Trials@uspto.gov Paper No. 10 Paper 63
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`571-272-7822
`Date Entered: November 21, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
` SAP AMERICA, INC.,
`
`Petitioner
`v.
`
` LAKSHMI ARUNACHALAM,
`Patent Owner.
`____________
`
`Case CBM2013-00013
`Patent 8,037,158 B2
`____________
`
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`
`DECISION DENYING PATENT OWNER’S
`REQUEST FOR REHEARING OF FINAL WRITTEN DECISION
`
`37 C.F.R. § 42.71(d)(2)
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`

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`CBM2013-00013
`Patent 8,037,158 B2
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`
`Introduction
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`On October 17, 2014, Patent Owner filed a Request For Rehearing, Paper 62
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`(“Req. Reh’g.”), of the Final Written Decision entered on September 18, 2014,
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`Paper 61 (“Final Dec.”) ordering that claims 1–6 and 11 of U.S. Patent
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`8,037,158 B2 (“the ’158 Patent”) are unpatentable. The rehearing request states
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`that we did not appreciate the enormity of the problem the invention solved and the
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`complexity of the technical solution provided by the Patent Owner, challenges our
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`claim constructions and analysis of the prior art references, asserts that the
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`proceedings are unconstitutional, alleges that counsel for SAP, Inc. (“Petitioner”)
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`and its expert witness fraudulently misled the PTAB, and raises other issues. For
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`the reasons discussed herein, Patent Owner’s Request For Rehearing is denied.
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`POSvc application, Web application, VAN service, service network
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`Patent Owner first contends that we failed to appreciate the enormity of the
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`problem the invention solves and that in 1995 there were no point-of-service
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`(POSvc) applications displayed on a Web page or a Web browser, also called a
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`VAN service, or a value-added network service, or a VAN service 704. Req.
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`Reh’g. 2–3. Patent Owner challenges our construction on the basis that we missed
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`the disclosure that a POSvc application is a transactional application that must be
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`displayed on a Web page, Req. Reh’g 3–4, that we did not construe properly the
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`term “Web application,” Req. Reh’g. 4–7, and that we did not construe properly
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`the term “service network,” Req. Reh’g. 7–8. Patent Owner repeats many of the
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`arguments made in its request for rehearing of the Final Written Decision in
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`IPR2014-00194. Id. at 2–5. We extensively addressed those arguments in our
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`Decision Denying Patent Owner’s Request For Rehearing, SAP America, Inc. v.
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`Lakshmi Arunachalam, Case IPR2013-00194, slip op. at 1–9 (Paper 69)(PTAB
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`Nov. 21, 2014) (“the ’194 Rehearing Denial”). The ’158 Patent, which is the
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`CBM2013-00013
`Patent 8,037,158 B2
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`subject of this proceeding, shares the same specification as that of the patent that
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`was the subject of IPR2014-00194. Therefore, we adopt our analysis in the ’194
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`Rehearing Denial in this decision and conclude that Patent Owner has not
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`demonstrated that any matter was overlooked or misapprehended in our
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`construction of the terms Web application, POSvc application, VAN service, VAN
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`service provider, and service network. Id. at 2–9.
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`Utilizing a routed data structure that is both complete and non-deferred
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`We construed the term “utilizing a routed data structure that is both
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`complete and non-deferred” (“the utilizing limitation”) to mean using a data
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`structure that facilitates switching a user who selects a transactional application to
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`a service provider program that provides immediate processing. Final Dec. 10.
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`Patent Owner’s request for rehearing criticizes this construction, stating that
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`“jumping to obscenely technically incorrect conclusions is pathetic for innovation
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`in the USA, unduly killing patents of good inventions that have benefitted the
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`industry at large monumentally.” Req. Reh’g. 8–9.
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`The Corrected Patent Owner Response, Paper 36 (“PO Resp.”)1 proposed
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`that the utilizing limitation be construed to mean “using a type of transactional
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`object that is routed and which contains the information necessary for a complete,
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`real time transaction.” PO Resp. 28. The Patent Owner Response argued that a
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`data structure is a “type of object.” PO Resp. 32–33. Patent Owner also argued
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`that the term “routed” does not require construction, but that if the term were to be
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`construed, it would mean “the selective flow of data in the application layer of the
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`OSI model.” Id. at 34. As we noted in the Final Written Decision, the sole use of
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`the term “data structure” in the ’158 Patent specification states that a syntax of an
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`1 All further references in this Decision to Patent Owner Response are to the
`Corrected Patent Owner Response (Paper 36).
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`CBM2013-00013
`Patent 8,037,158 B2
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`object defines the abstract data structure corresponding to an object’s type, but
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`does not state that a data structure is an object and does not explain what it means
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`for an object to be routed or transactional. Final Dec. 10–11, citing Ex. 1001, col.
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`8, ll. 27–29. As a result, although we construed the utilizing limitation for
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`purposes of evaluating Petitioner’s challenges under 35 U.S.C. § 101 and §103, we
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`also concluded that the utilizing limitation is indefinite under the second paragraph
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`of 35 U.S.C. § 112. Id. at 11. The specification also states “Encoding of objects
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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.” Ex. 1001, col. 8, ll. 27–31. However, the
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`specification includes no further discussion of such encoding or how an object
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`would be represented while being transmitted over the network.
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`In the request for rehearing Patent Owner ties the construction of the
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`utilizing limitation to its newly proposed construction of POSvc, arguing that a
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`POSvc application should be construed as “a transactional application displayed on
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`a Web page or Web browser with the object identity with information entries and
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`attributes displayed on the Web page, with which the user interacts and transacts
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`from.” Req. Reh’g. 9. As Patent Owner did not propose this construction of
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`POSvc previously, PO Resp. 44, we could not have overlooked or misapprehended
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`this argument.
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`Patent Owner also argues that the object identity or object data structure has
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`attributes (characteristics of the object) and information entries (values of the
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`object), Req. Reh’g. 9. Referring to the NAME and PASSWORD, account number
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`and other elements in Fig. 5D as instantiations of an object, Patent Owner argues,
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`that “[t]hese attributes and entries are routed in the OSI application layer as a
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`structured whole over the service network on the Web from the POSvc application
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`displayed on the Web page. It is this structure or instantiated object that gets
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`CBM2013-00013
`Patent 8,037,158 B2
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`routed and becomes a networked object between the POSvc application and the
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`services of the Web merchant.” Id. at 10.
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`The ’158 Patent does not describe the elements of Fig. 5D as instantiations
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`of an object. The ’158 Patent describes Fig. 5D as “an example of a user selecting
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`a Bank POSvc application from the POSvc application list.” Ex. 1001, col. 3, ll.
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`20–21 (emphasis added). The ’158 Patent further states that
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` [i]f user 100 desires to perform a number of banking
`transactions, and selects the Bank application, a Bank
`POSvc application will be activated and presented to user
`100, as illustrated in FIG. 5D….Once Bank POSvc
`application 510 has been activated, user 100 will be able
`to connect to Bank services and utilize the application to
`perform banking transactions, thus accessing data from a
`host or data repository 575 in the Bank “Back Office.”
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`Id. at col. 6, ll. 46–60. (emphasis added).
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`Thus, in contrast to Patent Owner’s argument, the ’158 Patent does not state
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`that Fig. 5D shows routing of attributes and entries, but states only that Fig 5D
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`shows the user selecting a POSvc application that will connect the user to the bank
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`services to perform transactions and access data. Thus, our construction of the
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`utilizing limitation, i.e., using a data structure that facilitates switching a user who
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`selects a transactional application to a service provider program that provides
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`immediate processing, is supported by the specification.
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`Object routing
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`A related issue is Patent Owner’s contentions concerning “object routing.”
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`Claim 4 recites that “object routing is used to complete the transfer of funds in a
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`Web application.” We construed this term to mean the use of individual network
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`objects to route a user from a selected transactional application to the processing
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`provided by the service provider. Final Dec. 12–13. Our construction is
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`Patent 8,037,158 B2
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`consistent with the description of Fig. 5D in the ’158 Patent, which, as discussed
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`above, illustrates how a user selects a POSvc application and is connected to the
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`processing provided by the bank services to perform transactions and access data.
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` The Patent Owner Response proposed that “object routing” be construed to
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`mean “the routing of individual networked objects from a selected transactional
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`application on a Web page to the processing provided by the service provider.” PO
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`Resp. 39. Referring to column 7, lines 1–14, of the ’158 Patent, Patent Owner
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`cites the statement that “the ability to perform these types of robust, real-time
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`transactions from a Web client is a significant aspect of the invention.” Id. at 40.
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`In this sentence, however, “these types of transactions” refers to a Bank’s choice to
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`provide, as a service to its customers, a POSvc application that allows the customer
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`to transfer funds between checking and savings, rather than just browse the
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`accounts. Ex. 1001, col. 7, ll. 1–12. As previously noted, the preceding paragraph
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`of the ’158 Patent states that once the POSvc application is activated, the user is
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`able to connect to Bank services and utilize the application to perform banking
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`transactions. Id.at col. 6, ll. 56–67.
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`In the Patent Owner Response, and again in the Request for Rehearing,
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`Patent Owner argues that it is objects, not users, that are routed. Req. Reh’g. 11–
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`12. Our Final Written Decision states “The Specification appears to disclose
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`processing that transfers and retrieves information from various IP addresses, but it
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`is not clear that objects themselves are routed from one IP address to another.”
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`Final Dec. 12. Our Final Written Decision does not overlook or misapprehend
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`object routing as disclosed in the ’158 Patent.
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`The ’158 Patent states:
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` VAN switch 520 provides multi-protocol object routing,
`depending upon the specific VAN services chosen. This
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`CBM2013-00013
`Patent 8,037,158 B2
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`multi-protocol object routing is provided via a
`proprietary protocol, TransWeb™ Management Protocol
`(TMP). …
`One embodiment of the present invention utilizes
`TMP and distributed on-line service information bases
`(DOLSIBs) to perform object routing. Alternatively,
`TMP can incorporate s-HTTP, Java™, the WinSockAPI
`or ORB with DOLSIBs to perform object routing.
`DOLSIBs are virtual information stores optimized for
`networking. All information entries and attributes in a
`DOLSIB virtual information store are associated with a
`networked object identity. The networked object identity
`identifies the information entries and attributes in the
`DOLSIB as individual networked objects, and each
`networked object is assigned an Internet address. The
`Internet address is assigned based on the IP address of
`the node at which the networked object resides.
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`For example, in FIG. 5A, Web server 104 is a node
`on the Internet, with an IP address. All networked objects
`associated with Web server 104 will therefore be
`assigned an Internet address based on the Web server
`104's IP address. These networked objects thus “branch”
`from the node, creating a hierarchical tree structure. The
`Internet address for each networked object in the tree
`essentially establishes the individual object as an "IP-
`reachable" or accessible node on the Internet. TMP
`utilizes this Internet address to uniquely identify and
`access the object from the DOLSIB. FIG. 6B illustrates
`an example of this hierarchical addressing tree structure.
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`Ex. 1001, col. 7, l. 53–col. 8, l. 17 (emphasis added).
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`Patent Owner has argued that data structures are objects, PO Resp. 32–33,
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`and these objects (data structures) are routed. PO Resp. 33–34, 38–41. As we
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`noted in our Final Written Decision, “it is not clear that objects themselves are
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`routed from one IP address to another,” Final Dec. 12, nor does the ’158 Patent
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`explain what it mean for a structure to be routed. Id. at 10. The above citation in
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`CBM2013-00013
`Patent 8,037,158 B2
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`the ’158 Patent describes “information entries and attributes in the DOLSIB as
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`individual networked objects” and states that “each networked object is assigned
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`an Internet address . . . based on the IP address of the node at which the networked
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`object resides.” Thus, as described in the above cited passage of the ’158 Patent,
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`networked objects reside at nodes. However, the above cited passage also states
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`that the Internet addresses for the networked objects form a hierarchical tree
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`structure establishing “the individual object as an ‘IP reachable’ or accessible node
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`on the Internet.” Thus, the specification does not make clear whether an object is a
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`node or is information that resides at a node. In either case, an object, as that term
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`is used in the specification, is not routed. The object is either information that can
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`be accessed at a node, or is the node itself.
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`Our construction accommodates these conflicting statements in the
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`specification to the extent possible. In our construction of “object routing” a user
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`of a transactional application, such as a POSvc application provided by a service
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`provider on a Web server, is routed from that application to the processing
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`provided by the service provider. This occurs whether the individual networked
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`object is (i) a node where the processing is performed, e.g., a node where back-end
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`processing is performed, or (ii) is a node where the transactional application
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`activated by the user obtains information needed to perform its processing. As
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`discussed above, our construction is also consistent with the disclosure that
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`“[O]nce Bank POSvc application 510 has been activated, user 100 will be able to
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`connect to Bank services and utilize the application to perform banking
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`transactions, thus accessing data from the host or data repository 575 in the Bank
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`‘Back Office.’” Ex. 1001, col. 6, ll. 56–60.
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`Our Final Written Decision further noted that the ’158 Patent discloses using
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`TMP, a proprietary protocol that is not described in the ’158 Patent, with DOLSIBs
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`Patent 8,037,158 B2
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`as only “one embodiment” of the claimed “object routing.” Final Dec. 20, citing
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`Ex. 1001, col. 7, ll. 54–65. Object routing is not limited to this one embodiment
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`because the specification states very specifically that “Alternatively, TMP can
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`incorporate s-HTTP, JAVA, the WinSock APJ, or ORB with DOLSIBs to perform
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`object routing.” Id.
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`In view of the above, Patent Owner has not demonstrated that we
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`misapprehended or overlooked any matter concerning the construction of object
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`routing.
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`Technical Invention, Indefiniteness and Statutory Subject Matter
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`Page 11 of the request for rehearing states that, having overlooked and
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`misapprehended Patent Owner’s significant invention, the PTAB “must allow
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`claim 1 as 101 patentable,” that the invention “solves a technological problem and
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`is a technological invention,” and that Patent Owner’s explanation overlooked by
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`the PTAB “solves all the 101; 112, 2nd paragraph issues.” As discussed above,
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`Patent Owner has not demonstrated any matter that was overlooked or
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`misapprehended in our constructions.
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`As we noted in our Decision to Institute, the ’158 Patent is subject to
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`covered business method patent review because claim 1 is drawn to a method of
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`performing financial transactions, i.e., transferring funds from a checking account
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`to a savings account, using a data structure that facilitates switching so that a
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`financial transaction can occur. Dec. to Institute 18–19. As discussed above, our
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`decision is consistent with Fig. 5D and its corresponding discussion in the ’158
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`Patent of connecting a user to Bank service processing, and we have not
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`overlooked or misapprehended the non-technological nature of the invention
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`recited in claim 1 or the issues under 35 U.S.C. §112 second paragraph.
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`Patent 8,037,158 B2
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`Patent Owner does not address specifically the issues of whether claims 1–3
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`and 11 are unpatentable under 35 U.S.C. § 101. Our Final Written Decision noted
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`that, although the “object routing” limitation in claim 4 requires the use of
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`individual networked objects to route a user from a selected transactional
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`application to the processing provided by the service provider, the limitation
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`“routed transactional data structure” does not impose a meaningful limitation on
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`the scope of claims 1–3 and 11. Final Dec. 16–17. Switching the processing of
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`information from one processing resource to another, such as from a program or
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`database to another, is a well-known abstract concept that is not limited to any
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`particular technical approach. The request for rehearing does not identify any
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`issues that were overlooked or misapprehended.
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`Prior Art Combinations, Constitutionality, Fraud
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`The request for rehearing states that the Computerworld and SFCU
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`references do not disclose conducting real-time transactions, but only deferred
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`transactions via e-mail, one-way browsing, web forms and hyperlinking. Req.
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`Reh’g. 12. The basis of Patent Owner’s arguments is Patent Owner’s own
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`disclosure in the ’158 Patent itself. Id. Patent Owner’s attempt to bootstrap its
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`own disclosure of its understanding of the state of the art in 1995 does not
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`demonstrate that the Board overlooked or misapprehended any matter in the
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`Computerworld and SFCU references.
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`Patent Owner’s arguments contesting the constitutionality of this
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`proceeding, and Patent Owner’s intemperate comments concerning opposing
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`counsel and this Board, Req. Reh’g. 13–14, are substantially the same as those
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`made by Patent Owner in IPR2013-00194. In this proceeding we adopt our
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`analysis of these matters in IPR2013-00194 and incorporate it by reference.
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`CBM2013-00013
`Patent 8,037,158 B2
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`Patent Owner has not demonstrated that we overlooked or misapprehended
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`any matter in this proceeding and Patent Owner’s request for rehearing is denied.
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`In consideration of the above, it is
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`ORDERED that Patent Owner’s request for rehearing is DENIED.
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`.
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`CBM2013-00013
`Patent 8,037,158 B2
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`PETITIONER:
`
`Lori A. Gordon
`Michael Q. Lee
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`Lgordon-ptab@skgf.com
`Mlee-ptab@skgf.com
`
`PATENT OWNER
`Lakshmi Arunachalam (pro se)
`laks22002@yahoo.com
`
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`12
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