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
`
`_____________________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`RESPONSE TO PETITION
`
`
`
`

`

`
`
`
`TABLE OF CONTENTS
`
`CBM2014-00018
`Patent 8,037,158
`
`TABLE OF AUTHORITIES ................................................................................... iii
`
`LIST OF EXHIBITS ................................................................................................ iv
`
`TABLE OF CONTENTS ........................................................................................... 1 
`
`I. 
`
`II. 
`
`Introduction ...................................................................................................... 1 
`
`Argument ......................................................................................................... 1 
`
`A. 
`
`PO’s alternative constructions are not supported by the
`specification and should not be adopted ............................................... 1 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`8. 
`
`“Web Application” ...................................................................... 1 
`
`“point-of service application as a selection within the
`Web page” ................................................................................... 3 
`
`“facilities network” ..................................................................... 4 
`
`“VAN service” ............................................................................ 4 
`
`“service network” ........................................................................ 5 
`
`“utilizing a routed transactional data structure” ......................... 5 
`
`“object routing” ........................................................................... 6 
`
`“virtual information store” .......................................................... 7 
`
`B. 
`
`The Board’s Decision on the Institution of Trial is final and
`non-appealable. ...................................................................................... 8 
`
`C. 
`
`Claims 9 and 10 are non-statutory under 35 U.S.C. § 101. .................. 8 
`
`1. 
`
`Claims 1, 9 and 10 are abstract and thus non-statutory .............. 8 
`
`D. 
`
`Properly construed, claims 4-6 are unpatentable over the prior
`art. .......................................................................................................... 9 
`
`1. 
`
`Lawlor in view of Computerworld and further in view of
`CORBA1/CORBA2 renders claims 4-6 obvious. .................... 10 
`
`
`
`
`- i -
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`

`

`
`
`2. 
`
`CBM2014-00018
`Patent 8,037,158
`
`Claims 1 and 4-6 are rendered obvious by SFCU in view
`of Electronic Banking and further in view of
`CORBA1/CORBA2 or CORBA1/CORBA2 and SNMP ......... 15 
`
`III.  Conclusion ..................................................................................................... 15 
`
`
`
`
`
`
`- ii -
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`

`

`
`
`
`
`
`CBM2014-00018
`Patent 8,037,158
`
`TABLE OF AUTHORITIES
`
`Cases 
`Accenture Global Servs. GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345
`(Fed. Cir. 2013) ...................................................................................................... 9
`
`Alice Corp. v. CLS Bank Int’l, No. 13-298, 573 U.S. __ (2014) ............................... 9
`
`Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1332-33 (Fed. Cir. 2012) ..................... 9
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297 (2012)
` ................................................................................................................................ 9
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir.
`2005) ....................................................................................................................... 2
`
`
`
`
`
`
`- iii -
`
`

`

`
`
`SAP
`
`Exhibit No.
`
`SAP 1001
`
`
`SAP 1002
`
`SAP 1003
`
`
`SAP 1004
`
`
`SAP 1005
`
`
`SAP 1006
`
`
`SAP 1007
`
`SAP 1009
`
`
`
`SAP 1010
`
`SAP 1011
`
`
`
`SAP 1012
`
`
`
`SAP 1013
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`LIST OF EXHIBITS
`
`CBM2014-00018
`Patent 8,037,158
`
`Document Description
`
`U.S. Patent No. 8,0137,158 to Arunachalam (filed Oct. 30,
`2007; issued Oct. 11, 2011) (“the ’158 patent”).
`
`Prosecution History of U.S. Patent No. 8,037,158
`
`Declaration of Dr. Marvin Sirbu (including Curriculum Vitae of
`Dr. Sirbu, attached as Appendix A; “Requirements for Internet
`Hosts—Communication Layers” by Braden as Appendix B;
`and, “Stanford Federal Credit Union Pioneers Online Financial
`Services” published by Business Wire as Appendix C).
`
`Lipis, A. H. et al., “Electronic Banking,” The Stock Market, 4th
`Edition, John Wiley & Sons, New York, 1985, 227 pages.
`
`Stanford Federal Credit Union Pioneers Online Financial
`Services
`
`U.S. Patent No. 5,220,501 to Lawlor et al. (filed Mar. 15, 1984;
`issued Mar. 3, 1987).
`
`Computerworld, June 26, 1995
`
`The Essential CORBA: Systems Integration Using Distributed
`Objects (CORBA1)
`
`Copyright registration webpage of CORBA1
`
`Protocol Operations For Version 2 Of The Simple Network
`Management Protocol
`
`The Common Object Request Broker: Architecture and
`Specification (CORBA2)
`
`Elnozahy et al., Experiences Using DCE and CORBA to Build
`
`- iv -
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`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`SAP 1014
`
`
`SAP 1015
`
`
`
`
`
`SAP 1016
`
`
`SAP 1017
`
`
`SAP 1018
`
`
`SAP 1019
`
`SAP 1020
`
`SAP 1021
`
`
`SAP 1022
`
`
`SAP 1023
`
`
`
`
`CBM2014-00018
`Patent 8,037,158
`
`Tools for Creating Highly-Available Distributed Systems,
`International Conference on Open Distributed System
`Processing (February 1995)
`
`Steve Vinoski, Distributed Object Computing with CORBA,
`originally published C++ Report (July/August 1993)
`
`Memorandum Opinion in Pi-Net International, Inc. v.
`JPMorgan Chase & Co., No. 1:12-cv-00282 (D. Del), May 14,
`2014.
`
`Currently Filed
`
`Haynes, T., “The Electronic Commerce Dictionary,” The
`Robleda Company, California, 1985, 112 pages.
`
`Ashley, Charles C., “IVANS: A vigorous decade,” Bests
`Review, May, 1993
`
`Berners-Lee, T. and Connolly, D., “Hypertext Markup
`Language - 2.0,” http://tools.ietf.org/html/draft-ietf-html-spec-
`05#page-37, August 8, 1995, 73 pages.
`
`Messmer, Ellen, “Network World,” August 21, 1995
`
`Wingfield, N., “Infoworld,” Aug 21, 1995.
`
`Clark, D., “The Design Philosophy of the DARPA Internet
`Protocols,” Computer Communication Review, 18, 4, Aug
`1988.
`
`Zwimpfer, L. and Sirbu, M., “Standards Setting for Computer
`Communication: The Case of X.25” IEEE Comm Mag,” 23, 3,
`March 1985
`
`Declaration of Dr. Marvin Sirbu in Support of Petitioner’s
`Reply to Patent Owner’s Corrected Response to Petition.
`
`- v -
`
`

`

`
`I.
`
`Introduction
`
`
`
`CBM2014-00018
`Patent 8,037,158
`
`In its Patent Owner’s Response (“Response”), the Patent Owner (“PO”)
`
`proposed new constructions for a number of terms. PO relied extensively on its
`
`new constructions in its arguments against the Section 101 and 103 rejections. But
`
`PO’s new constructions are flawed as being overly narrow and not supported by
`
`the specification. Since they are based on flawed claim constructions, PO’s 101
`
`and 103 arguments are also flawed and should be rejected.
`
`II. Argument
`A.
`PO’s alternative constructions are not supported by the
`specification and should not be adopted
`
`PO premises
`
`its arguments almost entirely on overly narrow and
`
`unsupported constructions of eight terms: “web application,” “point-of service
`
`application,” “facilities network,” “service network,” “VAN service,” “utilizing a
`
`routed transactional data structure,” “object routing,” and “virtual information
`
`store.” The Board should reject PO’s constructions because they are not supported
`
`by the specification, improperly import limitations into the claims, and introduce
`
`further ambiguity into the claims.
`
`“Web Application”
`1.
`PO urges the Board to reconsider its construction of this term and adopt its
`
`new construction. (Response, pp. 1-4.) The Board should reject PO’s construction
`
`because it is erroneous and not supported by the’158 specification. For example,
`
`- 1 -
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`

`

`CBM2014-00018
`Patent 8,037,158
`
`
`PO's proposed construction equates a Web application to a Web client, and
`
`specifies that a Web application/Web client “is displayed in a Web Browser.”
`
`(Response, pp. 1-2). But this is opposite to the teachings of the ’158 patent that
`
`states “[w]eb browsers are software interfaces that run on Web clients.” (SAP
`
`1001, ’158 patent, 1:32-33.)
`
`Also, PO's construction appears to equate the terms “web application” and
`
`“POSvc application.” (Response, top of p. 3) But there is no support in the ’158
`
`patent for equating these terms. In fact, the use of different terms in claim 1
`
`indicates the terms should have different meanings. (SAP 1023, ¶¶ 21-22.)
`
`PO appears to include “real-time Web transaction" in its proposed
`
`construction of “Web application.” (Response, pp. 1-2). This is nonsensical and
`
`redundant given the explicit recitations of claim 1, and not supported in the
`
`specification. (SAP 1023, ¶ 23.) In fact, PO does not even attempt to argue its
`
`construction is supported by the specification. Instead, PO’s proposed construction
`
`appears to be based on what PO believes is necessary to overcome the prior art,
`
`stating “As noted above, a distinguishing feature of the '158 Patent is …. Patent
`
`Owner's proposed construction reflects this necessity.” (Response, p. 2.)
`
`Similarly, PO fails to identify any support in the specification “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.”
`
`- 2 -
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`

`

`
`(Response, p. 2.)(SAP 1023, ¶ 24.)
`
`
`
`CBM2014-00018
`Patent 8,037,158
`
`For the above reasons, the Board should reject PO’s construction and
`
`maintain its existing construction.
`
`2.
`
` “point-of service application as a selection within the Web
`page”
`
`
`
`PO urges the Board to reconsider its construction of this term and adopt its
`
`new construction. (Response, pp. 4-10.) It is difficult to discern PO’s proposed
`
`construction as the table on pages 4 and 5 and the paragraph at the bottom on page
`
`6 appear to offer varying constructions. In any case, all of these constructions
`
`should be rejected because they improperly import limitations from the
`
`specification and prosecution history, and are not supported by the ’158
`
`specification. (SAP 1023, ¶¶ 25-28.)
`
`
`
`As described by the ’158 patent, POSvc applications are transactional
`
`applications where a transaction includes any type of commercial or other type of
`
`interaction that a user may want to perform. (’158 patent, 6:12-13, 5:32-34; SAP
`
`1023, ¶ 26.) Based on this teaching, it is clear a POSvc application/transaction
`
`application is not limited to “[displaying] an object that is an individual data
`
`structure with attributes and information entries with which the [Web] user
`
`interacts” as alleged by PO’s new construction. (SAP 1023, ¶ 26.) The’158 patent
`
`also teaches a POSvc application may access back-end processing to execute a
`
`transaction requested by a user. (’158 patent, 6:46-7:9; SAP 1023, ¶ 26.) This
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`- 3 -
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`

`

`CBM2014-00018
`Patent 8,037,158
`
`
`teaching is consistent with the Board’s construction. For the above reasons, the
`
`Board should reject PO's construction and maintain its existing construction.
`
` “facilities network”
`
`3.
`This term does not appear in the claims but is part of PO’s new proposed
`
`construction of “service network.” (Response, p. 12.) The ’158 patent does not
`
`support PO's narrow construction of “facilities network” to mean a “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.” (Response, p. 11; SAP 1023, ¶ 30. 31.) The
`
`only definition of “facilities network”' provided by the ’158 patent is “[an]
`
`embodiment includ[ing] a service network running on top of a facilities network,
`
`namely the Internet, the Web or e-mail networks.” (’158 patent, 5:49-51; SAP
`
`1023, ¶ 30.) Accordingly, PO’s narrow construction of “services network” should
`
`be rejected.
`
`“VAN service”
`
`4.
` This term also does not appear in the claims but is part of PO's proposed
`
`
`
`construction of “service network.” (Response, p. 12.) PO’s proposed construction
`
`of “VAN service” is overly narrow and inconsistent with the specification. (SAP
`
`1023, ¶ 33.) The ’158 patent describes “VAN service” by way of example, stating
`
`it is “designed to meet a particular set of requirements related to performance,
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`- 4 -
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`

`

`CBM2014-00018
`Patent 8,037,158
`
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`reliability, maintenance and ability to handle expected traffic volume.” (’158
`
`patent,’158 patent, 9:9-11.) Accordingly, the specification does not support PO’s
`
`narrow construction. (SAP 1023, ¶¶ 33-34.)
`
` “service network”
`
`5.
`PO urges the Board to further narrow its construction of this term by
`
`requiring (1) that the service network is “an OSI application layer network running
`
`on top of a facilities network” and (2) that the service network “provides value-
`
`added network services (VAN services).” (Response, p. 12.) PO’s proposed
`
`construction improperly imports limitations into the claims and is not supported by
`
`the specification or plain language of the claims. (SAP 1023, ¶¶ 36-38.) Nowhere
`
`does claim 1 recite an OSI application layer network. Also, nothing in the ’158
`
`patent requires the “service network” to be limited to “an OSI application layer
`
`network.” (’158 patent, 5:49-51; SAP 1023, ¶¶ 36-38.) Thus, the specification does
`
`not support PO's overly narrow construction.
`
`“utilizing a routed transactional data structure”
`
`6.
`PO urges the Board to further narrow its construction of this term.
`
`
`
`(Response, pp. 14-19.) PO contends the “individual data structure … is routed in
`
`the application layer of the OSI model as a complete data structure with
`
`information entries and attributes.” (Response, p. 18.) However, claim 1 does not
`
`recite the routing of the individual data structure. Instead, claim 1 only recites
`
`- 5 -
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`

`

`CBM2014-00018
`Patent 8,037,158
`
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`“utilizing a routed transactional data structure.” (SAP 1023, ¶ 40-41.) Also, the
`
`specification does not support PO’s proposed construction. The specification
`
`describes how the “exchange activates a graphical user interface to present [a] user
`
`with a list of POSvc application options … [and] the user makes a selection from
`
`the POSvc application list.” (’158 patent, 9:21-24.) Then “the switching
`
`component in the exchange switches the user to the selected POSvc application,
`
`and … the object routing component executes the user’s request.” (Id., 9:24-27.)
`
`As further explained by the ’158 patent, “[o]nce Bank POSvc application[s]
`
`… [have] been activated, [the] user will be able to connect to Bank services and
`
`utilize the application to perform banking transactions, thus accessing data from a
`
`host or data repository … in the Bank ‘Back Office.’” (Id., 6:56-60.) Accordingly
`
`the specification supports the Board’s construction of this term, not PO’s proposed
`
`construction. (See Decision, pp. 11-14; SAP 1023, ¶¶ 42-45.)
`
` “object routing”
`
`7.
`PO urges the Board to further narrow its construction. (Response, pp. 19-
`
`
`
`22.) PO asserts this term is similar to “utilizing a routed transactional data
`
`structure” (Response, p. 21), but argues this term “differs … in that the OSI
`
`application layer routing occurs ‘from a point-of-service application displayed on
`
`(or in) a Web page or Web browser.’” (Id., p. 21.) The specification does not
`
`support PO’s proposed construction. (SAP 1023, ¶ 47.) As explained above, the
`
`- 6 -
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`

`

`CBM2014-00018
`Patent 8,037,158
`
`
`’158 patent does not describe the actual routing of objects. Instead, the ‘158 patent
`
`describes switching (or transferring) a user to a service provider program for
`
`processing. (SAP 1023, ¶ 48.) Such transferring is accomplished using
`
`individualized network objects. (Id.) The networked objects identify information
`
`entries and attributes in a distributed on-line service information base as individual
`
`networked objects. (‘158 patent, 6:11-16, 56-59, 8:1-15). Moreover, “the Internet
`
`address for each networked object in the tree essentially establishes the individual
`
`object as an ‘IP-reachable’ or accessible node on the Internet … and [the] Internet
`
`address [is utilized] to uniquely identify and access the object from the DOLSIB.”
`
`(Id., 8:12-16 (emphasis added).) Accordingly, the specification teaches objects are
`
`accessed, not routed, which is consistent with the Board’s construction of this term.
`
`(Decision, pp. 14-16.)
`
` “virtual information store”
`
`8.
`PO urges the Board to further narrow its construction by requiring that the
`
`
`
`information store be “transient” and “not permanent” (Response, p. 20) While the
`
`specification states that a virtual information store is created (’158 patent, 2:52-54),
`
`there is no support for the PO’s construction that the virtual information store be
`
`“transient” and “not permanent.” (SAP 1023, ¶ 51.) PO argues these limitations
`
`are “consistent with standard terminology in the computer field” (Response, p. 22),
`
`but offers no expert testimony to support this allegation.
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`- 7 -
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`

`

`
`
`B.
`
`CBM2014-00018
`Patent 8,037,158
`
`The Board’s Decision on the Institution of Trial is final and non-
`appealable.
`
`Patent Owner argues against the Board’s decision to institute trial.
`
`(Response, p. 22.) This argument is meritless, however, because the Board’s
`
`determination on whether to institute a trial is final and non-appealable. See 35
`
`U.S.C. 135(a) and 314(d), as amended; 35 U.S.C. 324(e); and § 42.71(c).
`
`C. Claims 9 and 10 are non-statutory under 35 U.S.C. § 101.
`PO alleges claims 9 and 10 are statutory, but its arguments are based on its
`
`flawed claim constructions and an erroneous allegation the Board ignored steps of
`
`claim 1 in making its decision.
`
`Claims 1, 9 and 10 are abstract and thus non-statutory
`
`1.
`PO's arguments are based on its flawed, overly narrow and unsupported
`
`claim constructions. For example, PO argues “Again, even substituting the Board's
`
`construction …, the claim still requires routing of that data structure in OSI
`
`application layer as a whole (unlike in CGI, where field by field is sent as stand
`
`I/O) ….” (Response, pp. 32 (emphasis added to show limitations added by the PO
`
`to the claim).) Even here, in the context of accepting the Board's construction, the
`
`PO improperly imports limitations into the claims.
`
`Claim 1 recites nothing more than the abstract idea of transferring funds
`
`from a checking account to a savings account. As noted by the Board in related
`
`proceeding CBM2013-00013, “in order for the addition of a machine to impose a
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`- 8 -
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`

`

`CBM2014-00018
`Patent 8,037,158
`
`
`meaningful limit on the scope of a [method] claim, it must play a significant part in
`
`permitting the claimed method to be performed, rather than function solely as an
`
`obvious mechanism for permitting a solution to be achieved more quickly.”
`
`(CBM2013-00013, Institution Decision, Paper 15, p. 20.) Here, claim 1 has been
`
`craftily drafted to monopolize the abstract idea, a practice cautioned against in
`
`Alice Corp. v. CLS Bank Int’l, No. 13-298, 573 U.S. (2014) and Mayo
`
`Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297 (2012).
`
`Claims 9 and 10 do not recite any additional subject matter that would
`
`render them statutory under 35 U.S.C. § 101. These claims recite abstract ideas
`
`lacking any ties to a particular machine. As stated by the Board, “claims 9 and 10,
`
`which recite a type of transaction being performed, are field of use recitations and
`
`do not add any significant limitations to claim 1.” (Decision, p. 21.)
`
`D.
`
`Properly construed, claims 4-6 are unpatentable over the prior
`art.
`
`PO’s arguments over the prior art are based on its proposed, new claim
`
`constructions. As those constructions are flawed (as discussed above), PO’s
`
`arguments over the prior art are similarly flawed. Also, in its arguments, PO either
`
`ignores or fails to appreciate (1) the explicit teachings of the references, and (2) the
`
`effect of combining the references as presented in the Petition. Further, PO refutes
`
`the analysis of Petitioner’s expert (Dr. Sirbu) based solely on attorney argument.
`
`—Pi-Net provided no expert testimony to support its allegations (Response, pp. 44-
`
`- 9 -
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`

`

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`66, 74-80).
`
`1.
`
`
`
`CBM2014-00018
`Patent 8,037,158
`
`Lawlor in view of Computerworld and further in view of
`CORBA1/CORBA2 renders claims 4-6 obvious.
`a)
`
`in view of Lawlor and
`
`is obvious
`Claim 1
`Computerworld
`
`PO alleges various claim elements are missing from the references.
`
`(Response, p. 36.) But PO failed to address Lawlor and Computerworld using the
`
`Board’s constructions, instead relying on its own new flawed constructions. Using
`
`the proper construction of claim 1, as set forth in the Decision, and as
`
`demonstrated in the Petition, Lawlor in view of Computerworld teaches or renders
`
`obvious each limitation of claim 1. (Decision, pp. 7-19; Petition, pp. 18-27.)
`
`b)
`
`Claim 4 is obvious in view of Lawlor, Computerworld
`and CORBA1/CORBA2
`
`PO does not respond to the Board’s decision that Lawlor in view of
`
`Computerworld and further in view of either CORBA1/2 renders obvious “object
`
`routing is used to complete the transfer of funds in a Web application,” as these
`
`elements are properly construed. The PO’s main argument against CORBA1/2 is
`
`the CORBA objects “[are] not routed on any network.” (Response, p. 48-50.)
`
`However, as discussed above, as properly construed, the actual routing of objects is
`
`not a requirement of claim 4. (Section II.A above.)
`
` PO further alleges “Petitioner falsely alleges here that a Web server is a
`
`Web application.” (Response, p. 39). PO’s allegations are not correct and do not
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`- 10 -
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`

`

`CBM2014-00018
`Patent 8,037,158
`
`
`accurately reflect Petitioner’s positions. As clearly articulated in the Petition,
`
`“[o]ne of ordinary skill in the art would understand the Security First Network
`
`Bank Web site is implemented using, for example, a Web application invoked by
`
`Web server software executing on a computing device. Further, a user wishing to
`
`transfer funds using the Security First Network Bank would use a Web application
`
`such as a Web browser. (Petition, p. 47; SAP 1003, ¶ 58 (emphasis added).)
`
`Hence, it is clear a Web application invoked by Web server software (not a Web
`
`server) can be executed on a computing device. (See also SAP 1023, ¶¶ 54-56.)
`
`
`
`Further, PO alleges that it is technically impossible for the “the client object
`
`(the Web server) to invoke a method of the server object.” (Response, p. 44)
`
`However, this allegation is incorrect. A POSA would have clearly understood a
`
`web server can be built from objects, and while those objects can be a “server” to
`
`the browser, those objects can also be designed to invoke, via CORBA, methods
`
`on backend server objects. (SAP 1023, ¶ 57.) This is fully supported by CORBA1.
`
`CORBA1 teaches “all applications are objects (in the sense of object orientation)”
`
`and “[o]bjects can alternate between client roles and server roles.” (CORBA, p.
`
`53.) CORBA explains “Internet facilities are partitioned between the front-end
`
`tools (the user facilities) and the back-end information sources (the application
`
`facilities)” (CORBA1, p. 116), such that the Object Request Broker (ORB) acts as
`
`an application level switch to route a user’s client object to a service provider for
`
`- 11 -
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`

`

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`processing. (Id.)
`
`
`
`CBM2014-00018
`Patent 8,037,158
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`
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`A POSA would understand client objects receive requests from respective
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`users. (SAP 1023, ¶¶ 58-59.) Each client object invokes a server object (passing
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`arguments extracted from the user’s request) to process the client’s request.
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`Specifically, the client object accesses the server object through an identifier of the
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`object, referred to as an object reference, which the ORB maps to an Interoperable
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`Object Reference (IOR), which includes or is resolved to the Internet address
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`where the object can be found. (Id.) The user is routed (via his request by the client
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`object) to processing provided by the service provider (i.e., the server object
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`processes the request to implement the desired “Internet service”) through the use
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`of individual network objects (both the client object and the server object are
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`reachable at respective Internet addresses that are resolved from object references
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`by the ORB). (Id.) Such functionality is taught by the combination of Lawlor,
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`Computerworld, and either CORBA1/2. (Petition, pp. 34-35, 43-48.) For these
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`reasons, claim 4 is obvious in view of Lawlor, Computerworld, and either
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`CORBA1/2.
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`c)
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`Claim 5 is obvious in view of Lawlor Computerworld
`and CORBA1/CORBA2
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`PO’s allegation that the references do not render obvious this claim are
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`based solely on its proposed claim constructions. (Response, pp. 49-50.) But PO’s
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`constructions are flawed. As discussed above, claim 5 requires only that object
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`CBM2014-00018
`Patent 8,037,158
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`routing include the use of a distributed on-line service information database. Claim
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`5 does not require the actual routing of objects, as alleged by PO. (Response, pp.
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`49-50; SAP1023, ¶ 60.) Claim 5 also does not require the routing/transmission of
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`information entries and attributes in the DOLSIB, as alleged by PO. (Id.) Instead,
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`the information entries and attributes in the ’158 patent’s DOLSIB are merely
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`accessed: “TMP utilizes [the] Internet address to uniquely identify and access the
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`object from the DOLSIB.” (’158 patent, 8:15-16.) Thus, as correctly determined by
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`the Board, claim 5 further limits the recited “object routing” only to the extent that
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`a networked object, which has information entries and attributes, is accessible.
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`(Decision, p. 26.) Hence, utilizing the Board’s proper construction, claim 5 is
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`clearly met by CORBA’s Interface Repository (IR) taught in CORBA1/2.
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`(CORBA, pp. 96, 100-10180, 84-85; SAP1023, ¶ 60.)
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`d)
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`Claim 6 is obvious in view of Lawlor, Computerworld
`and CORBA1/CORBA2
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`PO’s only argument regarding claim 6 relies on its erroneous claim
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`constructions. For example, with respect to claim 6, PO argues “CORBA IR is a
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`permanent store, not a virtual store and a CORBA object with data and method is
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`different from a ’158 networked object with information entries and attributes”
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`(Response, p. 56.) As previously discussed, there is no support for PO’s allegation
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`that the IR is not permanent. As also previously discussed, CORBA’s IR is
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`analogous to the claimed DOLSIB. Accordingly, it is clear CORBA’s IR meets
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`the limitations of claim 6. (Petition, pp.38-39; SAP 1023, ¶ 61.)
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`CBM2014-00018
`Patent 8,037,158
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`e)
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`Claims 5 and 6 are obvious in view of Lawlor,
`Computerworld, CORBA1/CORBA2 and SNMP
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`
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`Similar to PO’s argument regarding CORBA1/2, PO alleges that SNMP
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`does not teach the recited “DOLSIB” or “virtual information store” of claims 5 and
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`6, respectively. (Response, p. 66.) However, PO again misunderstands or ignores
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`the arguments raised by the Petition and the explicit teachings of the references.
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`As explained above, PO has failed to successfully refute any of the teachings of
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`CORBA1/2 and its IR. Further, PO alleges SNMP’s “MIB does not contain
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`information entries or the value of the attribute. So, the MIB has the attributes, NO
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`information entries” (Id., p. 65.) PO is not correct. In SNMP, each managed
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`element stores information entries corresponding to the attributes defined in the
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`MIB. (SAP 1023, ¶ 62.) That is, at a particular IP address, a hierarchical structure
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`of attributes and information entries exists for that device. (Id.) While the MIB
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`defines the logical structure of the information store, the actual information entries
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`and attributes are initially located at each managed object. (Id.) Thus, it is clear
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`SNMP explicitly teaches a virtual information store that could be used with
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`CORBA1/2’s IR. Also, the SNMP is optimized for networking and allows objects
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`on different machines to be easily accessed over a network. (Id.) Accordingly,
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`Lawlor, Computerworld, CORBA1/2 and SNMP render obvious claims 5-6. (Id.)
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`CBM2014—0001 8
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`Patent 8,037,158
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`2.
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`Claims 1 and 4-6 are rendered obvious by SFCU in view of
`Electronic Banking andfurther in view 0fC0RBA1/C0RBA2
`0r CORBAI/CORBAZ and SNMP
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`PO alleges various claim elements are missing from the references.
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`(Response, pp. 42-45.) But PO failed to address SFCU and EB using the Board’s
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`constructions, instead relying on its own new flawed constructions. Using the
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`proper construction of claim 1 as set forth in the Institution Decision (Decision, pp.
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`7-19), SFCU in View of EB teach or render obvious each limitation of claim 1, as
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`demonstrated by the Petition and decided by the Board. (Petition, pp. 59-69;
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`Decision, pp. 25, 29.)
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`Regarding claims 4-6 and the teachings of CORBA1/2 and SNMP, PO
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`repeats the same arguments (using flawed claim constructions) that were discussed
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`and refuted above. (See Response, pp. 74-80.) According, PO’s arguments fail for
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`the reasons discussed above. (See Section II.D.l .b. — H.D.1.e; Petition, pp. 59-79;
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`SAP1015,1I64.)
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`HI. Conclusion
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`For the reasons in the Petition and above, claims 4—6 and 9-10 of the ’158
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`patent should be found to be unpatentable.
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`Respectfull
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`
`
`Date: September 08, 2014 By:
`
`Michae
`. Lee (Reg. No. 35, 239)
`Lori A. Gordon (Reg. No. 50,633)
`Attorneys for SAP
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`CERTIFICATION OF SERVICE 37 C.F.R.
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`The undersigned hereby certifies that the above-captioned “PETITIONER’S
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`REPLY TO PATENT OWNER’S RESPONSE TO PETITION” was served in its
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`entirety on September 08, 2014, upon the following parties via email:
`
`Tarn Thanh Pham, Reg. No. 50565
`LEWIS ROCA ROTHGERBER LLP
`
`Bryan Boyle, Reg. No. 52644
`CARR & FERRELL LLP
`
`2440 W. El Camino Real, Sixth Floor
`
`120 Constitution Drive
`
`Mountain View, CA 94040
`Tel.: 650.391.1386
`
`Fax: 650.687.8492
`
`tpharnr’errlawcom
`
`Pi-Net_PTAB@lrrlaw.com
`
`Menlo Park, CA 94025
`Tel.: 650.812.3465
`
`Fax: 650.812.3444
`
`bboyle@carrferrell.com
`
`Lauren May Eaton, Reg. No. 68214
`LEWIS ROCA ROTHGERBER LLP
`
`Lawrence B. Goodwin, Reg. No. 29642
`LAWRENCE B. GOQDWIN, P.C.
`
`525 East 86th Street, Suite 5H
`
`2440 W. El Camino Real, Sixth Floor
`
`New York, NY 10028
`
`Mountain View, CA 94040
`Tel.: 650.391.1395
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`Fax: 650.687.8492
`
`Pi-Net PTAB_@_lrr_la_w,corn
`
`Date:
`
`01”
`
`1100 New York Avenue, NW.
`
`Washington, DC. 20005—3934
`(202) 371-2600
`
`Tel.: 212.988.1076
`
`Fax: 646.619.4161
`
`LawrenceGoodwinPC@.gmail.com
`
`Gerald P. Dodson, Reg. No. 32787
`CARR&FERRELL LLP
`
`120 Constitution Drive
`
`Menlo Park, CA 94025
`Tel.: 650.812.3496
`
`Fax: 650.812.3444
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`jdodson@carrferrell.com
`
`
`
`Michael Q. Lee
`Registration No. 3 5,239
`Attorney for Petitioner
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`