Trials@uspto.gov Paper No. 7
`571-272-7822
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`Entered: November 1, 2017
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`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.
`
`DECISION
`Partial Institution of Inter Partes Review
`35 U.S.C. § 314 and 37 C.F.R. § 42.108
`
`
`
`
`571-272-7822
`
`Entered: November 1, 2017
`
`
`
`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.
`
`DECISION
`Partial Institution of Inter Partes Review
`35 U.S.C. § 314 and 37 C.F.R. § 42.108
`
`
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`IPR2017-01315
`Patent 6,510,466 B1
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`BitDefender Inc. (“Petitioner”) filed a Petition pursuant to
`35 U.S.C. §§ 311–319 requesting an 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.”). Applying the standard set forth in 35 U.S.C. § 314(a),
`which requires demonstration of a reasonable likelihood that Petitioner
`would prevail with respect to at least one challenged claim, we grant
`Petitioner’s request and institute an inter partes review of claims 1, 2, and 7–
`9, but not of claims 15–17, 22–24, 30, and 35–37.
`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
`’466 patent states that user mobility and hardware portability are provided
`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.
`
`
`1 We note that the Preliminary Response identifies only Uniloc Luxembourg
`S.A. as the patent owner (Prelim. Resp. 1), but Patent Owner’s Mandatory
`Notice identifies both Uniloc USA, Inc. and Uniloc Luxembourg S.A. as
`Patent Owner in this case. Paper 4, 1. Petitioner states that the “‘466 patent
`is owned by Uniloc Luxembourg, S.A., and exclusively licensed to Uniloc
`USA Inc.” Pet. 2.
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`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.
`Figure 8 of the ’466 patent is reproduced below.
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`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.
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`B. Illustrative 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. Claim
`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.
`
`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;
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`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. Grounds Asserted
`Petitioner challenges the patentability of the ʼ466 patent claims on the
`
`following grounds:
`
`
`
`Claim(s)
`Basis
`Reference(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
`9, 24, and 37
`Kasso, Raduchel, and Olsen
`Petitioner also relies on expert testimony from Thomas A. Day (Ex.
`1008, “Day Decl.”).
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`
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`35 U.S.C. § 103(a)
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`35 U.S.C. § 103(a)
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`
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`II. ANALYSIS
`
`A. 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);
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`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 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).
`Petitioner proposes constructions of “application program,”
`“installing,” and means-plus-function terms recited in the claims. Pet. 18–
`25. Patent Owner addresses Petitioner’s proposed constructions of some of
`these terms. Prelim. Resp. 6–16. Other than the constructions of
`“application program,” “installing,” and “means for installing a plurality of
`application programs at the server” discussed below, we determine explicit
`construction of any other term is not necessary to resolve the issues before
`us. 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”).
`1. “application program”
`Petitioner contends “application program” is “defined by the ‘466
`patent as ‘code associated with underlying program functions.’” Pet. 18
`(citing Ex. 1001, 14:24–26). Patent Owner contends that Petitioner has
`proposed a different construction in pending district court litigation. Prelim.
`Resp. 6–8. Patent Owner does not propose a construction, but acknowledges
`that the claim construction standards in district court and proceedings before
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`the Board recognize that “the explicit lexicography of the inventor should
`govern claim construction.” Id. at 7–8.
`Based on the current record and at this stage of the proceeding, we
`agree with Petitioner’s proposed construction. 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.” Ex. 1001, 14:24–27. That definition is
`consistent with the language of the independent claims which recite
`“providing an instance of the selected one of the plurality of application
`programs to the client for execution responsive to the selection.” Id. at 23:6–
`8 (emphasis added).
`Patent Owner relies only on a purportedly inconsistent construction
`proposed by Petitioner in district court, but does not propose a construction
`of its own. Based on the current record and at this stage of the proceeding,
`we construe “application program” as “code associated with underlying
`application program functions.”
`2. “installing”
`Petitioner contends “installing” does not include “configuring
`(registering).” Pet. 18. In support, Petitioner points to the recitations in the
`specification that distinguish between installing and registering or
`configuring. Id. (citing Ex. 1001, 4:15–16, 4:20, 17:46, 18:28–29).
`Although Petitioner does not propose a construction for “installing,”
`Petitioner notes that “installing” was interpreted as storing during
`prosecution of the application that led to the ’466 patent. Id. On the other
`hand, Patent Owner contends it would create ambiguity for the Board to
`construe “installing” in terms of what it is not, and that Petitioner does not
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`sufficiently justify its implicit construction of “installing” as “storing.”
`Prelim. Resp. 8–9.
`We agree with Petitioner that the ’466 patent distinguishes between
`installation and configuration or registration. E.g., 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.”). We determine we need not further construe “installing” to resolve
`the issues before us at this stage of the proceeding.
`For the reasons discussed above, we determine that “installing” does
`not encompass “configuring” or “registering” as those terms are used in the
`’466 patent, and we do not further construe “installing” at this stage of the
`proceeding.
`
`3. “means for installing a plurality of application programs at
`the server”
`In our analysis of “means for installing a plurality of application
`programs at the server,” we recognize that construing a means-plus-function
`limitation requires first defining the particular function of the limitation and
`then identifying the corresponding structure for that function in the
`specification. Golight Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1333–34
`(Fed. Cir. 2004). Further, under 37 C.F.R. § 42.104(b)(3), “the petition must
`set forth . . . [h]ow the challenged claim is to be construed,” including
`identifying “the specific portions of the specification that describe the
`structure, material, or acts corresponding to each claimed function,” where
`the claim to be construed contains a “means-plus-function or step-plus-
`function limitation as permitted under 35 U.S.C. § 112(f).”
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`The parties appear to agree the function of this limitation is “installing
`a plurality of application programs at the server.” See Prelim. Resp. 10.
`Petitioner contends that the corresponding structure for “means for installing
`a plurality of application programs at the server” is a server processor, CRM
`(computer readable medium), or a network drive accessible to a server. Pet.
`20. Other than citations to the ’466 patent, Petitioner does not provide
`argument, explanation, or expert testimony in support of its proposed
`corresponding structure. Id. Patent Owner points out that Petitioner fails to
`identify an “algorithmic structure disclosed in the ’466 patent” for this
`limitation. Prelim. Resp. 13.
`We agree with Patent Owner that Petitioner has not identified
`sufficient corresponding structure for this limitation. Petitioner cites 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 recognizes 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)). Petitioner contends “means for installing a plurality of application
`programs at the server” falls within the Katz exception, and so identifies
`only general purpose hardware with no algorithm. Pet. 20, 31.
`In Katz, the Federal Circuit found that “[a]bsent a possible narrower
`construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those
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`functions can be achieved by any general purpose computer without special
`programming.” 639 F.3d at 1316. The Federal Circuit, however, has
`characterized the exception in Katz as a “narrow” one. 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, the Federal Circuit 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”). EON
`Corp., 785 F.3d at 622–23.
`Here, Petitioner provides no 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.
`Based on the current record, we determine that it is not. Specifically, we
`note that the ’466 patent discusses specifying a destination location for the
`software and receiving access information as part of the process for an
`application program to be distributed to (i.e., installed at) a server. Thus,
`based on the current record, we determine that the recited function is more
`than a basic function of a microprocessor. We, therefore, do not adopt
`Petitioner’s proposed corresponding structure.
`Patent Owner provides the following proposed corresponding
`structure for this limitation: “a processor executing computer program
`instructions, as described in 12:1–24, implementing the algorithms described
`in connection with FIG. 4, FIG. 5, FIG. 8, and FIG. 9C and at 12:25–30,
`13:1–23, 14:24–53, 17:17–51, 18:3–32, 20:1–59.” Prelim. Resp. 10. Patent
`Owner particularly highlights Figure 8 of the ’466 patent in which an
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`application program is “received . . . and installed at the on-demand server.”
`Id. at 13–14 (citing Ex. 1001, Fig. 8, 17:52–18:32). Petitioner contends that
`because “installing is distinct from configuring (registering), structure
`corresponding to the function of configuring (registering) is not clearly
`linked to the function of installing.” Pet. 21.
`As discussed above, we agree with Patent Owner that the
`corresponding structure must include an algorithm for performing the recited
`function, and we agree with Petitioner that “installing” does not encompass
`configuring or registering. A structure disclosed in the specification
`qualifies as “corresponding” structure only if the specification or prosecution
`history clearly links or associates that structure to the function recited in the
`claim. B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir.
`1997). The “clear linkage or association” in the specification of the structure
`to the function recited in the claim is determined based on the understanding
`of an artisan of ordinary skill. See AllVoice Computing PLC v. Nuance
`Commc’ns, Inc., 504 F.3d 1236, 1242 (Fed. Cir. 2007). Of the
`corresponding structure proposed by Patent Owner, we determine that only
`the portion of Figure 8 related to installation and its associated description in
`the ’466 patent have the required clear linkage or association to the recited
`function. Specifically, we find that while Figure 4 mentions a “New App.,”
`and the cited description mentions “a new software application for
`installation on server system 22,” neither discloses an algorithm for the
`recited “installing.” Ex. 1001, Fig. 4, 12:25–30. We further find that
`Figures 5 and 9C explicitly refer to configuration operations and not
`installation. Id. at 6:19–21, 13:1–23, 20:1–59. We also find that the
`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
`installation. Id. at 18:3–18.
`We determine the remainder of Figure 8 (i.e., 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. Thus,
`we determine 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). Ex. 1001, Fig. 8, steps 112–116, 17:55–
`67.
`
`Claim 16 recites “computer readable program code means” for
`performing the recited functions, which triggers a rebuttable presumption
`that § 112 ¶ 6 applies. Williamson v. Citrix Online, LLC, 792 F.3d 1339,
`1349 (Fed. Cir. 2015). Petitioner appears to contend that this presumption is
`not rebutted because it provides the same corresponding structure for this
`limitation for both claims 15 and 16. Pet. 20. Patent Owner appears to
`contend claim 16 does not invoke pre-AIA 35 U.S.C. § 112 ¶ 6 because it is
`directed to “‘[a] computer program product’ comprising ‘a computer-
`readable storage medium’ having encoded therein ‘computer-readable
`program code’ for carrying out specifically-recited limitations.” Prelim.
`Resp. 9. We note, however, that Patent Owner’s quotations omit the term
`“means,” and Patent Owner does not persuasively address that recitation to
`overcome the presumption.
`Because neither party has rebutted the presumption that § 112 ¶ 6
`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-
`function term. Accordingly, the limitation “computer readable program
`means for installing a plurality of application programs at the server” has, at
`a minimum, the same corresponding structure as the similar limitation of
`claim 15 discussed above.
`Legal Principles
`B.
`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.” KSR, 550 U.S. at 418.
`
`C.
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`Asserted Obviousness over Kasso and Raduchel
`1. Overview of Kasso and Raduchel
`Kasso is titled “Computer System for Managing and Configuring
`Application Properties and Enabling System Administrator to Override
`Certain User-Set or Host Properties,” and was filed on April 2, 1997 and
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`issued on November 3, 1998. Ex. 1009, at [54], [22], [45]. Petitioner
`contends Kasso is prior art under at least 35 U.S.C. §§ 102(a) and 102(e).
`Pet. 25.
`Figure 2 of Kasso is reproduced below.
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`
`Figure 2 depicts a hardware environment with a plurality of network
`computers (NC) 200, 202. Ex. 1009, 4:46–47. When NC 200 powers on, it
`locates JavaOS boot server (JBS) 206 and downloads an operating system
`and a Selector program. Id. at 4:54–55, 5:21–30. Once the host begins
`executing JavaOS, the user enters a username and password, and the JavaOS
`requests Network Information Server (NIS) 230 to verify the validity of the
`username and password. Id. at 5:35–41. The JavaOS then passes control to
`the Selector, which establishes a connection to HTTP server 208 to access
`application programs 240 on HTTP server 208. Id. at 5:54–63.
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`Figure 5 of Kasso is reproduced below.
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`Figure 5 depicts main screen 402 displayed by Selector at NC 200. Id. at
`5:63.2 Each application program is represented on main screen 402 by an
`icon 404, 406. Id. at 5:63–66. For example, Kasso explains that when a
`user clicks on mailbox icon 406,3 the MailView Java applet loads itself into
`the RAM of the network computer, and then executes and runs on the
`network computer. Id. at 6:1–12.
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`2 Although in the cited portion Kasso refers to Figure 4, it is clear from the
`reference numbers that Figure 5 is actually described.
`3 Although in the cited portion Kasso refers to both “mailbox icon 404” (Ex.
`1009, 6:1) and “mailbox icon 406” (id. at 6:5), it is clear from both the
`context and from Figure 5 that both references refer to “mailbox icon 406.”
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`Raduchel is titled “Network-Based Authentication of Computer
`User,” and issued on January 8, 2002. Ex. 1010, at [54], [45]. Petitioner
`contends Raduchel is prior art under at least under 35 U.S.C. § 102(e).
`Pet. 27.
`2. Obviousness
`Petitioner contends that claims 1, 7, 8, 15, 16, 22, 23, 35, and 36
`would have been obvious over Kasso and Raduchel. Pet. 28–52. We have
`reviewed the information provided by Petitioner, including the relevant
`portions of the supporting Day Declaration (Ex. 1008), along with Patent
`Owner’s arguments and evidence, and are persuaded, based on the current
`record, that Petitioner has demonstrated a reasonable likelihood of prevailing
`on this obviousness challenge for claims 1, 7, and 8, but not for claims 15,
`16, 22, 23, 35, and 36.
`a. Claims 15, 16, 22, 23, 35, and 36
`For independent claims 15 and 16, we determined above that
`Petitioner had not identified sufficient corresponding structure for “means
`for installing a plurality of application programs at the server.” In its
`asserted ground, Petitioner addresses the limitations of claims 1, 15, and 16
`together. Pet. 28–52. For this limitation, although Petitioner contends
`Kasso has application programs stored at a server’s storage device,
`Petitioner does not address whether this teaching meets the corresponding
`structure discussed above (i.e., steps 112–116 of Figure 8 and the associated
`description (Ex. 1001, 17:55–67) (and their equivalents)). Pet. 30–31.
`Because Petitioner has not shown Kasso describes the corresponding
`structure for performing “installing a plurality of application programs at the
`server,” we determine Petitioner has not shown a reasonable likelihood of
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`prevailing on its challenge to independent claims 15 and 16 and claims 22,
`23, 35, and 36 depending therefrom.
`b. Claims 1, 7, and 8
`For claim 1, Petitioner relies primarily on the teachings of Kasso.
`Although Kasso teaches two distinct servers, HTTP server 208 and NIS
`server 230, Petitioner contends “it would have been obvious to implement
`the authentication functionality described for the NIS server 230 on the
`HTTP server 208 of Kasso, so that the HTTP server 208 would have
`received authentication requests” or “to receive authentication requests at
`HTTP server 208, which would then offload the authentication functionality
`to NIS server 230.” Pet. 32.
`Petitioner provides reasons why these modifications would have been
`obvious. For example, Petitioner contends the single server approach (1) is
`consistent with Kasso’s embodiment in Figure 1 which implements the
`invention on a single computer system (Pet. 33 (citing Ex. 1009, 4:1–43));
`(2) would save costs and simplify the system architecture (id. at 33–34
`(citing Ex. 1008 ¶ 28)); and (3) would involve
`the simple substitution of one known element for another (a
`server implementing two functions for two servers
`implementing the functions separately) to obtain predictable
`results, applying a known technique (authentication) to a known
`device (delivery server) ready for improvement to yield
`predictable results, and choosing from a finite number of
`identified, predictable solutions (single server and multi-server
`implementations for authentication and application delivery),
`with a reasonable expectation of success
`
`(id. at 34 (citing Ex. 1008 ¶ 29)). Petitioner relies on Raduchel as teaching
`configuring the user desktop interface according to a list of applications for
`
`
`
`18
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`which the user is authorized, and provides reasons a person of ordinary skill
`in the art would have combined that teaching with the teachings of Kasso
`(e.g., to simplify the user display and reduce error messages caused by user
`interactions with unavailable applications). Pet. 38–39 (citing Ex. 1008
`¶ 42). Petitioner also relies on Raduchel as teaching distribution of transient
`programs. Id. at 42.
`We have reviewed the information provided by Petitioner, including
`the relevant portions of the supporting Day Declaration (Ex. 1008), along
`with Patent Owner’s arguments and evidence, and are persuaded, based on
`the current record, that Petitioner has demonstrated a reasonable likelihood
`of prevailing on this obviousness challenge for claim 1.
`Patent Owner argues that Petitioner has not shown Kasso teaches
`“receiving at the server a login request from a user at a client.” Prelim.
`Resp. 17–25. In particular, Patent Owner contends Petitioner relies on two
`distinct servers in Kasso as teaching the recited “server” and
`“inappropriately attempts to conflate into one server what Kasso expressly
`separates by intended design.” Id. at 17. Patent Owner further contends that
`Petitioner’s proposed modifications for this claim term are legally improper
`because they rely on general knowledge of a person of ordinary skill in the
`art which is not in the form of prior art patents and printed publications. Id.
`at 17–18 (citing 35 U.S.C. § 311(b); 37 C.F.R. § 42.104(b)). Patent Owner
`also contends “[t]here is simply no teaching, suggestion, or motivation in the
`cited references themselves that would have led [a person of ordinary skill in
`the art] to deviate from the express teachings in Kasso to arrive at all the
`limitations for the claimed ‘server.’” Id. at 19.
`
`
`
`19
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`IPR2017-01315
`Patent 6,510,466 B1
`
`
`We are not persuaded by these arguments. We determine that
`Petitioner’s contentions do not run afoul of 35 U.S.C. § 311(b) and 37
`C.F.R. § 42.104(b) because its contentions for this limitation rely on the
`teachings of Kasso, a patent. Neither the statute nor our rules prohibit a
`petitioner from relying on allegedly obvious modifications to teachings in
`prior art patents and printed publications. In addition, the Supreme Court
`has rejected a restrictive application of the teaching, suggestion, motivation
`test on which Patent Owner appears to rely. KSR, 550 U.S. 398 at 407.
`Patent Owner further contends Petitioner has not provided a sufficient
`factual basis for either of its proposed modifications. Prelim. Resp. 19–25.
`Regarding the proposed single server modification, Patent Owner contends:
`(1) Kasso’s Figure 1 embodiment does not suggest the proposed
`modification because it does not involve client-server communication (id. at
`19–20); (2) Kasso’s description of “separate, dedicated servers would lead a
`[person of ordinary skill in the art] away from attempting to utilize a single
`server instead” (id. at 20 (citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
`1994))); (3) modifying Kasso to use a single server would eliminate the
`enhanced security associated with using dedicated servers (id. at 21, 22); and
`(4) Petitioner provides insufficient support for its contention that a single
`server would save costs and simplify system architecture (id. at 21). We are
`not persuaded by these arguments based on the current record, and find that
`Petitioner has identified sufficient reasoning that satisfies the reasonable
`likelihood threshold to support that performing the recited functions on a
`single server would have been an obvious modification to Kasso (Pet. 32–34
`(citing Ex. 1008 ¶¶ 28–30)).
`
`
`
`20
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`IPR2017-01315
`Patent 6,510,466 B1
`
`
`At this juncture, we disagree with Patent Owner that Kasso’s
`description of separate, dedicated servers teaches away from a single server.
`See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that prior art
`does not teach away from claimed subject matter merely by disclosing a
`different solution to a similar problem unless the prior art also criticizes,
`discredits, or otherwise discourages the solution claimed). In addition,
`although Patent Owner identifies a potential disadvantage of the single
`server modification, “just because better alternatives exist in the prior art
`does not mean that an inferior combination is inapt for obviousness
`purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (citation
`omitted). Because we conclude Petitioner has provided sufficient reasoning
`that satisfies the reasonable likelihood threshold to support the single server
`modification, we need not address the proposed offload modification at this
`stage of the proceeding.
`Thus, we determine that Petitioner has sufficiently shown under the
`reasonable likelihood threshold that Kasso teaches “receiving at the server a
`login request from a user at a client,” as recited in claim 1, at this stage of
`the proceeding.
`Patent Owner next contends Petitioner has not shown the cited
`references teach “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 applications programs installed at the server,” as
`recited in claim 1. Prelim. Resp. 25–28. Specifically, Patent Owner
`reiterates its arguments related to Kasso’s separate servers. Id. at 25–27.
`For the reasons discussed above, we do not fi
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