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` Paper 22
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` Entered: June 19, 2019
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., and LG ELECTRONICS, INC.,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00361
`Patent 6,216,158 B1
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318
`
`
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`

`

`IPR2018-00361
`Patent 6,216,158 B1
`
`
`INTRODUCTION
`I.
`We instituted inter partes review pursuant to 35 U.S.C. § 314 to review
`claims 1, 2, 6−9, 12, 14, 15, and 20 of U.S. Patent No. 6,216,158 B1
`(Ex. 1001, “the ’158 patent”), owned by Uniloc 2017 LLC. We have
`jurisdiction under 35 U.S.C. § 6. This Final Written Decision is entered
`pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
`discussed below, Petitioner has shown by a preponderance of the evidence
`that claims 1, 2, 6−9, 12, 14, and 15 of the ’158 patent are unpatentable.
`Petitioner has not shown by a preponderance of the evidence that claim 20 of
`the ’158 patent is unpatentable.
`
`BACKGROUND
`II.
`Related Matters
`A.
`The parties indicate that the ’158 patent is involved in Uniloc USA,
`Inc. v. Apple Inc., Case No. 3-18-cv-00365 (N.D. Cal.) and other
`proceedings. Pet. 2; Paper 3.
`
`The ’158 Patent
`B.
`The ’158 patent relates to controlling network devices using a
`palm-sized, or otherwise reduced functionality, computer. Ex. 1001, 1:8−10.
`According to the ’158 patent, a palm-sized computer has limited processing,
`display, and input capabilities, resulting in an inability to run the same
`applications as desktop or laptop computers. Id. at 1:22−27. Touting the
`desirability to access desktop functionality from palm-sized computers, the
`’158 patent overcomes the palm-sized computer limitations by viewing a
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`IPR2018-00361
`Patent 6,216,158 B1
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`network as “an extension of the palm sized computer’s resources.” Id. at
`1:27−29, 2:10−13. “Functions can be downloaded into the device as needed,
`and overlaid after they have been used.” Id. at 2:14−15. Thus, when a
`palm-sized computer seeks to use services stored on a network, the palm-
`sized computer can access and control these services using a program (such
`as a middleware application) to access a registry of the network services. Id.
`at 1:36−39, 1:46−48, 2:15−23.
`The ’158 patent explains that middleware “allows palm sized
`computers to discover network-based computing resources.” Id. at 2:29−30.
`Middleware includes a directory of resources (or services), a protocol for
`storing and receiving from the directory, and a mechanism to transfer
`software from the directory to a palm-sized computer. Id. at 2:32−36. The
`palm-sized computer also includes a control application to manipulate the
`computer services on the network. Id. at 2:37−40. In one embodiment, the
`middleware includes “Jini technology from Sun Microsystems.” Id. at
`1:49−50, 1:62−67.
`The ’158 patent describes running a PowerPoint slide presentation as
`an example of a service that can be invoked and controlled via a control
`device, which is a palm-sized computer. Id. at 3:4−10, 3:16−20. Figure 1 of
`the ’158 patent is reproduced below.
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`IPR2018-00361
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`
`
`Figure 1 depicts a system having a palm-sized computer controlling
`operations of various network devices, such as application service 130 (to
`run the PowerPoint application), display service 140 (to display the
`presentation), and storage service 150 (to store the presentation). Id. at
`Fig. 1, 3:43−54. “None of these services are resident on the palm sized
`computer 100.” Id. at 3:60−61. After locating the necessary service (e.g.,
`PowerPoint application) using lookup service 120, the palm-sized computer
`downloads the code required to control the located services. Id. at 3:45−49,
`3:61−64, 6:1−3. The ’158 patent describes that the control device (i.e.,
`palm-sized computer) uses a download interface to download “the
`application service descriptor.” Id. at 6:16−21 (referring also to “the GUI
`code for controlling a PowerPoint presentation”). The palm-sized computer
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`is then capable of directly controlling the service, such as by sending a “next
`slide” request to the application service running, for example, PowerPoint.
`Id. at 3:66−67, 6:24−26.
`
`Illustrative Claim
`C.
`Of the challenged claims, claims 1, 8, and 20 are independent. Each
`of claims 2, 6, 7, 9, 12, 14, and 15 depends directly from either claim 1 or
`claim 8.
`Claim 1 is illustrative:
`1. A method of controlling a service on a network using a palm
`sized computer, the palm sized computer being coupled in
`communications with the network, the method comprising:
`accessing a description of the service from a directory of
`services, the description of the service including at least a
`reference to program code for controlling the service;
`downloading the program code to the palm sized computer;
`the palm sized computer executing at least a portion of the
`program code; and
`sending control commands to the service from the palm sized
`computer in response to the executing, wherein the service
`controls an application that cannot be executed on the palm sized
`computer.
`
`Ex. 1001, 12:13−28.
`
`Procedural History
`D.
`Petitioner Apple Inc. filed a Petition for inter partes review
`challenging claims 1, 2, 6−9, 12, 14, 15, and 20 of the ’158 patent. Paper 1
`
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`IPR2018-00361
`Patent 6,216,158 B1
`
`(“Pet.”). Patent Owner, Uniloc 2017 LLC, filed a Preliminary Response.
`Paper 7 (“Prelim. Resp.”). We instituted trial on July 15, 2018. Paper 8
`(“Dec. on Inst.”). During trial, Patent Owner filed a Patent Owner Response
`(Paper 11 (“PO Resp.”)) and Petitioner filed a Reply (Paper 16 (“Reply”)).
`Both parties requested oral argument, which took place on April 11, 2019,
`the transcript of which is filed in the record as Paper 21 (“Tr.”).
`
`Asserted Prior Art and Testimonial Evidence
`E.
`This proceeding involves the following prior art references:
`
`a) Jini-QS: article titled “Jini: Quick Study,” published in
`COMPUTERWORLD, Dec. 7, 1998, filed in the record as
`Exhibit 1005;
`
`b) Arnold: U.S. Patent No. 6,393,497 B1, filed in the record as
`Exhibit 1006;
`
`c) McCandless: article titled “The PalmPilot and the Handheld
`Revolution,” (IEEE Expert, 1997), filed in the record as
`Exhibit 1007;
`
`d) Riggins: U.S. Patent No. 6,131,116, filed in the record as
`Exhibit 1008; and
`
`e) Devarakonda: U.S. Patent No. 6,757,729 B1, filed in the record as
`Exhibit 1009.
`
`Petitioner also relies on a Declaration of Henry H. Houh, Ph.D., filed
`as Exhibit 1003 (“Houh Decl.”).
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`Patent 6,216,158 B1
`
`
`Patent Owner submitted a Declaration of William C. Easttom in
`support of patentability. Ex. 2001 (“Easttom Decl.”). The cross-
`examination of Mr. Easttom is filed in the record as Exhibit 1032 (“Easttom
`Dep.”).
`
`F. Grounds of Unpatentability
`
`The following grounds of unpatentability are at issue (Pet. 13−14):
`
`Claims
`1, 2, 6−9, 12, 14, 15,
`and 20
`1, 2, 6−9, 12, 14, and
`15
`
`Basis
`§ 103
`
`§ 103
`
`References
`Jini-QS, Arnold, and
`McCandless
`Riggins and
`Devarakonda
`
`III. ANALYSIS
`A. Claim Construction
`Petitioner asserts that the ’158 patent will expire during the pendency
`of the requested inter partes review. Pet. 8. Patent Owner does not address
`this assertion. In an inter partes review, under 37 C.F.R. § 42.100(b), a
`party may request a district court-type claim construction approach to be
`applied if a party certifies that the involved patent will expire within 18
`months from the entry of the Notice of Filing Date Accorded to Petition.
`See 37 C.F.R. § 42.100(b) (2017). The request must accompany the party’s
`certification. Id. In this proceeding, no such certification has been filed
`with a request. We expressed in our Decision on Institution the expectation
`that this issue would be clarified during trial. Neither party argued which
`claim construction standard should apply in this proceeding. Nor does either
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`party argue that claim construction under the broadest reasonable
`interpretation of the terms would be different under the application of the
`Phillips standard. We discuss the arguments raised regarding claim
`construction for each term.
`
`1. Palm-sized Computer
`Petitioner contends that “[f]or purposes of this proceeding, it is
`sufficient to specify that a personal digital assistant (PDA) and a 3Com Palm
`PlatformTM computer are examples of a ‘palm sized computer’ in the context
`of the ’158 Patent.” Pet. 9 (emphasis omitted). Patent Owner argues that
`this is not the “proper definition” of the term and it does not “fully define its
`scope.” PO Resp. 6. But Patent Owner does not propose an alternative
`proposal, save to say that “examples” of a palm-sized computer are not a
`proper definition of the term. Id. at 6−7. Nor does Patent Owner argue that
`the properly defined “palm sized computer” is not met by the asserted prior
`art. Accordingly, Patent Owner’s arguments do not raise a dispute regarding
`the scope of the term necessary for us to determine whether the prior art
`teaches the “palm sized computer” as recited. The ’158 patent plainly
`defines “palm sized computers” as personal digital assistants or PDAs and
`gives an example of the 3Com Palm Platform computer as a palm-sized
`computer. See Ex. 1001, 1:13−21. Therefore, we agree with Petitioner’s
`proposed construction of a personal digital assistant or PDA and the 3Com
`Palm Platform computer being examples of a “palm-sized computer.”
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`
`Means for
`downloading
`
`Downloading the
`program code
`
`2. Means Plus Function Terms
`Claim 20 recites four terms drafted in means-plus-function format:
`means for accessing, means for downloading, means for executing, and
`means for sending. Petitioner’s proposed identification of the function and
`structure for each of these terms is as follows.
`Term
`Function
`Structure
`Means for
`Accessing a
`A palm-sized computer
`accessing
`description of a
`executing the Jini middleware
`service
`from Sun Microsystems, and
`equivalents thereof
`A palm-sized computer
`executing the Jini middleware
`from Sun Microsystems, and
`equivalents thereof
`A palm-sized computer
`executing a Java Virtual
`Machine, and equivalents
`thereof
`A palm-sized computer
`executing a control protocol
`capable of issuing control
`commands or Java’s Remote
`Method Invocation (RMI)
`protocol, and equivalents
`thereof
`
`Executing at least a
`portion of the
`program code
`
`Means for
`executing at least a
`portion of the
`program code
`Means for sending Sending control
`commands to the
`service in response
`to the means for
`executing
`
`Pet. 9−12. Patent Owner challenges the structures identified by Petitioner as
`focusing on specific embodiments. PO Resp. 7−12. We address each of
`Patent Owner’s arguments in turn.
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`
`Means for Accessing and Means for Downloading
`i.
`According to Patent Owner, the Specification describes embodiments
`other than Jini middleware as structures performing the accessing and
`downloading functions. Id. at 7−9. Patent Owner contends that the
`structures corresponding to the means for accessing and means for
`downloading should be “middleware and equivalents thereof.” Id.
`(emphasis omitted). We agree with Patent Owner that in addition to the Jini
`middleware embodiment, the Specification of the ’158 patent describes
`middleware in more general terms. See Ex. 1001, 2:29−36 (describing
`middleware as the mechanism for the palm-sized computer to discover
`network-based computing resources, including the directory of services, and
`providing a protocol for storing and retrieving from the directory and
`mechanism to transfer software from the directory to a palm-sized
`computer). Consequently, we are persuaded by Patent Owner’s argument
`that the means for accessing and means for downloading are not limited to
`Jini middleware and equivalents, but also would include middleware and
`equivalents.
`
`ii. Means for Executing
`Patent Owner argues that Petitioner focuses on a Java Virtual
`Machine, but the Specification does not limit the means for executing to a
`Java Virtual Machine. PO Resp. 9−10. Patent Owner also quotes the
`Specification at column 7 lines 24 to 40 and highlights the reference to “a
`CPU service 410.” Id. at 10. Patent Owner concludes that the
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`corresponding structure for the means for executing is a “CPU service, and
`equivalents thereof.” Id. (emphasis omitted)
`The Specification describes the downloaded program “can include
`Java program code.” Ex. 1001, 1:51−52. The Specification further
`describes that, in the Jini embodiment, “[e]ach device is expected to run a
`Java Virtual Machine (JVM), or rely on a Jini proxy which runs a JVM on
`the device’s behalf.” Id. at 2:53−57. In the embodiment shown in Figure 2,
`however, the control application relies on “middleware,” not a JVM as
`shown in Figure 3. Therefore, we agree with Patent Owner that the means
`for executing is not limited to a JVM. However, a JVM may be one
`alternative that the palm-sized computer uses to run the program code.
`As stated above, Patent Owner focuses on the disclosure of a CPU to
`argue that the means for executing includes a CPU. This disclosure,
`however, is not linked to executing the program code that is downloaded to
`the palm-sized computer. This disclosure addresses the software
`architecture of network-based computer service 250, i.e., the computer that
`runs the PowerPoint application controlled by the palm-sized computer
`controls. Id. at 7:25−40 (describing in further detail service control
`application 260 of network based computer service 250 shown in Figure 3,
`and further describing that the CPU service corresponds to application
`service 130, which is shown in Figure 1 as the application service on the
`network, not the palm-sized computer). Patent Owner’s point, however, is
`well taken; that is, the execution of the program code is performed by a
`processor. The processor, however, is in the palm-sized computer. See id.
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`at 1:22−25 (describing limitations of processing capability of the palm-sized
`computer).
`It is clear from the Specification that the program code is running on
`the palm-sized computer, which we have determined above to include at
`least a personal digital assistant or a 3ComPalm Platform computer. See id.
`at 3:1−10 (describing a control device running Jini as the palm-sized
`computer and describing that a control application uses the control device to
`control the application). In order for the palm-sized computer to execute the
`program code, it must include an operating system and the required
`hardware. See id. at 4:34−53 (describing how the control device is able to
`control services in the network by executing the downloaded control
`application or program code as shown in Figure 2). As shown in Figure 2 of
`the ’158 patent, the control device and its operating system run the control
`application, which includes the graphical user interface (GUI) code that
`controls the service, such as a PowerPoint presentation. See id. at Fig. 2
`(depicting control device 200 with control device operating system 201),
`6:19−21 (describing the GUI code for controlling a PowerPoint
`presentation); see also Fig. 3 (depicting the palm-sized computer having a
`palm operating system running the control application with the GUI code).
`From these disclosures we are persuaded that the ’158 patent Specification
`describes that the processing capability of a palm-sized computer executes at
`least a portion of the program code.
`Consequently, we determine that the corresponding structure of the
`means for executing is, at a minimum, the processor of the palm-sized
`computer.
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`
`iii. Means for sending
`Patent Owner takes issue with Petitioner’s proposed structure for the
`recited “means for sending” because “not every embodiment uses Java’s
`Remote Method Invocation (RMI) protocol.” PO Resp. 11. Patent Owner
`points out the Specification’s description of a “generic control protocol
`capable of issuing control commands to an offboard resource.” Id. (citing
`Ex. 1001, 4:15−25) (emphasis omitted). Patent Owner argues that the
`proper corresponding structure for the function “sending control commands
`to the service in response to the means for executing” is “a control protocol,
`and equivalents thereof.” Id. at 11−12. We agree with Patent Owner that
`the Specification describes a generic control protocol capable of issuing
`control commands. Petitioner, however, did identify the control protocol in
`addition to the RMI protocol. Therefore, we determine that the
`corresponding structure for the means for sending is “palm-sized computer
`executing a control protocol capable of issuing control commands or Java’s
`Remote Method Invocation (RMI) protocol, and equivalents thereof.”
`
`Summary of Means-Plus-Function Terms
`iv.
`As discussed above, we have determined that the corresponding
`structure for the means-plus-function terms should be adjusted to account for
`additional embodiments that the ’158 patent discloses. See Callicrate v.
`Wadsworth Mfg., Inc., 427 F.3d 1361, 1369 (Fed. Cir. 2005) (determining
`that the proper claim construction must account for all structures in the
`specification corresponding to the claimed function). A summary of our
`determination for each term follows.
`
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`
`Term
`Means for
`accessing
`
`Function
`Accessing a
`description of a
`service
`
`Means for
`downloading
`
`Downloading the
`program code
`
`Means for
`executing at least a
`portion of the
`program code
`
`Executing at least a
`portion of the
`program code
`
`Means for sending Sending control
`commands to the
`service in response
`to the means for
`executing
`
`Structure
`A palm-sized computer
`executing middleware or the
`Jini middleware from Sun
`Microsystems,
`
`and equivalents thereof;
`A palm-sized computer
`executing middleware or the
`Jini middleware from Sun
`Microsystems,
`
`and equivalents thereof
`Processor of palm-sized
`computer or a palm-sized
`computer executing a Java
`Virtual Machine,
`
`and equivalents thereof
`A palm-sized computer
`executing a control protocol
`capable of issuing control
`commands or Java’s Remote
`Method Invocation (RMI)
`protocol,
`
`and equivalents thereof
`
`3. Description of the Service
`Claim 1 recites “accessing a description of the service from a
`directory of services, the description of the service including at least a
`reference to program code for controlling the service.” Ex. 1001, 12:17−19.
`Challenged independent claims 8 and 20 recite similar language. Id. at
`12:56−59, 14:30−32. Neither party submitted a claim construction proposal
`
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`IPR2018-00361
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`for the term “description of the service.” However, the parties’ arguments
`raise an implicit dispute as to the scope of this term that requires resolution.
`Petitioner, on the one hand, asserts that “accessing descriptions/icons of
`available services contained in a Lookup Service on the Jini platform”
`discloses accessing the description of the service. Pet. 28. Patent Owner, on
`the other hand, argues that icons are not a “description of the service” as
`required by the claim language, and that the Lookup Service does not
`describe accessing a “description of services.” PO Resp. 16. For the ground
`based on Riggins, Patent Owner also argues that the “description of the
`service” recited in the claims “includes details that one of ordinary skill in
`the art would recognize as being different than the mere webpage reflecting
`a user configuration file.” Id. at 33. Thus, the scope of a “description of the
`service” is at issue.
`The claim language recites two aspects of the “description of the
`service” as: (1) “accessed from a directory of services,” and (2) “including
`at least a reference to program code for controlling the service.” Although
`these recitations refine where the “description of the service” is accessed
`from and what it includes, the claim does not define further what constitutes
`a “description of the service.” The plain and ordinary meaning of the words
`suggests that the term refers to “information that describes the service.” See
`Tr. 9:17−11:5 (Petitioner agreeing that the term means “information that
`describes a service that’s in a directory of services”); Tr. 31:15−32:19
`(Patent Owner not disputing that the plain and ordinary meaning is
`“information that describes a service”). Patent Owner, however, argues that
`the claim language requires that the description, itself, must include a
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`reference to program code. Id. at 32:20−33:8. Patent Owner also argues
`that the service is distinct from the program code. Id. at 33:22−34:8.
`According to Patent Owner, then, the “description of the service” must
`include (1) that the description itself is stored in the directory and (2) a
`reference to the program code. Id.
`We agree that the claim language refers to the “description of the
`service” under the plain and ordinary meaning as “information that describes
`the service” and the information is stored in a directory of services. We also
`agree that the claim language requires that the information must include, at
`least, a “reference to program code for controlling the service.” The
`Specification confirms this understanding as it describes a directory of
`services that encodes the set of services available on the network, where the
`directory will have “objects whose attributes describe the features of
`available services.” Ex. 1001, 9:12−22. We understand from this
`description that the described “objects” are data objects stored in the
`directory, and the features of the services are “described” via attributes of
`the data object. Accordingly, we construe the “description of the service” as
`information that describes the service. And we determine that the plain
`meaning of the surrounding claim language specifies that the description of
`the service is in a directory of services and that the description includes the
`recited reference to program code.
`
`Level of Ordinary Skill in the Art
`B.
`The patentability analysis under 35 U.S.C. § 103 includes
`determination of the level or ordinary skill in the art. Graham v. John Deere
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`Co., 383 U.S. 1, 17 (1966). Neither the Petition nor the Patent Owner
`Response (PO Resp. 3) states the applicable level of ordinary skill in the art,
`and neither party argues that the obviousness determination hinges on the
`level of ordinary skill. Accordingly, we do not find it necessary to define
`the level of skill with specificity save to note that the level of ordinary skill
`is evidenced by the prior art of record. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001) (stating that the absence of specific findings on
`the level of skill in the art does not give rise to reversible error where the
`prior art itself reflects an appropriate level and a need for testimony is not
`shown).
`
`Summary of Jini-QS and Riggins
`C.
`The obviousness grounds rely on Jini-QS or Riggins as disclosing the
`majority of the limitations recited in the claims. Therefore, we summarize
`these references below.
`
`1. Overview of Jini-QS
`Jini-QS is an article in the Computer World periodical, dated
`December 7, 1998. The article defines Jini as “networking software created
`by Sun Microsystems Inc. as an extension of Java.” Ex. 1005, 5
`(“Definition”). Jini-QS depicts “How it Works” in the graphic reproduced
`below.
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`Id. The illustration of “How it Works” depicts in the center the “Jini
`community network” and around it various devices, such as: (1) a “Laptop”;
`(2) a “Jini server”; (3) a “Legacy printer”; (4) a “Disk drive”; and (5) a
`“Projector.” With regard to the Laptop, Jini-QS describes it as “plugged into
`the network, and the Jini code in the Java virtual machine on the device
`broadcasts its presence.” Id. (“How it Works”). Further, Jini-QS states that
`when the user wants to print a presentation,
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`He selects the print option, which launches a query to the
`Lookup Service on the Jini Server. The server instantly sends
`proxy code back to the device. The legacy printer, which has
`no Java or Jini code at all, receives the printing instruction via
`that proxy code and prints the document.
`Id. Jini-QS states that the “Lookup stores pointers to various services on the
`network as well as code for other services.” Id. (“Jini Speak,” “Lookup”).
`Jini-QS describes the “proxy” as the piece of Java code “that moves around
`from device to device acting as the front end for all the Jini-enabled or
`legacy systems.” Id. (“Jini Speak,” “Proxy”).
`
`2. Overview of Riggins
`Riggins, entitled “System and Method for Globally Accessing
`Computer Services,” describes a “roaming user” as one who travels and
`accesses a workstation remotely and can “manipulate the data on the remote
`workstation and, when finished, can upload the manipulated data back from
`the remote workstation to the local computer.” Ex. 1008, [54], 1:18−27.
`“However, slow computers and slow communication channels make
`downloading large files and programs a time-consuming process,” and
`downloading “severely threatens the integrity and confidentiality of the
`downloaded data.” Id. at 1:27−32. As an alternative, Riggins discloses that
`the roaming user “can carry a copy of all potentially needed information,”
`but that maintaining a “true copy” is a cumbersome process. Id. at 1:34−37.
`Thus, Riggins discloses using a “browser for receiving applet information
`corresponding to a service performed by one of the service engines from the
`server, and an applet engine for using the applet information to control user
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`interfaces I/O of the service.” Id. at 1:49−53. Figure 1, reproduced below,
`illustrates a system for roaming-user access.
`
`
`
`Figure 1 illustrates roaming-user network access system 100.
`According to Figure 1, master server 130 and remote client 150
`communicate via Internet 140. Id. at 2:47−51. Local client 110
`communicates with the master server via local network 120. Id. at 2:51−53.
`The remote client includes an “applet-based web browser,” which is
`configured for communicating with the Internet and for reading and
`executing applets. Id. at 2:64−67.
`
`20
`
`

`

`IPR2018-00361
`Patent 6,216,158 B1
`
`
`Figure 1 also illustrates that the remote client inputs a predetermined
`Uniform Resource Locator (URL) address (shown in line (1) “URL”) for
`opening the web page managed by the master server. Id. at 3:49−52. Web
`page engine 133 of the master server sends (shown in line (2)) at least one of
`the applets (downloadable applets 136) and web browser configuration data
`137 to the web browser of the remote client. Id. at 3:52−54. The user then
`selects a particular service corresponding to one of the applets to access an
`e-mail service, for example. Id. at 3:55−58. Selection of a service causes an
`applet engine of remote client 150 “to connect to or execute the
`applet . . . corresponding to the selected service . . . .” Id. at 6:58−60. The
`web browser forwards to the master server a service request (shown in line
`(3)) for initiating execution of the selected service. Id. at 3:59−61. The
`master server determines the location of the service and sends the service
`request (shown in line (4)) to the appropriate address (to a service engine in
`either the local computer or a depicted server). Id. at 3:61−67. The
`appropriate service engine executes the service and generates responsive
`data, which is sent (shown in lines (5) and (6)) to the master server and to
`the remote client. Id. at 4:1−8.
`
`Analysis of Ground Based on Jini-QS
`D.
`Based on the full record and the arguments presented, we determine
`that Petitioner has not proven by a preponderance of the evidence that the
`challenged claims of the ’158 patent would have been obvious under this
`ground because Petitioner failed to demonstrate that Jini-QS teaches the
`limitation of “accessing a description of the service from a directory of
`21
`
`

`

`IPR2018-00361
`Patent 6,216,158 B1
`
`services, the description of the service including at least a reference to
`program code for controlling the service.” The Petition points to the Lookup
`Service as the directory of services and states that “the Jini platform includes
`a Lookup Service that keeps track of which services are available on the
`network—i.e., ‘Lookup is the equivalent of a network bulletin board for all
`available services.’” Pet. 27 (citing Ex. 1005, 29 (left column)). Petitioner
`points to the Jini-QS “How it Works” portion of the article that states: “The
`user requests services that are available, and icons appear on his screen.” Id.
`Petitioner argues that this disclosure teaches that a PalmPilot accesses
`“descriptions/icons of available services contained in a Lookup Service on
`the Jini platform, where the Lookup Service includes service descriptions
`and pointers (references) to downloadable proxy code for controlling a
`service.” Id. at 28 (citing Ex. 1003). The cited Houh Declaration does not
`explain these contentions further except to add that descriptive icons
`corresponding to the services are equivalent to a descriptive name or
`illustration of the service and that Jini-QS teaches the accessing limitation
`because “a PalmPilot user access[es] descriptions/icons of available services
`contained in a Lookup Service on the Jini platform, where the Lookup
`Service includes service descriptions and pointers.” Ex. 1003, 56−57.
`Patent Owner contends that Jini-QS is vague in its disclosure of the
`“Lookup” feature and that Petitioner’s arguments and evidence are
`insufficient. PO Resp. 15−17. For instance, Patent Owner argues that Jini-
`QS merely states, without any further explanation, that the user requests
`services that are available and icons appear on the screen. Id. at 16. Patent
`Owner also argues that the “Lookup” feature does not teach a “description of
`22
`
`

`

`IPR2018-00361
`Patent 6,216,158 B1
`
`the service.” Id. We agree with Patent Owner that Jini-QS is too vague in
`its description of the PalmPilot operation and the “Lookup” feature to assess
`whether Petitioner is correct that Jini-QS teaches a “description of the
`service,” as we have construed the term.
`As stated in our analysis of the term “description of the service,” the
`claim recites two requirements for the limitation: (1) the information that
`describes the service is accessed from the directory of services; and (2) that
`information must include at least a reference to program code for controlling
`the service. As stated above, the Petition and Dr. Houh identify “icons” as
`the “description of the service.” Jini-QS “icons,” however, fail to meet
`either requirement of the “description of the service.” First, Petitioner relies
`on the Lookup Service as the “directory of services.” Pet. 27; Ex. 1003, 55
`(“[T]he Lookup is a ‘network bulletin board’ or directory of available
`services.”). Thus, to meet the recited “description of the service,” we look
`for the information to be accessed from the Lookup Service. Jini-QS,
`however, is silent as to whether the PalmPilot device accesses a “description
`of a service” from the Lookup Service. Indeed, Jini-QS states that the
`Lookup is a “network bulletin board” for the services that are “available,”
`but does not explain how being a “bulletin board” for available services in
`any way teaches that the information describing any of those available
`services is accessed by the PalmPilot device. Second, even though Jini-QS
`states that “[t]he user requests services that are available,” Jini-QS does not
`provide any detail as to how that user requests the

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