`571-272-7822
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`Entered: April 16, 2015
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`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
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`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.
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`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
`
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`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.
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`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:
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`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
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`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:
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`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
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`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.
`
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`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).
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`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.
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`Ex. 1001, 9:14–23.
`Thus, we determine “register” means a “value or code associated with
`a container.”
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`3. “active space register”/“passive space register”/”neutral space
`register”
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`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).
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`The “passive space register” is:
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`“for identifying space in which the container can be acted upon by
`other containers, processes, systems or gateways . . .” (emphasis
`added).
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`The “neutral space register” is:
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`“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
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`interact with that unique gateway, including how data collection and
`reporting is managed at that gateway.
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`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.
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`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.
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`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
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`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
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`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.
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`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
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`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)).
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`“[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.
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`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.
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`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
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`6 Both independent claims 2 and 16 include the limitation in question.
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`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.
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`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).
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`Patent 7,010,536 B1
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`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
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`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