throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
` Paper 42
`Entered: April 16, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., TWITTER, INC., AND YELP INC.,
`Petitioner,
`
`v.
`
`EVOLUTIONARY INTELLIGENCE, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,010,536 B1
`____________
`
`Before KALYAN K. DESHPANDE, BRIAN J. McNAMARA, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`

`

`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,010,536 B1
`
`
`INTRODUCTION
`On October 22, 2013, Apple, Inc. (“Petitioner”)1 filed a Petition
`requesting inter partes review of claims 2–14 and 16 of U.S. Patent No.
`7,010,536 (Ex. 1001, “the ’536 patent”). Paper 1 (“Pet.”). On April 25,
`2014, we granted the Petition and instituted trial for claims 2–12, 14, and 16
`of the ’536 patent on all of the grounds of unpatentability alleged in the
`Petition. Paper 8 (“Decision on Institution” or “Dec. Inst.”).
`After institution of inter partes review, Twitter, Inc. (“Twitter”) and
`Yelp Inc. (“Yelp”) filed a corrected Petition and Motion to Join the inter
`partes review. IPR2014-00812, Papers 4, 8. We granted the motion and
`joined Apple, Twitter, and Yelp (collectively, “Petitioner”) in the inter
`partes review. Paper 16. Evolutionary Intelligence, LLC (“Patent Owner”)
`filed a Patent Owner Response. Paper 20 (“PO Resp.”). Petitioner filed a
`Reply. Paper 28 (“Pet. Reply”). Patent Owner filed a Motion to Exclude.
`Paper 34 (“PO Mot. Exclude”)
`An oral hearing was held on January 6, 2015. The transcript of the
`consolidated hearing has been entered into the record. Paper 41 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons discussed
`below, we determine that Petitioner has not shown by a preponderance of the
`evidence that claims 2–12, 14, and 16 of the ʼ536 patent are unpatentable.
`Patent Owner’s Motion to Exclude is denied.
`
`1 Twitter, Inc. and Yelp Inc. filed a Petition in case IPR2014-00812 against
`the same patent, which case was joined with this case. Decision Granting
`Motion for Joinder (Paper 16). Twitter, Inc. and Yelp Inc. are also
`collectively referred to as “Petitioner” in this case.
`
`
`
`
`2
`
`

`

`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,010,536 B1
`
`
`A. Related Proceedings
`Petitioner states that on October 23, 2012 it was served with a
`complaint alleging infringement of the ’536 patent in Civil Action No. 6:12-
`cv-00783-LED in the District of Eastern District of Texas (Ex. 1007), which
`was transferred to the Northern District of California as Civil Action No.
`3:13-cv-4201-WHA. The ’536 patent is also the subject of several other
`lawsuits against third parties. Pet. 2.2
`B. The ’536 Patent
`The ’536 patent is directed to developing intelligence in a computer or
`digital network by creating and manipulating information containers with
`dynamic interactive registers in a computer network. Ex. 1001, 1:11–20;
`3:1–5. The system includes an input device, an output device, a processor, a
`memory unit, a data storage device, and a means of communicating with
`other computers. Id. at 3:6–11. The memory unit includes an information
`container made interactive with, among other elements, dynamic registers, a
`search engine, gateways, a data collection and reporting means, an analysis
`engine, and an executing engine. Id. at 3:15–23.
`The ’536 patent describes a container as an interactive nestable logical
`domain, including dynamic interactive evolving registers, which maintain a
`unique network-wide lifelong identity. Id. at 3:29–35. A container, at
`
`
`2 The Petition does not include page numbers. We have assigned page
`numbers beginning with page 1 at heading I.A. and concluding with page 31
`at heading V. This convention corresponds to the assigned page numbers in
`the Table of Contents. As Patent Owner did in Patent Owner’s Response
`(PO Resp. 1), all citations to the “Petition” are to the Petition filed by Apple
`in IPR 2014-00086. The Petition filed by Twitter and Yelp is a virtual copy.
`but the page numbers differ and we will not add those additional citations.
`
`3
`
`
`

`

`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,010,536 B1
`
`minimum, includes a logically encapsulated portion of cyberspace, a
`register, and a gateway. Id. at 9:2–4. Registers determine the interaction of
`that container with other containers, system components, system gateways,
`events, and processes on the computer network. Id. at 3:43–46. Container
`registers may be values alone or contain code to establish certain parameters
`in interaction with other containers or gateways. Id. at 9:19–22. Gateways
`are integrated structurally into each container or strategically placed at
`container transit points. Id. at 4:54–57. Gateways govern the interaction of
`containers encapsulated within their domain by reading and storing register
`information of containers entering and exiting that container. Id. at 4:58–66;
`15:46–49.
`The system for creating and manipulating information containers is
`set forth in Figure 2B as follows:
`
`
`Figure 2B illustrates a computer network showing nested containers,
`computer servers, and gateways at Site 1 through Site 7. Id. at 10:59–62.
`Any of Sites 1 through 7 may interact dynamically within the system; for
`
`
`
`
`4
`
`

`

`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,010,536 B1
`
`example, Site 1 shows a single workstation with a container and gateway
`connected to an Intranet. Id. at 10:64–67. Site 2 shows a server with a
`gateway in relationship to various containers. Id. at 11:2–3. Site 3 shows an
`Internet web page with a container residing on it. Id. at 11:3–4. Site 4
`shows a personal computer with containers and a gateway connected to the
`Internet. Id. at 11:4–6. Site 5 shows a configuration of multiple servers and
`containers on a Wide Area Network. Id. at 11:6–7. Site 6 shows a work
`station with a gateway and containers within a container connected to a
`Wide Area Network. Id. at 11:7–9. Site 7 shows an independent gateway,
`capable of acting as a data collection and data reporting site as it gathers data
`from the registers of transiting containers and as an agent of the execution
`engine as it alters the registers of transient containers. Id. at 11:8–13.
`An example of the configuration the containers may have is provided
`in Figure 4 as follows:
`
`
`
`
`5
`
`
`
`

`

`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,010,536 B1
`
`
`Figure 4 shows an example of container 100 that includes
`containerized elements 01, registers 120, and gateway 200. Id. at 12:65–67.
`Registers 120 included in container 100 include, inter alia, active time
`register 102000, passive time register 103000, neutral time register 104000,
`active space register 111000, passive space register 112000, neutral space
`register 113000, and acquire register 123000. Id. at 14:31–39.
`C. Illustrative Claim
`Claims 2 and 16 are the two independent claims challenged. Claim 2
`is reproduced below:
`2. An apparatus for transmitting, receiving and
`manipulating information on a computer system, the apparatus
`including a plurality of containers, each container being a
`logically defined data enclosure and comprising:
`an information element having information;
`a plurality of registers, the plurality of registers forming
`part of the container and including
`a first register for storing a unique container
`identification value,
`a second register having a representation
`designating space and governing interactions of the container
`with other containers, systems or processes according to utility
`of information in the information element relative to an
`external-to-the-apparatus three-dimensional space,
`an active space register for identifying space in
`which the container will act upon other containers, processes,
`systems or gateways,
`a passive resister for identifying space in which the
`container can be acted upon by other containers, processes,
`systems or gateways,
`a neutral space register for identifying space in
`which the container may interact with other containers,
`processes, systems, or gateways; and
`
`
`
`
`6
`
`

`

`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,010,536 B1
`
`
`a gateway attached to and forming part of the container,
`the gateway controlling the interaction of the container with
`other containers, systems or processes.
`D. Ground Upon Which Trial Was Instituted
`Trial was instituted on the ground that claims 2–12, 14, and 16 of the
`’536 patent were anticipated under 35 U.S.C. § 102(e)3 by Gibbs.4 Dec. Inst.
`27. Patent Owner does not contend that Gibbs is not prior art.
`ANALYSIS
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In
`re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1279–83 (Fed. Cir. 2015). . If
`an inventor acts as his or her own lexicographer, the definition must be set
`forth in the specification with reasonable clarity, deliberateness, and
`precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
`1249 (Fed. Cir. 1998). The terms also are given their ordinary and
`customary meaning as would be understood by one of ordinary skill in the
`art in the context of the disclosure. In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007).
`Neither Petitioner nor Patent Owner disputes our constructions in the
`Decision on Institution. PO Resp. 15, n. 3. Our prior constructions,
`including the rationale for them, are repeated below.
`
`
`3 The ’536 patent was filed prior to the effective date of § 102, as amended
`by the America Invents Act (“AIA”)—March 16, 2013— and is governed by
`the pre-AIA version of § 102(e). See AIA § 3(n)(1).
`4 U.S. Patent No. 5,836,529, filed Oct. 31, 1995 (“Gibbs,” Ex. 1006).
`
`7
`
`
`

`

`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,010,536 B1
`
`
`1. “container”
`Independent claims 2 and 16 recite the term “container,” as do several
`of the dependent claims, e.g., claims 5 and 7. The Specification describes a
`“container” as “a logically defined data enclosure which encapsulates any
`element or digital segment (text, graphic, photograph, audio, video, or
`other), or set of digital segments, or referring now to FIG. 3C, any system
`component or process, or other containers or sets of containers.” Ex. 1001,
`8:64–9:2.
`Thus, we construe “container” to mean “a logically defined data
`enclosure which encapsulates any element or digital segment (text, graphic,
`photograph, audio, video, or other), or set of digital elements.”
`2. “register”
`Independent claims 2 and 16 recite “a plurality of registers, the
`plurality of registers forming part of the container.” The Specification of the
`’536 patent broadly describes “container registers” as follows:
`Container registers 120 are interactive dynamic values
`appended to the logical enclosure of an information container
`100, and serve to govern the interaction of that container 100
`with other containers 100, container gateways 200 and the
`system 10, and to record the historical interaction of that
`container 100 on the system 10. Container registers 120 may
`be values alone or contain code to establish certain parameters
`in interaction with other containers 100 or gateways 200.
`
`Ex. 1001, 9:14–23.
`Thus, we determine “register” means a “value or code associated with
`a container.”
`
`
`
`
`8
`
`

`

`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,010,536 B1
`
`
`
`
`
`3. “active space register”/“passive space register”/”neutral space
`register”
`
`
`The terms “active space register,” “passive space register,” and
`“neutral space register” appear in independent claim 2.
`The Specification of the ’536 patent states, at several locations, that
`registers are “dynamic” and “interactive.” See Ex. 1001, 7:25–30. As
`discussed above, registers are user-created and attach to a unique container.
`Id. at 14:23–26. Registers may be of different types, including pre-defined
`registers. Id. at 14:1–3. Pre-defined registers are available immediately for
`selection by the user, within a given container. Id. at 14:3–6. Pre-defined
`registers may be active, passive, or interactive and may evolve with system
`use. Id. at 14:29–30. In the context of predefined registers, “active space,”
`“passive space,” and “neutral space” are part of the system history. Id. at
`14:30–42, Fig. 4. The Specification does not describe further any of the
`terms.
`The claim 2 elements, “active space register,” “passive space
`register,” and “neutral space register” each expressly defines the function of
`the element in claim 2.
`The “active space register” is:
`“for identifying space in which the container will act upon other
`containers, processes, systems or gateways . . .” (emphasis added).
`
`The “passive space register” is:
`
`“for identifying space in which the container can be acted upon by
`other containers, processes, systems or gateways . . .” (emphasis
`added).
`
`The “neutral space register” is:
`9
`
`

`

`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,010,536 B1
`
`
`
`“for identifying space in which the container may interact with other
`containers, processes, systems, or gateways . . .” (emphasis added).
`
`Patent Owner lists “neutral space register” as a term for further
`construction. PO Resp. 19–22. Patent Owner’s argument is directed toward
`whether “neutral space register” is a limitation shown in Gibbs and will be
`addressed in our anticipation analysis section below.
`As discussed above, we have construed the term “register” to mean
`“value or code associated with a container.” The modifiers “active,”
`“passive,” and “neutral” serve to distinguish the claimed registers that are
`defined functionally in claim 2. No further construction is required.
`4. “acquire register”
`The term “acquire register” appears in claims 8, which depends from
`claim 2, and independent claim 16. The Specification describes the acquire
`register as “enabling the user to search and utilize other registers residing on
`the network.” Ex. 1001, 15:27–29. This is consistent with the claim
`language itself. Dec. Inst. 13. No further construction is required.
`5. “gateway”
`Independent claims 2 and 16 recite “a gateway attached to and
`forming part of the container, the gateway controlling the interaction of the
`container with other containers, systems or processes.”
`The ’536 patent describes that:
`[g]ateways gather and store container register information according
`to system-defined, system-generated, or user determined rules as
`containers exit and enter one another, governing how containers
`system processes or system components interact within the domain of
`that container, or after exiting and entering that container, and
`governing how containers, system components and system processes
`10
`
`
`
`
`

`

`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,010,536 B1
`
`
`interact with that unique gateway, including how data collection and
`reporting is managed at that gateway.
`
`Ex. 1001, 4:58–66.
`Neither party raises any issue with our preliminary construction (Dec.
`Inst. 13–14) and thus, based on the Specification, our final construction of
`“gateway” is “hardware or software that facilitates the transfer of
`information between containers, systems, and/or processes.”
`6. means elements
`Claims 9–12 each contain means plus function elements. Petitioner
`contends that there is a lack of structure for certain means plus function
`elements. We do not reach this issue because, for reasons discussed below,
`Petitioner has not put forth a sufficient case of unpatentability as to the
`independent claim from which claims 9–12 depend.
`
`
`7. “first register having a unique container identification value”
`Unlike all the previous terms, “first register having a unique container
`identification value” was not construed in the Decision on Institution. Patent
`Owner contends the term requires construction in light of contentions made
`by Petitioner’s expert, Dr. Henry Houh, in his deposition testimony. PO
`Resp. 16–19 (citing “Houh Deposition,” Ex. 1008). The term appears in
`claims 2 and 16. Specifically, Patent Owner contends the Houh Deposition
`asserts that the term “unique container identification value” is for “any
`container.” PO Resp. 16 (citing Ex. 1008, 106:21–109:8) (emphasis
`omitted). Patent Owner contends this testimony is contrary to the
`Declaration of Dr. Houh (“Houh Declaration,” Ex. 1003, ¶¶ 110–111). Id.
`
`
`
`
`11
`
`

`

`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,010,536 B1
`
`
`Patent Owner cites the language of the claim itself to assert “first
`register having a unique container identification value” is directed to the
`container of which the term is an element and not “any” container.” PO
`Resp. 16. Patent Owner argues use of the article “a” is dictated because it is
`the first reference to the term, which has no antecedent basis. Id.
`Patent Owner cites to the Specification as describing “a register with a
`‘unique network-wide lifelong identity’ for the given container.” PO Resp.
`16–17 (citing Ex. 1001 at 3:29–39) (emphasis omitted). Patent Owner
`argues the system-defined registers may include “an identity register
`maintaining a unique network wide identification and access location for a
`given container.” Id. at 17 (citing Ex. 1001, 3:57–64) (emphasis omitted).
`Patent Owner also references the prosecution of the ’536 patent, in
`which claim 29 recites interacting between first and second information
`containers, and claim 30, which depends from claim 29, recites “wherein the
`steps of determining identification information are performed by reading
`respective identification registers of the first and second containers.” See id.
`at 17 (citing Ex. 1002, 50–51). Patent Owner argues this claim language
`“make no sense if the ‘unique identification value’ is construed as
`identifying containers other than those interacting, because the entire point
`of the exchange was to compare unique identifiers to see if interaction
`between the two containers would be allowed.” Id. Patent Owner thus
`proposes the term “first register having a unique container identification
`value” means “a first register having a value that uniquely identifies the
`given container.” Id. at 19.
`Petitioner argues that absent “reference to any particular container”
`the term applies to “any” container. Pet. Reply 9. In further support of its
`
`12
`
`
`

`

`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,010,536 B1
`
`position, Petitioner argues the use of the article “a,” as opposed to “the,”
`precludes the claim language from being limited to the “the container that
`includes the register.” Id. Petitioner notes all the other registers recited
`reference “the” container, so “a” must mean any. Id. Petitioner contends the
`“identity register” disclosure is not dispositive and is just “one example” of
`the first register. Id. 9–10 (citing Deposition of Mathew Daniel Green,
`Ph.D. (“Green Deposition,” Ex. 2009, 113:1–22, 107:2–110:22; see id. at
`66:11–22). The Petitioner alleges the original claims from the prosecution
`are irrelevant. Id. at 10.
`In construing claims we consider the broadest reasonable
`interpretation consistent with the Specification. In re Cuozzo, 778 F.3d at
`1278–1282. We start with the claim language. Claim 2 recites “[a]n
`apparatus . . . including a plurality of containers, each container being a
`logically defined data enclosure and comprising.” Ex. 1001, 30, 31–34
`(emphasis added). The claim proceeds to recite “a first register for storing a
`unique container identification value.” From this language, we conclude
`that the “first register” is a part of “each container.” The “first register”
`claim limitation further includes “a unique container identification value.”
`In the context of this claim, we are not persuaded by Petitioner’s argument
`that the use of “a” before the disputed term broadens the disputed term to
`“any” container. Pet. Reply 9. .
`The Specification describes a “container” in some detail, a description
`which we noted above in construing “container.” See Ex. 1001, 3:29–35.
`The Specification describes “container” as follows:
`A container is an interactive nestable logical domain
`configurable as both subset and superset, including a minimum
`
`
`
`
`13
`
`

`

`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,010,536 B1
`
`
`set of attributes coded into dynamic interactive evolving
`registers, containing any information component, digital code,
`file, search string, set, database, network, event or process, and
`maintaining a unique network-wide lifelong identity.
`
`Id. (emphasis added). Among other things, the container “maintain[s] a
`unique network-wide lifelong identity.” Id. at 3:34–35. While “first
`register” appears only in the Abstract and the claims, registers are described
`and include “an identity register maintaining a unique network wide
`identification and access location for a given container.” PO Resp. 17
`(citing Ex. 1001, 3:57–64) (emphasis omitted). The claims do not include an
`“identity register,” but do include the “first register,” and the term under
`consideration, “a unique container identification value.” While Petitioner
`correctly notes that the Green Deposition states the “identity register” is an
`“example,” Dr. Green goes on to testify “[h]owever, I think that from the
`context of the specification, my interpretation is that those descriptions refer
`to the first register for storing a unique container identification value.” Ex.
`2009, 113:11–15. Based on the Specification, we conclude the description
`of “identity register” in the Specification describes the “unique container
`identification value” of the “first register.” There is no other reasonable
`explanation associating the functionality of the “identity register” with the
`claimed invention. Petitioner’s argument that the “identity register” is an
`“example” does not persuade us otherwise. Pet. Reply 9. An “example”
`does not preclude the “first register” claimed from being described as the
`“identity register,” particularly given that “first register” is not otherwise
`described in the Specification and “identity register” is not part of any claim.
`
`
`
`
`14
`
`

`

`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,010,536 B1
`
`
`We disagree with Petitioner’s argument that claims asserted in the
`prosecution history are irrelevant to claim construction. Pet. Reply 10. We
`note that originally filed claim 30 recites, in pertinent part: “steps of
`determining identification information are performed by reading respective
`identification registers of the first and second containers.” We read this
`language to support Patent Owner’s contention that each container has an
`“identification register” to determine whether interaction between containers
`is allowed. Originally filed claim 30 recites in part “reading respective
`identification registers.” Claim 30’s language corresponds to the
`Specification’s description of the “identity register” and the claimed “first
`register for storing a unique container identification value.”
`Neither party has specifically relied on any extrinsic evidence and our
`construction is based primarily on intrinsic evidence. To the extent the
`Houh and Green Depositions may be considered extrinsic evidence; we have
`considered the party’s citations to them, noting them above.
`Thus, we adopt Patent Owner’s proposed construction and construe
`“first register having a unique container identification value” to mean “a first
`register having a value that uniquely identifies the given container.”
`B. Anticipation of Claims 2–12, 14 and 16 by Gibbs
`Petitioner contends that claims 2–14 and 16 of the ʼ536 patent are
`anticipated under 35 U.S.C. § 102(e) by Gibbs. Pet. 12–31. To support this
`position, Petitioner cites the testimony of Henry Houh. The only ground of
`unpatentability presented is anticipation.5
`
`5 Patent Owner “reasserts” its objection to the Petition as improperly
`incorporating by reference the Houh Declaration. PO Resp. 22, n.5 (citing
`37 C.F.R. § 42.6 (a)(3)).
`
`
`
`15
`
`

`

`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,010,536 B1
`
`
`“[U]nless a reference discloses within the four corners of the
`document not only all of the limitations claimed but also all of the
`limitations arranged or combined in the same way as recited in the claim, it
`cannot be said to prove prior invention of the thing claimed and, thus, cannot
`anticipate under 35 U.S.C. § 102.” Net MoneyIn, Inc. v. VeriSign, Inc., 545
`F.3d 1359, 1371 (Fed. Cir. 2008). Notwithstanding the preceding, we must
`analyze prior art references as a skilled artisan would, but this is “not,
`however, a substitute for determination of patentability in terms of § 103.”
`Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268–69 (Fed. Cir.
`1991).
`For reasons discussed below, Petitioner has not established by a
`preponderance of the evidence that claims 2–12, 14, and 16 are unpatentable
`as anticipated by Gibbs.
`
`1. Gibbs Overview
`Gibbs describes a system and process for monitoring and managing
`the operation of a railroad system. Ex. 1006, 3:65–4:10. The railroad
`management system operates on a computer system and its components are
`connected via a network. Id. at 5:12–14.
`Figure 1 is reproduced below.
`
`
`
`
`
`
`16
`
`

`

`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,010,536 B1
`
`Figure 1 is an object based railroad transportation network management
`system. As shown in Figure 1, central computer 26 organizes and stores this
`railroad system information so that it can later retransmit the information in
`response to a request from any node 24, 28, 29, 30, 32, or 34. Ex. 1001,
`5:28–31.
`The system is object oriented and uses objects to represent important
`aspects of the railroad system such as train object 72, locomotive object 74,
`crew object 78, car object 80, end-of-train object 82, and computerized train
`control object 89. Id. at 7:5–8. A map object library contains map objects to
`generate a transportation network map object and to display and transmit
`information in response to a user request. Id. at 8:53–63. A control
`management object allows the user to activate any object within the map
`object library. Id. at 8:20–31.
`Each object in the railroad management system has at least four
`distinct types of data: locational attributes, labeling attributes, consist
`attributes, and timing attributes. Id. at 9:28–10:4, Fig. 7. These attributes
`can include information such as a unique ID, the physical location of the
`object, and object specific data. Id. at 10:46–51. Each object contains
`references to its associated data structure, i.e., the four data types described
`above, and program instructions. Id. at 7:21–27.
`2. Whether Gibbs discloses the claimed “container”6
`In the Petition, Petitioner argued the objects used by Gibbs’s railroad
`management system are examples of logically defined data enclosures. Pet.
`13. The objects are, therefore, the “containers” specified in the preamble of
`
`
`6 Both independent claims 2 and 16 include the limitation in question.
`
`17
`
`
`

`

`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,010,536 B1
`
`claim 27 of the ’536 patent. Id. (citing Ex. 1003 ¶¶ 107–111). In its Reply,
`Petitioner contends Gibbs “shows the claimed ‘container’ via its description
`of a collection of transport, map, and report objects that are instantiated and
`used to display maps and reports to users.” Pet. Reply 1, 3 (citing Pet. at 15,
`18–19, 23; Ex. 1003 ¶¶ 89–90, 94, 96–97; “Houh Supplemental
`Declaration,” Ex. 1009 ¶¶ 5–16). Dr. Houh uses the term “TMR
`subsystem,” i.e., “transport object/map object/report object,” as “shorthand
`for the architecture and objects” described in Gibbs’s collection of objects.
`Pet. Reply 2. “TMR subsystem” is not a term used in Gibbs.
`a. Denial of Petition based on change of theory
`Patent Owner argues that Petitioner changed its position from citing
`Gibbs’s objects as meeting the container limitation to now contending the
`TMR subsystem is the “container.” PO Resp. 24 (citing Ex. 1008, 102:19–
`104:13). Patent Owner characterizes the change as a switch from express
`anticipation to an inherency argument. Id. at 37. Patent Owner contends we
`should deny the Petitioner because of the change of position. Id. at 38.
`The Petition asserted that the objects of Gibbs meet the container
`limitation. Pet. 13 (citing Ex. 1003 ¶¶ 107–111). In particular, on behalf of
`Petitioner, Dr. Houh asserted that “[T]he objects used by the Gibbs railroad
`management system are examples of logically defined data enclosures, and
`exemplify the ‘containers’ claimed in claim 2 of the ’536 patent.” Ex. 1003
`¶ 110. Patent Owner notes that Dr. Houh subsequently stated in his
`deposition that the TMR subsystem “must be” present in Gibbs. PO Resp. 3.
`
`7 The preamble forms an antecedent basis for “containers” as used in the
`claims and will be given weight. See, Eaton Corp. v. Rockwell Int’l Corp.,
`323 F.3d 1332, 1339 (Fed. Cir. 2003).
`
`18
`
`
`

`

`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,010,536 B1
`
`Patent Owner argues that this testimony represents an impermissible change
`in Petitioner’s position from express anticipation to inherent anticipation. PO
`Resp. 3, 24, 37–38. Petitioner denies it is now proceeding on an inherency
`theory, arguing that Dr. Houh’s use of the label “TMR subsystem” during
`his deposition is a shorthand for the architecture and objects in Gibbs that
`anticipate the claims, rather than new evidence. Pet. Reply 3. Dr. Houh
`contends that his position is not new. Ex. 1009 ¶38. Nevertheless,
`Petitioner argues that anticipation exists when a claimed limitation is
`implicit in the relevant reference. Id. at 5.
`Anticipation by Gibbs remains the sole challenge asserted by
`Petitioner. Even if Petitioner has altered some of its positions concerning its
`challenge, in this case we do not find cause to dismiss the Petition on that
`basis. In view of Petitioner’s argument that it has not changed its position,
`we proceed on the basis that Dr. Houh stands by his testimony that “[T]he
`objects used by the Gibbs railroad management system are examples of
`logically defined data enclosures, and exemplify the ‘containers’ claimed in
`claim 2 of the ’536 patent.” Ex. 1003 ¶ 110.
`b. Whether the “collection of transport, map and report objects” of
`Gibbs discloses “a plurality of containers” comprising all the
`registers of the claims
`The objects of Gibbs fall within our construction of “container” as
`meaning “a logically defined data enclosure which encapsulates any element
`or digital segment (text, graphic, photograph, audio, video, or other), or set
`of digital elements.” We, however, determine that Gibbs does not disclose a
`“container” as claimed. Claims 2 and 16 recite “each container being a
`logically defined data enclosure and comprising,” among other things, the
`
`
`
`
`19
`
`

`

`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,010,536 B1
`
`specified registers. As discussed above, each of the active, passive, and
`neutral registers of claim 2 “identif[y] space” in which the claimed container
`“will act,” “can be acted upon,” and “may interact with other containers,
`processes, systems, or gateways.” Claim 16 recites a second register that
`“govern[s] interactions of the container with other containers, systems or
`processes.” 8 Claim 16 also recites an “acquire register” that controls
`“whether the container adds a register from other containers or adds a
`container from other containers when interacting with them.”
`In order to show that the various objects of Gibbs are the necessary
`registers of the claimed “container,” Petitioner argues that the “discrete”
`entities

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.

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