Trials@uspto.gov
`571-272-7822
`
`
`Paper 24
`Entered: August 17, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAP AMERICA, INC.,
`Petitioner,
`
`v.
`
`LAKSHMI ARUNACHALAM,
`Patent Owner.
`____________
`
`Case IPR2014-00414
`Patent 8,346,894 B2
` ____________
`
`
`
`
`
`
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and
` 37 C.F.R. § 42.73
`
`
`
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`IPR2014-00414
`Patent 8,346,892 B2
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`
`BACKGROUND
`In this proceeding we instituted a trial on the following challenges
`asserted by SAP America, Inc. (“Petitioner”) to the patentability of claims
`1–19 of U.S. Patent 8,346,894 B2 (“the ’894 Patent”, Ex. 1001) under 35
`U.S.C. § 103: claims 1–6, 8–12, and 15–18 as unpatentable over the
`combination of the ’779 Application and Chaterjee (Exs. 1004 and 1005,
`respectively); claims 7 and 13 as unpatentable over the combination of the
`’779 Application, Chaterjee, and Drumm (Ex. 1006); claim 14 as
`unpatentable over the combination of the ’779 Application, Chaterjee and
`Le; and claim 19 as unpatentable over the combination of the ’779
`Application, Chaterjee, and Amstutz (Ex. 1008). Paper 11 (“Dec. to Inst.”),
`28. Lakshmi Arunachalam (“Patent Owner”) disputes our claim
`constructions and contends that claims 1–19 are patentable because “None
`of the art relied upon by the [Petitioner] is eligible as prior art under Sections
`102 or 103.” Paper 18 (“PO Resp.”) 41 (emphasis in original). Patent
`Owner also contends that the Petition exceeds the permissible scope of
`review because Petitioner’s challenge “raises issues related to a purported
`failure of the written description requirement, which is the realm of 35
`U.S.C. § 112(a) and not a prior art challenge under Sections 102 or Sections
`103.” Id. at 42. Patent Owner does not offer any other substantive response
`to Petitioner’s challenges on which we instituted trial. For the reasons
`discussed herein, we conclude that claims 1–19 are unpatentable.
`
`
`PATENT OWNER’S REQUEST FOR RECUSAL
`On December 5, 2014, in response to repeated unauthorized filings,
`we limited Patent Owner to paper filings and barred her from electronic
`
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`filing through the Patent Review Processing System (“PRPS”). Paper
`21(“Order”) 4–7. We also considered and denied Patent Owner’s
`unauthorized motions to recuse Judge McNamara, stating that Patent
`Owner’s theories concerning mutual fund ownership are not the law and that
`Patent Owner had not demonstrated any conflict of interest by any judge in
`the proceedings involving Patent Owner. Id. at 3.
`Patent Owner has raised the issue again in the Patent Owner
`Response. PO Resp. 48–49. A patent owner may file a response to the
`petition addressing any ground for unpatentability not already denied. 37
`C.F.R. § 42.120(a). Thus, the scope of a patent owner response does not
`include Patent Owner’s request for recusal. Nevertheless, because Patent
`Owner has repeatedly raised this issue, I1 address it here before proceeding
`to substantive matters.
`I join a long list of judges, including judges of the Court of Appeals
`for the Federal Circuit and the U.S. District Court for the District of
`Delaware, as well as other professionals and attorneys,2 who have been the
`subject of similar allegations by Patent Owner. See Leader Tech. v.
`Facebook, Inc., 2012 U.S. App. LEXIS 17259 (Aug. 10, 2012); Pi-Net Int’l
`Inc. v. Citizens Fin. Grp. Case 1:12-cv-00355, slip op. (Memorandum Order,
`Docket Entry 120) (D. Del., filed March 18, 2015). Patent Owner contends
`
`
`1 References in this section to “I” or “my” refer to Judge McNamara.
`2 Patent Owner has filed accusations of financial conflicts against at least 5
`judges of the U.S. Court of Appeals for the Federal Circuit, 3 judges of the
`District Court for the District of Delaware, and the Clerk of the Federal
`Circuit. In addition, in Pi-Net International, Inc. v. JPMorgan Chase & Co.,
`No. 1:12-cv-00282 in the District of Delaware and related cases, Patent
`Owner has filed numerous papers alleging misconduct by opposing counsel
`and her own attorneys.
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`that my financial holdings, which include the Fidelity Contra Fund, the
`Vanguard Institutional Index Fund, and a small amount of Microsoft stock,
`create a financial conflict of interest in my presiding over cases involving
`Patent Owner, her predecessor-in-interest (Pi-Net International), or
`Petitioner. PO Resp. 48. The funds Patent Owner identifies are broad
`diversified funds, whose holdings are in no way influenced by me. Both the
`Federal Circuit and District Court for the District of Delaware have
`addressed similar issues in the decisions identified above, and I will not
`repeat the analysis here. See also, 5 C.F.R. 2640.201(a) (exempting
`ownership in diversified mutual funds as a basis for recusal).
`Turning to Microsoft, Patent Owner alleges that “Microsoft is
`involved in three re-exams in the CRU (central reexamination unit) against
`three patents in the same patent portfolio in the same priority chain as the
`‘894 patent.” PO Resp. 49. Microsoft’s involvement in reexaminations of
`other patents in the CRU has no relevance to my involvement in any
`proceeding in which Patent Owner has appeared before me.
`First, Microsoft is not a party to this inter partes review. Indeed,
`Microsoft has not been a party to any of the proceedings in which Patent
`Owner has appeared before me.
`Second, our rules provide that parties file a Mandatory Notice
`identifying any Related Proceedings. One reason we require such a notice is
`“to assist members of the Board in identifying potential conflicts.” See
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48759 (Aug. 14,
`2012). Patent Owner has not filed any notice in any proceeding identifying
`the re-exams as “Related Proceedings.” In her Patent Owner Response,
`Patent Owner still does not identify the re-exams to which she refers. Id.
`
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`Third, Patent Owner admits that the re-exams involving Microsoft do
`not pertain to the patents that are the subject of these proceedings. PO Resp.
`49. At the initial conference in this proceeding, Patent Owner stated
`explicitly that the ’894 Patent before this panel is not the subject of any
`reexamination proceedings. Paper 17, 3. The re-exams in the CRU concern
`different patents with different claims.
`Fourth, the reexams are being conducted independently by different
`personnel in a different administrative arm of the U.S. Patent and Trademark
`Office. Even if the patents being reexamined in the CRU stem from the
`same priority chain, they are not patents that are before this panel. The
`reexamination of different patents by different personnel based on a request
`filed by a different third party requestor, is not relevant to our inquiry in this
`proceeding.
`Fifth, not having been notified of these reexams, we have not ordered
`that any reexam proceedings concerning any of Patent Owner’s patents in
`CRU be stayed.
`Sixth, Patent Owner has not sought my recusal in a proceeding in
`which she prevailed when we denied a petitioner’s request for covered
`business method patent review of the ’894 Patent. GSI Commerce Sols., Inc.
`v. Pi-Net, Inc. Case CBM2014-00101, Paper 10 (Denial of Institution of
`Covered Business Method Patent Review) (PTAB October 7, 2014). Patent
`Owner only raised these allegations in November 2014, after becoming
`disgruntled at the institution of this and a related proceeding and
`unsuccessful outcomes in IPR2013-00194, IPR2015-00195, and CBM2013-
`00013.
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`Seventh, having reviewed my financial disclosure, Patent Owner is
`well aware that even if Microsoft were a party to these proceedings, the de
`minimis value of stock I own in Microsoft, is far below the $15,000 recusal
`threshold. 5 C.F.R. § 2640.202(a). Patent Owner’s allegations of a financial
`conflict of interest in this proceeding are unjustified and not supported by
`any evidence.
`Finally, after obtaining my financial disclosure, it appears that Patent
`Owner arranged to publish it, along with a threatening photo of me
`superimposed on a target with a skull and crossbones, on an Internet site of
`uncertain ownership and operation. See, Paper 21, 2 (describing public
`release of this information on November 26, 2014). These actions suggest
`an attempt to intimidate. In any case, Patent Owner’s conduct has not
`influenced and will not influence the outcome of any proceeding before us.
`Thus, to the extent that Patent Owner has supplemented her Motion to
`Recuse, Patent Owner’s Motion is DENIED.
`
`
`RELATED PROCEEDINGS
`The ’894 Patent contains substantially the same disclosure as that in
`U.S. Patent No. 8,037,158 B2 (“the ’158 Patent”),3 U.S. Patent 5,987,500
`(“the ’500 Patent”),4 and U.S. Patent No. 8,108,492 (“the ’492 Patent”).5 On
`May 19, 2014, the U S. District Court for District of Delaware reported to
`
`3 The ’158 Patent is the subject of a Final Written Decision in CBM2013-
`00013 and CBM2014-00018, in which we also have denied requests for
`rehearing.
`4 The ’500 Patent is the subject of a Final Written Decision and a denial of a
`request for rehearing in IPR2013-00195.
`5 The ’492 Patent is the subject of a Final Written Decision and a denial of a
`request for rehearing, in IPR2013-00194.
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`the United States Patent and Trademark Office that, five days earlier, in Pi-
`Net International, Inc. v. JPMorgan Chase & Co., No. 1:12-cv-00282 (D.
`Del. May 14, 2014), the district court granted defendant’s motion for
`summary judgment of invalidity of the ’158 Patent, the ’500 Patent and the
`’492 Patent. Ex. 3001. The patent owner at the time, Pi-Net International,
`Inc., who was also the original patent owner in this proceeding, filed an
`appeal to the U.S. Court of Appeals for the Federal Circuit (“the Appeal”).
`The present proceeding continued while the Appeal was pursued. Prior to
`this Final Written Decision, the ’894 Patent was assigned to current Patent
`Owner, Lakshmi Arunachalam, who joined in the Appeal.
`On April 20, 2015, the U.S. Court of Appeals for the Federal Circuit
`dismissed the Appeal. Pi-Net Int’l, Inc. and Dr. Lakshmi Arunachalam v.
`JPMorgan Chase & Co., 2015 U.S. App. LEXIS 7126 (Fed. Cir. Apr. 20,
`2015). (Ex. 3002). On June 25, 2015, the Federal Circuit denied Patent
`Owner’s request to hear the matter en banc, ordering that a mandate would
`issue on July 2, 2015. (Ex. 3005). The mandate has now issued. Ex. 3006.
`In the district court, defendants had moved for summary judgment
`that the asserted claims of the ’158 Patent, the ’500 Patent, and the ’492
`Patent are invalid for indefiniteness, lack of enablement, and lack of written
`description.6 Ex. 3003. The May 14, 2014 District Court’s Memorandum
`Opinion states that among several motions before the court was defendant’s
`motion for summary judgment “for invalidity of the patents-in-suit.” Pi-Net
`
`
`6 Defendants moved for summary judgment of invalidity of claim 4 of the
`’158 Patent, claims 1–6, 10–12, 14–16, and 35 of the ’500 Patent and claims
`1–8 and 10–11 of the ’492 Patent on the same grounds.
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`Int’l, Inc. v. JPMorgan Chase & Co., 42 F. Supp. 3d 579 (D. Del. 2014),
`(Ex. 3004 at 1).
`The District Court’s Memorandum Opinion states that the common
`specification of the ’158 Patent, the ’500 Patent and the ’492 Patent
`describes the VAN switch in “conflicting and overlapping ways,” “provides
`no usable description or structure” for numerous terms coined by the
`inventor,7 provides no algorithms, source code or guidance as to how to
`configure a VAN switch to perform real-time transactions using TMP or any
`other protocol, provides no description of point-of-service applications other
`than block diagrams labeled bank, car dealer, and pizzeria, lacks any details
`as to how a VAN switch would accomplish allowing a user to connect to a
`point-of-service application and does not disclose how real time user
`transactions occur. Id. at 594. (Ex. 3004, 20–21). The Memorandum
`Opinion states therefore that “[t]he court concludes that the patents-in-suit
`are invalid for lack of written description.” Id. (Ex. 3004 at 21) (emphasis
`added).
`Although the ’894 Patent that is the subject of this proceeding was not
`before the district court, as noted above, the specification of the ’894 Patent
`is substantially the same as the specification of the ’158 Patent, the ’500
`Patent and the ’492 Patent and therefore suffers the same infirmities under
`35 U.S.C. § 112.
`Petitioner cannot assert a challenge to the claims of the ’894 Patent
`under 35 U.S.C. § 112 in an inter partes review. 35 U.S.C. § 311(b).
`Recognizing that the ’894 Patent itself was not before the district court, we
`
`
`7 The terms cited by the district court include switching service 702,
`management service 703, boundary service 701, and application service 704.
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`consider the arguments raised by the parties in the context of the scope of
`this proceeding, which concerns Petitioner’s challenges under 35 U.S.C.
`§ 103.
`
`
`THE ’894 PATENT
`The invention purports to facilitate real-time two-way transactions, as
`opposed to deferred transactions, e.g., e-mail. Ex. 1001, col. 1, ll. 39–48.
`The invention also purports to be an improvement over browse-only
`transactions, (id. at col. 1, ll. 40–62), and limited two-way services on the
`Web through Common Gateway Interface (CGI) applications customized for
`particular types of applications or services. Id. at col. 1, l. 65–col. 2, l. 48.
`The patent describes a service network running on top of the Internet
`having five interacting components: an exchange agent, an operator agent, a
`management agent, a management manager, and a graphical user interface
`(GUI). Id. at col. 5, l. 61–col. 6, l. 7. As shown in Figure 8, a user connects
`to a Web server. Id. at col. 9, ll. 29–30. The Web server runs the exchange
`component. Id. Exchange 501 creates and allows for the management or
`distributed control of the service network, operating within the boundaries
`on an internet protocol (IP) facilities network. Id. at col. 6, ll. 33–36.
`A user connected to the Web server running the exchange component
`issues a request for a transactional application. Id. at col. 9, ll. 29–31. The
`Web server receiving the user’s request to perform a real-time transaction
`hands the request over to an exchange. Id. at col. 6, ll. 14–16, col. 9, ll. 31–
`32. The exchange 501 includes a Web page 505 that uses a GUI to display a
`list of point-of-service (POSvc) applications 510 accessible to the user by
`the exchange. Id. col. 6, ll. 21–22, ll. 43–44, and col. 9, ll. 33–35. The
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`POSvc applications are transactional applications that can execute the type
`of transaction the user is interested in performing. Id. at col. 6, ll. 25–26, ll.
`44–46. Exchange 501 also includes a switching component and an object
`routing component. Id. at col. 6, ll. 23–25. When the user selects a POSvc
`application, the switching component in the exchange switches the user to
`the selected POSvc application. Id. at col. 9, ll. 35–37. The object routing
`component executes the user’s request. Id. at col. 9, ll. 38–39. The
`exchange and a management agent thus perform the switching, object
`routing, application, and service management functions. Id. at col. 6, ll. 36–
`41.
`
`The exchange 501 and management agent together constitute a value-
`added network (VAN) switch, which provides multi-protocol object routing
`via a proprietary TransWebTM Management Protocol (TMP), depending
`upon the services chosen. Id. at col. 7, ll. 55–57, col. 7, l. 61–col. 8, l. 2,
`col. 8, ll. 44–46. In one embodiment, TMP and distributed on-line service
`information bases (DOLSIBs) perform object routing. Id. at col. 8, ll. 6–9,
`col. 9, ll. 36–38. In DOLSIBs, which are described as virtual information
`stores optimized for networking, information entries and attributes are
`associated with a networked object identity that identifies the information
`entries and attributes in the DOLSIB as networked objects. Id. at col. 8, ll.
`11–16. Each networked object is assigned an internet address based on the
`IP address of the node at which the networked object resides. Id. at col. 8,
`ll. 16–17. As a result, networked objects branch from a node in a
`hierarchical tree structure that establishes the individual object as an “IP-
`reachable” node on the internet, so that TMP can use this address to access
`the object from the DOLSIB. Id. at col. 8, ll. 20–30. Each object in the
`
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`DOLSIB has a name, which is an administratively assigned object ID
`specifying an object type. Id. at col. 8, ll. 31–33. The object type together
`with the object instance uniquely identifies a specific instantiation of the
`object, e.g., an instance of an object about car models, provides the user with
`specific information about a particular model. Id. at col. 8, ll. 33–39. Each
`object in the DOLSIB also has a syntax, which defines the abstract data
`structure corresponding to that object type, and an encoding that defines how
`the object is represented by the object type syntax while being transmitted
`over the network. Id. at col. 8, ll. 39–42.
`The VAN switch 520 disclosed has a layered architecture, as shown in
`Fig. 7. Boundary service 701 provides the interface between the VAN
`switch, the Internet and the Web, multi-media end user devices and the
`interface to an on-line service provider. Id. at col. 8, ll. 48–52. Switching
`service 702, which is described as an OSI application layer switch,
`represents the core of the VAN switch. Id. at col. 8, ll. 56–58.
`Interconnected application layer switches form the application network
`backbone and are described as a significant aspect of the subject patents. Id.
`at col. 8, ll. 64–65. Switching service 702 routes user connections to remote
`VAN switches and facilitates connectivity with the Internet (a public
`switched network) and private networks, including back office networks,
`such as banking networks. Id. at col. 8, ll. 61–64. Management service 703
`contains tools used by the end users to manage network resources, including
`VAN switches, and provides applications that perform Operations,
`Administration, Maintenance & Provisioning (OAM&P) functions, such as
`security management, fault management, performance management, and
`billing management. Id. at col. 9 ll. 1–12. Application service 704 contains
`
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`application programs that deliver customer services, including POSvc
`applications for banking, multi-media messaging, conferencing, financial
`services. Id. at col. 9, ll. 13–19. Depending upon the type of VAN service,
`the characteristics of the network elements will differ. Id. at col. 9, ll. 23–
`24.
`
`
`ILLUSTRATIVE CLAIM
`1. A computer-implemented method for completing a real-time Web
`transaction from a Web application in an on-line service over a digital
`network on the Web, the method comprising:
`displaying at least one Web application specific to an online service
`over a digital network on the Web, wherein the Web application is
`a point-of-service (POSvc) Web application, and further wherein
`the digital network is an overlay service network running on top of
`an IP-based facilities network selected from a group consisting of
`the physical TCP/IP-based Internet, the Web and email networks,
`wherein the facilities network is a physical network;
`accepting a first signal comprising a request from the point-of-service
`(POSvc) Web application for a real-time Web transaction specific
`to a Web merchant’s value-added network service on the Web
`offered as the online service over the digital network on the Web;
`utilizing one or more objects in the Web application and the
`information entries and the attributes of the one or more objects,
`wherein the one or more objects are one or more individual data
`structures in and specific to the POSvc Web application in said
`request, wherein the individual data structure in the POSvc Web
`application is an object identity with the information entries and
`attributes specific to the Web transaction request from the Web
`application, to connect in real-time to the value-added network
`service of the Web merchant without executing Common Gateway
`Interface (CGI) scripts;
`executing said connection at the OSI application layer, utilizing
`application layer routing of the object identity with the information
`entries and attributes over the service network on the Web, and
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`further wherein the object in the POSvc Web application is not an
`SNMP object;
`routing the one or more individual data structures in the POSvc Web
`application together with said information entries and attributes
`from said Web application over the service network on the Web,
`wherein the routing the one or more individual data structures in
`the POSvc Web application together with said information entries
`and attributes from said Web application over the service network
`on the Web is object routing on the World Wide Web performed as
`OSI application layer routing, distinct from routing at the transport
`layer of the OSI model or network layer of the OSI model or
`lower layers of the OSI model;
`managing the connection between said Web transaction request from
`the POSvc Web application and the Web merchant’s services from
`end-to-end in real-time; and
`completing a real-time Web transaction from said Web application,
`wherein the online service is a loan Web application.
`
`
`
`CLAIM CONSTRUCTION
`This inter partes review concerns the same patent and the same claims
`as those we addressed in related case SAP America v. Lakshmi
`Arunachalam, Case IPR2014-00413. In that proceeding, we addressed the
`parties’ claim constructions proposals extensively. In this proceeding, we
`apply the same constructions as those we applied in IPR2014-00413.
`
`PRIORITY DATE OF THE ’894 PATENT
`The priority date of the subject matter claimed in the ’894 Patent is at
`issue. Petitioner contends that the earliest possible priority date for each of
`the claims of the ’894 Patent is the actual filing date of the application that
`matured into the ’894 Patent, i.e., November 30, 2009. Pet. 4. Petitioner
`notes that the ’894 Patent issued from an application filed on November 30,
`2009, that is a division of the ’158 Patent. The face of the ’894 Patent
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`identifies a number of related U.S. applications extending back to
`provisional application 60/006,634 filed in Nov. 13, 1995 (“the Provisional
`Appl.”). Ex. 1001. Petitioner argues that, because the subject matter of
`claims 1–19 of the ’894 Patent is not disclosed in the manner required by the
`first paragraph of 35 U.S.C. § 112 in the parent ’158 Patent application, the
`claims of the ’894 Patent are not entitled to the priority claimed in the ’158
`Patent. Id. Specifically, Petitioner contends that the claims recite certain
`negative limitations not mentioned in the specification. Id. at 4–6.
`The first of these negative limitations recites “wherein the object of
`the POSvc Web application is not an SNMP object.” Id. at 4. (emphasis
`added). This limitation is found in clams 1, 2 and 4–19, i.e., all the claims
`except claim 3. Petitioner points out that the term SNMP is mentioned only
`once in the specification, when describing that object routing is provided via
`a proprietary protocol, i.e., the TransWebTM Management Protocol (TMP),
`which incorporates the same security features as SNMP. Id. at 4–5.
`Petitioner contends that rather than disclose excluding SNMP, the
`specification implies that object routing with TMP actually incorporates
`SNMP concepts. Id. at 5. Thus, according to Petitioner, the first disclosure
`of excluding SNMP is in the claims of the application filed on November 30,
`2009.
`
`Patent Owner contends that the Provisional Application “is profuse in
`its disclosures about SNMP and its shortcomings, and in particular, about
`the shortcoming of the SNMP object.” PO Resp. 44–45 (citing Ex. 2008, at
`3, 9–14, 15–26, 33–44, 46–72, and Figs. 1–11, and stating that these “all
`discuss the shortcomings of SNMP and the improvements over SNMP
`object in the inventions”). Patent Owner does not explain what material in
`
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`any of these 53 pages and 11 Figures actually supports her contentions
`concerning the disclosure of SNMP’s shortcomings. Patent Owner also
`states that the ’178 specification discloses SNMP, that this was well known
`in the art in 1995, and that the “citations are too numerous to recite in this
`paper, but the PTAB is pointed to this entire document and see for
`themselves that the issues raised by Petitioner over this SNMP and the
`priority date is totally frivolous.” Id. at 45. The Board gives consideration
`to the arguments, and the evidence cited in support of those arguments, that
`the parties make. The Board will not scour the record in search of evidence
`relevant to a particular issue, nor will it attempt to fit evidence together into
`a coherent explanation that supports an argument. Corning Inc. v. DSM IP
`Assets B.V., Case IPR2013-00049, slip op. at 14 (PTAB May 9, 2014) (Final
`Written Decision).
`Patent Owner also quotes from a passage at page 3 of Exhibit 2007,
`which appears to be from the Cyberman Business Plan, submitted as part of
`the Provisional Application. Id. Although this passage makes no mention of
`SNMP, it states that Cyberman extends the same paradigms as are
`traditionally used to manage routers and network devices, to interactively
`reach and manage information. Id. Contrary to Patent Owner’s arguments,
`when taken in the context of Patent Owner’s argument that SNMP was well
`known in 1995, without any further explanation this passage tends to support
`the proposition that the Priority Application did not disclose the newly
`claimed feature “wherein the object of the POSvc Web application is not an
`SNMP object.”
`Petitioner raises a similar issue concerning the limitation “utilizing an
`object in the Web application . . . to connect in real time to the value added-
`
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`network service off the Web merchant without executing Common Gateway
`Interface (CGI) scripts.” Pet. 5 (emphasis omitted). This limitation is found
`in all the claims of the ’849 Patent. Petitioner acknowledges that the
`specification implies reasons to exclude the use of CGI scripts for processing
`transactions for each service, but argues that in such cases CGI scripts are
`executed after the connection to the Web server is established. Id. at 6.
`Citing the disclosure of activating a Bank POSvc application to connect to
`bank services and utilize the application to perform banking transactions,
`Petitioner argues that the disclosure does not describe any reason why a CGI
`script would be excluded from the process of setting up a connection. Id. at
`5–6. Petitioner notes that the written description provides no examples of
`how such a connection actually is achieved. Id.
`Patent Owner refers us to CR2 (a reference to another portion of the
`Patent Owner Response at pages 19–21) and Exhibits 20078 and 20089 for a
`detailed analysis on CGI and the Davison paper that is included in Exhibit
`2009. PO Resp. 47. Once again, Patent Owner does not identify any
`specific material supporting her contention that the negative limitation
`“without executing Common Gateway Interface (CGI) scripts” is disclosed
`in the cited material and we will not scour the record for it. Id. at 5. CR2 is
`a discussion incorporated into Patent Owner’s arguments concerning the
`construction of POSvc Web application. PO Resp. 15–24. Here Patent
`Owner cites to the discussion of object identities as different from an HTML
`page with URL links, noting that an object is different from an HTML page
`
`8 The Patent Owner Response identifies Ex. 2007 as “Provisional
`Application with S/N 60,006,634 dated November 13, 1995.” PO Resp. iv.
`9 The Patent Owner Response identifies Ex. 2008 as “Complete Prosecution
`History of priority U.S. Patent No. 5,778,178.” PO Resp. iv.
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`that is accessed via a URL and that the Davison reference describes only
`how to create a standard HTML form, without routing capability. Id. at 19–
`20. CR2 also cites the ’894 Patent at column 5, ll. 42–56, which states that
`“CGI scripts provide only limited two way capabilities, as described above.”
`Id. at 20–21.
`The text cited by Patent Owner acknowledges that CGIs provide two-
`way capabilities, albeit limited. CGIs are also discussed in the specification
`of the ’894 Patent at column 2, lines 1–26. According to the ’894 Patent,
`each CGI application is limited because it is customized for a particular type
`of application or service, requiring the service provider, e.g., a bank, to
`create individual scripts to offer users access to each of its services, e.g.
`checking and lending. Ex. 1001, col. 2, l. 1–26. In a three way transaction,
`for example, a car purchase, the specification states that, as a result of
`limited two-way interaction with the car dealer and the lack of interaction
`with a bank, a user cannot purchase a car and arrange financing via a CGI
`application. Id. at col. 2, ll. 27–48.
`Petitioner’s declarant, Dr. Sirbu disputes much of the disclosure
`concerning the deficiencies of CGI. For example, Dr. Sirbu notes that a
`checking application is different from a loan application and would require
`different software to perform the necessary processing, regardless of the use
`of CGI. Ex. 1002 ¶ 39. The specification also discloses an Exchange
`comprising a Web page displaying POSvc applications the user can select
`for different Web merchants accessible via the Exchange, e.g., a Bank
`application, a Car Dealer application, or a Pizzeria application. Ex. 1001,
`col. 6, ll. 21–64. These services would require entirely different software.
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`The ’894 Patent states that CGI is a standard interface for running
`external programs on a Web server and that when the server receives a
`request for a document, the server dynamically executes the CGI script and
`transmits the output of the execution back to the Web browser. Ex. 1001,
`col. 2, ll. 3–10. Petitioner concedes that the parent ’158 Patent implies
`reasons to exclude the use of CGI scripts for processing transactions for a
`service, although Petitioner contends these reasons are not valid. Pet. 6.
`The claim limitation explicitly recites “to connect in real time to the value-
`added network service of the Web merchant without executing Common
`Gateway Interface (CGI) scripts.” Thus, the issue is whether there is a
`written description that supports connecting to the Web merchant’s services
`in real time without the use of CGI scripts.
`Petitioner emphasizes that the purportedly disadvantageous CGI
`scripts are executed after the connection to the Web server has been
`established, and that there is no explicit statement in the ’894 Patent (or
`correspondingly, the ’158 Patent) that CGI scripts cannot be used to set up
`the connection to the Web server or provide any reason why a CGI script
`would be excluded from the process of setting up a connection. Pet. 6. In
`addition, the declaration of Dr. Sirbu (“Sirbu Decl.”) states that, when a user
`desires to make a purchase, e.g., of an automobile, the purchase signal can
`cause a dealer’s server, via CGI, to launch an external program that can
`communicate with a bank’s computer in many ways, such as by using HTTP
`or CORBA. Ex. 1002