`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BITDEFENDER INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01315
`Patent 6,510,466 B1
`____________
`
`
`Before MIRIAM L. QUINN, ROBERT J. WEINSCHENK, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`Trials@uspto.gov Paper No. 24
`571-272-7822
`
`Entered: October 25, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`
`
`
`I. INTRODUCTION
`
`BitDefender Inc. (“Petitioner”) filed a Petition for inter partes review
`of claims 1, 2, 7–9, 15–17, 22–24, 30, and 35–37 of U.S. Patent No.
`6,510,466 B1, issued on January 21, 2003 (Ex. 1001, “the ’466 patent”).
`Paper 1 (“Pet.”). Uniloc USA, Inc. (“Patent Owner”)1 filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). Taking into account the arguments
`presented in Patent Owner’s Preliminary Response, we determined the
`information presented in the Petition established that there was a reasonable
`likelihood that Petitioner would prevail in challenging claims 1, 2, and 7–9
`of the ’466 patent, but not in challenging claims 15–17, 22–24, 30, and 35–
`37. Pursuant to § 314, we instituted this inter partes review on November 1,
`2017, as to fewer than all of the claims challenged in the Petition. Paper 7
`(“Dec. on Inst.”). On November 13, 2017, Petitioner requested rehearing as
`to the claims for which review was not instituted (Paper 9), and we denied
`Petitioner’s rehearing request (Paper 10, “Dec. on Reh’g”).
`During the course of trial, Patent Owner filed a Patent Owner
`Response (Paper 11, “PO Resp.”), and Petitioner filed a Reply to the Patent
`Owner Response (Paper 13, “Pet. Reply”). An oral hearing was held on
`August 7, 2018, and a transcript of the hearing is included in the record.
`Paper 22 (“Tr.”).
`After all substantive briefing was complete, but before the oral
`hearing, the United States Supreme Court held that a decision to institute
`
`
`1 Patent Owner’s Updated Mandatory Notices state that the real parties-in-
`interest are the owner, Uniloc 2017 LLC, and its licensees, Uniloc USA, Inc.
`and Uniloc Licensing USA LLC. Paper 23, 1.
`2
`
`
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`under 35 U.S.C. § 314 may not institute on fewer than all claims challenged
`in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). In
`accordance with SAS, we issued an Order modifying our Decision on
`Institution to include review of all challenged claims and all grounds
`presented by Petitioner in its Petition. Paper 14. Patent Owner waived any
`further briefing on the newly-added claims. Paper 15, 2. Petitioner,
`however, requested authorization to file a supplemental brief to respond to
`the Decision on Institution as to the newly-added claims. Id. at 3. As
`discussed further below, the order authorizing that brief provided
`instructions as to the proper scope of Petitioner’s Institution Response Brief.
`Id. at 3–4. Petitioner filed its Institution Response Brief on June 4, 2018.
`Paper 17 (“Inst. Resp. Br.”).
`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
`claims 1, 2, 7–9, 15–17, 22–24, 30, and 35–37 of the ’466 patent. For the
`reasons discussed below, we hold that Petitioner has demonstrated by a
`preponderance of the evidence that claims 1, 2, and 7–9 are unpatentable
`under § 103(a), but Petitioner has not demonstrated by a preponderance of
`the evidence that claims 15–17, 22–24, 30, and 35–37 are unpatentable
`under § 103(a).
`
`
`II. 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
`’466 patent states that user mobility and hardware portability are provided
`
`
`
`3
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`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
`client, a selected application program is provided from the server to the
`client. Id.
`Figure 1 of the ’466 patent is reproduced below.
`
`
`Figure 1 illustrates a computer network according to an embodiment of the
`invention. Id. at 6:57–60. In particular, network management server 20 is
`connected to on-demand servers 22 and 22’ which are in turn connected to
`client stations 24 and 24’ and 26 and 26’ respectively. Id. at 6:60–7:6.
`4
`
`
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`
`Figure 8 of the ’466 patent is reproduced below.
`
`
`Figure 8 is a flowchart illustrating operations for application program
`distribution and execution in a network management server environment.
`Id. at 6:28–31. In particular, in block 110, an application program to be
`distributed is placed by a system administrator on a disk or storage device at
`a network management server such as a Tivoli server. Id. at 17:52–55. At
`block 112, the application program source and destination programs are
`specified, and a pre-distribution program is run (if specified) at block 114.
`Id. at 17:55–60. The application program is then distributed to the on-
`demand servers at block 116, and any specified after-distribution programs
`are executed at block 118. Id. at 17:60–18:7.
`
`
`
`5
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`
`
`B. Challenged Claims
`Of the challenged claims, claims 1, 15, and 16 are independent claims.
`Claim 1 is directed to a method for management of application programs on
`a network including a server and a client; claim 15 is directed to an
`application program management system for managing the same; and claim
`16 is directed to a computer program product for managing the same.
`Claims 2 and 7–9 depend directly or indirectly from claim 1; claims 17, 22–
`24 depend directly or indirectly from claim 15; and claims 30 and 35–37
`depend directly or indirectly from claim 16.
`Claim 1 is illustrative and is reproduced below.
`1. A method for management of application programs on
`a network including a server and a client comprising the steps
`of:
`
`installing a plurality of application programs at the
`server;
`receiving at the server a login request from a user at the
`client;
`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;
`receiving at the server a selection of one of the plurality
`of application programs from the user desktop interface; and
`providing an instance of the selected one of the plurality
`of application programs to the client for execution responsive to
`the selection.
`
`Id. at 21:17–35.
`
`
`
`
`6
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`
`
`
`C. Related Proceedings
`Petitioner and Patent Owner identify a related litigation in the Eastern
`District of Texas involving the ʼ466 patent, titled Uniloc USA, Inc. et al. v.
`BitDefender Holding BV et al., 2:16-cv-00394-RWS (E.D. Tex.). Pet. 2;
`Paper 4, 2. Petitioner also identifies other litigation filed in the Eastern
`District of Texas involving the ’466 patent against other defendants. Pet. 2.
`Petitioner further identifies another inter partes review regarding a related
`patent, for which institution was denied: IPR2017-00184. Id. at 3.
`
`D. References
`Petitioner relies on the following references:
`1. “Kasso” (US 5,832,505; issued Nov. 3, 1998) (Ex. 1009);
`2. “Raduchel” (US 6,338,138 B1; issued Jan. 8, 2002) (Ex. 1010);
`3. “Bennett” (US 5,615,367; issued Mar. 25, 1997) (Ex. 1011); and
`4. “Olsen” (US 5,905,860; issued May 18, 1999) (Ex. 1012).
`E. Instituted Grounds of Unpatentability
`We instituted a trial based on the asserted grounds of unpatentability
`
`(“grounds”) set forth in the table below. Dec. on Inst. 26; Paper 14.
`
`
`
`Reference(s)
`Basis
`Claim(s)
`35 U.S.C. § 103(a) 1, 7, 8, 15, 16, 22, 23,
`Kasso and Raduchel
`35, and 36
`Kasso, Raduchel, and
`2, 17, and 30
`Bennett
`Kasso, Raduchel, and Olsen
`9, 24, and 37
`
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`
`
`7
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`
`III. ANALYSIS
`A. Petitioner’s Institution Response Brief
`As discussed above, Patent Owner waived additional briefing on the
`claims added to the trial in this inter partes review in accordance with the
`Supreme Court’s SAS decision. Paper 15, 2. We authorized Petitioner to
`file a supplemental brief to respond to the Decision on Institution as to the
`newly-added claims. Id. at 3. Our order authorizing that supplemental brief
`provided clear instructions as to the proper scope of Petitioner’s Institution
`Response Brief. Id. at 3–4. In particular, our order states: “Petitioner’s
`Institution Response Brief is for identifying matters that Petitioner believes
`the Board misapprehended or overlooked, or otherwise erred in its
`institution decision discussing the newly-added claims.” Id. at 3. Our order
`required Petitioner to “identify with particularity the place where each
`matter (i.e., argument or evidence) raised in its Institution Response Brief
`was previously addressed in its Petition (Paper 1)” and cautioned that the
`Institution Response Brief was “not an opportunity for Petitioner to add
`additional arguments, evidence, or otherwise try to improve its Petition.” Id.
`at 3–4.
`Petitioner filed its Institution Response Brief on June 4, 2018. Patent
`Owner objected to Petitioner’s Institution Response Brief, as violating the
`limitations in our order, noting the Institution Response Brief includes new
`arguments not previously addressed in the Petition. Tr. 25:9–30:18. We
`agree with Patent Owner.
`In the Institution Response Brief, Petitioner contends “[f]orcing the
`Petitioner to supply evidence with [its] petition for arguments not yet raised
`would, in fact, require [it] to anticipate all possible arguments.” Inst. Resp.
`
`
`
`8
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`Br. 1. At the oral hearing, Petitioner also argued that if its Institution
`Response Brief were not considered in its entirety, its due process rights
`would be violated. See Tr. 11:17–18:10.
`In its Institution Response Brief, Petitioner contends (1) the
`corresponding structure we found in the Decision on Institution for the
`“means for installing” is incorrect (Inst. Resp. Br. 3–7), (2) if the “means for
`installing” limitation does not fall into the Katz exception, the newly-added
`claims are invalid as indefinite (id. at 7–8), and (3) Kasso in view of
`Raduchel renders the newly-added claims obvious even under our
`construction of the “means for installing” limitation (id. at 8–10). We have
`already considered Petitioner’s first two arguments. In its Petition,
`Petitioner relied on In re Katz Interactive Call Processing Patent Litigation,
`639 F.3d 1303, 1316 (Fed. Cir. 2011) as holding that a “general-purpose
`computer, by itself, may be sufficient as corresponding structure for general
`computing functions such as storing, which can be achieved by any general
`purpose computer without special programming.” Pet. 19. Petitioner also
`recognized that “when the disclosed structure is a computer programmed to
`carry out an algorithm, the disclosed structure is not the general purpose
`computer, but rather that special purpose computer programmed to perform
`the disclosed algorithm.” Id. (quoting In re Aoyama, 656 F.3d 1293, 1297
`(Fed. Cir. 2011)).
`For the “means for installing” limitation, Petitioner chose only to
`identify general purpose hardware, namely, a server processor, CRM
`(computer readable medium), or a network drive accessible to a server. Id.
`at 20. As we noted in our Decision on Institution (Dec. on Inst. 10), other
`than citations to the ’466 patent, Petitioner did not provide argument,
`
`
`
`9
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`explanation, or expert testimony in support of its proposed corresponding
`structure. Pet. 20. Petitioner did not propose any alternative (i.e., an
`algorithm in addition to general purpose hardware) to its apparent argument
`that the exception in In re Katz applies to the “means for installing”
`limitation. See id. In the Preliminary Response, Patent Owner argued that
`Petitioner had failed to cite any algorithm and proposed corresponding
`structure for the “means for installing” limitation. Prelim. Resp. 10, 13–14.
`Petitioner did not seek authorization to respond to the Preliminary Response.
`In our Decision on Institution, we determined Petitioner had not
`provided evidence or factually-supported explanation to support its apparent
`argument that “installing a plurality of application programs at the server” is
`a basic function of a microprocessor. Dec. on Inst. 11. We then analyzed
`the corresponding structure proposed by Patent Owner, and determined that
`some but not all of that structure was clearly linked to the recited function.
`Id. at 11–13. Because Petitioner had not shown in the Petition that the
`asserted prior art references taught that corresponding structure (or its
`equivalents), we determined that Petitioner had not shown a reasonable
`likelihood of success on its challenges to the means-plus-function claims.
`Id. at 17–18, 23–25.
`Petitioner sought rehearing of our decision not to institute an inter
`partes review of claims 15–17, 22–24, 30, and 35–37. Paper 9 (“Req.
`Reh’g”). In that request, Petitioner reiterated its argument that the “means
`for installing” limitation falls within the Katz exception and further argued
`that if it does not, then there is no corresponding structure for this limitation.
`Id. at 1–2. We considered Petitioner’s request for rehearing, but declined to
`modify our decision not to institute an inter partes review of claims 15–17,
`
`
`
`10
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`22–24, 30, and 35–37. Dec. on Reh’g 1. In particular, we found that we had
`already fully considered Petitioner’s argument that the “means for installing”
`limitation falls within the Katz exception and that the evidence to which
`Petitioner pointed on rehearing did not alter our analysis. Id. at 3–5. We did
`not substantively consider Petitioner’s arguments that none of the
`corresponding structure we adopted in the Decision on Institution is clearly
`linked to the claimed function. Id. at 5. In particular, we determined that
`even if those arguments were correct, they would not have changed the
`outcome as to the means-plus-function claims (i.e., in the absence of any
`corresponding structure, institution of the challenges to those claims would
`still have been denied). Id.
`As discussed above, following the Supreme Court’s SAS decision, we
`issued an order to include the previously non-instituted claims in this
`proceeding. Paper 14, 2. Patent Owner waived additional briefing as to the
`newly-added claims, but we authorized Petitioner to file a limited Institution
`Response Brief. Paper 15, 2–4. In that brief, Petitioner again argues that the
`structure corresponding to the “means for installing” limitation that we
`found in the Decision on Institution is incorrect. Inst. Resp. Br. 3–7.
`Although Petitioner does not present additional argument as to the Katz
`exception, Petitioner argues that if the “means for installing” limitation does
`not fall within the Katz exception, we should hold that challenged claims
`15–17, 22–24, 30, and 35–37 are unpatentable as indefinite. Id. at 7–8.
`We determine Petitioner’s arguments as to the construction of “means
`for installing” in the Institution Response Brief fare no better than
`Petitioner’s similar arguments on rehearing. Specifically, Petitioner does not
`propose corresponding structure for that limitation, but rather contends that
`
`
`
`11
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`there is no corresponding structure. Id. As we stated in our Decision on
`Rehearing (Dec. on Reh’g 5), even if we were to accept Petitioner’s
`argument, we would be left with no corresponding structure identified by
`either party. In the absence of corresponding structure, we are not free to
`treat the “means for installing” limitation as if it were a purely functional
`limitation. See IPCom GmbH & Co. v. HTC Corp., 861 F.3d 1362, 1371
`(Fed. Cir. 2017), as corrected (Aug. 21, 2017). In addition, contrary to
`Petitioner’s argument, we cannot hold claims invalid as indefinite as part of
`an inter partes review. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2141–42 (2016) (The agency may not act “act outside its statutory
`limits by, for example, canceling a patent claim for ‘indefiniteness under
`§ 112’ in inter partes review.”).
`Thus, we determine we need not consider Petitioner’s arguments that
`our construction of the “means for installing” limitation is incorrect (and that
`the means-plus-function claims are indefinite) because if we accepted those
`arguments in the absence of an alternative construction, we would find
`Petitioner had failed to show those claims are unpatentable by a
`preponderance of the evidence.
`In its Institution Response Brief, Petitioner also contends Kasso
`teaches the “means for installing” limitation even under our construction in
`the Decision on Institution. Inst. Resp. Br. 8–10. Patent Owner argues this
`portion of the Institution Response Brief exceeds the scope of the brief we
`authorized. See Tr. 27:16–28:11. We agree with Patent Owner, as
`evidenced by Petitioner’s failure to cite to the corresponding arguments
`regarding Kasso’s teachings in the Petition in violation of our order
`authorizing that brief. See Inst. Resp. Br. 8–10; Paper 15, 3–4.
`
`
`
`12
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`Nevertheless, Petitioner contends that due process dictates that we allow
`Petitioner the opportunity to provide a new mapping to the cited references
`under the claim construction in the Decision on Institution. See Tr. 23:19–
`25:2. Petitioner, however, chose only to identify general purpose hardware
`in its Petition without identifying any potential algorithm as an alternative.
`Pet. 20–21. Likewise, once Patent Owner identified its proposed
`corresponding structure in the Preliminary Response, Petitioner never
`requested authorization to respond to this proposed structure or explain how
`the references cited in its unpatentability grounds accounted for it.
`It was not until after those claims became part of the trial that
`Petitioner chose to make these arguments for the first time. In doing so,
`Petitioner disregarded our admonition that its Institution Response Brief was
`“not an opportunity for Petitioner to add additional arguments, evidence, or
`otherwise try to improve its Petition” (Paper 15, 3–4), and Petitioner never
`requested that we reconsider or modify that order prior to filing its Brief. In
`essence, Petitioner seeks a windfall from the Supreme Court’s decision in
`SAS to rewrite its challenges to the means-plus-function claims. At the
`institution stage, we found that Petitioner had not shown a reasonable
`likelihood of prevailing on its challenges to claims 15–17, 22–24, 30, and
`35–37. It would be odd indeed for us to allow Petitioner to improve its
`position on those claims, not by pointing out errors in our Decision on
`Institution or responding to Patent Owner’s arguments, but by crafting an
`entirely new challenge road mapped to our Decision on Institution.
`We recognize that there are circumstances where a Petitioner may
`properly cite new portions of a reference in a Petitioner Reply, and Patent
`Owner may be afforded an opportunity to address those contentions in a sur-
`
`
`
`13
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`reply. See, e.g., In re NuVasive, Inc., 841 F.3d 966, 972 (Fed. Cir. 2016).
`Likewise, in its Institution Response Brief, Petitioner cites Genzyme
`Therapeutic Products Ltd. Partnership v. Biomarin Pharmaceutical Inc.,
`825 F.3d 1360, 1367 (Fed. Cir. 2016) as stating that “[t]he purpose of the
`trial in an inter partes review proceeding is to give the parties an opportunity
`to build a record by introducing evidence—not simply to weigh evidence of
`which the Board is already aware.” Inst. Resp. Br. 2. Generally, we agree,
`but determine the circumstances in this case are wholly different. As
`discussed above, this is not a case where Petitioner cites new evidence in a
`reply to a Patent Owner response. Instead, Petitioner chose to rely only on
`the narrow Katz exception in its Petition, did not request a reply to the
`Preliminary Response, and ignored the limitations in our order authorizing
`its Institution Response Brief to put forth an entirely new mapping of the
`reference. In other words, Petitioner seeks to re-write its Petition as to the
`means-plus-function claims, not simply develop evidence in support of the
`positions in its Petition.
`Accordingly, we do not consider the portion of Petitioner’s Institution
`Response Brief that addresses whether Kasso teaches the “means for
`installing” limitation as construed in our Decision on Institution.
`B. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`construed according to their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b)
`(2016); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).
`Under that standard, claim terms are generally given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`
`
`
`14
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). There are, however, two exceptions to
`that rule: “1) when a patentee sets out a definition and acts as his own
`lexicographer,” and “2) when the patentee disavows the full scope of a claim
`term either in the specification or during prosecution.” See Thorner v. Sony
`Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`In our Decision on Institution, we determined we needed only address
`the constructions of “application program,” “installing,” and “means for
`installing a plurality of application programs at the server” and only to the
`extent necessary to resolve whether the grounds asserted by Petitioner
`properly accounted for those terms. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those
`terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy”). We address each of those terms
`below.
`1. “application program”
`Upon reviewing the parties’ preliminary arguments and evidence, we
`determined that the broadest reasonable interpretation of “application
`program” in the context of the challenged claims is “code associated with
`underlying application program functions.” Dec. on Inst. 8. In particular,
`we noted the ’466 patent states: “As used herein, the term ‘application
`program’ generally refers to the code associated with the underlying
`program functions, for example, Lotus Notes or a terminal emulator
`program.” Id. (quoting Ex. 1001, 14:24–27). We further found that
`definition is consistent with the language of the independent claims, which
`recite “providing an instance of the selected one of the plurality of
`
`
`
`15
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`application programs to the client for execution responsive to the selection.”
`Id. (quoting Ex. 1001, 23:6–8). Following institution, neither party
`addresses our preliminary construction of “application program.” Upon
`review of the record developed during trial, we see no reason to modify that
`construction. Accordingly, we determine that the broadest reasonable
`interpretation of “application program” in the context of the challenged
`claims is “code associated with underlying application program functions.”
`See Ex. 1001, 14:24–27, 23:6–8.
`2. “installing”
`In our Decision on Institution, we determined that the broadest
`reasonable interpretation of “installing” does not encompass “configuring”
`or “registering” as those terms are used in the ’466 patent, but we
`determined that we did not need to further construe “installing.” Dec. on
`Inst. 9. In reaching that determination, we relied on portions of the ’466
`patent that distinguish between installation and configuration or registration.
`Id. (citing Ex. 1001, 4:15–16 (“install and register the application program
`on the on-demand server”), 4:20 (“install and register the program”), 18:27–
`29 (“[A]n administrator both sends a new application package to all
`supported on-demand servers and installs the program and configures
`(registers) it to be available for use.”). Following institution, neither party
`addresses our preliminary construction of “installing,” and upon review of
`the record developed during trial, we see no reason to modify that
`construction. Accordingly, we determine that the broadest reasonable
`interpretation of “installing” does not encompass “configuring” or
`“registering” as those terms are used in the ’466 patent, but we do not further
`construe “installing.” E.g., Ex. 1001, 4:15–16, 4:20, 18:27–29.
`
`
`
`16
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`
`3. “means for installing a plurality of application programs at the
`server”
`Regarding “means for installing a plurality of application programs at
`the server,” we determined that the limitation is a means-plus-function
`limitation with the function of “installing a plurality of application programs
`at the server.” Dec. on Inst. 10. As discussed above, for corresponding
`structure, Petitioner relied only on general purpose hardware (a server
`processor, CRM (computer readable medium), or a network drive accessible
`to a server) with no algorithm. Id. (citing Pet. 20). In support, Petitioner
`cited Katz, 639 F.3d at 1316, as holding that a “general-purpose computer,
`by itself, may be sufficient as corresponding structure for general computing
`functions such as storing, which can be achieved by any general purpose
`computer without special programming.” Id. (citing Pet. 19). We noted in
`our Decision on Institution that the Federal Circuit has characterized the
`exception in Katz as a “narrow” one. Id. at 11 (citing EON Corp. IP
`Holdings LLC v. AT & T Mobility LLC, 785 F.3d 616, 621 (Fed. Cir. 2015);
`Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed.
`Cir. 2012)). In particular, we noted the Federal Circuit has stated that “a
`microprocessor can serve as structure for a computer-implemented function
`only where the claimed function is ‘coextensive’ with a microprocessor
`itself” (i.e., where the claimed function is a “basic function[] of a
`microprocessor”). Id. (quoting EON Corp., 785 F.3d at 622–23).
`We then determined that Petitioner had not shown that the recited
`function (i.e., “installing a plurality of application programs at the server”)
`was a basic function of a microprocessor such that general purpose hardware
`with no algorithm could be sufficient corresponding structure. Dec. on Inst.
`10–11 (“Petitioner provides no evidence or factually-supported explanation
`17
`
`
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`to support its apparent argument that ‘installing a plurality of application
`programs at the server’ is a basic function of a microprocessor.”). In our
`Decision on Rehearing, we also noted that the ’466 patent suggests
`“installing” is more than a basic function of a microprocessor when it
`discusses “various steps in the installation process.” Dec. on Reh’g 4 n.1
`(quoting Ex. 1001, 3:31–36).
`We next analyzed the corresponding structure proposed by Patent
`Owner. Because we determined that “installing” does not encompass
`configuring or registering, we determined the portions of Patent Owner’s
`proposed corresponding structure related to configuration were not linked to
`the recited function. Id. at 12–13 (discussing Ex. 1001, 6:19–21, 13:1–23,
`18:3–18, 20:1–59, Figs. 5, 8, 9C). We also determined that other portions of
`Patent Owner’s proposed corresponding structure did not disclose an
`algorithm for the recited “installing.” Id. at 12 (discussing Ex. 1001, Fig. 4,
`12:25–30). We determined the remainder of Patent Owner’s proposed
`corresponding structure, namely Figure 8, steps 112–116, and the associated
`description of those steps in the ’466 patent (Ex. 1001, 17:55–67), have the
`required clear linkage or association to the recited function. Id. at 13.
`Thus, we determined the corresponding structure for this claim
`limitation includes, at least, an algorithm for specifying application program
`source and destination locations, executing a pre-distribution program (if
`specified), and distributing the application program software to an on-
`demand server (and equivalents of such an algorithm). Id. at 11–13 (citing
`Ex. 1001, Fig. 8, steps 112–116, 17:55–67). Finally, we determined that
`claim 16 requires the same corresponding structure because it recites
`“computer readable program code means.” Id. at 13–14.
`
`
`
`18
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`
`Other than the Petitioner’s Institution Response Brief, which we
`discuss above, the parties do not address the “means for installing”
`limitation. Accordingly, we maintain our construction of that term with the
`function of “installing a plurality of application programs at the server” and
`corresponding structure of, at least, an algorithm for specifying application
`program source and destination locations, executing a pre-distribution
`program (if specified), and distributing the application program software to
`an on-demand server (and equivalents of such an algorithm). See Ex. 1001,
`Fig. 8, steps 112–116, 17:55–67.
`C. Asserted Obviousness over Kasso and Raduchel
`Petitioner contends that claims 1, 7, 8, 15, 16, 22, 23, 35, and 36 of
`the ’466 patent are unpatentable as obvious over the combined teachings of
`Kasso and Raduchel. Pet. 28–52. Petitioner explains how it alleges this
`proffered combination teaches or suggests the subject matter of each
`challenged claim, and provides reasoning as to why one of ordinary skill in
`the art would have been prompted to modify or combine the references’
`respective teachings. Id. Petitioner also relies upon the Declaration of Mr.
`Day to support its positions. Ex. 1008 ¶¶ 23–70. In its Patent Owner
`Response, Patent Owner presents a number of arguments as to why the
`combined teachings of Kasso and Raduchel do not render the limitations of
`claim 1 obvious. PO Resp. 6–19. Patent Owner relies upon the Declaration
`of Dr. DiEuliis to support its positions. Ex. 2001.
`We begin our analysis with the principles of law that generally apply
`to a ground based on obviousness, followed by an assessment of the level of
`skill in the art, as well as brief overviews of Kasso and Raduchel, and then
`
`
`
`19
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`we address the parties’ contentions with respect to the claims at issue in this
`asserted ground.
`1. Legal Principles
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in the record, objective
`evidence of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966). In that regard, an obviousness analysis “need not seek out
`precise teachings directed to the specific subject matter of the challenged
`claim, for a court can take account of the inferences and creative steps that a
`person of ordinary skill in the art would employ.” KS
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
