent owners from harassment via successive petitions by the same or
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`related parties, to prevent parties from having a ‘‘second bite at the apple,’’ and to
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`protect the integrity of both the USPTO and Federal Courts by assuring that all
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`issues are promptly raised and vetted.” Id. “Whether a party who is not a named
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`participant in a given proceeding nonetheless constitutes a ‘real party-in interest’ or
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`‘privy’ to that proceeding is a highly fact-dependent question.” Id. “Such
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`questions will be handled by the Office on a case-by-case basis taking into
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`consideration how courts have viewed the terms ‘real party-in-interest’ and
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`‘privy.” Id.
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`The legislative history, which directly addresses the issue raised by the
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`Patent Owner in this case, supports Petitioner’s standing to petition for covered
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`business method patent review.1 At 157 Cong. Rec. S5432 (daily ed. Sept. 8,
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`2011), Senator Schumer explained that “privy” “effectively means customers of
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`the petitioner.” Senator Schumer stated as follows:
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`Section 18 of the America Invents Act, of which Senator
`Kyl and I were the authors, relates to business method
`patents. As the architect of this provision, I would like to
`make crystal clear the intent of its language. . . As
`originally adopted in the Senate, subsection (a)(1)(B)
`only allowed a party to file a section 18 petition if either
`that party or its real parties in interest had been sued or
`accused of infringement. In the House, this was
`expanded to also cover cases where a “privy” of the
`petitioner had been sued or accused of infringement. A
`“privy” is a party that has a direct relationship to the
`petitioner with respect to the allegedly infringing product
`or service. In this case, it effectively means customers of
`the petitioner. With the addition of the word “privy,” a
`company could seek a section 18 proceeding on the basis
`that customers of the petitioner had been sued for
`infringement.
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`Patent Owner does not dispute Petitioner’s assertion that the defendant in the
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`Delaware litigation, Citizens, is a customer of Petitioner. Petitioner also represents
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`1 Our decision is limited to this proceeding, which is brought under Section 18 of
`the AIA, and the facts of this case.
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`that Citizens has requested Petitioner indemnify Citizens for legal fees and losses.
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`Pet. 9. In view of the foregoing statements of legislative intent, as well as
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`Citizen’s request for indemnification by Petitioner, we are persuaded that
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`Petitioner has standing to bring the subject petition.
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`BACKGROUND AND RELATED PATENTS
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`The present Petition concerning the ´158 Patent is one of three filed by
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`Petitioner concerning related patents. U.S. Patent 8,108,492 (the ´492 Patent) is
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`the subject of a petition for an inter partes review in proceeding IPR2013-00194
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`and U.S. Patent 5,987,500 (the ´500 Patent) is the subject of a petition for inter
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`partes review in proceeding IPR2013-00195. The ´492 Patent, entitled “Web
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`Application Network Portal,”, the ´500 Patent, entitled “Value-Added Network
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`System for Enabling Real-Time, By-Directional Transactions on a Network,” (bold
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`font omitted) and the ´158 Patent, entitled “Multimedia Transactional Services,”
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`(collectively, “the Subject Patents”) share substantially the same specification, but
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`claim different subject matter.
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`The Subject Patents disclose “a method and apparatus for providing real-
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`time, two-way transactional capabilities on the Web.” ´492 Patent, Abstract. See
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`also, ´500 Patent, Abstract; ´158 Patent Abstract. The ´158 Patent discloses a
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`method for “enabling service management of the value-added network service, to
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`perform [Operations, Administration, Maintenance & Provisioning] (OAM&P)
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`functions on the services network.” ´158 Patent, Abstract, col. 8, ll. 56-67. The
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`claims recite a banking application based on a user’s selection of a point-of-
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`service application from a Web page. See id., claims 1-6.
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`The ´500 Patent discloses a value-added network switch, which includes a
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`system for switching to a transactional application that provides transactional
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`services managed by a value-added network service provider which keeps the
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`transaction flow captive, and performs the transactional services interactively and
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`in real-time, in response to a user specification from a network application, a
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`system for transmitting a transaction request from the transactional application and
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`a system for processing the transaction request. ´500 Patent, Abstract, claim 1.
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`The ´492 Patent also describes a method for enabling object routing that
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`involves creating a virtual information store containing information entries and
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`attributes associating each of the information entries and the attributes with an
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`object identity and assigning a unique network address to each of the objects
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`identified. The claims of the ´492 Patent generally recite a system and method in
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`which a Web server lists on a Web page one or more Web applications (each of
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`which can request a real-time Web transaction) as point-of-service applications; a
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`value-added network switch that enables the real-time Web transactions; a service
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`network that connects the Web server to a back-end transactional application; and
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`a computer that executes the back-end transactional application for processing the
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`transaction in real-time. See ´492 Patent, Abstract, claim 1.
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`THE ´492 PATENT
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`The ´492 Patent is illustrative of the disclosure in the Subject Patents.2 The
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`invention purports to facilitate real-time two-way transactions, as opposed to
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`deferred transactions, e.g., e-mail. ´492 Patent, col. 1, ll. 39-48. The invention
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`also purports to be an improvement over browse-only transactions, id., col. 1, ll.
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`49-64, and limited two-way services on the Web through Common Gateway
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`Interface (CGI) applications customized for particular types of applications or
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`services. Id., col. 1, l. 65-col. 2, l. 45.
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`2 The specification of the ´158 Patent is the same as that of the ´492 Patent. In this
`section of the decision only, column and lines references are those of the ´492
`Patent. Remaining column and lines references in this decision refer to the ´158
`Patent.
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`The ´492 Patent describes a service network running on top of the Internet,
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`having five interacting components: an exchange agent, an operator agent, a
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`management agent, a management manager, and a graphical user interface (GUI).
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`Id., col. 6, ll. 1-5.
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`As shown in Figure 8, a user connects to a Web server. Id., col. 9, ll. 25-26.
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`The Web server runs the exchange component. Id. Exchange 501 creates and
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`allows for the management or distributed control of the service network, operating
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`within the boundaries on an internet protocol (IP) facilities network. Id., col. 6, ll.
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`28-30.
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`A user connected to the Web server running the exchange component issues
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`a request for a transactional application. Id. col. 9, ll. 25-26. The Web server
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`receiving the user’s request to perform a real-time transaction hands the request
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`over to the exchange agent the Web server is running. Id., col. 6, ll. 8-11, col. 9. ll.
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`27-29. The exchange 501 includes a Web page 505 that uses a GUI to display a
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`list of point-of-service (POSvc) applications 510 accessible to the user by the
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`exchange. Id., col. 6, ll. 18-20, ll. 39-41, col. 9, ll. 28-30. The POSvc applications
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`are transactional applications that can execute the type of transaction the user is
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`interested in performing. Id., col. 6, ll. 22-23, ll. 41-44. Exchange 501 also
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`includes a switching component and an object routing component. Id., col. 6, ll.
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`20-22. When the user selects a POSvc application, the switching component in the
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`exchange switches the user to the selected POSvc application. Id., col. 9, ll. 32-
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`33. The object routing component executes the user’s request. Id., col. 9, ll. 34-
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`35. The exchange and a management agent thus perform the switching, object
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`routing, application and service management functions. Id., col. 6, ll. 30-38, col.
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`9, ll. 32-34.
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`The Exchange 501 and management agent together constitute a value-added
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`network (VAN) switch, which provides multi-protocol object routing via a
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`proprietary TransWebTM Management Protocol (TMP), depending upon the
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`services chosen. Id., col. 7, ll. 52-54, ll. 62-65; col. 8, ll. 41-42. In one
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`embodiment, TMP and distributed on-line service information data bases
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`(DOLSIBs) perform object routing. Id., col. 8, ll. 3-5, col. 9, ll. 34-37. In
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`DOLSIBs, which are virtual information stores optimized for networking,
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`information entries and attributes are associated with a networked object identity
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`that identifies the information entries and attributes in the DOLSIB as networked
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`objects. Id., col. 8, ll. 7-13. Each networked object is assigned an internet address
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`based on the IP address of the node at which the networked object resides. Id., col.
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`8, ll. 13-15. As a result, networked objects branch from a node in a hierarchical
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`tree structure that establishes the individual object as an “IP-reachable” node on
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`the internet, so that TMP can use this address to access the object from the
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`DOLSIB. Id., col. 8, ll. 16-26. “Each object in the DOLSIB has a name,” which is
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`“an administratively assigned object ID specifying an object type.” Id., col. 8, ll.
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`27-29. The object type, together with the object instance, uniquely identifies a
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`specific instantiation of the object, e.g., an instance of an object about car models,
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`and provides the user with specific information about a particular model. Id., col.
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`8, ll. 31-35. Each object in the DOLSIB also has a syntax, which defines the
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`abstract data structure corresponding to that object type, and an encoding that
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`defines “how the object is represented by the object type syntax while being
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`transmitted over the network.” Id., col. 8, ll. 36-39.
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`The VAN switch 520 has a layered architecture as shown in Fig. 7.
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`Boundary service 701 provides the interface between the VAN switch, the Internet
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`and the Web, and multi-media end user devices and the interface to an on-line
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`service provider. Id., col. 8, ll. 42-48. Switching service 702, which is an OSI
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`application layer switch, represents the core of the VAN switch. Id., col. 8, ll. 52-
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`54. “Interconnected application layer switches form the application network
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`backbone” and are described as a significant aspect of the Subject Patents. Id., col.
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`8, ll. 60-63. Switching service 702 routes user connections to remote VAN
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`switches and facilitates connectivity with the Internet (a public switched network)
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`and private networks, including back office networks, such as banking networks.
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`Id., col. 8, ll. 57-60. Management service 703 contains tools used by the end users
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`to manage network resources, including VAN switches, and provides applications
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`that perform OAM&P functions, such as “security management,” “fault
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`management,” “performance management,” and “billing management.” Id., col. 8,
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`l. 64-col. 9, l. 8. “[A]pplication service 704 contains application programs that
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`deliver customer services,” including POSvc applications for banking, multi-media
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`messaging, conferencing, financial services. Id., col. 9, ll. 9-14. Depending upon
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`the type of VAN service, the characteristics of the network elements will differ.
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`Id., col. 9, ll. 19-20.
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`
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`ILLUSTRATIVE CLAIM
`
`Independent claim 1 is illustrative:
`
`1. A method for performing a real time Web transaction from a Web
`application 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;
`accepting a first signal from the Web user input device to select the
`point-of-service application;
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`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, in addition to being specific to the
`point-of-service application, the routing occurring in response to
`the subsequent signals.
`
`
`
`Petitioner asserts the following challenges to the patentability of claims 1-6
`
`BASIS OF PETITION
`
`and 11:
`
`Claims 1-6 and 11 are unpatentable for failing to recite statutory subject
`
`matter under 35 U.S.C. § 101.
`
`The combination of Lawlor3 and Computerworld4 renders claims 1-6 and 11
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`unpatentable under 35 U.S.C. §103(a).
`
`The combination of Electronic Banking5 and Applicant’s Admitted Prior Art
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`(AAPA) renders claims 1-6 and 11 unpatentable under 35 U.S.C. §103(a).
`
`The combination of SFCU6 and Electronic Banking renders claims 1-6 and
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`11 unpatentable under 35 U.S.C. §103(a).
`
`Claims 1-6 and 11 are unpatentable under 35 U.S.C. § 112(b).
`
`
`
`CLAIM CONSTRUCTION
`
`The claim constructions proposed by Petitioner and Patent Owner are
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`summarized in the following Table.
`
`
`3 Lawlor et al. (“Lawlor”), U.S. Patent 5,220,501 issued Jun. 15, 1993.
`4 The Cyberbanks, Computerworld, ProQuest Telecommunications, pg. 80 (1995).
`5 Lipis, A.H. et al., Electronic Banking, The Stock Market, 4th Edition, John Wiley
`& Sons, New York (1985).
`6 www.thefreelibrary.com/_/print/PrintArticle.aspx?id=17104850, Stanford Federal
`Credit Union Pioneers Online Financial Services, 03/15/13.
`
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`CLAIM TERM/CLAIM
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`Web application/1-4, 11
`
`Service network atop the
`World Wide Web/1
`
`Web user input device/1
`
`PETITIONER’S
`PROPOSAL
`A Web application is
`defined broadly as
`encompassing at least, for
`example, a Web browser,
`Web server software, or
`CGI scripts. Sirbu Decl. ¶
`18. Pet. 13-14
`
`Service network atop the
`World Wide Web means a
`network (e.g., hardware
`and/or software) that
`provides a service
`between two or more
`computers over or
`involving the Web, for
`example involving Web
`client or Web server
`software. Sirbu Decl. ¶
`22; Pet. 15
`“[T]he previously recited
`‘computer system’
`coupled to an input
`device.” OR
`
`PATENT OWNER’S
`PROPOSAL7
`A POSvc Application is a
`Web application
`displayed on a Web page,
`corresponding to a back-
`end transactional
`application, and
`displaying an “object”
`data structure with
`attributes and information
`entries corresponding to
`the selected Web
`transaction request.
`Prelim. Resp. 25
`A service network atop
`the world Wide Web
`means an online service
`network running on top of
`a physical network such
`as the Web, Internet or
`email networks or an
`“online service network
`running on top of a
`facilities network
`such as the Web.” Prelim
`Resp. 59
`
`
`
`7Ex. 2010, the Declaration of Michael Bardash (Bardash Declaration), filed in the
`U.S. District Court for the District of Delaware, asserts claim constructions for
`certain terms. Patent Owner cites to the Bardash Declaration only once, i.e., at
`page 54 of the Preliminary Response, when arguing the claims are not indefinite.
`It is not clear whether Patent Owner is asserting the same constructions for all the
`terms in this proceeding as those proposed in the Bardash Declaration. We have
`reviewed and considered the statements in the Bardash Declaration.
`
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`Routed transactional data
`structure that is both
`complete and non-
`deferred/1
`
`indefinite under 35 U.S.C.
`§ 112(b) as lacking
`antecedent basis. Pet. 15-
`16
`“Complete” should be
`construed to be a data
`structure used to complete
`a transaction. (Sirbu Decl.
`¶ 24.), Pet. 16;
`“non-deferred”
`should be construed to
`describe any transaction
`or data structure that is
`processed immediately
`without any delay. Sirbu
`Decl. ¶ 25; Pet. 17
`
`Routing occurring in
`response to the
`subsequent signals/1
`
`Object routing/4
`
`
`
`Routing occurring in
`response to the
`subsequent signals means
`the transferring of funds
`occurring in response to
`the subsequent
`signals. OR indefinite
`under 35 U.S.C. § 112(b)
`as lacking antecedent
`basis. Pet. 17
`encompassing actions or
`data that execute a user’s
`request, which may
`
`12
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`“[R]outed transactional
`data structure refers to
`object routing.” Prelim
`Resp. 57
`
`“[O]bject is an
`encapsulated whole with
`its information entries and
`attributes specific to a
`[POS] application . . .
`that gets routed as a
`‘complete,’ encapsulated
`whole in ‘object routing’
`in a ‘non-deferred,’ ‘real-
`time’ Web transaction.”
`Prelim. Resp. 58.
`
`Non-deferred is the
`opposite of deferred –
`what the ´158 patent calls
`“real-time.” Prelim Resp.
`58
`
`
`Object routing means
`communicating between a
`POSvc Application and a
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`Distributed on-line
`service information
`bases/5
`
`Virtual information
`store/6
`
`
`
`include sending an object
`from one point to another.
`An object in the context
`of object routing could
`include a message. Sirbu
`Decl. ¶26; Pet. 18
`
`Distributed on-line
`service information bases
`are any data store on or
`available over a
`network. Sirbu Decl.,
`¶ 27; Pet. 18
`A virtual information
`store is any data store
`that contains, for
`example, information
`entries and
`attributes. Sirbu Decl.
`¶ 28; Pet. 19
`
`back-end transactional
`application individual
`data structure with
`information entries and
`attributes (i.e.,
`objects) over the
`application layer of the
`OSI model. Prelim. Resp.
`24
`Should be construed with
`the meaning ascribed in
`the record. Prelim. Resp.
`24
`
`Should be construed with
`the meaning ascribed in
`the record. Prelim Resp.
`24
`
`Web application. Patent Owner’s proposed construction is not supported in
`
`the specification. Patent Owner cites Fig. 5D as demonstrating that the POSvc
`
`application incorporates the transactional data structure or “object.” Prelim. Resp.
`
`6, 25. The ´158 Patent states that “FIG. 5D illustrates a user selecting a bank
`
`POSvc application from the POSvc application list.” Ex. 1001, col. 3, ll. 20-21.
`
`The description of Fig. 5D at column 6, ll. 46-67 makes no mention of an “object.”
`
`Patent Owner cites the locations where the “point-of service” or POScv appears in
`
`the specification. Prelim. Resp. 25, 57. These references to a point-of-service
`
`application in the ´158 Patent do not describe an “object,” but instead describe an
`
`exchange 501 that performs “object routing” and an embodiment which performs
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`such object routing. See, id., col. 6, ll. 9-16, 30-35; col. 6, l. 42 - col. 7, l. 31; col.
`
`7, l. 61- col. 8, l.31; col. 9, ll. 1-27; Figs. 5B, 5C, 5D, 6A. The ´158 Patent does
`
`not describe a POSvc displaying an “object” data structure with attributes and
`
`information entries corresponding to the selected Web transaction request. The
`
`´158 Patent discloses an object routing embodiment in which a networked object
`
`identity identifies the information entries and attributes in distributed on-line
`
`service information bases as individualized network objects. Id., col. 7, l. 61- col.
`
`8, l. 7. However, this is not a description of a Web application.
`
`Petitioner’s proposed construction is overly broad because it encompasses
`
`more than an application and includes a browser.
`
`The ´158 patent discloses a system for switching to a transactional
`
`application in response to a user specification from a World Wide Web application,
`
`Ex. 1001, Abstract. The description of Figure 8 refers to a user connecting to a
`
`Web server running an exchange and then issuing a request for a transactional
`
`application. Id., col. 9, ll. 16-31. However, there is no definition of a “Web
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`application” in the ´158 Patent. Claim 1 of the ´492 Patent recites offering one or
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`more Web applications as point-of-service applications. Not only does this
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`recitation not define a Web application, it suggests that Web application
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`encompass more than point-or-service applications. We also note that we
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`construed the term “network application” in IPR2013-00195. See IPR2013-00195,
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`Paper No. 10, Decision to Institute, Claim Construction. The use of different terms
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`in the claims indicates the drafter intended a different meaning.
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` Therefore, we construe “Web application” to mean a software program,
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`that can be accessed by an internet user.
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`Service network atop the World Wide Web. Patent Owner proposes
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`alternative constructions, each of which attempts to distinguish a services network
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`from a facilities network. The ´158 Patent discloses that five components interact
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`to provide service network functionality, i.e., real-time transactional capabilities to
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`access a merchant’s services via the Web. Ex. 1001, col. 5, l. 45-col. 6, l. 7. The
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`service network operates within the boundaries of an IP-based facilities network,
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`namely the Internet, the Web, or e-mail networks. Id., col. 5, ll. 49-50; col. 6, ll.
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`23-24. Petitioner’s proposed construction, which appears to include the Web itself,
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`does not address the transactional nature of the claimed service network. In
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`IPR2013-00194, we construed “service network” to mean a network on which
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`services other than underlying network communication services are provided. See,
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`IPR2013-00194, Paper No.12, Decision To Institute, Claim Construction.
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`Therefore, we construe “service network running atop the World Wide Web” to
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`mean a network on which services other than underlying network communications
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`services are provide over the internet.
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`Web user input device. We construe “the Web user input device” to mean
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`the same input device as that coupled to the computer system that provides the
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`Web page for display, recited earlier in claim 1.
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`(Utilizing) a routed transactional data structure that is both complete and
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`non-deferred. Patent owner does not propose a construction for the entire term, but
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`cites to the prosecution history to describe arguments made concerning parts of the
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`term. Prelim. Resp. 53-59. Petitioner proposes constructions for “complete” and
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`“non-deferred.” Petitioner does not propose a construction of “a routed
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`transactional data structure.”8 The use of the term “non-deferred” in claim 1 of the
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`´158 Patent to describe a data structure is understood only in the context of the
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`remainder of the limitation, which recites “transferring funds” among accounts “in
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`8 Petitioner also challenges the claims as indefinite under 35 U.S.C. § 112(b) based
`on their use of the terms “routed transactional data structure,” “complete,” and
`“non-deferred.” Infra.
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`real time utilizing a routed transactional data structure.” In IPR2013-00194, we
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`construed “real time” as non-deferred. IPR2013-00194, Decision To Institute,
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`Paper No. 12, Claim Construction. In this context, non-deferred means processed
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`immediately. See Ex. 1001, col. 7, ll. 2-14, 30-41.
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`As previously noted, there is no support in the specification for Patent
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`Owner’s contention that the ´158 Patent identifies the transactional data structure
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`as the “object,” although Patent Owner cites to arguments related to this position in
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`the prosecution history. Prelim. Resp. 25, 57. See supra claim construction – Web
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`application. Instead, the ´158 Patent discloses multi-protocol object routing and in
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`one embodiment uses networked object identities. Ex. 1001, col. 7, l. 53- col. 8, l.
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`6.
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`The specification does not support Patent Owner’s contention that
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`“complete” refers to an encapsulated whole with its information entries and
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`attributes specific to a point-of-service application displayed on a Web page in a
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`real-time Web transaction that gets routed as a complete encapsulated whole in
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`“object routing” in a “non-deferred,” real-time Web transaction. Prelim. Resp. 58.
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`A “complete” routed transactional data structure provides the information to
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`accomplish the routing to perform switching.
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`Therefore, we construe “utilizing a routed data structure that is both
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`complete and non-deferred” to mean using a data structure that facilitates
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`switching a user who selects a transactional application to a service provider
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`program that provides immediate processing.
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`The routing occurring in response to the subsequent signals. We understand
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`“the routing” to be routing resulting from “utilizing a routed transactional data
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`structure” previously recited in claim 1. We understand “the subsequent signals”
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`to be the subsequent signals from the Web user input device recited in claim 1,
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`accepted after a first signal from the Web user input device to select the point-of-
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`service application.
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`Object Routing. As Patent Owner points out, Petitioner’s proposed
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`construction, which includes a message as an object in the context of object
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`routing, encompasses e-mail and does not recognize the specific meaning of object
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`routing as used in the ´158 Patent. Patent Owner’s proposed construction refers to
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`communicating between a POSvc application and “a back-end transactional
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`application individual data structure” with individual entries and attributes.
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`Prelim. Resp. 24. However, the ´158 Patent identifies point-of-service applications
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`as transactional applications. The ´158 Patent describes object routing as an
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`embodiment to accomplish switching between transactional point-of-service
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`applications and service provider processing using networked object identities. Ex.
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`1001, col. 6, ll. 11-16, 56-59, col. 8, ll. 1-15. The networked objects identify
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`information entries and attributes in a distributed on-line service information base
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`as individual networked objects.. Id. Therefore, we construe “object routing” to
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`mean the use of individual network objects to route a user from a selected
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`transactional application to the processing provided by the service provider.
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`Distributed on-line service information bases. Petitioner’s proposed
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`construction as any data store available over a network does not take into
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`consideration the description of that term in the ´158 Patent at column 7, line 65-66
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`through column 8, line 1. Therefore, we construe “distributed on-line service
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`information bases” to mean virtual information stores optimized for networking.
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`Virtual information store. In view of the disclosure in the ´158 Patent at
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`column 7, line 66 – column 8, l. 1, we construe “virtual information store” to mean
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`an information store in which information entries and attributes are associated
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`with a networked object identity.
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`THE ´158 PATENT IS NOT A PATENT FOR A TECHNOLOGICAL
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`INVENTION
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`A covered business method patent is “a patent that claims a method or
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`corresponding apparatus for performing data processing” or other operations used
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`in the practice, administration, or management of a financial product or service.
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`37 C.F.R. § 42.301(a). A covered business method patent “does not include
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`patents for technological inventions.” Id. A technological invention is determined
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`by considering whether the claimed subject matter as a whole recites a technical
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`feature that is novel and unobvious over the prior art, and solves a technical
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`problem using a technical solution. 37 C.