`571-272-7822
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`Entered: November 1, 2017
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UBISOFT, INC. and SQUARE ENIX, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01290
`Patent 6,510,466 B1
`____________
`
`
`Before MIRIAM L. QUINN, ROBERT J. WEINSCHENK, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314 and 37 C.F.R. § 42.108
`
`
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`IPR2017-01290
`Patent 6,510,466 B1
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`
`Ubisoft, Inc. and Square Enix, Inc. (collectively, “Petitioner”) filed a
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`Petition pursuant to 35 U.S.C. §§ 311–319 requesting an inter partes review
`
`of claims 1, 2, 7, 8, 15–17, 22, 23, 30, 35, and 36 of U.S. Patent No.
`
`6,510,466 B1, issued on January 21, 2003 (Ex. 1001, “the ’466 patent”).
`
`Paper 3 (“Pet.”). Uniloc USA, Inc. and Uniloc Luxembourg S.A.
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`(collectively, “Patent Owner”)1 filed a Preliminary Response. Paper 11
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`(“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C. § 314(a),
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`which requires demonstration of a reasonable likelihood that Petitioner
`
`would prevail with respect to at least one challenged claim, we deny
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`Petitioner’s request and do not institute an inter partes review of any
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`challenged claim.
`
`I. BACKGROUND
`
`A. The ʼ466 Patent (Ex. 1001)
`
`The ʼ466 patent relates to management of application programs on a
`
`network including a server supporting client stations. Ex. 1001, at [57]. The
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`’466 patent states that user mobility and hardware portability are provided
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`by establishing a user desktop interface responsive to a user login request.
`
`Id. Responsive to a request from the user on the user desktop screen at the
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`client, a selected application program is provided from the server to the
`
`client. Id.
`
`Figure 1 of the ’466 patent is reproduced below.
`
`
`1 Although the Preliminary Response initially identifies only Uniloc
`Luxembourg S.A. as the patent owner (Prelim. Resp. 1), Patent Owner’s
`Mandatory Notice identifies both Uniloc USA, Inc. and Uniloc Luxembourg
`S.A. as Patent Owner in this case. Paper 7, 1.
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`2
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`Figure 1 illustrates a computer network according to an embodiment of the
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`invention. Id. at 6:57–60. In particular, network management server 20 is
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`connected to on-demand servers 22 and 22’, which are in turn connected to
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`client stations 24 and 24’ and 26 and 26’ respectively. Id. at 6:60–7:6.
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`Figure 8 of the ’466 patent is reproduced below.
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`
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`Figure 8 is a flowchart illustrating operations for application program
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`distribution and execution in a network management server environment.
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`Id. at 6:28–31. In particular, at block 110, an application program to be
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`distributed is placed by a system administrator on a disk or storage device at
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`a network management server such as a Tivoli server. Id. at 17:52–55. At
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`block 112, the application program source and destination programs are
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`specified, and a pre-distribution program is run (if specified) at block 114.
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`Id. at 17:55–60. The application program is then distributed to the on-
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`demand servers at block 116, and any specified after-distribution programs
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`are executed at block 118. Id. at 17:60–18:7.
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`B. Illustrative Claims
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`Of the challenged claims, claims 1, 15, and 16 are independent claims.
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`Claim 1 is directed to a method for management of application programs on
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`a network including a server and a client; claim 15 is directed to an
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`application program management system for managing the same; and claim
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`16 is directed to a computer program product for managing the same. Claim
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`15 is illustrative and is reproduced below.
`
`15. An application program management system for
`managing application programs on a network including a server
`and a client comprising:
`means for installing a plurality of application programs at
`the server;
`means for receiving at the server a login request from a
`user at the client;
`means for establishing a user desktop interface at the
`client associated with the user responsive to the login request
`from the user, the desktop interface including a plurality of
`display regions associated with a set of the plurality of
`application programs installed at the server for which the user is
`authorized;
`means for receiving at the server a selection of one of the
`plurality of application programs from the user desktop
`interface; and
`means for providing an instance of the selected one of the
`plurality of application programs to the client for execution
`responsive to the selection.
`
`Id. at 22:57–23:8.
`
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`C. Related Proceedings
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`Petitioner identifies pending litigation as well as terminated litigation
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`involving the ’466 patent. Pet. 62 (citing Ex. 1010; Ex. 1011; Ex. 1012).
`
`Patent Owner identifies related litigation in the Eastern District of Texas in
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`which the ʼ466 patent was asserted against Petitioner: Uniloc USA Inc. et al.
`
`v. Ubisoft, Inc., Case No. 2:16-cv-00397 (E.D. Tex.), and Uniloc USA Inc. et
`
`al. v. Square Enix, Inc., Case No. 2:16-cv-00872 (E.D. Tex.). Paper 7, 2.
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`
`
`D. References
`
`Petitioner relies on the following references:
`
`1. “Sonderegger” (US 5,692,129; issued Nov. 25, 1997) (Ex. 1002);
`
`2. “Hughes” (Jeffrey F. Hughes and Blair W. Thomas, NOVELL’S
`GUIDE TO NETWARE 4.1 NETWORKS (1996)) (Ex. 1003);
`
`3. “Franklin” (US 6,105,069; issued Aug. 15, 2000) (Ex. 1004); and
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`4. “NAL White Paper” (Novell Application Launcher 2.0: Fast,
`Efficient Software Distribution and Application Deployment)
`(Ex. 1005).
`
`E. Ground Asserted
`
`
`
`Petitioner asserts one ground of unpatentability based on obviousness
`
`of claims 1, 2, 7, 8, 15–17, 22, 23, 30, 35, and 36 over Sonderegger, Hughes,
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`Franklin, and NAL White Paper. Petitioner relies also on expert testimony
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`from Dr. Vijay K. Madisetti (Ex. 1006, “Madisetti Decl.”).
`
`
`
`II. ANALYSIS
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`A. Claim Construction
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`In an inter partes review, claim terms in an unexpired patent are
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`construed according to their broadest reasonable interpretation in light of the
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`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
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`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under
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`that standard, claim terms are generally given their ordinary and customary
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`meaning, as would be understood by one of ordinary skill in the art, in the
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`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
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`1257 (Fed. Cir. 2007). There are, however, two exceptions to that rule: “1)
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`when a patentee sets out a definition and acts as his own lexicographer,” and
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`“2) when the patentee disavows the full scope of a claim term either in the
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`specification or during prosecution.” See Thorner v. Sony Computer Entm’t
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`Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`
`Petitioner proposes constructions of means-plus-function terms recited
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`in the claims. Pet. 2–9. Patent Owner addresses Petitioner’s proposed
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`constructions of some of these terms. Prelim. Resp. 6–14. Other than the
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`construction of “means for installing a plurality of application programs at
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`the server” and terms within that limitation discussed below, we determine
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`explicit construction of any other term is not necessary to resolve the issues
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`before us. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
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`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
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`are in controversy, and only to the extent necessary to resolve the
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`controversy”).
`
`In our analysis of “means for installing a plurality of application
`
`programs at the server,” we recognize that construing a means-plus-function
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`limitation requires first defining the particular function of the limitation and
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`then identifying the corresponding structure for that function in the
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`specification. Golight Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1333-34
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`(Fed. Cir. 2004). Further, under 37 C.F.R. § 42.104(b)(3), “the petition must
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`set forth . . . [h]ow the challenged claim is to be construed,” including
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`identifying “the specific portions of the specification that describe the
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`structure, material, or acts corresponding to each claimed function,” where
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`the claim to be construed contains a “means-plus-function or step-plus-
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`function limitation as permitted under 35 U.S.C. § 112(f).”
`
`The parties agree the function of this limitation is “installing a
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`plurality of application programs at the server.” Pet. 3; Prelim. Resp. 7. A
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`structure disclosed in the specification qualifies as “corresponding” structure
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`only if the specification or prosecution history clearly links or associates that
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`structure to the function recited in the claim. B. Braun Med. v. Abbott Labs.,
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`124 F.3d 1419, 1424 (Fed. Cir. 1997). The “clear linkage or association” in
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`the specification of the structure to the function recited in the claim is
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`determined based on the understanding of an artisan of ordinary skill. See
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`AllVoice Computing PLC. v. Nuance Commc’ns, Inc., 504 F.3d 1236, 1242
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`(Fed. Cir. 2007). Thus, we begin by addressing the meaning of terms within
`
`the recited function.
`
`Regarding the term “application program,” the ’466 patent states: “As
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`used herein, the term ‘application program’ generally refers to the code
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`associated with the underlying program functions, for example, Lotus Notes
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`or a terminal emulator program.” Ex. 1001, 14:24–27. That definition is
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`consistent with the language of the independent claims, which recite
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`“providing an instance of the selected one of the plurality of application
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`programs to the client for execution responsive to the selection.” Id. at 23:6–
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`8 (emphasis added). Thus, in the context of the claims, an “application
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`program” is “code associated with underlying application program
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`functions.”
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`In addition, for “installing,” we determine that the ’466 patent
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`distinguishes between installation and configuration or registration. E.g.,
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`Ex. 1001, 4:15–16 (“install and register the application program on the on-
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`demand server”), 4:20 (“install and register the program”), 18:27–29 (“[A]n
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`administrator both sends a new application package to all supported on-
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`demand servers and installs the program and configures (registers) it to be
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`available for use.”). Thus, in the recited function, “installing” does not
`
`include configuring or registering.
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`We next proceed to identify the corresponding structure that is clearly
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`linked or associated with this function in the ’466 specification. Petitioner
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`contends that the corresponding structure for “means for installing a
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`plurality of application programs at the server” is a server or code
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`programmed to:
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`1) accept definitions of the application that describe the location
`and description of the application (block 250 [of Figure 5]); 2)
`accept definitions of users and groups that will access the
`system and the specific application (block 252); 3) accept
`control specifications defining which users and groups are
`authorized to access the new or updated application (block
`256); 4) obtain license policy information from an administrator
`or through an import file (block 254); and 5) update a database
`to maintain the input definitions and specifications for the new
`or updated application in a format accessible to the server
`(block 258).
`
`Pet. 3 (citing Ex. 1001, Fig. 4 (block 232), Fig. 5, 12:26–30, 13:1–23).
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`Patent Owner contends that Petitioner’s alleged corresponding structure is
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`incorrect because Petitioner ignores (1) the definition of “application
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`program” in the ’466 specification, (2) other corresponding structure in the
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`’466 specification, and (3) that the ’466 patent distinguishes between
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`installing applications and configuring a directory to include information
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`representative of installed applications. Prelim. Resp. 9–13.
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`We agree with Patent Owner that Petitioner has not identified
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`corresponding structure for this limitation. In particular, we find that Figure
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`5 of the ’466 patent relates to configuration and not installation. Ex. 1001,
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`13:1–2 (“Referring now to FIG. 5, configuration operations from block 232
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`will now be further described.”). We, therefore, do not adopt Petitioner’s
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`proposed corresponding structure because it is not linked or associated with
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`the recited function.
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`Patent Owner provides the following proposed corresponding
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`structure: “a processor executing computer program instructions, as
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`described in 12:1-24, implementing the algorithms described in connection
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`with FIG. 4, FIG. 5, FIG. 8, and FIG. 9C and at 12:25-30, 13:1-23, 14:24-53,
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`17:17-51, 18:3-32, 20:1-59.” Prelim. Resp. 7. Patent Owner particularly
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`highlights Figure 8 of the ’466 patent. Id. at 9–10 (citing Ex. 1001, Fig. 8,
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`17:52–18:32). Of the corresponding structure proposed by Patent Owner,
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`we determine that only the portion of Figure 8 related to installation and its
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`associated description in the ’466 patent have the required clear linkage or
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`association to the recited function. Specifically, we find that while Figure 4
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`mentions a “New App.,” and the cited description mentions “a new software
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`application for installation on server system 22,” neither discloses an
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`algorithm for the recited “installing.” Ex. 1001, Fig. 4, 12:25–30. We
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`further find that Figures 5 and 9C explicitly refer to configuration operations
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`and not installation. Id. at 6:18–20, 13:1–23, 20:1–59. We also find that the
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`portions of Figure 8 that involve execution of after-distribution programs
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`and update of configuration information also involve configuration and not
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`installation. Id. at 18:3–18.
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`We determine the remainder of Figure 8 (i.e., steps 112–116) and the
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`associated description of those steps in the ’466 patent (Ex. 1001, 17:55–67)
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`have the required clear linkage or association to the recited function. Thus,
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`we determine the corresponding structure for this claim limitation includes,
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`at least, an algorithm for specifying application program source and
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`destination locations, executing a pre-distribution program (if specified), and
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`distributing the application program software to an on-demand server (and
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`equivalents of such an algorithm). Ex. 1001, Fig. 8, steps 112–116, 17:55–
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`67.
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`Claim 16 recites “computer readable code means” for performing the
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`recited functions, which triggers a rebuttable presumption that
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`35 U.S.C. § 112 ¶ 6 applies. Williamson v. Citrix Online, 792 F.3d 1339,
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`1349 (Fed. Cir. 2015). Petitioner appears to contend that this presumption is
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`not rebutted because it provides the same analysis under § 112 ¶ 6 for this
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`limitation in claim 16 as it does for the similar limitation in claim 15. Pet.
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`49; see also id. at 3. Patent Owner contends claim 16 does not invoke pre-
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`AIA 35 U.S.C. § 112 ¶ 6 because it is directed to “‘[a] computer program
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`product’ comprising ‘computer-readable program code’ for carrying out
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`specific processes.” Prelim. Resp. 13–14. We note, however, that Patent
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`Owner’s quotations omit the term “means,” and Patent Owner does not
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`persuasively address that recitation to overcome the presumption.
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`Because neither party has rebutted the presumption that § 112 ¶ 6
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`applies to the “computer readable program code means,” for purposes of this
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`Decision, we address this term as recited in claim 16 as a means-plus-
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`function term. Accordingly, the limitation “computer readable program
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`code means for installing a plurality of application programs at the server”
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`has, at a minimum, the same corresponding structure as the similar limitation
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`of claim 15 discussed above.
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`In summary, we determine an “application program” is “code
`
`associated with underlying application program functions.” We further
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`determine that “installing” does not encompass “configuring” or
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`“registering” as those terms are used in the ’466 patent. We also determine
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`that the corresponding structure for “means for installing a plurality of
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`application programs at the server,” as recited in claim 15, and “computer
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`readable program code means for installing a plurality of application
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`programs at the server” as recited in claim 16, includes, at least, an
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`algorithm for specifying application program source and destination
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`locations, executing a pre-distribution program (if specified), and
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`distributing the application program software to an on-demand server (and
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`equivalents of such an algorithm).
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`B.
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`Legal Principles
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`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
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`between the subject matter sought to be patented and the prior art are such
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`that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations including: (1) the scope and content of the prior art;
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`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of ordinary skill in the art; and (4) when in the record, objective
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`evidence of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1,
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`17–18 (1966). In that regard, an obviousness analysis “need not seek out
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`precise teachings directed to the specific subject matter of the challenged
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`claim, for a court can take account of the inferences and creative steps that a
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`person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
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`C. Asserted Obviousness over Sonderegger, Hughes, Franklin, and
`NAL White Paper
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`1. Overview of References
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`Sonderegger is titled “Managing Application Programs in a Computer
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`Network By Using a Database of Application Objects,” and issued on
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`November 25, 1997. Ex. 1002, at [54], [45]. Petitioner contends
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`Sonderegger is prior art under at least 35 U.S.C. § 102(b). Pet. 12.
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`Sonderegger utilizes a “modified hierarchical database which includes
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`application objects that represent applications and their execution
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`environments.” Ex. 1002, at [57]. In Sonderegger, “[e]ach application
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`object includes the location of an executable code for a given application, an
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`icon, a working directory name, drive mappings, printer port captures,
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`command line parameters, and similar information.” Id.
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`Hughes is a book titled “Novell’s Guide to NetWare 4.1 Networks,”
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`with a copyright date of 1996. Ex. 1003, 1, 5.2 Petitioner contends Hughes
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`is prior art under at least under 35 U.S.C. § 102(b). Pet. 12.
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`Franklin is titled “Licensing Controller Using Network Directory
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`Services,” and issued on August 15, 2000. Ex. 1004, at [54], [45].
`
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`2 Unless otherwise specified, we refer to the portion of Hughes that
`Petitioner filed as Ex. 1003-1 and the page numbers added by Petitioner
`thereto.
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`Petitioner contends Franklin is prior art under at least 35 U.S.C. § 102(e).
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`Pet. 12.
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`NAL White Paper is titled “Novell Application Launcher 2.0: Fast,
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`Efficient Software Distribution and Application Deployment.” Ex. 1005, 1.
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`Petitioner contends NAL White Paper is prior art under at least
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`35 U.S.C. § 102(b). Pet. 12–13.
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`2. Obviousness
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`Petitioner contends that claims 1, 2, 7, 8, 15–17, 22, 23, 30, 35, and 36
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`would have been obvious over Sonderegger, Hughes, Franklin, and NAL
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`White Paper. Pet. 12–62. We have reviewed the information provided by
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`Petitioner, including the relevant portions of the supporting Madisetti
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`Declaration (Ex. 1006), along with Patent Owner’s arguments and evidence,
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`and are persuaded, based on the current record, that Petitioner has not
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`demonstrated a reasonable likelihood of prevailing on its obviousness
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`challenge.
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`For independent claims 15 and 16, we determine in Section II.A.
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`above that Petitioner has not identified sufficient corresponding structure for
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`“means for installing a plurality of application programs at the server.” For
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`this limitation of claim 15, Petitioner’s analysis focuses on its proposed
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`corresponding structure, which we do not adopt, and does not address
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`whether the relied-upon teachings in Sonderegger and Hughes meet the
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`corresponding structure discussed above (i.e., steps 112–116 of Figure 8 and
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`the associated description (Ex. 1001, 17:55–67) (and their equivalents)).
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`Pet. 19–28. For independent claim 16, Petitioner relies on its analysis of this
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`limitation for claim 15. Id. at 49. Because Petitioner has not shown the
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`references describe the corresponding structure for performing “installing a
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`plurality of application programs at the server,” we determine Petitioner has
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`not shown a reasonable likelihood of prevailing on its challenge to
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`independent claims 15 and 16 and claims 17, 22, 23, 30, 35, and 36
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`depending therefrom.
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`For claim 1, Petitioner relies on its analysis of this limitation for claim
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`15. Pet. 15. We acknowledge that claim 1 is a method claim and so is not
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`limited to the corresponding structure required for claims 15 and 16.
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`Nevertheless, we determine that Petitioner has not adequately shown the
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`references describe “installing a plurality of application programs at the
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`server,” as recited in claim 1. In particular, Petitioner relies on application
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`objects that are created in Sonderegger, and further relies on Hughes for
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`“further details on the purpose and properties of user and/or group objects
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`and guides an administrator in creating such objects using the NetWare
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`Administrator software.” Id. at 19–24. Patent Owner contends Petitioner’s
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`analysis of this limitation is deficient because the relied-upon objects in
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`Sonderegger and Hughes are not application programs, but only
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`representative of application programs. Prelim. Resp. 14.
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`We agree with Patent Owner. As discussed above in Section II.A., we
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`construe “application program” as “code associated with underlying
`
`application program functions.” We determine that Sonderegger’s
`
`application objects do not comport with that construction because they
`
`contain only information about application programs (i.e., the location of an
`
`executable code for a given application, an icon, a working directory name,
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`drive mappings, printer port captures, command line parameters, and similar
`
`information). Ex. 1002, at [57], 3:1–15. Thus, Petitioner’s contentions,
`
`which focus on application objects, do not adequately show that either
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`Sonderegger or Hughes teaches “installing a plurality of application
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`programs at the server,” as recited in claim 1. Accordingly, we determine
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`Petitioner has not shown a reasonable likelihood of prevailing on its
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`challenge to independent claim 1 and claims 2, 7, and 8 depending therefrom
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`III. SUMMARY
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`
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`We determine that Petitioner has not demonstrated a reasonable
`
`likelihood of prevailing on its challenge to claims 1, 2, 7, 8, 15–17, 22, 23,
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`30, 35, and 36 of the ’466 patent.
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`IV. ORDER
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`It is, therefore,
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`ORDERED that the Petition is DENIED and no trial is instituted.
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`PETITITONER:
`
`Eric Buresh
`eric.buresh@eriseip.com
`
`Mark Lang
`mark.lang@eriseip.com
`
`Kathleen Fitterling
`kathleen.fitterling@eriseip.com
`
`PATENT OWNER:
`
`Brett Mangrum
`brett.mangrum@unilocusa.com
`
`Sean Burdick
`sean.burdick@unilocusa.com
`
`Ryan Loveless
`ryan@etheridgelaw.com
`
`
`
`
`
`
`
`17
`
`