Filed on behalf of Pi-Net International, Inc.
`By: Tam Thanh Pham
`
`Lauren May Eaton
`Colby B. Springer
`LEWIS ROCA ROTHGERBER LLP
`4300 Bohannon Drive # 230
`Menlo Park, CA 94025
`Phone: (650) 391-1380
`Fax:
` (650) 391-1395
`
`
`
`
`
`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
`_____________________
`
`RESPONSE OF PATENT OWNER
`
`
`
`
`
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`
`Table of Contents
`
`I. Claim Construction ............................................................................................................  1
`
`II. Objections to Grounds for Standing and Eligibility for Covered
`Business Method Patent Review ................................................................................  22 
`
`
`III. Patent Owner’s Response to 35 U.S.C. § 101 Issues ........................................  30
`
`IV. Claims 4-6 are Patentable over Lawlor, ComputerWorld, CORBA 1,
`CORBA 2, SFCU, Electronic Banking, SNMP individually or in any
`combination and are NOT Rendered Obvious under 35 U.S.C. Section
`103 ............................................................................................................................................... 35
`
`
`
`
`
`
`
`A. Banks in 1995 had Web sites, Web pages, Web forms and Email, Not
`Web applications or POSvc applications displayed on a Web page.
`PTAB Missed Petitioner’s Non-Factual Statements on Cited Art Are
`Contrary To Fact ............................................................................................................  38
`
`
`B. SFCU ..................................................................................................................................  42
`
`C. CORBA Interface Repository (IR) is NOT the ‘158 Virtual Information
`Store ....................................................................................................................................  55
`
`
`D. CORBA a framework, Had NO POSvc Application Displayed on a Web
`page .....................................................................................................................................  56
`
`
`E. CORBA Did Not Present Objects Or POSvc Applications On A Web
`Page. CORBA did Not Permit Communication between a CORBA object
`and a Web Page and/or Web Server in 1995-96 ...............................................  57
`
`
`F. CORBA IIOP: IIOP used raw TCP/IP connections in order to transmit
`data. CORBA had no capability of communicating via HTTP; CORBA
`Program Objects Are Only The Back-End ..........................................................  57
`
`
`G. ’158 Patent Claims Are Not Anticipated Nor Rendered Obvious by
`CORBA, Individually or In Combination with Cited Art .............................  58
`
`
`H. SNMP .................................................................................................................................  58
`
`i
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`I. Petitioner Falsely States that SNMP MIB stores Information Entries and
`Attributes. PTAB Missed This Point .....................................................................  64
`
`
`J. Claim 1:
`
`a) “A method for performing a real time Web transaction from a Web
`application over a digital network atop the Web” .....................................  66
`
`b). “providing a Web page for display on a computer system coupled
`to an input device” .................................................................................................  68
`
`c) “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” ............... 69
`
`d) “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” .................................................................................. 72
`
`e) “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” ................................................................................................  72
`
`K. Claim 4 ...............................................................................................................................  74
`
`
`
`
`
`L. Claims 5 and 6 ................................................................................................................  77
`
`
`V. Conclusion .............................................................................................................................  80
`
`
`
`ii
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`
`Cases
`
`Table of Authorities
`
`Bicon, Inc. v. Straumann Co., 441 F.3d 945 (Fed. Cir. 2006)  ..................................  34
`
`Unique Concepts, Inc. v. Brown, 939 F.2d 1558 (Fed. Cir. 1991)  .........................  34
`
`CLS Bank Intern. v. Alice Corp. Pty. Ltd., 685 F. 3d 1341 (Fed. Cir. 2012) .......  34
`
`
` 
`
` 
`
` 
`
`iii
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`
`I. Claim Construction
`
`
`A distinguishing feature of the ’158 Patent deriving priority from U.S.
`
`provisional application with S/N 60/006,634 filed November 13, 1995—is that the
`
`claimed real-time Web transaction must occur from a Web application that is a
`
`Web client and that is displayed in a Web browser. None of the known prior art
`
`offers this feature. In light of the PTAB Decision to Institute, Patent Owner
`
`respectfully suggests that the Board may have misunderstood some of the points of
`
`the invention. In light of the same, the Patent Owner seeks to clarify those
`
`perceived misunderstandings with slightly amended constructions from that
`
`provided in the Preliminary Response. The following terms construed together
`
`convey a clear and accurate understanding of how the claimed inventions differ
`
`from the prior art. In light of those differentiations and even in view of the simple
`
`claim language, claims 4-6 are not rendered obvious by the alleged cited art.
`
`CLAIM TERM OR PHRASE
`
`PATENT OWNER
`CONSTRUCTION
`
`PTAB CONSTRUCTION
`
`a) real-time Web
`
`a non-deferred Web
`
`“a software program that
`
`transaction from a Web
`
`transaction (requested by
`
`can be accessed by an
`
`application;
`
`a Web user) from an
`
`Internet user.”
`
`b) Web transaction is a
`
`application that is a Web
`
`loan requested from a
`
`client displayed in a Web
`
`(Petitioner and PTAB
`
`construed only ‘Web
`
` 
`
`1
`
`

`

`lender across the Web
`
`browser, that displays an
`
`CBM 2014-00018
`U.S. Patent 8,037,158 
`application.’)
`
`from a Web application
`
`object that is an individual
`
`
`
`c) complete the transfer of
`
`data structure with
`
`funds in a Web
`
`attributes and information
`
`application;
`
`entries with which a Web
`
`d) the Web transaction is
`
`user interacts to perform a
`
`a vehicle purchased with
`
`real-time Web
`
`bank financing across the
`
`transaction.
`
`Web from a Web
`
`application.
`
`
`
`
`
`
`
`The Petitioner misled the Board and is wholly incorrect in attempting to
`
`construe a ‘Web application,’ splitting it from the proper context of the claim
`
`language that distinguishes the claimed inventions in the ’158 Patent. As noted
`
`above, a distinguishing feature of the ‘158 Patent is that the real-time Web
`
`transaction must occur from a Web application that is a Web client and that is
`
`displayed in a Web browser or a Web page, that displays an object that is an
`
`individual data structure with attributes and information entries with which a Web
`
`user interacts to perform a real-time Web transaction. Patent Owner’s proposed
`
`construction reflects this necessity.
`
` 
`
`2
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`Patent Owner’s Web application and POSvc application, too, is distinctly
`
`different from a Web browser. The ’158 Patent specification clearly states that
`
`“[t]he present invention is independent of the Web browser being utilized and the
`
`user can use any Web browser, without modifications to the Web browser.”
`
`EXHIBIT 1001 at 3:40-43 (emphasis added). The ’158 Patent provides further
`
`instruction in stating that “if [a] Bank decided to include in their POSvc application
`
`access to checking and savings accounts, user 100 will be able to perform real-
`
`time transactions against his checking and savings accounts.” Id. at 7:2-6
`
`(emphasis added). “Thus if user 100 moves $500 from his checking account into
`
`his savings account, the transaction will be performed in real-time, in the same
`
`manner the transaction would have been performed by a live teller at the bank or
`
`an ATM machine”; “user 100 now has the capability to . . .more than browse his
`
`bank account. The ability to perform these types of robust real-time transactions
`
`from a Web client is a significant aspect of the present invention.” Id. at 7:6-10;
`
`11-14 (emphasis added).
`
`
`
`In order to distinguish between a mere one-way Web browsing transaction,
`
`which the Patent Owner has never attempted to claim because this is not what the
`
`Patent Owner invented, the ‘158 Patent requires that the entire phrase—’real-time
`
`Web transaction from a Web application’ (where ‘performing ’real-time Web
`
`transaction from a Web application’ comprises ‘providing a point-of-service
`
` 
`
`3
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`(POSvc) application as a selection within a Web page’)—be construed together
`
`and in its entirety. The terms of the phrase should not be divided and construed
`
`piece meal. To do so would be an improper claim interpretation exercise and
`
`would deny the claims their very spirit.
`
`CLAIM TERM OR PHRASE
`
`PATENT OWNER
`CONSTRUCTION
`
`PTAB CONSTRUCTION
`
`(from) a Web application
`
`Construed above.
`
`“a software program that
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`(from) “an application
`
`can be accessed by an
`
`that is a Web client
`
`Internet user.”
`
`displayed in a Web
`
`(Petitioner construed only
`
`browser, that displays an
`
`‘Web application.’)
`
`object that is … to
`
`perform a real-time Web
`
`transaction.”
`
`
`
`
`
`
`
`b) point-of-service
`
`b) A transactional
`
`Software program
`
`application as a selection
`
`application displayed on
`
`that facilitates execution
`
`within the Web page
`
`(or in) a Web page or a
`
`of a transaction requested
`
`
`
`Web browser, that
`
`by a user.
`
`c) providing a Web page
`
`displays an object that is
`
`(Petitioner and PTAB
`
`for display…;
`
`an individual data
`
`construed only ‘point-of-
`
` 
`
`4
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`service application.’)
`
`
`
`
`
`
`
`
`
`
`
`providing a point-of-
`
`structure with attributes
`
`service application as a
`
`and information entries
`
`selection within the Web
`
`with which the [Web]
`
`page…
`
`user interacts to perform
`
`
`
`
`
`
`
`a real time web-
`
`transaction from the
`
`application, provided as a
`
`selection displayed on a
`
`Web page.
`
`Petitioner incorrectly suggested and the PTAB construed ‘point-of-service
`
`application’ as a ‘software program that facilitates execution of a transaction
`
`requested by a user,’ splitting it from the context of the claim language as a whole.
`
`The only basis provided by Petitioner for adopting that construction is the
`
`Declaration of Dr. Marvin Sirbu. See id. (citing EXHIBIT 1003). Dr. Sirbu
`
`properly identifies the standard for claim construction before the Patent Office as
`
`“claims are to be given their broadest reasonable construction in light of the
`
`specification as would be read by a person of ordinary skill in the relevant art.”
`
`EXHIBIT 1003 at ¶ 5. But he fails to properly apply that standard. Dr. Sirbu states
`
`that “point-of-service application” is “an application that executes the type of
`
`transaction a user is interested in performing.” Id. at ¶ 12 (citing EXHIBIT 1001
`
` 
`
`5
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`(the ‘158 Patent) at 6:32-34). The construction offered by the PTAB, Dr. Sirbu
`
`and Petitioner—a software program that facilitates execution of a transaction
`
`requested by a user—fails to reflect even this aspect of the ‘158 Patent. For
`
`example, there is no discussion of ‘facilitation.’ This construction fails to give
`
`credence to the very next sentence in the ‘158 Patent, which characterizes the
`
`application as “displayed via the graphical user interface component.” EXHIBIT
`
`1001 at ‘158:6:34-35. Nor does this construction address the fact that such an
`
`application is a “transactional application[] . . . designed to incorporate and take
`
`advantage of the capabilities provided by the present invention,” including
`
`“switching, object routing, application and service management functions.” Id. at
`
`‘158:6:12-15, 27-28.
`
`
`
`This construction disregards the fact that the ability of a point-of-service
`
`application to “perform . . . robust, real-time transactions from a Web client is a
`
`significant aspect of the present invention. Id. at ‘158:7:12-14. Such functionality
`
`is better captured in the Patent Owner’s proposed construction. Patent Owner’s
`
`proposed construction of ‘an application displayed on (or in) a Web page or a Web
`
`browser, that displays an object that is an individual data structure with attributes
`
`and information entries with which a Web user interacts to perform a real time
`
`Web transaction from the application, provided as a selection displayed on a
`
`Web page’ offers not only the broadest reasonable construction but does so in light
`
` 
`
`6
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`of the specification as would be read by a person of ordinary skill in the relevant
`
`art. For example, Figures 4B, 5B, 5C, 5D and 6A, all illustrate a point-of-service
`
`(POSvc) application being displayed on a Web page. The specification, too,
`
`clearly states that “[a]pplication service 704 includes POSvc applications such as
`
`Bank POSvc described above, and illustrated in Fig. 6A,” which corresponds to
`
`VAN service 704. EXHIBIT 1001 at ‘158:9:2-4; 12-13.
`
`
`
`Patent Owner’s proposed construction also takes into account the literal
`
`language of the claims of the ‘158 Patent, which require the display on a Web page
`
`or Web browser of the point-of-service application as a selection within the Web
`
`page, which is otherwise absent from Petitioner’s proposed construction. For
`
`example, claim 1 of the ‘158 Patent expressly and unequivocally recites that the
`
`claimed method utilizes “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.” EXHIBIT 1001 at 9:44-10:2(emphasis added). Such is the
`
`importance of the context of the claim and not examining a given claim term in a
`
`vacuum. Patent Owner’s contextual examination of the claim—and subsequently
`
`arrived at construction—avoids an impermissibly over-broad construction (versus
`
`the requisite reasonably broad interpretation required by law) that remains wholly
`
`consistent with the specification.
`
` 
`
`7
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`Patent Owner’s proposed construction, too, remains consistent with the
`
`
`
`prosecution history of the ’158 Patent family. For example, during prosecution of
`
`U.S. patent application number 08/700,726—now U.S. patent number 5,778,178—
`
`it was stated that the prior art did “not teach or suggest associating an object
`
`identity with information entries and attributes.” (See ’178 Prosecution History pp.
`
`5-7, Exhibit 2011). The Patent Owner—also during prosecution of the ’178 Patent
`
`to which the’ 158 Patent makes a claim of priority—stated that “the object
`
`identities according to the presently claimed invention are distinctly different from
`
`an HTML page with URL links.” (See ‘178 Prosecution History pp. 5-7, Exhibit
`
`2011, 1997-11-03 Applicant Arguments…). Specifically, the Patent Owner stated:
`
`“Specifically, Davison does not teach or suggest a method or
`
`apparatus for enabling object routing on a World Wide Web.
`
`Davison does not teach or suggest associating an object identity
`
`with information entries and attributes wherein the object
`
`identity represents a networked object. . . . Davison does not
`
`teach or suggest storing the information entries and attributes in
`
`a virtual information store and assigning a unique network
`
`address to each object identity. The Examiner contends that
`
`Davison teaches the above elements in ‘an HTML Web page
`
`with URL links to application programs,’ thus rendering the
`
` 
`
`8
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`claimed invention unpatentable. Applicants respectfully submit
`
`that the object identities according to the presently claimed
`
`invention are distinctly different from an HTML page with
`
`URL links. As claimed . . . the object identity represents a
`
`networked object where the address for each networked object
`
`essentially 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
`
`the type of transaction desired (e.g. a POSvc application is
`
`essentially viewed by the user as a Web page, as described in
`
`the specification), the HTML page described in Davison is
`
`simply an entry form and does not provide any type of object
`
`routing capability. . . . 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. In contrast, according to the presently
`
` 
`
`9
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`claimed invention, as described in the specification . . . for
`
`example, 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 the POSvc
`
`application Web page. Each account is an individual network
`
`addressed object that is accessible on the Internet. Thus . . . for
`
`example, 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 World Wide Web. This type of an object
`
`routing system is not taught or suggested by Davison.”
`
` ‘178 Prosecution History pp. 5-7, Exhibit 2011 (emphasis added)
`
`The PTAB’s and Petitioner’s overly broad construction would attempt to reverse
`
`the prosecution history of the ’158 Patent family, which is expressly taken into
`
`account by virtue of Patent Owner’s proposed construction, which reflects a ‘live’
`
`application with information entries and attributes—not a mere Web browser with
`
` 
`
`10
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`HTML links. The user of such an application must be able to interact with such an
`
`application and not simply click on a link to be directed to another URL.
`
`CLAIM TERM OR PHRASE
`
`facilities network
`
`PTAB CONSTRUCTION
`
`PATENT OWNER
`CONSTRUCTION
`Network with physical
`
`
`
`hardware components and
`
`that provides underlying
`
`network communication
`
`services up to layer 4 of
`
`the OSI model and over
`
`which an OSI application
`
`layer 7 network operates.
`
`
`
`
`
`
`
`FIGURE 3 of the ’158 Patent clearly identifies the OSI model. See EXHIBIT
`
`1001 at ’158:3:8-9, 4:48-5:13, FIGURE 3. Moreover, the specification makes clear
`
`that the “service network run[s] on top of a facilities network,” EXHIBIT 1001 at
`
`5:49-51. This clearly distinguishes the OSI application layer—as further discussed
`
`below—from the network or transport or other lower layers of the OSI model. As
`
`such, the Patent Owner’s construction of ‘a network with physical hardware
`
`components that provides underlying network communication services up to layer
`
`4 of the OSI model and over which an OSI application layer 7 network operates’ is
`
`accurate, complete, and a reasonable construction.
`
` 
`
`11
`
`

`

`CLAIM TERM OR PHRASE
`
`Service network
`
`PATENT OWNER
`CONSTRUCTION
`An OSI application layer
`
`CBM 2014-00018
`U.S. Patent 8,037,158 
`PTAB CONSTRUCTION
`
`A network on which
`
`network running on top of
`
`services other than
`
`a facilities network and
`
`underlying network
`
`that provides value-added
`
`communications services
`
`network services (VAN
`
`are provided over the
`
`services). (VAN
`
`Internet.
`
`service—construed
`
`below).
`
`
`
`PTAB’s construction is ‘a network on which services other than underlying
`
`network communications services are provided over the Internet.’
`
`
`
`
`
` Petitioner and the PTAB fail to properly distinguish a service network from
`
`a facilities network. The Patent Owner again refers to the ’158 Patent
`
`specification’s clear distinction between the two, which states that a “service
`
`network run[s] on top of a facilities network.” EXHIBIT 1001 at 5:49-51. The OSI
`
`application layer is thus clearly distinguished from the network or transport or
`
`other lower layers of the OSI model. See EXHIBIT 1001 at 4:48-5:13 and Fig. 3.
`
`This distinction is critical in that “[a]pplication layer routing creates an open
`
`channel for the management, and the selective flow of data from remote databases
`
`on a network.” EXHIBIT 1001 at 5:15-17. “[T]he present invention is implemented
`
` 
`
`12
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`to function as a routing switch in [the] application layer.” Id. at 5:13-15. In light
`
`of the foregoing, the Patent Owner’s construction is the proper construction: ‘an
`
`OSI application layer network running on top of a facilities network and that
`
`provides value-added network services (VAN services).’
`
`
`CLAIM TERM OR PHRASE
`
`Value added network
`
`PATENT OWNER
`CONSTRUCTION
`A POSvc application
`
`PTAB CONSTRUCTION
`
`Not construed in this
`
`(VAN) service
`
`displayed on a Web page,
`
`CBM2014-00018.
`
`that provides a value-add
`
`
`
`to the network.
`
`
`
`Patent Owner contends that a value added network (“VAN”) service should
`
`be construed based on its clear meaning as expressed in the specification of the
`
`‘158 Patent, which is otherwise a term coined by the inventor. The concept of a
`
`VAN Service is illustrated in Figs. 5B, 5C, 5D, 6A and 7 and VAN service 704 at
`
`‘158:9:1-15 as follows: A “VAN service 704” or “application service 704 includes
`
`POSvc applications such as Bank POSvc described above and illustrated in Fig.
`
`6A.” A lengthy discussion as to the nature of a VAN Service may be found at
`
`‘158:7:1-14 and 9:1-15, which discusses offering such services through an
`
`“application network” whereby “Web merchant[s] may choose the types of service
`
`that [they] would like to offer [their] clients.” As an example, the ‘158 Patent
`
` 
`
`13
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`describes a Web banking application for providing Web banking services as
`
`illustrated, specifically in Fig. 5D. This ‘point-of-service application displayed on a
`
`Web page’ ‘provides a value-add to the network’ and, of course, to the Web
`
`merchant service and to the Web user. Such a construction complies much more
`
`closely with the specification than any overly broad suggestion of ‘a service . . . on
`
`PTAB CONSTRUCTION
`
`a network.’
`
`
`CLAIM TERM OR PHRASE
`
`a) transferring funds from
`
`PATENT OWNER
`CONSTRUCTION
`a) Completing a non-
`
`the checking account to
`
`deferred Web transaction
`
`the savings account in
`
`from a POSvc application
`
`real-time utilizing a
`
`displayed on a Web page
`
`routed …..
`
`(non-deferred transferring
`
`
`
`
`
`of funds from checking
`
`to savings account)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`b) utilizing a routed
`
`b) utilizing an individual
`
`Using a data structure that
`
`transactional data
`
`data structure that is
`
`facilitates switching a
`
`structure that is both
`
`routed in the application
`
`user who selects a
`
`complete and non-
`
`layer of the OSI model as
`
`transactional application
`
`deferred, in addition to
`
`a complete data structure
`
`to a service provider
`
` 
`
`14
`
`

`

`being specific to the
`
`with information entries
`
`CBM 2014-00018
`U.S. Patent 8,037,158 
`program that provides
`
`point-of-service
`
`and attributes—specific to
`
`immediate processing.
`
`application
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`the point-of-service
`
`(POSvc) application
`
`displayed on the Web
`
`page— and routed as a
`
`non-deferred data
`
`structure with the
`
`information entries and
`
`attributes (with which the
`
`Web user interacts to
`
`transact from, to perform
`
`the real-time Web
`
`transaction from the
`
`specific point-of-service
`
`(POSvc) application
`
`displayed on a Web page
`
`c) non-deferred
`
`c) not deferred
`
`d) providing a point-of-
`
`d) point-of service
`
`service application as a
`
`application has been
`
` 
`
`15
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`
`selection within the Web
`
`construed in a box above.
`
`page
`
`
`
`e) attributes and
`
`e) characteristics of an
`
`information entries,
`
`individual data structure
`
`specific to the point-of-
`
`and values of the
`
`service application
`
`characteristics of an
`
`individual data
`
`structure—specific to a
`
`POSvc application,
`
`displayed on a Web page.
`
`
`
`
`
`Patent Owner’s construction is first and foremost supported by the
`
`specification. In Fig. 5D, an exemplar bank point-of-service application is
`
`displayed on a Web page. Fig. 5D illustrates an individual data structure with
`
`information entries and attributes on said Web page. More specifically, the
`
`attributes correlate to the NAME and PASSWORD whereas the information
`
`entries are the actual name and password provided by the Web user: values of the
`
`characteristics of an individual data structure and characteristics of an individual
`
`data structure. The result is an interactive data structure provided as part of the
`
` 
`
`16
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`point-of-service application—that allows for values to be returned by a Web
`
`merchant as a part of a real-time Web transaction.
`
`Referring to the prosecution history of the ’158 Patent family—specifically
`
`that of the aforementioned ’178 Patent from which the present patent claims
`
`priority—it was discussed that the individual data structure in the ‘178 patent “is
`
`significantly different from an HTML page that is accessed via a URL.” (See ‘178
`
`Prosecution History pp. 5-7, Exhibit 2011). The individual data structure—like
`
`that in Fig. 5D —which in the example of a Web banking application shown in
`
`Fig. 5D, refer to individual checking and savings accounts; “each account is an
`
`individual” data structure—“object identity— associated with information entries
`
`and attributes” that “represents a networked object.” (See ‘178 Prosecution
`
`History pp. 5-7, Exhibit 2011). Such an explanation—and corresponding
`
`construction—are likewise consistent with the ’158 Patent’s discussion that “[t]he
`
`networked object identity identifies the information entries and attributes in the
`
`DOLSIB as individual networked objects”—information entries and attributes,
`
`which are values of the characteristics of an individual data structure and
`
`characteristics of an individual data structure. EXHIBIT 1001 at 8:1-3.
`
`
`
`Petitioner offers no construction for this central concept of the ’158 Patent,
`
`which is evident as to acknowledge a proper construction would be to admit to the
`
`novelty and non-obviousness of the presently claimed invention. The ’158 Patent,
`
` 
`
`17
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`however, clearly addresses the concept of application layer routing of an individual
`
`data structure with information entries and attributes from a POSvc application on
`
`a Web page or Web browser. “Application layer routing,” in turn, “creates an
`
`open channel for the management, and the selective flow of data from remote
`
`databases on a network.” EXHIBIT 1001 at 5:15-17. “[T]he present invention is
`
`implemented to function as a routing switch in [the] application layer.” Id. at 5:13-
`
`15. Therefore, Patent Owner’s construction of ‘utilizing an individual data
`
`structure that is routed in the application layer of the OSI model as a complete
`
`data structure with information entries and attributes—specific to the point-of-
`
`service (POSvc) application displayed on the Web page— and routed as a non-
`
`deferred data structure with the information entries and attributes (with which the
`
`Web user interacts to transact from, to perform the real-time Web transaction from
`
`the specific point-of-service (POSvc) application displayed on a Web page)’ is
`
`correct. Information entries are the values of the characteristics of an individual
`
`data structure and attributes are the characteristics of an individual data structure—
`
`specific to a POSvc application (funds transfer) displayed on a Web page. In
`
`contrast, in CGI, the fields in an HTML form are sent individually field-by-field as
`
`standard I/O from a Web page to a back-end application, local to the back-end. In
`
`CGI, the fields in an HTML form are not sent as a whole or as a complete data
`
`structure—rather the fields in the HTML form are sent individually field-by-field
`
` 
`
`18
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`as standard I/O from a Web page— nor are they sent in a non-deferred fashion.
`
`OSI application layer routing of an individual data structure (as a whole and
`
`complete data structure with information entries and attributes and in real-time, not
`
`deferred) with the values of the characteristics of an individual data structure and
`
`characteristics of an individual data structure—specific to a POSvc application
`
`displayed on a Web page—from the POSvc application displayed on a Web page
`
`to anywhere is a key feature that distinguishes the inventions in the ‘158 and its
`
`priority patents from any of the alleged cited art.
`
`CLAIM TERM OR PHRASE
`
`Object routing is used to
`
`PATENT OWNER
`CONSTRUCTION
`OSI application layer
`
`PTAB CONSTRUCTION
`
`The use of individual
`
`complete the transfer of
`
`routing of individual
`
`network objects to route a
`
`funds in a Web
`
`networked objects—
`
`user from a selected
`
`application
`
`information entries and
`
`transactional application
`
`
`
`
`
`
`
`
`
`
`
`
`
` 
`
`attributes in a DOLSIB, a
`
`to the processing provided
`
`virtual information store
`
`by a service provider.
`
`optimized for networking
`
`—from a POSvc
`
`application displayed on a
`
`Web page or in a Web
`
`
`
`
`
`
`
`
`
`19
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`browser— is used to
`
`complete the transfer of
`
`funds in a real-time Web
`
`transaction in a funds
`
`transfer Web
`
`application/POSvc
`
`application displayed on
`
`a Web page.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`virtual information store
`
`“A transient information
`
`“An information store in
`
`
`
`
`
`
`store, that is not
`
`which information entries
`
`permanent, in which
`
`and attributes are
`
`information entries and
`
`associated with a
`
`attributes are associated
`
`networked object
`
`with a networked object
`
`identity.”
`
`identity.”
`
`The Petitioner—again—disregards this crucial phrase as to address the same
`
`is to acknowledge the novelty and non-obviousness of the presently claimed
`
`invention. In that regard, ‘object routing is used to complete the transfer of funds
`
`in a Web application’ is similar to the aforementioned ‘application layer routing’
`
`of the prior phrase, namely, “transferring funds from the checking account to the
`20
`
` 
`
`

`

`CBM 2014-00018
`U.S. Patent 8,037,158 
`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.” A “networked object identity identifies the information
`
`entries and attributes in the DOLSIB as individual networked objects”—
`
`information entries and attributes, which are values of the charact