Paper No. 26
`
`
`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
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner of Record
`
`Patent No. 6,519,581
`____________________
`Inter Partes Review No. IPR2015-01957
`
`
`
`
`
`
`
`
`PETITIONERS’ REPLY
`________________________
`
`
`
`

`
`IPR2015-01957
`
`
`
`Contents
`
`Petitioners’ Reply
`
`I.
`
`INTRODUCTION ................................................................................. 1
`
`IV IS ESTOPPED FROM CLAIMING OWNERSHIP OF THE 581
`II.
`PATENT AND ITS SUBMISSIONS SHOULD BE IGNORED ............................... 3
`
`III.
`
`IV MISCONSTRUES THE CLAIMS .................................................. 4
`
`A.
`
`“Discovery Agent” ................................................................................ 4
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`The Board’s Interpretation Does Not Make “Discovery Agent”
`Redundant ................................................................................... 4
`
`The Patent’s Description of the Unclaimed “Discovery Engine”
`Does Not Limit The Interpretation of “Discovery Agent” ......... 5
`
`The Patent’s Reference To “The Present Invention” Does Not
`Limit The Claims ........................................................................ 7
`
`Extraneous Details From The Specification May Not be Used
`To Limit The Claims ................................................................... 8
`
`The Prosecution History Contradicts IV’s Interpretation ......... 10
`
`IV’s Proposed Interpretation Is Unreasonable .......................... 11
`
`IV.
`
`CLAIMS 11-19 and 39-47 ARE UNPATENTABLE ......................... 12
`
`A. Graf In View of Desai Renders Obvious Claims 11, 17-19, 39 and 45-
`47 ......................................................................................................... 12
`
`1.
`
`2.
`
`The SYSTEMWATCH AI-L Client Is A Discovery Agent ..... 12
`
`The Cited Combination Discloses Receiving A Discovery Rule
`Across A Communication Link ................................................ 14
`
`B.
`
`Graf In View of Desai and Wahlquist Renders Obvious Claims 12–16
`and 40–44 ............................................................................................ 17
`
`1.
`
`The Cited Combination Discloses Making A User Request
`(Claims 12 and 40) .................................................................... 17
`i
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`2.
`
`The Cited Combination Discloses Receiving A Discovery
`Agent Across A Communication Link (Claims 16 and 44) ..... 21
`
`V.
`
`CONCLUSION ................................................................................... 23
`
`
`
`
`
`
`
`
`
`ii
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Absolute Software, Inc. v. Stealth Signal, Inc.,
`659 F.3d 1121 (Fed. Cir. 2011) ........................................................................ 7, 8
`
`Howmedica Osteonics Corp. v. Wright Med. Tech.,
`540 F.3d 1337 (Fed. Cir. 2008) ............................................................................ 8
`
`Pharmacia & Upjohn Co. v. Mylan Pharm., Inc.,
`170 F.3d 1373 (Fed. Cir. 1999) ............................................................................ 3
`
`SanDisk Corp. v. Memorex Products, Inc.,
`415 F.3d 1278 (Fed. Cir. 2005) ............................................................................ 6
`
`Thorner v. Sony Comput. Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ............................................................................ 9
`
`Unwired Planet, LLC v. Apple Inc.,
`No. 2015-1725, 2016 WL 3947839 (Fed. Cir. July 22, 2016) ......................... 7, 8
`
`
`
`
`
`iii
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`Exhibit List
`
`1015
`1016
`
`1017
`
`Exhibit # Reference Name
`1001
`U.S. Patent No. 6,519,581 (the "581 patent")
`1002
`File History of U.S. Patent No. 6,519,581
`1003
`Declaration of Dr. Michael Mitzenmacher
`1004
`Curriculum Vitae of Dr. Michael Mitzenmacher
`1005
`U.S. Patent No. 5,619,656 to Lars O. Graf ("Graf")
`1006
`U.S. Patent No. 5,781,703 to Desai et al. ("Desai")
`1007
`U.S. Patent No. 5,367,667 to Wahlquist et al. ("Wahlquist")
`1008
`U.S. Patent No. 5,432,932 to Chen et al. ("Chen")
`1009 Microsoft Press Computer Dictionary (3d ed.) (1997)
`1010
`Newton's Telecom Dictionary (11th ed.) (1996)
`1011 Webster's New World Dictionary of Computer Terms (5th ed.) (1994)
`1012
`21st Century Dictionary of Computer Terms (1994)
`1013
`IBM Dictionary of Computing (1994)
`1014
`File History of U.S. Appl. No. 09/017,112 (parent application to the
`581 patent), issued as U.S. Patent No. 6,236,983 (the "'983 Patent")
`U.S. Patent No. 6,457,879 to Thurlow et al. ("Thurlow")
`E-mail from D. Gillard to V. Winters re: "IV v. Old Republic" (Oct. 8,
`2014)
`Intellectual Ventures I LLC v. Erie Indemnity Co., et al., Case Nos.
`1:14-cv-000220, 2:14-cv-01130, 2:14-cv-01131, Opinion (Dkt. 117)
`(W.D. Pa.)
`Intellectual Ventures I LLC v. Old Republic Gen. Ins. Grp., Inc., Case
`No. 2:14-cv-01130, Notice of Appeal (Dkt. 60) (W.D. Pa.)
`Intellectual Ventures I LLC v. Old Republic Gen. Ins. Grp., Inc., Case
`No. 2:14-cv-01130, Complaint (Dkt. 1) (W.D. Pa.)
`Email regarding Federal Express Delivery to Lisa Benado
`Federal Express Delivery Confirmation to Lisa Benado
`
`1018
`
`1019
`
`1020
`1021
`
`iv
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`Exhibit # Reference Name
`1022
`Declaration of Vernon M. Winters
`1023
`Deposition Transcript of Dr. Martin E. Kaliski, Ph.D. (Aug. 23, 2016)
`[NEW]
`1024
`[NEW]
`1025
`[NEW]
`
`American National Standard for Information Systems – Database
`Language – SQL (ANSI INCITS 135-1992) (1992)
`Shen et al, Yoda, The Young Observant Discovery Agent, AI
`Magazine, Volume 18, No. 1, pp. 37-45 (1997)
`
`v
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`I.
`
`INTRODUCTION
`
`The response of Intellectual Ventures I LLC (“IV”) includes little more than
`
`the same arguments included in its preliminary response and already rejected by
`
`the Board. Its principle argument is that the Board should adopt an unnaturally
`
`narrow interpretation for the claimed “discovery agent,” based solely on various
`
`isolated passages from the specification. IV never disputes the evidence submitted
`
`with the Petition demonstrating that the institution decision’s interpretation
`
`reflected the ordinary meaning of “discovery agent” to a person of ordinary skill in
`
`the art, reading the patent specification, at the time of the putative invention. Nor
`
`does IV attempt to show a clear definition or clear and unambiguous disclaimer in
`
`the intrinsic record, or any other even remotely reasonable basis to depart from the
`
`ordinary meaning of the claim language. IV’s argument must be rejected.
`
`IV’s other arguments are similarly unsupportable and, for the most part,
`
`have been utterly undermined by its own expert, Dr. Martin Kaliski. On cross-
`
`examination, the expert was initially uncooperative, repeatedly calling the Board’s
`
`claim interpretation “absurd,” Ex. 1023, 31:21-22, 56:12-13, 60:24-61:2, 73:22-74-
`
`1, refusing to answer counsel’s questions, id., 55:18-25, and refusing even to read
`
`passages from a document he had been provided by IV for purposes of preparing
`
`his declaration, id., 94:23-25 (“I'm not going to answer that question because that
`
`would require me to read this and I refuse to read this sitting here.”); id., 95:9-19
`
`1
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`(“…So I'm going to cross my arms and I'm not answering you.”).1 Once it became
`
`clear that Petitioner’s counsel was going to call the Board and request assistance,
`
`however, the expert relented.
`
`That’s when the roof came crashing in on IV’s case. The expert admitted,
`
`for example, that the interpretation of “discovery agent” he and IV were advancing
`
`was inconsistent with the interpretation of that phrase applied by the examiner
`
`during prosecution and to which the patent applicants never objected. Ex. 1023,
`
`111:21-115:14, 124:9-15. He also admitted that the prior art Graf patent discloses
`
`the claimed “discovery agent” under the Board’s interpretation, id., 125:16-21, that
`
`the additional limitations IV seeks to read into that interpretation are also satisfied
`
`by the Graf client, see id., 41:1-3 (admitting that any software program would
`
`satisfy the “program or code sequence” limitation); 127:7-13 (admitting the Graf
`
`client satisfies the “no intelligence” limitation).
`
`The expert further conceded that the fully automatic system IV contends
`
`Graf teaches towards would be “impossible,” id., 134:1-8, that the use of “any
`
`computer system” would create situations in which the user would “need to talk to
`
`
`
`1 The document in question was Ex. 1014, the prosecution history of the 581
`
`Patent’s parent, which was submitted with the Petition. The expert testified it had
`
`been provided to him when preparing his declaration. See Ex. 1023, 17:9-18.
`
`2
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`a help desk,” id., 135:4-15, that Graf in particular disclosed that possibility, id.,
`
`136:23-137:4, and that there was no question a skilled artisan could transmit the
`
`client of Graf from one computer to another using the same prior art technology
`
`identified in the Petition for that purpose, id., 144:6-15.
`
`As demonstrated below, these concessions effectively gut what little case IV
`
`had when it filed its response, and confirm that IV’s claims are unpatentable. The
`
`Board should so find.
`
`II.
`
`IV IS ESTOPPED FROM CLAIMING OWNERSHIP OF THE 581
`PATENT AND ITS SUBMISSIONS SHOULD BE IGNORED
`
`Petitioner respectfully maintains that IV is collaterally estopped from
`
`claiming ownership of the 581 Patent, see Ex. 1017, 4-24; Pharmacia & Upjohn
`
`Co. v. Mylan Pharm., Inc., 170 F.3d 1373, 1380-81 (Fed. Cir. 1999), and should be
`
`precluded from participating in this proceeding, see Paper 8 (explaining how each
`
`estoppel element applies). Its evidence and arguments should be ignored, the
`
`showing of the Petition considered unrebutted, and the claims cancelled.
`
`
`
`3
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`III.
`
`IV MISCONSTRUES THE CLAIMS
`
`A.
`
`“Discovery Agent”
`
`1.
`
`The Board’s Interpretation Does Not Make “Discovery Agent”
`Redundant
`
`IV first objects to the Board’s interpretation of “discovery agent” as “code
`
`that collects data,” asserting that it should instead be construed to mean “an
`
`individual program or code sequence to collect data but has no intelligence
`
`regarding how to interpret or act on the collected data.” Resp. 6-16. In the
`
`Institution Decision, the Board rejected this same proposed interpretation for
`
`numerous reasons. Dec. 10-11.
`
`IV provides no reason to depart from that conclusion. It argues, for
`
`example, that “the requirement that the discovery agent be code that collects data is
`
`already required by other limitations in all of the independent claims and thus such
`
`a construction gives no meaning to ‘discovery agent,’” basing this assertion on the
`
`claim phrase “wherein the data is collected by a discovery agent located in a
`
`computer system.” Resp. 6.
`
`But nothing in that wherein clause requires that a “discovery agent” be
`
`“code that collects data.” The discovery agent could instead include hardware
`
`(rather than code) that collects data, as IV’s expert agreed. Ex. 1023, 59:14-19; see
`
`also, e.g., Ex. 1025 (describing a robot “discovery agent”).
`
`4
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`Moreover, the Board’s construction recites a capability of the claimed
`
`discovery agent (i.e., the ability to collect data) while the wherein clause refers to
`
`the collection of a particular type of data (“data about the computer system or a
`
`user”) by a discovery agent located in the particular computer system to which a
`
`discovery rule has been transmitted. See Ex. 1001, 11:2-5. The phrase “discovery
`
`agent” as construed by the Board is therefore not made redundant by the wherein
`
`clause, but instead merely sets out the ordinary meaning of the phrase in a way that
`
`is consistent with the further limitations of the claims.
`
`2.
`
`The Patent’s Description of the Unclaimed “Discovery Engine”
`Does Not Limit The Interpretation of “Discovery Agent”
`
`IV also argues that the Board’s interpretation “is inconsistent with the
`
`specification’s description wherein the discovery engine is not a discovery agent.”
`
`Resp. 8 (emphasis added). IV asserts that the “specification differentiates a
`
`discovery agent from discovery engine [sic] based on the lack of intelligence of
`
`discovery agents to interpret or act on collected data compared to a central control
`
`level of intelligence of the discovery engine.” Id. (emphasis added). However, no
`
`claim of the 581 Patent mentions a “discovery engine,” and even IV does not
`
`contend the passages it cites are definitional or a disavowal of claim scope, see
`
`Resp. 8, so those passages do not limit the interpretation of the claimed “discovery
`
`agent.”
`
`5
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`Moreover, the Board’s interpretation does not require that the “discovery
`
`agent” have intelligence to interpret and act on data; it is silent on that
`
`characteristic so the claim term would read on a structure that had no such
`
`intelligence, including any examples in the specification of the 581 Patent. IV
`
`cites no authority for the notion that the claims must reflect every distinction
`
`described in the specification. In fact, the law is the opposite, requiring instead
`
`that, absent a clear definition or clear and unambiguous disclaimer in the intrinsic
`
`record, claim terms be given their ordinary meaning to a person of ordinary skill in
`
`the art reading the specification. SanDisk Corp. v. Memorex Products, Inc., 415
`
`F.3d 1278, 1286-87 (Fed. Cir. 2005).
`
`As Dr. Mitzenmacher explained in his direct testimony:
`
`[A] person or ordinary skill in the art would conclude that the
`broadest reasonable construction of “discovery agent” is ‘code that
`collects data.’ This construction comports with the plain meaning of
`the phrase, as would be understood by one of ordinary skill in the art
`in January 1998 reading the 581 patent, and is also supported by the
`581 patent’s claims and specification.
`
`Ex. 1003, ¶77. His specific reasoning underlying those conclusions is set forth in
`
`detail in the following paragraphs. See Ex. 1003, ¶¶78-82, cited in the Petition at
`
`9-10. IV does not contest this conclusion as to what a skilled artisan would
`
`6
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`understand the ordinary meaning of “discovery agent” to be. See Resp. 6-16.
`
`Indeed, the phrase “ordinary meaning” does not appear in its brief.
`
`3.
`
`The Patent’s Reference To “The Present Invention” Does Not
`Limit The Claims
`
`IV next argues that the specification’s use of the phrase “the present
`
`invention” requires the Board to read the specific limitations IV identifies into the
`
`claims. Resp. 9-16.
`
`The use of the phrase “the present invention,” however, does not
`
`automatically read limitations from the specification into the claims, particularly
`
`“where other portions of the intrinsic evidence do not support applying the
`
`limitation to the entire patent.” Absolute Software, Inc. v. Stealth Signal, Inc., 659
`
`F.3d 1121, 1136-37 (Fed. Cir. 2011). As IV concedes, an extraneous feature
`
`described in the specification will only be read into the claims where “the
`
`specification makes clear that the invention requires” that feature. Resp. 10
`
`(emphasis added) (citing Howmedica Osteonics Corp. v. Wright Med. Tech., 540
`
`F.3d 1337, 1345 (Fed. Cir. 2008)).
`
`Here, IV cites the paragraph appearing at column 3, line 5 that begins with
`
`the phrase “[t]he present invention” and then mentions the “no intelligence” detail
`
`six lines later. Resp. 11-12. However, IV’s argument is foreclosed by the Federal
`
`Circuit’s opinion in Unwired Planet, LLC v. Apple Inc., No. 2015-1725, 2016 WL
`
`3947839, at *8 (Fed. Cir. July 22, 2016), which explained that “[i]t is not true that
`7
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`because one sentence in the paragraph begins with the ‘present invention’ language
`
`that everything that follows in the same paragraph limits all subsequent claims.”
`
`Moreover, the immediately preceding paragraph of the 581 Patent states that
`
`“[t]he following detailed description sets forth numerous specific details to provide
`
`a thorough understanding of the invention. However, those of ordinary skill in the
`
`art will appreciate that the invention may be practiced without these specific
`
`details,” Ex. 1001, 2:64-3:3 (emphasis added); see also id., 10:63-64.
`
`Such optional details from the specification can not be read into the claims.
`
`Unwired Planet, 2016 WL 3947839, at *8-9. And passages in the specification
`
`pointing out that the detail IV would have read into the claims is optional confirm
`
`both that the invention does not “require” the limitation IV seeks, Howmedica, 540
`
`F.3d at 1345, and that “other portions of the intrinsic evidence do not support
`
`applying the limitation to the entire patent,” Absolute Software, 659 F.3d at 1136-
`
`37.
`
`4.
`
`Extraneous Details From The Specification May Not be Used
`To Limit The Claims
`
`IV also argues that its proposed interpretation should be adopted because
`
`“[e]very description in the specification of the ’581 patent describes the discovery
`
`agent as merely collecting data [and every] description of the discovery rule has it
`
`perform the analysis of that collected data.” Resp. 12. IV also contends that such
`
`a distinction is a “central feature” of the invention, id., and that “[a] construction
`8
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`that permits the discovery agent to analyze the collected data eliminates the
`
`separation between data collection and data analysis that the invention of the ’581
`
`patent was designed to avoid,” id., 13.
`
`But just because every disclosed embodiment includes a particular feature
`
`does not justify reading that feature into the claims. Thorner v. Sony Comput.
`
`Entm’t Am. LLC, 669 F.3d 1362, 1367-68 (Fed. Cir. 2012). And the claims of the
`
`581 Patent already recite the distinction between a discovery agent collecting date
`
`and a discovery rule analyzing it, even under the Board’s interpretation. For
`
`example, each claim requires a “discovery agent” and “wherein the data is
`
`collected by a discovery agent.” Each claim further requires a “discovery rule”
`
`that is “applied to data about the computer system or a user to generate
`
`information,” e.g., Ex. 1001, 11:3-4. The different functionalities of these two
`
`structures described in the specification are thus reflected in the plain language of
`
`the claims, and nothing in the Board’s interpretation of “discovery agent” alters
`
`that.
`
`IV also argues that the specification denigrates the prior art as placing both
`
`the data collection and data analysis functionality in one program, and that
`
`therefore the claims must be construed to reflect the separation of those
`
`functionalities in the manner proposed by IV. Resp. 13-16. But as demonstrated
`
`above, the claims already include that distinction by requiring two separate
`
`9
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`structures, a “discovery agent” and a “discovery rule,” that perform the two
`
`different functions, i.e., the collection and analysis of data, respectively.
`
`5.
`
`The Prosecution History Contradicts IV’s Interpretation
`
`IV next asserts that the prosecution history is consistent with its proposed
`
`interpretation. Resp. 13. Not so. As IV’s expert conceded, the examiner of the
`
`581 Patent’s parent application read the “discovery agent” on a prior art structure
`
`that did have “intelligence regarding how to interpret or act on the collected data,”2
`
`an interpretation the patent applicants never objected to and which the expert
`
`agreed was inconsistent with the one IV asks for here. Ex. 1023, 116:3-16 (“Q·
`
`Fair enough. And that would be inconsistent with how you're interpreting
`
`discovery agent in the '581. ·That's my question.· That's fair, right? A· Yes.”)
`
`(emphasis added).
`
`
`
`2 See Ex. 1014 at 116 (reading claim on “discovery agent” disclosed in U.S. Patent
`
`No. 5,185,860 to Wu), 144 at 2:41-44 (Wu disclosing a “discover agent” that can
`
`“convey knowledge … on a network”), 403-404 (the examiner noting that
`
`“[t]herefore, examiner believes that when discovery agent is capable of conveying
`
`knowledge around the networks means agent is intelligent and acquires knowledge
`
`from other sources collect them and deliver it to other components as needed.”
`
`(emphasis added)).
`
`10
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`6.
`
`IV’s Proposed Interpretation Is Unreasonable
`
`Finally, IV’s proposal is not the broadest reasonable interpretation. For
`
`example, IV’s expert testified that “any piece of software” would be “an individual
`
`program or code sequence.” Ex. 1023, 41:1-3. But that means the phrase is either
`
`no different from the word “code,” used in the Board’s interpretation, or a person
`
`of skill would not understand whatever additional limitations the phrase is meant to
`
`embody. An interpretation that injects such uncertainty into the analysis is hardly
`
`reasonable.
`
`Similarly, IV never explains what “no intelligence regarding how to interpret
`
`or act on the collected data” means and the phrase provides no reasonable certainty
`
`to the claims either. The discovery agent of the 581 Patent possesses enough
`
`intelligence to know how to convey data to a discovery engine, Ex. 1001, 2:1-2;
`
`3:12-13, and IV’s expert testified the ability to convey data over a network was a
`
`form of “intelligence regarding how to interpret or act on the collected data,” Ex.
`
`1023, 104:7-14. IV’s proposal is thus inconsistent with the specification and at
`
`least under one interpretation of the word “intelligence” readily understood by its
`
`expert. To the extent some other, more limited meaning for the word was
`
`intended, IV has not explained it. Thus, this portion of IV’s proposal also injects
`
`an unreasonable uncertainty into the analysis.
`
`IV’s proposed interpretation of “discovery agent” should be rejected.
`
`11
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`IV. CLAIMS 11-19 and 39-47 ARE UNPATENTABLE
`
`A. Graf In View of Desai Renders Obvious Claims 11, 17-19, 39 and
`45-47
`
`1.
`
`The SYSTEMWATCH AI-L Client Is A Discovery Agent
`
`The Petition explained how Graf’s “SYSTEMWatch AI-L client program is
`
`a “discovery agent” of the claims because it is code that collects data and is located
`
`in the managed computer system.” Pet. 25. IV’s only challenge to this mapping
`
`relies on its erroneous construction of “discovery agent.” See Resp. 18-20. It is
`
`thus undisputed that Graf discloses the claimed “discovery agent” under the
`
`interpretation for that phrase adopted by the Board in the Institution Decision, as
`
`even IV’s expert agreed. Ex. 1023, 125:16-21 (“Q. Okay.· You agree that the
`
`Graf patent included, at least under the Board's interpretation, a discovery agent
`
`and a discovery rule within the same computer system? … THE WITNESS:· I
`
`will agree with that.”).
`
`But Graf’s SYSTEMWatch AI-L client program also satisfies IV’s
`
`construction of “discovery agent.” First, IV never contests that Graf’s
`
`SYSTEMWatch AI-L client is “an individual program or code sequence to collect
`
`data,” see Resp. 18-20, and its expert testified that any piece of software would be
`
`“an individual program or code sequence,” Ex. 1023, 41:1-3, so the client of Graf
`
`clearly qualifies, see, e.g., Ex. 1003, ¶89 (noting that the Graf client is a program);
`
`Ex. 1005, 10:64-12:15 (same).
`
`12
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`Second, Graf’s SYSTEMWatch AI-L client itself, i.e., apart from any rules
`
`that may be loaded into it, “has no intelligence regarding how to interpret or act
`
`on the collected data.” as IV’s expert also conceded. Ex. 1023, 127:7-13 (“Q.
`
`Okay.· So would you agree that Graf's client doesn't have any ability to interpret or
`
`act on data if it has no rules loaded into it? … THE WITNESS:· Well, if it were
`
`not populated with rules, it couldn't do very much.· So I would agree with that
`
`statement.”); Ex. 1005, 7:52-62, 8:52-56 (same). Similarly, the Graf client has no
`
`such intelligence even when considering DATA rules that have been loaded
`
`because, as IV’s expert also conceded, the DATA rules of Graf, which are used
`
`only to collect data, do not provide the client with intelligence regarding how to
`
`interpret or act on the collected data. Ex. 1023, 130:8-15.3
`
`Thus, the SYSTEMWatch AI-L client disclosed in Graf and identified in the
`
`Petition also satisfies IV’s proposed interpretation.
`
`
`
`3 As the Petition explained, Graf discloses three separate types of rules – DATA,
`
`DATA2, and EXCEPT. Pet. 11-12. The function of the DATA rules is solely to
`
`collect data, while other rules perform additional processing on the collected
`
`information (DATA2) or determine what actions to take (EXCEPT). See id. Thus,
`
`the Graf client alone (or combined with DATA rules) is a program that collects
`
`data but has no intelligence regarding how to interpret or act on it.
`
`13
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`2.
`
`The Cited Combination Discloses Receiving A Discovery Rule
`Across A Communication Link
`
`The Petition explained how it would have been obvious to modify Graf to
`
`“receive[] a discovery rule across a communication link” in view of Desai’s rule-
`
`transmission functionality. Pet. 41-44. The Board agreed, and instituted trial on
`
`this ground. Dec. 18-22. IV now argues this mapping is flawed because Desai
`
`supposedly does not independently disclose “discovery rules.” Resp. 20-23.
`
`But IV’s argument ignores the actual grounds of unpatentability proposed by
`
`the Petition, and instituted by the Board, which relied on Desai to show the
`
`obviousness of “receiving” Graf’s existing rules “across a communication link.”
`
`See Pet. 41-44. Whether Desai also discloses rules that could be received across a
`
`communication link is not required by the ground, since Graf already discloses
`
`such rules and it was the Graf rules that were relied on by the Petition. Pet. 42
`
`(citing Ex. 1005, 12:9-11) (“[A] person of ordinary skill in the art would have had
`
`reason 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.’”) (emphasis added). This same
`
`analysis formed the basis of the Board’s analysis in its institution decision. Dec.
`
`19.
`
`IV offers no rebuttal to, and thus concedes, Petitioners’ arguments that (1)
`
`Graf’s rules are “discovery rules” (Pet. 17-18) and (2) it would have been obvious
`14
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`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 (emphasis added)).
`
`IV focuses on the Petition’s explanation that Desai’s command predicates
`
`can be considered “discovery rules” in the context of the 581 Patent. Resp. 21
`
`(citing Pet. 42-43). But that explanation was provided in support of the
`
`combinability of Graf and Desai, a fact specifically noted by the Board. Dec. 21.
`
`In any event, Desai’s predicates also fit within the uncontested broadest reasonable
`
`interpretation of “discovery rule”: a “statement (e.g., series of Boolean operations,
`
`mathematical equations, or other comparisons or evaluations) that is applied to
`
`collected data to determine what, if any, action to take.” Pet. 8-9; see Resp. 6-16
`
`(contesting only the interpretation of “discovery agent”).
`
`As explained in the Petition, Desai discloses receiving commands containing
`
`“predicates” against which data is to be collected and tested. Pet. 42 (citing Ex.
`
`1006, 2:6-12; 6:10-31). Desai’s predicates identify (1) the data to be collected for
`
`a comparison and (2) a threshold to compare against, and are used to filter and
`
`return only data meeting the conditions of the predicate. Id., 1:53-56, 2:6-11; Ex.
`
`1003, ¶101. Indeed, on cross examination, IV’s expert conceded that the Desai
`
`predicate was a Boolean statement, Ex. 1023, 131:6-132:12, thus confirming it is a
`
`“discovery rule.” This conclusion is further confirmed by Desai’s statement that
`
`15
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`his predicates are “analogous to SQL predicates,” Ex. 1006, 6:17-19, which specify
`
`comparisons between values “that can be evaluated to give a truth value of true,
`
`false, or unknown.” Ex. 1024 (ANSI SQL 1992), 167-169. This is the same
`
`functionality described by Desai, see Ex. 1006, 1:53-56, and is plainly a “discovery
`
`rule.”
`
`IV’s arguments to the contrary misunderstand or ignore Desai’s disclosure.
`
`First, Desai discloses more than “a threshold value itself” (Resp. 21-22) because
`
`the predicate “indicate[s] the specific items of performance data to be collected,”
`
`Ex. 1006, 6:17-19, in the same way as the prior art SQL predicates referred to by
`
`Desai, Ex. 1024, 167-69. Second, IV makes several arguments against some
`
`hypothetical modification of Desai that would “send[] the code to evaluate and
`
`filter data along with every predicate” ( Resp. 22), but that modification was never
`
`proposed by the Petition or adopted by the Board, so those arguments are
`
`irrelevant.
`
`Thus, the combination of Graf and Desai, as set forth in the Petition, amply
`
`satisfies the claim language directed to transmission of a discovery rule over a
`
`communication link.
`
`16
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`B. Graf In View of Desai and Wahlquist Renders Obvious Claims
`12–16 and 40–444
`
`1.
`
`The Cited Combination Discloses Making A User Request
`(Claims 12 and 40)
`
`The Petition explained how it would have been obvious “to combine the
`
`semi-automatic help desk functionality of Wahlquist … with the automated system
`
`of Graf in order to provide another mechanism (beyond the automated approach of
`
`Graf) to respond to user problems and concerns.” Pet. 45. IV’s Response largely
`
`repeats arguments already rejected by the Board in the institution decision, see
`
`Dec. 28-33; Resp. 24-28, and when they are considered on a full evidentiary record
`
`they should be rejected again.
`
`First, IV complains that in the Institution Decision the Board relied on the
`
`presence of semi-automatic functionality in Graf that related to the activity of an
`
`administrator, while the claims at issue here relate to “receiving a user request.”
`
`Resp. 24-25. IV never explains, however, why an administrator is not a “user” of
`
`the system or why the word “user” must be given some narrow interpretation that
`
`excludes an administrator. See Ex. 1003, ¶157 (“Under the broadest reasonable
`
`interpretation, a system administrator adding or modifying a software module to
`
`
`
`4 As explained in Section IV.A, IV’s arguments that these claims are patentable for
`
`the same reasons as claims 11 and 39 are wrong. See Resp. 23.
`
`17
`
`

`
`IPR2015-01957
`
`
`
`Petitioners’ Reply
`
`respond to an additional problem in the system is ‘a user request’ received by the
`
`system because the system administrator is a ‘user’ of the system and the creation
`
`or modification of new system files intended to be transmitted to client computers
`
`is a ‘request’.”).
`
`Indeed, Graf explains that the managed computers of his system could run
`
`both his client software and his console (i.e., administrator) software. See, e.g. Ex.
`
`1005, 5:34-37, Fig. 4. The individual who operated such a computer would
`
`therefore be both a client-user and an administrator-user. Since Graf discloses that
`
`his system receives requests from such an individual and responds to it as required
`
`by these claims, see, e.g., Ex. 1003, ¶¶156-159, Graf satisfies this claim language
`
`organically, and therefore cannot fairly be said to teach away from it.
`
`Moreover, the Board’s reasoning in the Institution Decision