throbber
Trials@uspto.gov Paper No. 10 Paper 35
`
`571-272-7822
`Date Entered: May 22, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAP AMERICA, INC.,
`
`Petitioner
`v.
`
`LAKSHMI ARUNACHALAM,
`
`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 ON REQUEST FOR REHEARING
`37C.F.R. § 42.71(d)
`
`
`

`

`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`Introduction
`
`On March 6, 2015, we entered a Final Written Decision in which we found
`
`claims 4–6 and 9–10 of U.S. Patent No. 8,037,158 B2 (“the ’158 Patent”) to be
`
`unpatentable. Paper 33 (“Final Dec.”). On April 6, 2015, Patent Owner filed a
`
`request for rehearing. Paper 34 (“Req. Reh’g.”). For the reasons discussed below,
`
`Patent Owner’s Request for Rehearing is DENIED.
`
`Related Court Proceedings
`
`On May 19, 2014, the U S. District Court for District of Delaware reported
`
`to the United States Patent and Trademark Office that, five days earlier, in Pi-Net
`
`International, Inc. v. JPMorgan Chase & Co., No. 1:12-cv-00282 (D. Del. May 14,
`
`2014), the district court granted defendant’s motion for summary judgment of
`
`invalidity of the ’158 Patent1 and U.S. Patents 5,987,500 (“the ’500 Patent”)2 and
`
`8,108,492 (“the ’492 Patent”).3 Ex. 3001. The patent owner at the time, Pi-Net
`
`International, Inc., who was also the original patent owner in this proceeding, filed
`
`an appeal to the U.S. Court of Appeals for the Federal Circuit (“the Appeal”). This
`
`proceeding continued while the Appeal was pursued. Prior to our Final Written
`
`Decision, the ’158 Patent was assigned to current Patent Owner, Lakshmi
`
`Arunachalam, who joined in the Appeal.
`
`On April 20, 2015, the U.S. Court of Appeals for the Federal Circuit
`
`dismissed the Appeal. Pi-Net International, Inc. and Dr. Lakshmi Arunachalam v.
`
`JPMorgan Chase & Co., No. 2014-1495 (Fed. Cir. Apr. 20, 2015). Ex. 3002.
`
`
`1 The ’158 Patent is the subject of a Final Written Decision in this proceeding and
`in CBM2013-00013, where we also denied a request for rehearing.
`2 The ’500 Patent is the subject of a Final Written Decision and a denial of a
`request for rehearing in IPR2013-00195.
`3 The ’492 Patent is the subject of a Final Written Decision and a denial of a
`request for rehearing, in IPR2013-00194.
`
`
`
`2
`
`

`

`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`In the district court, defendants had moved for summary judgment that claim
`
`4 of the ’158 Patent is invalid for indefiniteness, lack of enablement, and lack of
`
`written description.4 Ex. 3003. The May 14, 2014 District Court’s Memorandum
`
`Opinion states that among several motions before the court was defendant’s motion
`
`for summary judgment “for invalidity of the patents in suit.” Ex. 3004 at 1. The
`
`district court found claim 4 of the ’158 Patent invalid because the term “service
`
`network” in claim 1, from which claim 4 depends, is indefinite. Ex. 3004 at 16.
`
`In addition, the District Court’s Memorandum Opinion states that the
`
`common specification of the ’158 patent, the ’500 Patent and the ’492 Patent
`
`describes the VAN switch in “conflicting and overlapping ways,” “provides no
`
`usable description or structure” for numerous terms coined by the inventor5,
`
`provides no algorithms, source code or guidance as to how to configure a VAN
`
`switch to perform real-time transactions using TMP or any other protocol, provides
`
`no description of point-of-service applications other than block diagrams labeled
`
`bank, car dealer and pizzeria, lacks any details as to how a VAN switch would
`
`accomplish allowing a user to connect to a point-of-service application and does
`
`not disclose how real time user transactions occur. Ex. 3004, 20–21. The
`
`Memorandum Opinion states therefore that “The court concludes that the patents-
`
`in-suit are invalid for lack of written description.” Id. at 21 (emphasis added).
`
`Except in the case of a default judgment, every other final judgment should
`
`grant the relief to which each party is entitled, even if the party has not demanded
`
`that relief in the pleadings. Fed. R. Civ. P. 54 (c). See, Baker v. John Morrell &
`
`
`4 Defendants also moved for summary judgment of invalidity of claims 1–6, 10–
`12, 14–16, and 35 of the ’500 Patent and claims 1–8 and 10–11 of the ’492 Patent
`on the same grounds.
`5 The terms cited by the district court include switching service 702, management
`service 703, boundary service 701, and application service 704.
`
`
`
`3
`
`

`

`Case CBM2014-00018
`Patent 8,037,158 B2
`
`Co., 266 F. Supp. 2d 909, 936–939 (N.D. Iowa 2003). In the district court, the
`
`defendant asserted in affirmative defenses that the patents are invalid because they
`
`fail to meet conditions for patentability under 35 U.S.C. §§ 101, 102, 103 and 112,
`
`and moved for summary judgment of invalidity of specific claims asserted against
`
`the defendant. The district court concluded that “the patents-in-suit are invalid for
`
`lack of written description.” Ex. 3004 at 21. It appears that, incident to ruling on
`
`defendant’s summary judgment motion with respect to specific claims, the district
`
`court determined that, because of the lack of written description, each of the ’158
`
`Patent, the ’500 Patent and the ’492 Patent is invalid in its entirety. However, to
`
`the extent that the district court’s ruling is deemed to be limited to claim 4 of the
`
`’158 Patent, we address Patent Owner’s Request for Rehearing.
`
`Patent Owner’s Request For Rehearing
`
`As noted above, the Appeal has been dismissed and claim 4 of the ’158
`
`Patent explicitly has been adjudged invalid. Therefore, Patent Owner’s Request
`
`for Rehearing is denied with respect to claim 4.6
`
`Our Final Written Decision (“Final Dec.”) also concluded that claims 5–6
`
`and 9–10 are unpatentable. Patent Owner “incorporates by reference all papers
`
`submitted in this case previously, the file history of this patent and its parent
`
`patents in the priority chain and the record.” Req. Rh’g. 1. We are cognizant of
`
`the record in this proceeding. However, arguments may not be incorporated by
`
`reference from one document into another document and combined motions,
`
`oppositions, replies, or other combined documents are not permitted. 37 C.F.R.
`
`6 As noted above, the District Court adjudged claim 4 invalid, holding that a term
`in claim 1, from which claim 4 depends, is indefinite. Claims 5, 6, 9, and 10, which
`also depend from claim 1 (claim 5 depends from claim 4) may be invalid in view
`of the district court’s decision. Nevertheless, because the District Court did not
`address claims 5, 6, 9 and 10 specifically, we respond to the Rehearing Request
`concerning these claims.
`
`
`
`4
`
`

`

`Case CBM2014-00018
`Patent 8,037,158 B2
`
`§ 42.6(a)(3). We consider only those arguments advanced in Patent Owner’s
`
`Request for Rehearing concerning subject matter Patent Owner contends we
`
`overlooked or misapprehended in our Final Written Decision. 37 C.F.R.
`
`§ 42.71(d).
`
`We are not persuaded by Patent Owner’s argument that we misapprehended
`
`or overlooked that the subject matter of the ’158 Patent is drawn to a technical
`
`solution to a technical problem because Patent Owner coined terms such as POSvc
`
`application, VAN service, object routing, service network, and VAN switch. Req.
`
`Rh’g. 3–4. We addressed these issues extensively in our Final Written Decision,
`
`noting that claim 1, from which claim 4 depends, is directed to a method of
`
`performing a transaction that includes providing a webpage for display, providing
`
`an application the user can select to access checking and savings accounts,
`
`accepting signals from an input device, and transferring funds. Final Dec. 14. We
`
`also addressed the terminology used in the claims and determined that none of
`
`these features changes the non-technological nature of the claim. Id. at 13–15.
`
`Patent Owner has not identified any matter that we overlooked or failed to
`
`apprehend on this issue.
`
`Patent Owner does not identify clearly any other matter that we overlooked
`
`or misapprehended. Much of Patent Owner’s Request for Rehearing reargues
`
`points of claim construction that we have already addressed in this and other
`
`related proceedings. Req. Rh’g. 2, 5–14. In addition, Patent Owner’s shorthand
`
`language, incomplete sentences and omission of articles used routinely in the
`
`English language, such as “a” and “the,” render the Request for Rehearing
`
`difficult, and in some cases, impossible to decipher.
`
`For example, Patent Owner argues that a VAN (Value Added Network)
`
`Service is “a POSvc (Point of Service) Application displayed on a Web page, that
`
`
`
`5
`
`

`

`Case CBM2014-00018
`Patent 8,037,158 B2
`
`provides a value add to the network (e.g., Web banking)” and states “‘POSvc
`
`Application’ is the ‘value-add’ to the network.” Id. at 5. Thus, Patent Owner
`
`appears to argue a non-sequitur, i.e., that a Value Added Network Service is a
`
`“value-add” displayed on a Web page that provides a “value-add” to the network.
`
`In another example of an argument we cannot decipher, Patent Owner states
`
`PTAB construed, distinguishing between a facilities
`network (which provides the underlying network services
`from layers 1-4 of the OSI model) and a service network
`which provides the value-added services like Web
`banking.
`
`Req. Rh’g. 6.
`
`Patent Owner’s argument concerning data structures is contradictory. Patent
`
`Owner states that a patent need not teach, and preferably omits, what is well-
`
`known in the art, and need not specify what one of ordinary skill in the art knows
`
`already, for example, an object or data structure. Req. Rh’g. 14. Patent Owner
`
`then appears to argue that the data structure was not known in the art, stating as
`
`follows:
`
`This complete data structure with information entities
`and attributes is specific to POSvc Application from
`which Web user transacts and instantiated by Web user
`and routed to complete a real-time (or non-deferred) Web
`transaction.
`
` Id. The meaning of this sentence is unclear. Patent Owner’s reference to
`
`specific terms she coined, i.e., “POSvc Application” and “object routing,” id. at 4,
`
`also contradicts her argument that the specification preferably omits a description
`
`of an object or data structure, as used in the specification, because these terms are
`
`well-known in the art .
`
`Patent Owner also argues that:
`
`
`
`6
`
`

`

`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`Specification does not restrict “object routing” to TMP
`and does not require a unique IP address to be
`hierarchically assigned to each object. These are
`embodiments of the invention.
`
`Req. Reh’g.. 12. However, Patent Owner does not identify any other disclosure in
`
`the specification that describes the claimed object routing or otherwise identify
`
`disclosure we overlooked or misapprehended.
`
`In a conclusory fashion, Patent Owner states that we have erroneously
`
`applied the Supreme Court’s Decision in Alice Corp. Pty, Ltd. v. CLS Bank Int’l,
`
`134 S. Ct. 2347 (2014). Req. Rh’g. 15. However Patent Owner does not otherwise
`
`address our conclusion that claims 9 and 10 are unpatentable subject matter under
`
`35 U.S.C. § 101 and does not explain how we misapplied the Court’s decision in
`
`Alice.
`
`Patent Owner takes a similar approach to our analysis of the prior art, stating
`
`that SFCU and Computerworld did not conduct real-time transactions and that
`
`Lawlor operates over phone lines. Id. at 15. However, the Request for Rehearing
`
`does not address our combinations of the art, i.e., Lawlor and Computerworld,
`
`Final Dec. 20–23, and EB and SFCU, id. at 23–26, along with CORBA 1 and
`
`CORBA 2, id. at 26–36. Patent Owner does not address the further combination
`
`with respect to claims 5 and 6 with SNMP.
`
`Finally, Patent Owner again contends she is the victim of judicial bias, an
`
`allegation Patent Owner mentions she also has asserted unsuccessfully against the
`
`judges of the District Court of Delaware. Req. Reh’g. 16. We previously
`
`addressed these allegations in our order of December 5, 2014, in which we
`
`sanctioned Patent Owner for repeatedly violating our rules, despite our warnings.
`
`Paper 32 (Order Expunging Unauthorized Filings and Imposing Sanctions). We do
`
`
`
`7
`
`

`

`Case CBM2014-00018
`Patent 8,037,158 B2
`
`not reconsider Patent Owner’s allegations, except to note that Microsoft is not a
`
`party in this proceeding.
`
`In consideration of the above, the Patent Owner’s Request for Rehearing is
`
`DENIED.
`
`
`
`
`
`
`
`
`
`
`
`
`
`8
`
`

`

`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`
`
`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
`222 STANFORD AVE.
`MENLO PARK, CA 94025
`lakslambkins@yahoo.com
`
`
`
`
`9
`
`

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