Filed by Pro Se Patent Owner, Dr. Lakshmi Arunachalam
`By: Dr. Lakshmi Arunachalam, Pro Se
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`222 Stanford Avenue
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`Menlo Park, CA 94025
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`Tel: (650) 690-0995
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`Fax: (650) 854-3393
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
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`PATENT OWNER’S REQUEST FOR RE-HEARING
`
`In
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`Covered Business Method Review of U.S. Patent No. 8,037,158
`_____________________
`SAP America, Inc.
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`Petitioner
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`v.
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`Dr. Lakshmi Arunachalam
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`Patent Owner
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`__________________
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`CASE CBM2014-00018
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`Patent 8,037,158
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`_____________________
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`1
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`By: Dr. Lakshmi Arunachalam, Pro Se
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`222 Stanford Avenue
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`Menlo Park, CA 94025
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`Tel: (650) 690-0995
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`Fax: (650) 854-3393
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`PATENT OWNER’S REQUEST FOR RE-HEARING
`
`In
`
`Covered Business Method Review of U.S. Patent No. 8,037,158
`_____________________
`SAP America, Inc.
`
`Petitioner
`
`v.
`
`Dr. Lakshmi Arunachalam
`
`Patent Owner
`
`__________________
`
`CASE CBM2014-00018
`
`Patent 8,037,158
`
`_____________________
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`1
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`Patent Owner (“PO”) and inventor, Dr. Arunachalam files this Request for Re-
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`Hearing in a timely manner from PTAB’s Final Written Decision (“FWD”).
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`PTAB overlooked many key points in its incorrect arguments against: the ‘158
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`as a technological invention in its FWD pp. 12-15; incorrect claim
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`constructions pp. 10-12, not in accord with specification or prosecution history
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`or inventor-coined terms; claims 4-6 as obvious over cited art pp. 19-40; claims
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`9-10 as unpatentable under 101 in pp. 12-19. PO incorporates by reference all
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`papers submitted in this case previously, the file history of this patent and its
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`parent patents in the priority chain, and the record
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`PTAB failed to construe claim terms in the context of the whole claim.
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`PTAB overlooked key disclosures in specification, prosecution history and
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`prosecution history estoppel, in its incorrect claim construction of “POSvc
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`application,” an inventor-coined term, “VAN Switch,” “object routing” and
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`“Web application.”. PTAB ignored that the inventor, as her own
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`lexicographer, coined certain terms and set out certain definitions, “POSvc
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`application,” “VAN service,”, “service network,” “VAN switch” and provided
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`clear, unmistakable prosecution disclaimer or disavowal.
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`Sirbu has not addressed fundamental issues relevant to this patent, namely
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`that CORBA in 1995, (PTAB need look no further, but just read the CORBA
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`specification of July 1995 that confirms that CORBA simply did not have a
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`2
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`Web interface in 1995, much less did CORBA have an interface to any
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`application on a Web page or Web browser or Web server, CORBA did
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`not have POSvc applications on a Web page or Web browser in 1995, same
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`is true of SNMP. CORBA was completely a back-office function. PTAB’s
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`reliance on Sirbu’s discussion on Web objects failed to note that it used CGI,
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`that was disclaimed by the inventor in specification. Sirbu failed to analyze
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`SNMP in the context of the claims, that SNMP object is different from the
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`“individual networked object with information entries and attributes” specific to
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`a POSvc application that must be displayed on a Web page of the subject
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`patent. Sirbu’s arguments for non-obviousness relied on features not embodied
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`in the claims, testimony did not conduct an element-by-element comparison of
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`the claims to the prior art, apply claim construction, or review the prosecution
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`history of the patents. Each of the cited art belongs in the categories of prior art
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`already disclaimed by the inventor in columns 1, 2 and 5 of the patent by PO.
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`PTAB failed to note that Sirbu’ statements are irrelevant to the claimed
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`inventions, while obfuscating the true issues that had to be addressed.
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`PO’s Pioneering Invention: Exchange of Structured Data from Web
`Applications Displayed on a Web browser
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`‘158 patent derives priority from 1995 provisional application S/N
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`60/006,634. In 1995, applications were local to a Back-office, not connecting
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`to the Web. The norm was one-way Web browsing, hyperlinking, HTML
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`3
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`forms, CGI (‘158: cols 1, 2 and 5). Dr. Arunachalam (“DrA”) solved a complex
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`technological problem meeting a universal need to draw Back-office
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`information systems and applications to the Web. Its ubiquitous use achieved
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`huge commercial success. Inventor, as her own lexicographer, set out certain
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`definitions and provided clear, unmistakable prosecution disclaimer or
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`disavowal. PTAB makes conclusory statements with no basis in fact or the law
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`in FWD pp. 14-15, 26-40: “…a method of performing a transaction by carrying
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`out certain non-technical steps… directed to a non-technical invention, i.e,
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`simply transferring funds using known technologies Claim 1 is not drawn to the
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`Web application or the network...” The inventions in the subject patent have
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`everything to do with POSvc applications and Web applications, or why would
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`the PO have coined the term “POSvc application,” “VAN service,” “object
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`routing,” “service network,” “VAN switch?” Judge Rich, an author of the
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`Patent Act of 1952, stated: “… a presumption of administrative correctness
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`attaches to the decision by the PTO to issue a patent.” Candela Laser v.
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`Cynosure, 862 F.Supp. 632,639 (D. Mass. 1994). “…heightened deference to
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`fact finding of examiner, as stated in the prosecution history of the patent
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`application.” Dickenson v. Zurko, 527 U.S. 150 (1999).
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`. In Mississippi Chem, v. Swift Agricultural Chem. Corp., 717 F.2d 1374
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`(Fed. Cir. 1983) Federal Circuit… “red flag warning” for court to more
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`4
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`carefully consider whether patentee had a full and fair opportunity … if court
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`adequately comprehended and applied the appropriate substantive standards.
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`This equally well applies to the PTAB.
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` “VAN SERVICE” “VAN Service” is a “POSvc Application
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`displayed on a Web page, that provides a value-add to the
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`network,” supported by specification: ‘158: col. 9, Figs.5C, 5B, 5D,
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`6A: “VAN service 704” or “application service 704” is disclosed as a
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`point-of-service application (POSvc Application) displayed on a Web
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`page. “POSvc Application” is the “value-add” to the network (eg.
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`Web banking).
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`“SERVICE NETWORK” Consistent with above,
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`“Service” is “VAN Service,” or “POSvc Application” displayed on a Web
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`page. This is consistent ‘158: cols. 1and 2 , which discloses “application or
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`service.”
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`“Service network” is “an OSI application layer network running on top
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`of a facilities network and that provides value-added network (VAN)
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`services.” “VAN Services” are “POSvc Applications displayed on a Web
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`page, that provide value-add to the network,” (eg, Web banking POSvc
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`Application is an example of a value-add to the network.) A “facilities
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`network” is “an IP-based network with physical hardware components
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`5
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`that provides underlying network communication services up to layer 4
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`of the OSI model.” PTAB construed, distinguishing between a facilities
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`network (which provides the underlying network services from layers 1-4 of
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`the OSI model) and a service network which provides the value-added
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`services like Web banking. Specification discloses that a necessary
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`component of a service network is a POSvc Application displayed on a Web
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`page.
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`PTAB failed to note: priority provisional application 60/006,634 from which
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`the ‘158 patent derives distinguishes service network from facilities network
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`“…Web…medium for electronic commerce (EC), new value - added
`network (VAN) services are expected to emerge… simple telephone
`call is…well - known example of a value - added network
`service…telephone network has two different but interrelated aspects:
`In terms of its physical components, it is a "facilities network." In
`terms of the varieties of VAN services that it provides, it is a set of
`many "traffic networks", each representing a particular
`interconnection of facilities. Traffic is the flow of multi–media
`information through the network.
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`…transaction of daily commerce, such as ordering and paying for
`pizza…home banking… payroll services for businesses from banks,
`offered as a VAN service. …Internet, like… telecommunications
`network, is a system of interconnected facilities that could carry
`traffic from a variety of EC services. From the perspective of its
`physical components, …"Facilities Network" for EC exists
`today…There is no direct access to…end user from...VAN service
`providers, such as a Bank. There are some missing elements needed to
`capture and control the end user environment. The "Traffic Network"
`is THE challenge.” (Prov. App. S/N 60/006,634)
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`POSvc application:
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`6
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`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…This connection between user
`100 and Bank services is managed by exchange 501.
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`…provide intra-merchant…services…inter-merchant services. For
`example, if Bank creates a POSvc Application for use by …Bank HR
`POSvc Application…” (‘158: cols 6 and 7)
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` PTAB failed to note that prosecution history estoppel prevents PO or
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`USPTO to change the construction of term, that was agreed to
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`between inventor and original Examiner in order for claim to issue by
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`distinguishing a VAN switch as OSI application layer switch from
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`network layer switch to distinguish from the then cited prior art,
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`Focsaneanu, during original prosecution of 6,212,556 patent),
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`deriving priority from same provisional application 60/006,634). The
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`key applications component of a VAN switch, POSvc Application
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`displayed on a Web page, referred to as VAN service 704, must be
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`included in construction of VAN switch, as also boundary services
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`component of VAN switch. (‘158: cols. 5, 7, 6, 9, 8; Figs 5B, 5C,
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`5D, 6A). Without boundary services component of VAN switch,
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`Back-Office is an island (the prior art in 1995), not connected to a
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`front-end POSvc Application displayed on a Web page, because
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`boundary services component provides the interface between VAN
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`switch, Web and front-end POSvc Application displayed on a Web
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`7
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`page and on-line service provider or Web Merchant. ( ‘158:col. 8)
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`This was overlooked by PTAB in its construction of VAN switch.
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`These two key components of VAN switch differentiate prior art from
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`the present invention. “A clear and complete prosecution file record
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`is important in that “[p]rosecution history estoppel requires that…
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`claims of a patent be interpreted in light of the proceedings in…PTO
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`during the application process.” “…the court held that “a narrowing
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`amendment made to satisfy any requirement of the Patent Act may
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`give rise to an estoppel.”
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`The algorithm, contrary to PTAB’s allegations, is clearly specified in
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`specification (‘158:cols.4, 5, 7, 8, 9;) and in ‘500 and parent patent
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`5,778,178 (‘178) file histories.
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`“…Examiner contends…Davison teaches…claimed elements in "an
`HTML Web page with URL links to application programs," thus
`rendering… claimed invention unpatentable. Applicants respectfully
`submit… object identities according
`to the presently claimed
`invention are distinctly different from an HTML page with URL links.
`As claimed in…pending claims, the object identity represents a
`networked object…establishes the individual object as an "IP'-
`reachable" or accessible node on the Internet. This Internet address is
`used to uniquely identify and access the object from the virtual
`information store. This type of an "object" is significantly different
`from an HTML page that is accessed via a URL. Although an HTML
`page may be utilized by a user to specify… type of transaction desired
`(e.g. a POSvc Application is essentially viewed by the user as a Web
`page, as described in… specification),… HTML page described in
`Davison is simply an entry form and does not provide any type of
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`8
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`object routing capability, as presently claimed. Davison describes how
`to create a standard HTML Web page that contains HTML forms.
`These forms are non-interactive Web pages that do not allow a user to
`perform live, real-time, bi-directional transactions, with object
`routing, as claimed.
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`In contrast, according to the presently claimed invention, if a Web
`Merchant decides to offer a POSvc Application that allows access to
`checking and savings accounts, the object identities according to the
`claimed invention refer to the individual checking and savings
`accounts, not to… POSvc Application Web page. Each account is an
`individual network addressed object that is accessible on the network.
`Thus, each account
`is an object
`identity associated with
`information entries and attributes, and the object identity represents
`a networked object. The object identity (the account) is associated
`with a unique network address, and the unique network address is
`utilized to identify and route the object identity on the Web/network.
`This type of an object routing system is not taught or suggested by
`Davison. As such Applicant respectfully submits that the claimed
`invention is patentable over Davison.” (’178/’500 file histories)]
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`PTAB erred by misapplying “broadest reasonable interpretation”
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`(“…not a rule of claim construction,” per CAFC Judge Newman to
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`arrive at a legally incorrect interpretation, without exploring the metes
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`and bounds to which Plaintiff is entitled, particularly as this term was
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`coined by inventor and can only take on the meaning ascribed to it by
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`inventor in specification and file history. PTAB missed specification
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`discloses:
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`a POSvc Application is a transactional application, from which a Web
`user 100 transacts and must be displayed on a Web page; POSvc
`Application is an application that executes the type of transaction
`that the user may be interested in performing.
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`9
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`“POSvc Applications 510 are transactional applications, namely
`applications that are designed to incorporate and take advantage of…
`capabilities provided by the present invention…switching, object
`routing, application and service management functions.” (‘158: col. 6)
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`“…POSvc Application is an application that can execute the type of
`transaction that the user may be interested in performing.
`…POSvc
`list
`is displayed via… graphical user
`interface
`component. One embodiment of the present invention supports
`HyperText Markup Language as
`the graphical user
`interface
`component...” (‘158:6)
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`Nor did PTAB address the fact that such an application is a “transactional
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`application[] . . .designed to incorporate and take advantage of the
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`capabilities provided by the present invention,” including “switching, object
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`routing, application and service management functions.” So, the POSvc
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`Application is a transactional application that displays an individual
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`networked object identity with information entries and attributes (Fig.
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`5D), designed to incorporate object routing, (“NAME,” “PASSWORD”)
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`displayed on Web page. (‘158:7) also details information entries, such as,
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`user 100, checking, savings account #s, $500 for attributes, name of user,
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`checking, savings accounts, amount transferred, in checking account object
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`identity, which is an individual networked object that uniquely identifies a
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`specific instantiation of the object.. PTAB’s construction also disregards the
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`ability of a POSvc Application to “perform . . . robust, real-time transactions
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`from a Web client is a significant aspect of the present invention.” (‘158:
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`10
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`col. 7) Figs. 4B, 5B-D, 6A illustrate a POSvc Application being displayed
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`on a Web page ( ‘158: cols. 7, 8. See ‘178/‘500 file histories.)
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`While ‘158:6 describes “POSvc Application” as “an application that can
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`execute the type of transaction that the user may be interested in
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`performing,” PTAB’s construction fails to reflect even this aspect of the
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`patent. PTAB overlooked the goal of the patent is for a Web user to perform
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`a real-time Web transaction from a POSvc Application displayed on a Web
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`page and that this capability did not exist for a Web user prior to the present
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`invention. See ‘158:5.
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`PTAB’s construction is so broad as to encompass a CGI program or even a
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`Web browser, which the specification distinguishes away.
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` ““The present invention is independent of…Web browser being
`utilized and… user can use any Web browser, without modifications
`to…Web browser.” (‘158:col. 3)
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`POSvc Application displayed on a Web page is a Web client
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`displayed on a Web browser or Web page and is the front-end client
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`program Web user 100 utilizes to run the application to perform two-way
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`real-time transactions from the Web Merchant Web Application.
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`Specification states: “Web user 100:will be able to connect to Bank services
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`and utilize the application to perform banking transactions,
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`11
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`Figs.5C, 5D and specification show that POSvc Application has and displays
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`networked objects with both attributes and information entries.
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`“Web Application” PTAB incorrectly construed “Web Application,” not in
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`accord with specification, intrinsic or extrinsic record or in view of claim as
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`a whole. A Web Application is “an application that is a Web client displayed
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`in a Web browser,” and this is “a significant aspect of the present invention.”
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`Construction for “Web Application” is same as POSvc Application.
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`“OBJECT ROUTING”: PTAB, misled by SAP, missed specification (
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`‘158:8) and ‘500 file history (see above), support construction of “object
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`routing” as “OSI application layer routing of individual networked objects
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`from a selected POSvc Application displayed on a Web page to a Web
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`Merchant’s services.” The construction for “individual networked objects”
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`is “the information entries and attributes in a DOLSIB.” “DOLSIB is a
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`virtual information store optimized for networking.” ‘158:8. The priority
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`Provisional Application 60/006,634 discloses:
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` “uniquely identify, retrieve and route dynamically changing information
`elements that have to be accessed remotely, using multi - media, object
`routing.”
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`Specification does not restrict “object routing” to TMP and does not
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`require a unique IP address to be hierarchically assigned to each object.
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`These are embodiments of the invention.
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`12
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`“A ROUTED TRANSACTIONAL DATA STRUCTURE THAT IS
`BOTH COMPLETE AND NON-DEFERRED, IN ADDITION TO
`BEING SPECIFIC TO THE POSVCAPPLICATION”
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`OSI application layer routing of individual networked objects—information
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`entries and attributes in a DOLSIB, a virtual information store (“VIS”)
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`optimized for networking —from a POSvc Application displayed on a Web
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`page or in a Web browser is used to complete the transfer of funds in a real-
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`time Web transaction in a funds transfer Web Application/POSvc
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`Application displayed on a Web page, as claimed in ‘158 patent. A VIS is a
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`“transient information store in which information entries and attributes are
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`associated with a networked object identity;” a database is a real information
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`store. OSI application layer routing occurs ‘from a POSvc Application
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`displayed on a Web page or Web browser.’ VIS in the ‘158 patent includes
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`both information entries and attributes, all alleged prior art only contain one
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`or the other, but not both.
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`In 1995, merchant services interfaced with front-end applications at live
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`teller, ATM machine or call center agent, but POSvc Web banking
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`applications on a Web page were non-existent, until DrA’s inventions. An
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`enterprise does not allow access to Back-Office applications for security
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`reasons. This is why Web Merchant has provided Web user with POSvc
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`Applications at front-end on Web page or Web browser. Web user 100
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`13
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`interacts with POSvc Application on Web page and interactive data structure
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`in POSvc Application with information entries and attributes (which is a
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`complete, encapsulated whole) to make a transaction request and perform a
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`real-time transaction as he would with live teller or ATM machine. (“A
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`patent specification is not a catalog of all known technologies.”
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`MPEP2161.01; A patent need not teach, and preferably omits, what is well-
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`known in the art, , and need not specify what one of ordinary skill in the art
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`knows already, for example, an object or data structure. This complete data
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`structure with information entries and attributes is specific to POSvc
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`Application from which Web user transacts (‘158:cols. 6, 7) and instantiated
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`by Web user and routed to complete a real-time (or non-deferred) Web
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`transaction. This data structure, called object identity with information
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`entries and attributes, is interactive and this interactive object data structure
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`is what makes the data structure transactional. Claim 1 in ‘158 patent is
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`patentable under 101 and 112, 2nd paragraph. PTAB failed to construe
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`claim term in view of whole claim. ‘178/‘500 file histories state that the
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`individual data structure in the ‘500 patent “is significantly different from an
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`HTML page that is accessed via a URL.” The individual data structure—
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`like that in Fig.5D —in the example of a Web banking application, refer to
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`individual checking and savings accounts; “each account is an individual”
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`14
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`data structure—“object identity— associated with information entries and
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`attributes” that “represents a networked object.” Such construction is
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`consistent with specification that “[t]he networked object identity identifies
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`the information entries and attributes in the DOLSIB as individual
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`networked objects”—information entries and attributes, which are values of
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`the characteristics of an individual data structure and characteristics of an
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`individual data structure. ( ‘158:8). ’158 patent relates to application layer
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`routing of an individual data structure with information entries and attributes
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`from a POSvc Application on a Web page. “Application layer routing,” in
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`turn, “creates an open channel for the management, and the selective flow of
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`data from remote databases on a network.”( ‘158:5). PTAB has erroneously
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`applied the Alice court decision. PO has just evidenced why claim 1 does
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`recite patent-eligible subject matter, why this should not be a CBM because
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`it solves a technological problem and is a technological invention. This
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`explanation was overlooked by the PTAB and solves all the 101; 112, 2nd
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`paragraph issues. In FWD p. 23, PTAB overlooked that SFCU and
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`Computerworld did not conduct real-time transactions, they conducted
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`deferred transactions via email, one-way browsing, Web forms and
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`hyperlinking. PTAB admits “Lawlor operates over standard phone
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`networks.” (FWD, p.23”…accessible through a dial-up gateway,” (FWD, p.
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`15
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`21), all of which prior art technologies have been disclaimed in the patent
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`specification at Cols 1, 2, 5. PTAB denied PO due process and her
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`constitutional right to request an impartial tribunal. PTAB Chief Judge
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`McNamara holds direct stock in Microsoft, a Third Party Requester in three
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`ex-parte and inter-partes re-exams against PO’s three parent patents to the
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`subject patent ,and financial holdings via mutual funds in the Petitioner, SAP
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`(and J.P. Morgan, Wells Fargo, CitiBank, who were sued on the same three
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`patents that are under IPR and CBM review by PTAB Judge McNamara).
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`Upon PO’s request to recuse, he refused to recuse and sanctioned her by
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`denying her access to PRPS system. DE District Court Judge Robinson re-
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`defined the term “financial interest, ” vastly different from IRS and
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`accounting definitions of that term
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`CONCLUSION: For at least the reasons set forth herein, PO requests
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`PTAB to allow all claims.
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`Date: April 6, 2015
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`222 Stanford Avenue,
`Menlo Park, CA 94025
`650.690.0995
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`Respectfully submitted,
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`DR. LAKSHMI ARUNACHALAM
`
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`_/Lakshmi Arunachalam/_________
` Lakshmi Arunachalam
`Pro Se Patent Owner
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`16
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`CERTIFICATION OF SERVICE (37 CFR 42.6(e), 42.105(a))
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`The undersigned hereby certifies that the above-captioned “PATENT OWNER’S
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`
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`REQUEST FOR RE-HEARING” in Case CBM2014-00018 was filed in its
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`entirety at the PTAB via email and hand-delivered by courier on April 6, 2015 and
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`also served in its entirety on April 6, 2015, upon the following parties via e-mail
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`and by First Class U.S. Mail :
`
`
`SAP, America, Inc
`
`Attn: Samir N. Pandya
`
`Sr. IP Counsel
`
`SAP Global Litigation Group
`3999 West Chester Pike
`Newtown Square, PA 19073
`610.661.9767
`
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`Samir.pandya@sap.com
`Attorneys for Petitioner
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`Petitioner’s correspondence address Of record at the USPTO PTAB
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`Lori A. Gordon and Michael Q. Lee
`STERNE, KESSLER, GOLDSTEIN
`& FOX P.L.L.C.
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`1100 New York Avenue, NW
`Washington, DC 20005
`lgordon-PTAB@skgf.com
`mlee-PTAB@skgf.com
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`Dr. Lakshmi Arunachalam
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`_/Lakshmi Arunachalam/_________
`Lakshmi Arunachalam
`Pro Se Patent Owner
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`Date: April 6, 2015
`222 Stanford Avenue
`Menlo Park, CA 94025
`650.690.0995
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`17
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