Paper No. 14
`Trials@uspto.gov
`571-272-7822
`Date Entered: March 7, 2014
`
`
`
`
`
`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 CBM2014-00018
`Patent 8,037,158 B2
`____________
`
`
`
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON, 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
`
`
`
`
`
`
`

`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`
`BACKGROUND
`
`Pursuant to 35 U.S.C. § 321 and the Leahy-Smith America Invents Act, Pub.
`
`L. 112-29, 125 Stat. 284, 329 (2011) (“AIA”), § 18, SAP America, Inc.
`
`(“Petitioner”) requests that the Board initiate a CBM patent review of U.S. Patent
`
`No. 8,037,158 (the ‟158 Patent) of claims 4-6, 9, and 10 (the challenged claims).
`
`Paper 5 (“Pet.”). The ‟158 Patent also is the subject of CBM2013-00013 filed by
`
`Petitioner. The Patent Trial and Appeal Board (“Board”) instituted a trial in
`
`CBM2013-00013, and entered a Decision on Institution of Covered Business
`
`Method (“CBM”) Patent Review on September 19, 2013. CBM2013-00013,
`
`Decision to Institute, Paper 15. Pi-Net International, Inc. (“Patent Owner”) filed a
`
`Patent Owner Preliminary Response in this proceeding. Paper 12 (“Prelim.
`
`Resp.”). We have jurisdiction under 35 U.S.C. § 324. The standard for instituting
`
`a covered business method patent review is the same as that for a post-grant
`
`review. AIA, §18(a)(1). The standard for instituting post-grant review is set forth
`
`in 35 U.S.C. § 324(a), which provides:
`
`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 CFR §§ 42.301 and 42.304(a), the
`
`‟158 Patent meets the definition of a covered business method patent and does not
`
`qualify as a technological invention. Pet. 4-9. Petitioner further contends that
`
`claims 9 and 10 fail to comply with the patentable subject matter requirements of
`
`35 U.S.C. § 101, Pet. 10, 16-18, and that challenged claims 4-6 are
`
`
`
`2
`
`

`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`unpatentable under 35 U.S.C. § 103 for the reasons outlined in the Petition. Pet.
`
`10-11, 18-80.
`
`In related proceeding CBM2013-00013, the Board instituted a trial based on
`
`Petitioner‟s challenges to claims 1-3 and 11 under 35 U.S.C. § 101, and based on
`
`certain challenges under 35 U.S.C. § 103. CBM2013-00013, Decision to Institute,
`
`Paper 15, 2. In CBM2013-00013, the Board also instituted a trial on grounds
`
`asserting that claims 1-6 and 11 are unpatentable under 35 U.S.C. § 112(b). Id.
`
`The Board declined to institute a trial on Petitioner‟s challenges to claims 4-6
`
`under 35 U.S.C. § 101 and 35 U.S.C. § 103. Id. at 36.
`
`Petitioner‟s challenges in this proceeding are different from its challenges in
`
`CBM2013-00013. Petitioner‟s challenges to claims 4-6 under 35 U.S.C. § 103 in
`
`this proceeding are based on prior art not asserted in CBM2013-00013.
`
`Petitioner‟s challenges to claims 9 and 10 under 35 U.S.C. § 101 (Pet. 16-18) in
`
`this proceeding are new, as Petitioner did not challenge the patentability of claims
`
`9 and 10 in CBM2013-00013. See CBM2013-00013, Petition, Paper 7, 10.
`
`As discussed herein, our reasoning and claim constructions concerning the
`
`‟158 Patent in CBM2013-00013 remain unchanged and apply to this proceeding.
`
`In this proceeding, we institute a trial on Petitioner‟s challenges to claims 9 and 10
`
`under 35 U.S.C. § 101 and on Petitioner‟s challenges to claim 4-6 under 35 U.S.C.
`
`§ 103.
`
`PENDING LITIGATION AND STANDING
`
`A person may not file a petition under the Transitional Program for Covered
`
`Business Method Patents unless the person, or the person‟s real party in interest or
`
`privy, has been sued for infringement, or has been charged with infringement,
`
`under that patent. See AIA, § 18(a)(1)(B). The ‟158 Patent is the subject of a
`
`
`
`3
`
`

`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`number of cases pending in U.S. District Courts in Delaware, the Central District
`
`of California, and the Northern District of California.
`
`In CBM2013-00013, we explained that Petitioner had satisfied the standing
`
`requirement for a covered business method patent review because its customer,
`
`Citizen‟s Financial Group, who had requested indemnity from Petitioner, was a
`
`defendant in litigation brought by Patent Owner in the U.S. District Court for the
`
`district of Delaware. CBM2013-00013, Decision to Institute, Paper 15 at 3-4.
`
`THE ‟158 PATENT (EXHIBIT 1001)
`
`The Specification of the ‟158 Patent is the same as that of U.S. Patent No.
`
`8,108,492 B2 (“the ‟492 Patent”), which is the subject of inter partes review
`
`IPR2013-00194. CBM2013-00013, Decision to Institute, Paper 15, 5. The ‟158
`
`Patent is described in the CBM2013-00013 Decision to Institute using the columns
`
`and line numbers of the ‟492 Patent. Id. at 6-9.
`
`ILLUSTRATIVE CLAIM
`
`Claim 4, which depends from claim 1, is illustrative. Claim 4 recites the
`
`added limitation on claim 1 that object routing is used to complete the transfer of
`
`funds in a Web application. For convenience, claim 4 is written below with the
`
`limitations from claim 1 shown in italics.
`
`4. The method of claim 1, [wherein 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;
`
`
`
`4
`
`

`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`accepting a first signal from the Web user input device to select
`the point-of-service application;
`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,]
`wherein object routing is used to complete the transfer of funds
`in a Web application.
`
`BASIS OF PETITION
`
`Petitioner asserts that claims 9 and 10 do not recite patentable subject matter
`
`under 35 U.S.C. § 101. Pet. 10, 16.
`
`In challenging claims 4-6 under 35 U.S.C. § 103, Petitioner cites the
`
`following prior art references:
`
`LIPIS ET AL., ELECTRONIC BANKING (Edward I. Altman ed., 4th ed. 1985)
`
`(“Electronic Banking”). Ex. 1004. Petitioner asserts Electronic Banking is
`
`§ 102(b) prior art to the ‟158 Patent and that Electronic Banking is a book
`
`published in 1985. Pet. 11.
`
`Business Wire, Stanford Federal Credit Union Pioneers Online Financial
`
`Services (“SFCU”). Ex. 1005. Petitioner asserts SFCU is § 102(a) prior art to the
`
`‟158 Patent and that “SFCU is an article appearing in Business Wire published
`
`June 21, 1995.” Pet. 12.
`
`U.S. Patent No. 5,220,501 to Lawlor et al. (“Lawlor”). Ex.1006. Petitioner
`
`asserts that Lawlor is § 102(b) prior art to the ‟158 Patent and “was issued on June
`
`15, 1993.” Pet. 12.
`
`
`
`5
`
`

`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`Computerworld, The Cyberbanks Banks and the Internet, 80 (June 26,
`
`1995) (“Computerworld”). Ex. 1007. Petitioner asserts that Computerworld is §
`
`102(a) prior art to the ‟158 Patent and “was published on June 26, 1995.” Pet. 12.
`
`THOMAS J. MOWBRAY AND RON ZAHAVI, THE ESSENTIAL CORBA: SYSTEMS
`
`INTEGRATION USING DISTRIBUTED OBJECTS (Robert Elliott ed., 1995)
`
`(“CORBA1”). Ex. 1009. Petitioner asserts that CORBA1 is § 102(a) prior art to
`
`the ‟158 Patent and that “CORBA1 was published at least as of November 8, 1995
`
`(the copyright registration webpage of CORBA1 is provided as Exhibit 1010).”
`
`Pet. 12.
`
`Jeffrey D. Case et el, Protocol Operations For Version 2 Of The Simple
`
`Network Management Protocol, 1-37 (1993) (“SNMP”). Ex. 1011. Petitioner
`
`asserts that SNMP is § 102(b) prior art to the ‟158 Patent and “was publicly
`
`available at least as of April 1993.” Pet. 12.
`
`THE COMMON OBJECT REQUEST BROKER: ARCHITECTURE AND
`
`SPECIFICATION, Rev. 2.0, 1-463 (1995) (“CORBA2”). Ex.1012. Petitioner asserts
`
`that CORBA2 is § 102(a) prior art to the ‟158 Patent and that “CORBA2 was
`
`published in July 1995.” Pet. 12..
`
`In addition to its challenge to claims 9 and 10 under 35 U.S.C. § 101, based
`
`on the above references, Petitioner asserts the following grounds of unpatentability
`
`under 35 U.S.C. §103:
`
`Grounds under 35 U.S.C. § 103
`Claims
`Lawlor, Computerworld, and CORBA1
`Claims 4-6
`Claims 5 and 6 Lawlor, Computerworld, CORBA1, and SNMP
`Claims 4-6
`Lawlor, Computerworld, and CORBA2
`Claims 5 and 6 Lawlor, Computerworld, CORBA2, and SNMP
`Claims 4-6
`SFCU, Electronic Banking, and CORBA1
`Claims 5 and 6 SFCU, Electronic Banking, CORBA1, and SNMP
`Claims 4-6
`SFCU, Electronic Banking, and CORBA2
`Claims 5 and 6 SFCU, Electronic Banking, CORBA2, and SNMP
`
`
`
`6
`
`

`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`
`In each challenge under 35 U.S.C. § 103, Petitioner cites prior art that is not
`
`cited in CBM2013-00013 as applicable to claims construed by the Board and on
`
`which the Board did not institute a trial.
`
`CLAIM CONSTRUCTION
`
`Throughout this decision, we apply the same claim constructions as those
`
`applied in CBM2013-00013. See CBM2013-00013, Decision to Institute, Paper
`
`15, 10-17.
`
`Our decision to institute in CBM2013-00013 construed the following 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, the routing occurring in response to the subsequent signals, object
`
`routing, distributed on-line service information bases, and virtual information
`
`store. Id. at 13-17. Petitioner has applied the Board‟s constructions in CBM2013-
`
`00013 in this Petition. Pet. 13.
`
`In this proceeding, at pages 19-53 of the Preliminary Response, Patent
`
`Owner disputes, in one way or another, all but two of the Board‟s constructions in
`
`CBM2013-00013, i.e., “the routing occurring in response to the subsequent
`
`signals” (Prelim. Resp. 35) and “distributed on-line service information bases” (id.
`
`at 38). In addition, Patent Owner proposes a construction for the term “individual
`
`networked objects” (id. at 37-38), and disputes the Board‟s construction of point-
`
`of-service application (construed in IPR2013-00194, Decision To Institute, Paper
`
`12) (id. at 40-53). We address Patent Owner‟s claim construction contentions
`
`below:
`
`Web Application: In CBM2103-00013, the Board construed a Web
`
`application to mean a software program that can be accessed by an internet user.
`
`CBM2013-00013, Decision to Institute, Paper 15, 13-14. The ‟158 Patent
`
`
`
`7
`
`

`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`Specification states that a “configurable value added network switch comprises
`
`means for switching to a transactional application in response to a user
`
`specification from a World Wide Web application” (Ex. 1001, col. 2, ll. 44-47), but
`
`does not define a “World Wide Web application” and does not refer to a Web
`
`application in the drawings. The preamble of claim 1 states that the claimed
`
`method is one “for performing a real time Web transaction from a Web application
`
`over a digital network atop the Web,” but also does not define Web application and
`
`does not use the term “Web application” in the recited limitations. Claim 1 refers
`
`to a point-of-service application operating in a service network atop the web.
`
`However, claim 1 does not recite that the point-of-service application operating in
`
`a service network is the recited Web application over a digital network atop the
`
`web in the claim preamble. Claim 2 states that “an exchange over the Web is used
`
`to complete the transfer of funds in a Web application.”
`
`Patent Owner proposes that “Web application” be construed as “an
`
`application on the World Wide Web.” Patent Owner‟s proposed construction is
`
`ambiguous because it defines the term using the same words as the term itself,
`
`without providing sufficient definition of those words. Patent Owner‟s
`
`construction does not define “application” or “Web.” Patent Owner‟s proposed
`
`construction does not limit the term “application” to a software application or any
`
`other kind of application or computer program. The Specification refers to both
`
`“application programs” and “software applications.” Ex. 1001, col. 5, ll. 11-12,
`
`31-33. Adding to the ambiguity, Patent Owner refers to a “service provider
`
`program” in its proposed construction of another term, i.e., “routed.” Prelim. Resp.
`
`27.
`
`Patent Owner also argues that the application is “on the World Wide Web.”
`
`Id. at 21. Patent Owner does not define what “on the World Wide Web” actually
`
`
`
`8
`
`

`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`means or describe how an application is “on” the web. For example, Patent Owner
`
`does not specify whether “on” the web means stored on a server directly connected
`
`to the web or on some other device, such as a back end device, that is accessible
`
`through a web connected server. Patent Owner also cites the distinction between
`
`the World Wide Web (or the Web) and the Internet, citing a Webopedia statement
`
`that the Web is just one of the ways information can be disseminated over the
`
`Internet. Id. at 22. However, the ‟158 Patent discloses that an Internet user
`
`accesses web servers, typically through a web browser. Ex. 1001, col. 1, ll. 31-32.
`
`In addition, referring to an embodiment of the invention, the ‟158 Patent discloses
`
`that merchants “provide real-time transaction capabilities to users who desire to
`
`access the merchants‟ services via the web” via switching sites, which “include
`
`non-web network computer sites and cellular provider sites.” Ex. 1001, col. 5, ll.
`
`45-58 (emphases added). Thus, in the ‟158 Patent, a merchant‟s web application
`
`(service provider program) is accessible to users of the Internet and, in the context
`
`of the ‟158 Patent, a broad construction of Web application as a software program
`
`that can be accessed by a user of the Internet is appropriate.
`
`In view of the above disclosure in the ‟158 Patent, we decline to adopt
`
`Patent Owner‟s proposed construction of Web application.
`
`Service network running atop the World Wide Web: In CBM2013-00013,
`
`we construed “service network running atop the World Wide Web” to mean a
`
`network on which services other than underlying network communications services
`
`are provided over the internet. CBM2013-00013, Decision to Institute, Paper 15,
`
`14-15. In this proceeding, Patent Owner “adopts the Board‟s construction” with
`
`“exceptions” and proposes that the term be construed to mean “[a] network,
`
`running within the application layer of the OSI [open systems interconnection]
`
`model, on which services are provided over the World Wide Web.” Prelim Resp.
`
`
`
`9
`
`

`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`23. As support for this construction, Patent Owner cites the disclosure in the
`
`Specification that the invention is implemented to function as a routing switch
`
`within the application layer of the OSI model. Id. The claim, however, does not
`
`recite the OSI model, and the specification is not so limiting. See Ex. 1001, col. 5,
`
`ll. 49-51. Patent Owner further notes that “the [S]pecification makes clear that the
`
`service network run[s] on top of a facilities network, namely the Internet, the Web
`
`or e-mail networks.” Prelim. Resp. 23-24 (citations omitted).
`
`In IPR2013-00194, we construed “service network” to mean “a network on
`
`which services, other than underlying network communication services, are
`
`provided.” IPR2013-00194, Decision to Institute, Paper 14, 12. The added
`
`limitation “running atop the World Wide Web” is discussed in the Specification at
`
`column 5, lines 49-51, of the ‟158 Patent, which state that the service network runs
`
`“on top of a facilities network, namely the Internet, the Web or e-mail networks.”
`
`As noted in CBM2013-00013, service network functionality is provided by five
`
`interacting components, i.e., an exchange, an operator agent, a management agent,
`
`a management manager, and a graphical user interface. CBM2013-00013,
`
`Decision to Institute, Paper 15, 15. The Specification further discloses that
`
`Exchange 501 is depicted as residing on Web server 104, but can also reside on a
`
`separate computer system that resides on the Internet and has an Internet address.
`
`Ex. 1001, col. 6, ll. 16-19. In view of this disclosure, we decline to adopt Patent
`
`Owner‟s proposed construction.
`
`Web user input device: In CBM2013-00013, we construed the “Web user
`
`input device” to mean the same input device as that coupled to the computer
`
`system that provides the Web page for display, recited earlier in claim 1.
`
`CBM2013-00013, Decision to Institute, Paper 15, 15. In this proceeding, Patent
`
`Owner proposes substituting “on which the Web page is displayed” for the term
`
`
`
`10
`
`

`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`“provides the web page for display,” because the Web server provides the
`
`webpage. Prelim. Resp. 25. Thus, Patent Owner proposes construing “web user
`
`input device” as “the same input device as that coupled to the computer system on
`
`which the Web page is displayed, recited earlier in Claim 1.” Id. Patent Owner‟s
`
`proposed construction is not the broadest reasonable construction because it limits
`
`the input device to a particular display, i.e., the one on which the web page is
`
`displayed. The Board‟s broader construction requires only that the input device be
`
`coupled to the computer system that provides the web page for display. The claim
`
`does not limit the input device to be the same device as that on which the web page
`
`is displayed, although this will often be the case. Therefore, we decline to adopt
`
`Patent Owner‟s proposed construction.
`
`[utilizing] a routed data structure that is both complete and non-deferred:
`
`In CBM2013-00013, we construed the entire term “utilizing a routed data
`
`structure that is both complete and non-deferred” to mean using a data structure
`
`that facilitates switching a user who selects a transactional application to a service
`
`provider program that provides immediate processing. CBM2013-00013,
`
`Decision to Institute, Paper 15, 15-16. In CBM2013-00013, Patent Owner‟s
`
`proposed construction was as follows: “a data structure with information entries
`
`and attributes displayed in a POSvc Application on a Web page for the specified
`
`real-time Web transaction from the specific Web application, which is routed from
`
`the front-end POSvc Application on a Web page over an online service network on
`
`the Web to a Back Office transactional application or application of a value-added
`
`network service provider or Web merchant.” CBM2013-00013, Patent Owner
`
`Preliminary Response, Paper 13, 53.
`
`In CBM2013-00013, Patent Owner criticized Petitioner for parsing out the
`
`terms of this phrase, when they actually appear together. Id. Although the Board
`
`
`
`11
`
`

`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`construed the entire term, in this proceeding Patent Owner proposes construing
`
`four separate terms in this limitation: (1) routed, (2) data structure, (3) complete,
`
`and (4) non-deferred, and then determining the meaning of the entire phrase from
`
`the individual constructions. Prelim. Resp.27-28. Patent Owner also argues that
`
`one of those terms, i.e., “routed,” does not require further construction and should
`
`be accorded its plain and ordinary meaning. Id. at 31. Patent Owner further
`
`asserts that “transactional” should be given its plain and ordinary meaning, and
`
`proposes that the entire term be construed to mean “[u]sing a type of transactional
`
`object that is routed and which contains the information necessary for a complete,
`
`real-time transaction.” Id. at 32, 35.
`
`Patent Owner contends that claim 1 speaks of routing a data structure, rather
`
`a user. Id. at 28. Claim 1 does not recite routing a user or routing a data structure.
`
`Claim 1 recites “utilizing a routed data structure.” Claim 1 does not define the
`
`routed data structure other than to say it is “complete and non-deferred” and
`
`“specific to the point-of-service application.” The function that is performed by
`
`utilizing the routed data structure is the transfer of funds from a checking account
`
`to a savings account. The access to those accounts is provided by the point-of-
`
`service application selected by accepting signals from the Web user input device.
`
`Ex. 1001, claim 1. Any routing that occurs is in response to subsequent signals
`
`from the web user input device. Id.
`
`Patent Owner‟s arguments concerning routing a user also do not affect the
`
`Board‟s claim construction. The Board‟s construction of the entire term is drawn
`
`to the recited utilization of the data structure. In this case, the claim is drawn to
`
`utilizing the claimed routed data structure to switch a user who selects a
`
`transactional application to a service provider program, so that the service provider
`
`program can respond to further inputs from the user input device. The data
`
`
`
`12
`
`

`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`structure is complete to facilitate the switching and non-deferred to allow
`
`immediate processing, i.e. in real time.
`
`Claim 1 does not define the data structure. Patent Owner attempts to
`
`incorporate into the claim limitations from the Specification, arguing that the “data
`
`structure” is “a type of object.” Prelim. Resp. 29-31. Contrary to Patent Owner‟s
`
`arguments, neither the Specification of the ‟158 Patent, nor the prosecution history,
`
`nor the extrinsic evidence defines a data structure as an object. Id. at 30-31. The
`
`‟158 Patent Specification at column 8, lines 27-29 sates that “[t]he syntax of an
`
`object defines the abstract data structure corresponding to that object type.” Ex.
`
`1001, col. 8, ll. 27-29. Thus, each type of object may have a data structure, but a
`
`data structure is not itself an object.
`
`The portion of the prosecution history cited by Patent Owner states that the
`
`DeBettencourt reference discussed in the Office Action lacks an object that is a
`
`transactional data structure, that the state of the user‟s session is not an object or a
`
`transactional data structure specific to a transactional Web application, and that the
`
`state of the user‟s session is not encapsulated in an object or transactional data
`
`structure. Prelim. Resp. 30. While an object may be a type of transactional data
`
`structure, the prosecution history does not state that a transactional data structure is
`
`an object.
`
`Finally, Patent Owner cites to Wikipedia, which states that records are
`
`among the simplest data structures, indicating that there are multiple types of data
`
`structures and thus providing further evidence that the broadest reasonable
`
`construction of transactional data structure in claim 1 is not limited to an object.
`
`Id. at 31. Patent Owner asserts that an object contains fields, like a record, and is
`
`therefore a data structure. Id. at [cite]. Even if we assume, arguendo, that objects
`
`are data structures, this does not support a conclusion that the claimed data
`
`
`
`13
`
`

`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`structure is an object. The broadest reasonable construction of claim 1 is not
`
`limited to an object, but encompasses any type of routed transactional data
`
`structure. Claim 1 makes no reference to objects and does not specify any
`
`particular form of data structure. As discussed further herein, claim 4, in contrast,
`
`limits the transfer of funds to the use of object routing in a Web application.
`
`In view of the above, we decline to adopt Patent Owner‟s proposed
`
`construction. We reference our discussion of the issue in our Decision to Institute
`
`in CBM2013-00013, Decision to Institute, Paper 15, 13-16.
`
`Object Routing: In CBM2013-00013, we 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. Id. at
`
`17. In CBM2013-00013, Patent Owner proposed to construe “object routing” to
`
`mean “communicating between a POSvc Application and a back-end transactional
`
`application individual data structure with information entries and attributes (i.e.,
`
`objects) over the application layer of the OSI [open systems interconnection]
`
`model.” CBM2013-00013, Patent Owner Preliminary Response, Paper 13, 24. In
`
`this proceeding, Patent Owner proposes that “object routing” be construed as “[t]he
`
`routing of individual networked objects from a selected transactional application to
`
`the processing provided by the service provider.” Prelim. Resp. 36. Patent Owner
`
`argues that it is the object that is routed, rather than the user. Id. We note,
`
`however, that the ‟158 Patent states that a Web merchant desires to “provide real
`
`time transactional capabilities to users who desire to access the merchants‟ services
`
`via the Web.” Ex. 1001, col. 5, ll. 46-49. Patent Owner states that
`
`“„object routing‟ is from a POSvc Application displayed on a Web page to the
`
`services of a Web merchant or VAN service provider over the application layer of
`
`the OSI model over the Web.” Prelim. Resp. 37.
`
`
`
`14
`
`

`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`The term “object routing” first appears in the claims at claim 4, which
`
`depends from claim 1. The method recited in claim 1 includes “accepting a first
`
`signal from the Web user input device to select the point-of-service application.”
`
`A construction that includes routing the user from that point of service application
`
`to the processing provided by the service provider is appropriate. The Board‟s
`
`construction of “object routing” reflects a transfer of processing from the point-of-
`
`service application selected by the user to the processing provided by the service
`
`provider. That transfer of processing is accomplished using individualized
`
`network objects. At page 17 of the Decision to Institute in CBM2013-00013,
`
`Paper 15, we noted “[t]he ‟158 Patent describes object routing as an embodiment
`
`to accomplish switching between transactional point-of-service applications and
`
`service provider processing using networked object identities. The networked
`
`objects identify information entries and attributes in a distributed on-line service
`
`information base as individual networked objects” (citing Ex. 1001, col. 6, ll. 11-
`
`16, 56-59, col. 8, ll. 1-15).
`
`Our construction is also consistent with Patent Owner‟s present attempt to
`
`distinguish object routing over the CORBA references (Exs. 1009 and 1012).
`
`Patent Owner states the following:
`
`CORBA deals with the backend of a system, which is agnostic to the
`frontend. The [‟]158 claimed inventions, on the other hand, are
`geared to the “frontend” whereby the user can interact directly with a
`transactional application presented at the entry point of the backend.
`Just as the frontend is agnostic to CORBA, the backend is agnostic to
`[‟]158. The backend can be any existing legacy system, and can even
`be a CORBA object. The [’]158 invention allows backend
`transactional applications to be presented and used by a user.
`
`Prelim. Resp. 64-65 (emphasis added).
`
`
`
`15
`
`

`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`In view of the above, we decline to adopt Patent Owner‟s construction of the
`
`term “object routing.” Patent Owner further proposes that we construe
`
`“individualized network objects” to mean “information entries and attributes in a
`
`DOLSIB [(distributed on-line service information data base)].” Prelim. Resp. 37-
`
`38. We do not adopt a specific construction of the term “individualized network
`
`objects” because the term is not used in the claims. We addressed this term in
`
`CBM2013-00013, Paper 15, at page 17, as discussed above, and in denying
`
`Petitioner‟s request for rehearing in CBM2013-00013, Decision Denying Request
`
`for Rehearing, Paper 23, at pages 3-6. We further discuss network objects in the
`
`context of the newly cited CORBA references infra.
`
`Virtual information store: In CBM 2013-00013, we construed “virtual
`
`information store” to mean an information store in which information entries and
`
`attributes are associated with a networked object identity. CBM2013-00013,
`
`Decision to Institute, Paper 15, 17. In CBM2013-00013, Patent Owner argued that
`
`a DOLSIB is a virtual information store. CBM2013-00013, Patent Owner
`
`Preliminary Response, Paper 13, 24-25. In this proceeding, Patent Owner now
`
`contends that “virtual information store” should be construed to mean “a transient
`
`information store that is temporarily created and which contains information
`
`entries and attributes associated with a networked object identity.” Prelim. Resp.
`
`39-40. Patent Owner argues that its construction is in line with the Board‟s
`
`construction, but is modified to reflect the “virtual” nature of the information store,
`
`which is not a real physical information store, but rather one that is transient and
`
`temporarily created. Id. at 40.
`
`The virtual information store is recited in claim 6, which recites that the
`
`virtual information store is used to complete the transfer of funds. Claim 6
`
`depends from claim 1, and therefore does not require object routing. Patent
`
`
`
`16
`
`

`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`Owner‟s reference to the Specification‟s disclosure of creating a virtual
`
`information store (id. at 39), does not identify where in the Specification the
`
`method involves creating a temporary or transient information store. Whether or
`
`not the virtual information store is temporary does not make it any less real,
`
`particularly while the claimed method is being carried out to accomplish the
`
`transfer of funds. Patent Owner‟s proposed construction also does not address
`
`when, during the claimed method, the virtual information store exists, and when it
`
`does not. In view of the above, we decline to adopt Patent Owner‟s proposed
`
`construction.
`
`Point of Service Application: In IPR2013-00194, the Board construed
`
`“point-of-service application” to mean a software program that facilitates
`
`execution of transactions requested by a user. IPR2013-00194, Decision to
`
`Institute, Paper 14, 9-10. In IPR2013-00194, Patent Owner argued that “point-of-
`
`service application” should “refer to a Web application displayed on a Web page,
`
`and displaying an „object‟ data structure in the Web application with attributes and
`
`provision for return of information entries from the Web merchant‟s or value-
`
`added network service provider‟s system corresponding to the Web transaction
`
`request at the Web application based on inputs for the values of the attributes at the
`
`front-end point-of-service application.” IPR2013-00194, Patent Owner
`
`Preliminary Response, Paper 10, 11. In this proceeding, Patent Owner now
`
`proposes that “point-of-service application” be construed as “[a] transactional Web
`
`application displaying an object data structure in the Web application with
`
`attributes and information entries.” Prelim. Resp. 40. Alternatively, Patent Owner
`
`proposes “point-of-service application” be construed as “an application that
`
`executes the transactions requested by a Web user.” Id. at 41.
`
`
`
`17
`
`

`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`We addressed the issue of software programs and applications in our
`
`discussion of Web application above. We are also not persuaded that claim 1
`
`requires an