`571.272.7822
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`Paper 38
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` Entered: April 18, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OLD REPUBLIC GENERAL INSURANCE GROUP, INC.; OLD
`REPUBLIC INSURANCE COMPANY; OLD REPUBLIC TITLE
`INSURANCE GROUP, INC.; and OLD REPUBLIC NATIONAL TITLE
`INSURANCE COMPANY,
`Petitioner,
`
`v.
`
`OWNER1 OF U.S. PATENT NO. 6,519,581 B12,
`Patent Owner.
`____________
`
`Case IPR2015-01957
`Patent 6,519,581 B1
`____________
`Before MEREDITH C. PETRAVICK, BEVERLY M. BUNTING, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`1 The Federal Circuit determined that Intellectual Ventures I LLC is not the
`owner of U.S. Patent No. 6,519,581 B1 (“the ’581 patent”) because of a
`defective assignment in the chain of title. Intellectual Ventures I LLC v. Erie
`Indem. Co., Case No. 2016-1128, 2017 WL 900018, at *1–*5 (Fed. Cir.
`Mar. 7, 2017). At the Federal Circuit, there was no dispute that
`AllAdvantage.com was the last known assignee of the ’581 patent. Id. After
`its agent for service of process was notified, AllAdvantage.com did not
`made an appearance as patent owner in these proceedings. See Ex. 3003.
`2 The caption for this proceeding has been changed to remove Intellectual
`Ventures I LLC as the Patent Owner. See Paper 37.
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`I. INTRODUCTION
`Old Republic General Insurance Group, Inc.; Old Republic Insurance
`Company; Old Republic Title Insurance Group, Inc.; and Old Republic
`National Title Insurance Company (collectively “Petitioner”) filed a Petition
`on September 28, 2015, requesting an inter partes review of claims 11–19
`and 39–47 of U.S. Patent No. 6,519,581 B1 (Ex. 1001, “the ’581 patent”).
`(Paper 1, “Pet.”). Petitioner supports its challenge with a Declaration from
`Dr. Michael Mitzenmacher (Ex. 1003) and a Reply (Paper 26 “Reply”). On
`April 18, 2016, we instituted an inter partes review of claims 11–19 and 39–
`47 of the ’581 patent. Paper 28 (“Dec. on Inst.”). An oral hearing was held
`on December 19, 2016, and a transcript of the oral hearing is of record.
`Paper 34 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a final
`written decision under 35 U.S.C. § 318(a) as to the patentability of the
`challenged claims. For the reasons that follow, we determine Petitioner has
`shown by a preponderance of the evidence that claims 11–19 and 39–47 of
`the ’581 patent are unpatentable.
`A. Related Proceedings
`Petitioner indicates that the ’581 patent is involved in the following
`United States District Court proceedings:
`• Intellectual Ventures I LLC v. Old Republic General
`Insurance Group, Inc., No. 2:14-cv-01130 (W.D. Pa.);
`• Intellectual Ventures I LLC v. Highmark, Inc., No. 2:14-cv-
`01131 (W.D. Pa.); and
`• Intellectual Ventures I LLC v. Erie Indemnity Company, No.
`1:14-cv-00220 (W.D. Pa.).
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`Pet. 2. In these above-referenced cases, the district court dismissed
`Intellectual Ventures I LLC’s (“IV”) patent infringement claims based on
`the ’581 patent for lack of standing. Ex. 1017, 24. IV appealed the district
`court’s decision to the United States Court of Appeals for the Federal
`Circuit. See Intellectual Ventures I LLC v. Erie Indem. Co., Case Nos.
`2016–1128, -1129, -1132, 2017 WL 900018, at *1 (Fed. Cir. Mar. 7, 2017).
`On March 18, 2016, in email correspondence to the Board, Petitioner
`indicated that IV settled its matter with Highmark, Inc. Further, in
`Petitioner’s updated mandatory notices, we are informed that the Federal
`Circuit issued a decision on March 7, 2017 in IV’s consolidated Appeal Nos.
`2016-1128, -1129, and -1132, affirming the district court’s dismissal of IV’s
`patent infringement suit against Petitioner based on a lack of standing.
`Paper 36, 1; see Intellectual Ventures I LLC, 2017 WL 900018, at *1–*5.
`The ’581 patent is also the subject of another inter partes review
`petition filed by Petitioner in IPR2015-01956.
`B. Intellectual Ventures I LLC
`During the course of this proceeding, IV has participated as the
`purported Patent Owner of the ’581 patent. See Dec. on Inst. 3–6. IV has
`maintained that it is the patent owner of the ’581 patent through a series
`assignments including an assignment between AllAdvantage.com and Alset,
`Inc. (“the Alset Agreement.”). Id. As discussed in greater detail in our
`Order (Paper 37) filed concurrently herewith, on March 7, 2017, the Federal
`Circuit affirmed a district court’s dismissal of IV’s patent infringement
`claims for lack of standing. In doing so, the Federal Circuit determined that
`the Alset Agreement did not convey any rights to the ’581 patent.
`Intellectual Ventures I LLC, 2017 WL 900018, at *1–*5. IV has maintained
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`that it was entitled to ownership rights arising from a series of assignments
`after the Alset Agreement. See Ex. 1017, 5–24. However, because the
`Federal Circuit has determined that the Alset Agreement did not convey any
`rights to the ’581 patent to Alset, Inc., we are not persuaded that IV received
`any ownership rights to the ’581 patent from subsequent assignments. See
`Paper 37, 4–5; see also 37 C.F.R. § 3.54 (“[w]hen necessary, the Office will
`determine what effect a document has, including whether a party has the
`authority to take an action in a matter pending before the Office.” ).
`Accordingly, for the purposes of this final written decision, we do not
`consider IV to be the Patent Owner of the ’581 patent, and further do not
`consider the filings, arguments, and evidence submitted by IV in this record
`as the purported Patent Owner for this proceeding. Additionally, as
`discussed in greater detail in our Order, an agent for service of process for
`AllAdvantage.com was provided notice of this proceeding. Paper 37, 7–9.
`However, AllAdvantage.com has not made an appearance as Patent Owner
`in this proceeding, and has declined to participate in this inter partes review.
`Id.; see Ex. 3003. Therefore, we proceed to Final Written Decision without a
`substitute Patent Owner.
`
`C. The ’581 Patent
`The ’581 patent is directed to systems and methods for collecting
`information about a computer system or user. Ex. 1001, Abstract. Figure 1
`of the ’581 patent is reproduced below.
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`Figure 1 shows client 10 coupled to server 12 via communication link
`22 such as a local area network (LAN), a wide area network (WAN), or the
`Internet. Ex. 1001, 4:8–9, 5:19–25. As shown, client 10 may include one or
`more discovery agents 14a–d that are coupled to discovery engine 16. Id. at
`4:10–14. Each of discovery agents 14a–d collects client and/or user
`information (e.g., hardware and software configurations of client 10 and the
`user’s interests), and communicates this information to discovery engine 16.
`Id. at 4:16–25. Discovery engine 16 receives information collected by one
`or more discovery agents 14a–d and uses the received data to execute one or
`more discovery rules 18a–d. Id. at 4:39–42. The discovery rules determine
`what, if any, action is to be taken based on the collected data. Id. at 3:17–18.
`Discovery rules may be a series of Boolean operations, mathematical
`equations, or other comparisons or evaluations of the collected data. Id. at
`3:18–21. Discovery agents are separate programs from the discovery rules
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`and there is no particular relationship between the discovery agents and the
`discovery rules. Id. at 3:22–25.
`Figure 1 further shows server 12 as including discovery agents 24 and
`discovery rules 26. Ex. 1001, 5:25–26. Server 12 may store various
`discovery agents 24 and discovery rules 26 for transmission to one or more
`clients, which are then activated or executed by the discovery engine
`contained in the client. Id. at 5:30–33. Storage device 28 in server 12 can
`be used to store various information regarding the clients coupled to the
`server and the various discovery rules and discovery agents already installed
`on each client. Id. at 5:34–37.
`The result of a particular discovery rule may be to store the received
`data, invoke another discovery rule, or combine the received data with
`previously stored data (e.g., performing data averaging). Id. at 4:50–53.
`The result may trigger one or more activities or events, or generate a
`warning to the user, e.g., that the available disk space or available memory
`on the user device falls below a particular threshold. Id. at 4:63–67.
`D. Illustrative Claim
`Of the challenged claims, claims 11 and 39 are independent. Claim
`11, reproduced below, is illustrative of the subject matter of the ’581 patent:
`11.
`In a computer system, method of collecting information
`comprising:
`receiving a discovery rule across a communication link
`from a sender,
`applying the discovery rule to data about the computer
`system or a user to generate information, and wherein the data
`is collected by a discovery agent located in the computer system
`when the discovery agent is activated and without requiring
`action by the user; and
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`the
`across
`information
`the
`communicating
`communication link back to the sender of the discovery rule.
`E. The Asserted Grounds
`We instituted an inter partes review of claims 11–19 and 39–47 on the
`following grounds of unpatentability under 35 U.S.C. 103 (Dec. on Inst. 35–
`36):
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`Reference(s)
`
`Graf3 and Desai4
`Graf, Desai, and Wahlquist5
`
`
`Basis Claim(s) Challenged
`§ 103
`11, 17–19, 39, and 45–47
`§ 103
`12–16 and 40–44
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`II. ANALYSIS
`
`A. Claim Construction
`We construe claim terms of an unexpired patent according to their
`broadest reasonable interpretation in light of the patent specification. 37
`C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2144–46 (2016). Under the broadest reasonable interpretation standard, we
`assign claim terms their ordinary and customary meaning, as understood by
`one of ordinary skill in the art, in the context of the entire patent disclosure.
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). “We
`have recognized ‘only two exceptions to this general rule: 1) when a
`patentee sets out a definition and acts as his own lexicographer, or 2) when
`the patentee disavows the full scope of a claim term either in the
`specification or during prosecution.’” Unwired Planet, LLC v. Apple Inc.,
`
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`3 U.S. Patent No. 5,619,656, issued Apr. 8, 1997 (Ex. 1005, “Graf”).
`4 U.S. Patent No. 5,781,703, issued July 14, 1998 (Ex. 1006, “Desai”).
`5 U.S. Patent No. 5,367,667, issued Nov. 22, 1994 (Ex. 1007, “Wahlquist”).
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`829 F.3d 1353, 1358 (Fed. Cir. 2016) (citing Thorner v. Sony Comput.
`Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Any special
`definition for a claim term must be set forth in the Specification with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`We determine that the following claim terms require explicit
`construction for purposes of this Final Written Decision. See, e.g., Wellman,
`Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim
`terms need only be construed ‘to the extent necessary to resolve the
`controversy.’”) (citation omitted).
`1. Discovery Agent (claims 11 and 39)
`For the purposes of the Decision on Institution, we adopted
`Petitioner’s proposed construction and construed the term “discovery agent”
`as “code that collects data.” Dec. on Inst. 10–11. In its Petition, Petitioner
`submits that one of ordinary skill in the art would understand the claim term
`“discovery agent” to mean “code that collects data.” Pet. 9–10.
`Based on our review of the Specification of the ’581 patent,
`Petitioner’s proposed construction is consistent with the disclosure of the
`’581 patent. The ’581 patent teaches that discovery agents are
`“implemented using individual programs or code sequences” and
`“[d]iscovery agents 14a-14d collect information about the client or the user
`of client 10.” Ex. 1001, 3:7–10, 4:16–20.
`We note that the ’581 patent further discloses that the “discovery
`agents themselves have no intelligence regarding how to interpret or act on
`the collected data.” Ex. 1001, 3:10–12. Considering this description in the
`context of the ’581 patent as a whole, we do not consider this statement to
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`ascribe a special definition of “discovery agent” or a disavowal of claim
`scope. First, the literal language of the claims themselves does not expressly
`provide for individual programs or code, and the absence of intelligence.
`See Ex. 1001, Claims 11 and 39. Second, the ’581 patent, itself, states that
`the disclosed embodiments are not intended to limit the scope of the
`invention. Ex. 1001, 2:35–38, 2:64–3:1, 10:56–64. For example, the ’581
`patent states, in the lines preceding lines 10 through 12 of column 3, that
`“those of ordinary skill in the art will appreciate that the invention may be
`practiced without these specific details.” Ex. 1001, 2:66–3:1. Additionally,
`the ’581 patent indicates that
`it will be understood by those of ordinary skill in the art that the
`particular embodiments shown and described are for purposes
`of illustration only and are not intended to limit the scope of the
`invention. Those of ordinary skill in the art will recognize that
`the invention may be embodied in other specific forms without
`departing from its spirit or essential characteristics. References
`to details of particular embodiments are not intended to limit
`the scope of the claims.
`Ex. 1001, 10:56–64.
`Accordingly, for the purposes of this Decision, we construe the term
`“discovery agent” as “code that collects data.”
`2. Other Claim Terms
`Petitioner proposes additional constructions for “discovery rule” and
`“passively collects.” Pet. 7–11. We determine that no other claim terms
`need explicit construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed
`that are in controversy and only to the extent necessary to resolve the
`controversy.”)
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`B. Claims 11, 17–19, 39, and 45–47— Asserted Obviousness over Graf
`(Ex. 1005) and Desai (Ex. 1006)
`1. Summary of Graf (Ex. 1005)
`Graf describes automated management of a group of computers and
`associated hardware and software. Ex. 1005, 10–13, Abstract (“The system
`and method of this invention automatically manages a group of computers
`by automatically gathering data, storing the data, analyzing the stored data to
`identify specified conditions, and initiating automated actions to respond to
`the detected conditions.”). Figure 1 of Graf is reproduced below.
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`Figure 1 shows a group of managed computers 1 and a group of monitoring
`computers 6. Id. at 4:14–16, 27. The group of managed computers 2
`includes computers 2–5 that may include CPU 9, disks 14, communications
`interface 16, and SYSTEM-Watch AI-L client 13. Id. at 4:16–21. Data is
`gathered from and stored on a managed computer. Id. at 4:22–24. Graf
`teaches that a managed computer may send data to a monitoring computer 8,
`shown in Figure 1 as part of the group of monitoring computers 6. Id. at
`4:23–26.
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`Graf further teaches that the group of monitoring computers 6
`includes computers that may have a CPU, memory, disks, communications
`interface, and SYSTEMWatch AI-L console 21. Id. at 4:27–31. Graf
`further provides that a monitoring computer may request data from a
`managed computer, and data that is received by the monitoring computer
`from the managed computer is stored on the monitoring computer. Id. at
`4:33–39. Graf also teaches that a monitoring computer can receive data
`from several managed computers, and the monitoring computer can perform
`post-processing on data received from several managed computers and/or
`perform additional data gathering itself, in which case the data is stored on
`the monitoring computer. Id. at 4:39–45.
`Additionally, Graf discloses that the SYSTEMWatch AI-L client
`provides a means for the computer to automatically detect and respond to
`problems. Id. at 4:61–64. Graf provides that the SYSTEMWatch AI-L
`client also accepts and responds to commands issued by a SYSTEMWatch
`console. Id. at 4:64–67. Graf adds that a computer is a managed computer
`if it runs the SYSTEMWatch AI-L client, and a computer is a monitoring
`computer if it runs the SYSTEMWatch AI-L console. Id. at 4:61–63, 5:1–3.
`Graf further teaches that the SYSTEMWatch AI-L client is tasked with
`managing a computer and providing notification of management actions to
`the SYSTEMWatch AI-L console. Id. at 5:39–41. Graf provides that the
`SYSTEMWatch AI-L client is bifurcated into a “core layer” for detecting
`and responding to problems, and an “application layer” that configures the
`client to operate in a useful manner. Id. at 5:45–49. The core layer includes
`a database for storing gathered data, intermediate results, and other
`information. Id. at 5:65–67. The core layer further includes an expert
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`system that is used for problem detection and action initiation. Id. at 7:53–
`54.
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`Graf further discloses that the expert system is a forward chaining rule
`based expert system using a rule specificity algorithm. Id. at 7:55–56.
`When SYSTEMWatch AI-L client, 13, is started, the expert system contains
`no rules. Id. at 7:56–57. Rules are declared and incorporated into the core
`layer. Rules support both the IF-THEN rules as well as IF-THEN-ELSE
`rules. Id. at 7:58–60. The rules used in SYSTEMWatch AI-L permit
`assignments and function calls within the condition of the rule. Id. at 7:60–
`62.
`
`2. Summary of Desai (Ex. 1006)
`Desai discloses a network monitoring system that includes an
`intelligent remote agent for collecting performance data on the agent’s
`associated computer. Ex. 1006, Abstract. Figure 1 of Desai is reproduced
`below.
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`Figure 1 shows network monitoring system 10 that includes a plurality
`of interconnected computer systems 12. Id. at 2:45–52. Referring to Figure
`1, Desai teaches that Intelligent Remote Agents 18 communicate with Proxy
`Controller 16, and through it to Data Server 14, for the collection of
`performance data from the computer systems 12. Ex. 1006, 3:66–4:2.
`Intelligent Remote Agent 18 receives commands from Proxy Controller 16
`associated with Data Server 14, and in response to such commands,
`Intelligent Remote Agent 18 initiates data collection operations on its
`respective computer system 12 and then returns the collected data to Proxy
`Controller 16 for forwarding to Data Server 14. Id. at 4:5–11.
`Desai further teaches that there are two ways to collect performance
`data from Intelligent Remote Agents 18: (1) transmitting commands for a
`situation monitoring request to a particular Intelligent Remote Agent 18 on a
`particular computer system 12: or (2) transmitting commands for a report
`request to a particular Intelligent Remote Agent 18 on a particular computer
`system 12. Ex. 1006, 5:66–6:5. In both cases, the commands are
`transmitted from the Proxy Controller 16 to the Intelligent Remote Agent 18
`and the response is returned by the Intelligent Remote Agent 18 to the Proxy
`Controller 16 and Data Server 14. Id. at 6:5–9.
`Desai adds that Data Server 14 may include predefined automatically
`initiated situation monitoring requests that are transmitted to Proxy
`Controller 16 upon initialization of Data Server 14 and Proxy Controller 18.
`Ex. 1006, 6:10–13. Proxy Controller 16 analyzes the situation monitoring
`request extracts predicates and sampling intervals or event occurrences
`therefrom and generates one or more command sequences for Intelligent
`Remote Agents 18. Id. at 6:13–17. The predicates, which are analogous to
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`SQL predicates, indicate the specific items of performance data to be
`collected. Id. at 6:18–19. The sampling intervals which are analogous to
`timers, indicate the specific time periods for collecting the items of
`performance data. Id. at 6:19–22. The event occurrences, which are
`analogous to interrupts, indicate the specific event indication or occurrence
`that triggers the collection of performance data. Id. at 6:22–24. The
`command sequences are then transmitted to the specified Intelligent Remote
`Agents 18. Id. at 6:24–26.
`Intelligent Remote Agent 18 collects the desired data at the specified
`sampling interval or event occurrence and determines whether the collected
`data satisfies any of the situation predicates. Id. at 6:43–46. Any collected
`data that satisfies the situation predicates is returned to Proxy Controller 16
`and is then transmitted to Data Server14 for storage. Id. at 6:46–48.
`3. Analysis
`Petitioner challenges claims 11, 17–19, 39, and 45–47 under 35
`U.S.C. § 103 based on Graf and Desai. See Pet. 41–44. For this challenge,
`Petitioner relies on unpatentability arguments it presents earlier in its
`Petition based on Graf alone pursuant to 35 U.S.C. §§ 102 and 103. See id.
`We have considered the arguments and evidence presented, and are
`persuaded that Petitioner has shown by a preponderance of the evidence that
`claims 11, 17–19, 39, and 45–47 are unpatentable over Graf and Desai.
`a. Claims 11 and 39
`With respect to claims 11 and 39, we discuss independent claim 11
`below, which also is illustrative of the subject matter claimed in independent
`claim 39.
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`Claim 11 is directed to a method of collecting information that
`includes the step of “receiving a discovery rule across a communication link
`from a sender.”
`For this limitation, Petitioner asserts that Graf discloses a
`“communication link from a sender,” recited in claim 11, because a group of
`managed computers are shown linked to a group of monitoring computers
`over a network. Pet. 18 (citing Ex. 1005, Fig. 1). Petitioner further asserts
`that Graf describes the use of a “modem using a telecommunications
`network” as an example of a communication means between all the
`computers on the network. Id. (citing Ex. 1005, 4:54–57). Petitioner relies
`on the testimony of its declarant, Dr. Mitzenmacher, which provides that
`computers communicating over a computer network or via a modem
`necessarily employ a “communication link” in order to carry out the
`communication. Pet. 18; Ex. 1003 ¶ 116.
`Petitioner asserts Graf discloses a “discovery rule” because Graf
`describes a rule based expert system in the core layer of the SYSTEMWatch
`AI-L client that contains several rules, including an “EXCEPT” rule used to
`perform problem detection and action initiation based on data collected by
`the “DATA2” and “DATA” rules. Pet. 16–17 (citing Ex. 1005, 7:52–61,
`8:40–50). Additionally, Petitioner asserts that Desai teaches remote agents
`that receive commands to collect performance data, which would include
`receiving “predicates” against which the collected data is to be tested. Pet.
`42 (citing Ex. 1006, 6:17–19, 43:46). Petitioner asserts that Desai’s
`predicates are “discovery rules” that are received by a user computer system
`across Desai’s computer network. Pet. 42 (citing Ex. 1006, 2:2–6, 2:45–57,
`5:65–6:9; Fig. 1).
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`Petitioner further argues that it would have been obvious to one of
`ordinary skill in the art to “combine the rule-transmission functionality of
`Desai with the system of Graf . . . in order to install the rule files disclosed in
`Graf onto the managed computers to ‘respond to additional problems.’” Pet.
`42 (citing Ex. 1005, 12:9–11). Further, Petitioner asserts that a skilled
`artisan “would have been motivated to employ such a combination given the
`efficiency that such a method would have provided to the Graf system
`administrator in installing the rule files on remote managed computers.” Id.
`at 42–43. Petitioner adds that Desai teaches that
`the transmission and receipt of discovery rules over computer
`or telecommunications networks, for the purpose of monitoring
`a remote computer, was known (see, e.g., Ex. 1006 at 1:23–27),
`so to employ such functionality in the system of Graf would
`have been the use of a known technique for its ordinary purpose
`. . . achievi[ng] [a] predictable result [with a reasonable
`expectation of success]. See Ex. 1003 at ¶ 130.
`Id. at 43 (citing Ex. 1006, 2:2–11, 2:45–57, 5:65–6:9).
`Petitioner’s arguments and evidence discussed above are persuasive.
`As Petitioner observes, Graf teaches that the SYSTEMWatch AI-L includes
`a communication mechanism in the core layer that is based on mailboxes.
`Ex. 1005, 10:28–31. Graf further provides that the mailboxes allow a
`SYSTEMWatch AI-L client and a SYSTEMWatch AI-L console to deliver
`and receive messages/files from one another. Id. at 10:33–36. Graf also
`discloses that the communication mechanism can operate a communication
`daemon through which messages between modules are passed. Id. at 10:40–
`47. Graf does not disclose explicitly that a discovery rule is received across
`a communication link. See Pet. 41 (“To the extent one might argue that this
`claim element is not disclosed or suggested by Graf, the claims as a whole
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`would still have been obvious because Desai does disclose this functionality
`and the combination of Graf and Desai would have been obvious.”).
`Nonetheless, we agree with Petitioner that Graf teaches its described system
`could manage “1 to several thousand” computers (Ex. 1005, 4:21–22), and
`that in doing so “additional problems” would arise, requiring a system
`administrator to “add additional modules to detect, analyze, and respond to
`additional problems” (id. at 12:9–12).
`With this in mind, we are further persuaded that Petitioner has offered
`sufficient articulated reasoning with rational underpinnings to support the
`conclusion of obviousness. In particular, we find persuasive Petitioner’s
`explanation that a skilled artisan would have considered it more efficient to
`utilize Graf’s existing communication mechanism to deliver rules or files,
`especially in light of Desai’s teaching that rules in the form of commands
`and predicates are transmitted to remote agents. See Pet. 42. For example,
`referring to Figure 1, Desai teaches Data Server 14 collects and stores
`performance data from one or more computer systems 12 in network 10. Ex.
`1006, 3:13–14. Desai further provides that in operation,
`Data Server 14 may include predefined, automatically-initiated,
`situation monitoring requests that are transmitted to the Proxy
`Controller 18 upon initialization of Data Server 14 and the
`Proxy Controller 16. The Proxy Controller 16 analyzes the
`situation monitoring request, extracts predicates and sampling
`intervals or event occurrences therefrom, and generates one or
`more command sequences for the Intelligent Remote Agents
`18. . . . The command sequences are then transmitted to the
`specified Intelligent Remote Agents 18.
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`Ex. 1006, 6:10–26 (emphasis added). Desai further teaches that the
`“Intelligent Remote Agents receive commands instructing them to collect
`performance data on the Agent’s associated computer system, wherein the
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`commands comprise predicates for filtering the performance data.” Ex.
`1006, 2:6–11. Thus, we are persuaded that Petitioner has met its burden of
`showing, through Petitioner’s submitted explanations and evidence, that
`Graf and Desai teach “receiving a discovery rule across a communication
`link from a sender” as recited in claim 11.
`Claim 11 further includes the step of: “applying the discovery rule to
`data about the computer system or a user to generate information.”
`Petitioner argues Graf teaches this limitation because (1) DATA2
`rules generate information using the raw data gathered by the DATA rules;
`and (2) EXCEPT rules apply their conditions to collected data to determine
`what, if any, action should be taken. Pet. 12–25.
`Petitioner’s arguments and evidence are persuasive. In particular, we
`note that Graf discloses that a DATA state is assigned to rules which gather
`raw data from the computer system; a DATA2 state is assigned to rules that
`perform computations based on data collected by the rules in the DATA
`state; and the EXCEPT state is assigned to rules that perform problem
`detection and action initiation. Ex. 1001, 8:30–57. This disclosure is
`consistent with Petitioner’s position that Graf’s DATA2 or EXCEPT state
`rules teach or suggest discovery rules that are applied to data about the
`computer system to generate information. See Pet. 22 (“Graf describes a
`DATA2 based rule named ‘fileSysBehave1Compute,’ id. at Table 18, which
`uses raw historical data about the computer’s file system space utilization to
`generate historical trend value information using a recursive average filter,
`id. at 29:1–30:33.”).
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`Claim 11 also requires “wherein the data is collected by a discovery
`agent located in the computer system when the discovery agent is activated
`and without requiring action by the user.”
`Petitioner argues that the SYSTEMWatch AI-L client program is a
`“discovery agent” because Graf describes it as a separate program that
`collects data and runs on a managed computer. Pet. 25–26 (citing Ex. 1005,
`3:15–25, 4:33–36, 4:58–63, 5:38–41, 5:65–67, 10:64–67). As an example of
`data collection, Petitioner refers to, among other things, Graf’s disclosure of
`a DATA rule that causes the SYSTEMWatch AI-L client to collect data. Id.
`at 26 (citing Ex. 1005, 8:30–58).
`We are persuaded that Petitioner has met its burden, through
`Petitioner’s submitted explanations and evidence, of demonstrating how
`Graf discloses “wherein the data is collected by a discovery agent located in
`the computer system” as recited in claim 11. Petitioner’s argument is
`consistent with Graf’s distinction between a SYSTEMWatch AI-L client and
`a SYSTEMWatch AI-L console, whereby the SYSTEMWatch AI-L client is
`run on a managed computer to provide the managed computer with a means
`to automatically detect and respond to problems. Ex. 1005, 4:58–67.
`Further, Graf teaches that the core layer of the SYSTEMWatch AI-L client
`contains an “expert system” with DATA state rules that “gather raw data
`from the computer system.” Ex. 1005, 7:52–54, 8:29–31.
`Furthermore, we find persuasive Petitioner’s arguments that Graf
`discloses wherein the data is collected by a discovery agent located in the
`computer system when the discovery agent is activated and without
`requiring action by the user. Petitioner asserts Graf teaches that the data can
`be automatically collected by the SYSTEMWatch AL-client, for example,
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`by its low level DATA rules, when it is initialized. Pet. 27 (citing Ex. 1005,
`4:17–44, 8:18–58, 53:7–14). Petitioner adds that Graf also discloses the
`SYSTEMWatch AI-L system can collect the data when the disclosed event
`program is triggered at specified times or periodically, which also does not
`require action by the user. Id. (citing Ex. 1005, 15:34–39). Based on the
`record, we determine Petitioner’s arguments and evidence are persuasive
`and consistent with Graf’s disclosure. See Ex. 1005, 15:34–39.
`Claim 1 further recites the step of “communicating the information
`across the communication link back to the sender of the discovery rule.”
`Petitioner asserts that Graf teaches that the managed computer(s)
`communicate the generated information across the computer network back
`to the monitoring computer. Pet. 27–28 (citing Ex. 1005, 4:23–26, 4:33–45,
`22:8–9, 22:62–23:3, 54:34–43, Table 18; Ex. 1003 ¶¶ 151–154).
`Petitioner’s arguments and evidence are persuasive and consistent
`with the disclos