Trials@uspto.gov
`571-272-7822
`
`Paper No. 23
`Date Entered: October 15, 2013
`
`
`
`
`
`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
`DENYING REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`571-272-7822
`
`Paper No. 23
`Date Entered: October 15, 2013
`
`
`
`
`
`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
`DENYING REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`Case CBM2013-00013
`Patent 8,037,158
`
`
`
`
`BACKGROUND
`On September 19, 2013, the Board instituted a trial based on Petitioner’s
`challenges to claims 1-3 under 35 U.S.C. § 101, Petitioner’s challenges to
`claims 1-3 and 11 under 35 U.S.C. § 103 as obvious over the combination of U.S.
`Patent 5,220,501 (Exhibit 1006, “Lawlor”) and The Cyberbanks article (Exhibit
`1007, “Computerworld”) and obvious over the combination of a book entitled
`Electronic Banking (Exhibit 1004) and an article concerning the Stanford Federal
`Credit Union (Exhibit 1005, “SFCU”), and Petitioner’s challenge to claims 1-6 and
`11 under 35 U.S.C. § 112(b). Decision To Institute 35-36. The Board declined to
`institute a trial based on Petitioner’s challenges to claims 4-6 under 35 U.S.C.
`§ 101 and as obvious over the combination of Lawlor and Computerworld and
`obvious over the combination of Electronic Banking and SFCU. The Board also
`declined to institute a trial based on Petitioner’s challenges to claims 1-6 and 11 as
`obvious over the combination of Electronic Banking and Applicant’s Admitted
`Prior Art. On October 2, 2013, Petitioner requested rehearing of the Board’s
`decision not to institute a trial on claims 4-6 as obvious over the combination of
`Lawlor and Computerworld and the combination of Electronic Banking and SFCU.
`On October 10, 2013 Patent Owner filed an Opposition to Petitioner’s
`Motion for Rehearing. Paper No. 20. 37 C.F.R. § 42.71(d) does not provide for a
`party to file an opposition to a Request For Rehearing without first obtaining
`authorization from the Board. Patent Owner did not seek the Board’s authorization
`to file its opposition and, therefore, Patent Owner’s opposition has not been
`considered. See, CBM2012-00001 Order Authorizing Additional Briefing, Paper
`No. 73.
`
`2
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`Case CBM2013-00013
`Patent 8,037,158
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`Claim 4 - Object Routing
`With respect to claim 4, Petitioner contends that the Board misapprehended
`or overlooked Lawlor’s purported disclosure of object routing, as that term has
`been construed. Rehearing Req. 2-4. Petitioner further contends that Electronic
`Banking also discloses object routing. Rehearing Req. 8-9.
`Citing paragraph 26 of the declaration of Dr. Marvin Sirbu, Ex.1003, the
`Petition contends that “‘object routing’ should be construed as encompassing
`actions or data that execute a user’s request, which may include sending an object
`from one point to another” and that “[a]n object in the context of object routing
`could include a message.” Pet. 18. In the Decision To Institute, the Board
`construed “‘object routing’ to mean the use of individual network objects to route a
`user from a selected transactional application to the processing provided by the
`service provider.” Decision To Institute, Paper No. 15, p. 17. The Petition does
`not discuss individualized network objects.
`In its Request For Rehearing, Petitioner cites a statement in the Decision To
`Institute that the routing module in Lawlor is a structure that facilitates switching a
`user who selects a transactional application to a service provider program that
`provides immediate processing. Rehearing Req. 3. The subject matter Petitioner
`cites from the Decision To Institute concerns the Board’s institution of a trial based
`on Petitioner’s challenge that Lawlor renders claim 1 obvious. The cited passage
`relates to claim 1’s recitation of “a routed transactional data structure.”1 The Board
`is not persuaded that Lawlor describes the object routing recited in claim 4,
`however.
`
`
`1 The Board also instituted a trial on Petitioner’s challenge that the term “routed
`transactional data structure” is indefinite. Decision To Institute, Paper No. 15,
`p. 34. Petitioner did not challenge the term “object routing” as indefinite.
`3
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`Case CBM2013-00013
`Patent 8,037,158
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`Petitioner’s arguments focus on facilitating the transmission of messages
`between computing entities and, at least in the case of Lawlor, the additional
`feature of converting internal system transactions information into a format that is
`compatible with the network. In the rehearing request, Petitioner contends that a
`pair of messages generated in Lawlor, i.e., a POS debit and a POS credit,
`constitutes networked objects that facilitate the routing of a user for the selected
`transactional application to the processing provided by the service provider.
`Rehearing Req. 3-5. Petitioner notes that Lawlor also describes an interface
`module that converts internal system transaction information, such as user and
`service provider accounts and transaction amounts, to a format that is compatible
`with the network, so that the computer system can interface with the interchange
`network. Pet. 37. It is not clear from the Petition or the rehearing request how the
`use of such standard messages constitutes the use of individualized network objects
`required for object routing. In particular, there is no discussion in the Petition or
`Rehearing Request of how the user is routed to the processing provided by the
`service provider.
`Petitioner takes a similar position with respect to the description of message
`transmission in Electronic Banking. The Request For Rehearing cites the
`argument in the Petition that when the customer selects banking, the network
`controller sets up a direct connection between the customer and the financial
`switch, the bank takes over the session management function, completely
`controlling the customer’s transaction, and the FRCS-80 transport network moves
`data from one district to another. Rehearing Req. 8-9. Although the Board
`instituted a trial on claim 1, which recites a routed transactional data structure,
`Decision To Institute 26, it remains unclear how Electronic Banking describes
`object routing.
`
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`4
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`Case CBM2013-00013
`Patent 8,037,158
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`We are not persuaded by Petitioner’s assertion that “in the context of object
`routing an object could include a message.” Pet. 18. The description of object
`routing in the ´158 Patent states that networked objects are each assigned an
`Internet address based on the node at which the networked object lies. Ex. 1001,
`col. 8, ll. 3-6. Thus, as described in the ´158 Patent, an object lies at a node and is
`not a message. A networked object is assigned an Internet address based on the
`Web server IP address, forming a branch from a node and a hierarchical tree
`structure through which the individual object is reachable. Id. at ll. 7-15. The
`disclosures in Lawlor and Electronic Banking of passing messages between
`computers, even in a standard format, do not describe a networked object residing
`at a node. Thus, we deny Petitioner’s request for rehearing on claim 4 on the basis
`that the references disclose object routing. Claim 5 depends from claim 4. We
`deny Petitioner’s Request For Rehearing on claim 5 for at least the reasons we
`deny rehearing on claim 4.
`Claim 6
`Petitioner contends that both Lawlor and Electronic Banking disclose the
`claimed virtual information store recited in claim 6, which depends from claim 1.
`The Board construed the claimed “‘virtual information’ store to mean an
`information store in which information entries and attributes are associated with a
`networked object identity.” Decision To Institute 17. The Board declined to
`institute a trial on claim 6 because neither Lawlor nor Electronic Banking describes
`databases with the characteristics of the claimed virtual information store.
`Decision To Institute 28, 32.
`Petitioner now contends that the databases disclosed by Lawlor have
`information entries and attributes associated with a networked object identity
`because they include account and destination bank descriptor information, which
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`Case CBM2013-00013
`Patent 8,037,158
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`are included as part of the networked object, e.g., the POS Message in Lawlor.
`Rehearing Req. 6-7. Petitioner also contends that the Wells Fargo Bank databases
`that allow customer inquiries using the Netscape browser, as disclosed in
`Computerworld, are optimized for networking. Id.at 7.
`Similarly, the Request For Rehearing contends that Electronic Banking
`discloses two databases for storing information, such as captured transactions and
`customer information that are associated with a networked identity, because they
`are used to determine the destination of the transaction and the proper account to
`apply the transaction. Id.at 10-11.
`The Petition does not mention a networked object identity. As discussed
`above, in the ´158 Patent, a networked object is assigned an Internet address based
`on the Web server IP address, forming a branch from a node and a hierarchical tree
`structure through which the individual object is reachable. Col. 8, ll. 7-15. While
`the databases disclosed in the references contain information that is useful in
`routing transactions between specific accounts among banks, it is not clear from
`the Petition or Request For Rehearing how any of the references discloses an
`information store in which information entries and attributes are associated with a
`networked object identity. Therefore, we deny Petitioner’s Request For Rehearing
`on its challenges to claim 6 based on the combination of Lawlor and
`Computerworld and the combination of Electronic Banking and SFCU.
`
`In consideration of the foregoing, it is hereby:
`ORDERED that the Request For Rehearing is DENIED.
`
`6
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`Case CBM2013-00013
`Patent 8,037,158
`
`
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`PETITIONER: (via electronic transmission)
`
`Michael Q. Lee
`Mlee-PTAB@skgf.com
`
`Lori A. Gordon
`Lgordon-PTAB@skgf.com
`
`PATENT OWNER: (via electronic transmission)
`
`Bryan Boyle
`bboyle@carrferrell.com
`
`Lawrence B. Goodwin
`LawrenceGoodwinPC@gmail.com
`
`Gerald Dodson
`jdodson@carrferrell.com
`
`
`
`
`
`
`
`
`7
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