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
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket