Trials@uspto.gov Paper 44
`571-272-7822 Entered: October 15, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`
`Petitioner,
`
`v.
`
`IPA TECHNOLOGIES INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00810
`Patent 6,851,115 B1
`_____________
`
`
`
`
`Before LYNNE E. PETTIGREW, MINN CHUNG, and KEVIN C. TROCK,
`Administrative Patent Judges.
`
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`571-272-7822 Entered: October 15, 2020
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`
`Petitioner,
`
`v.
`
`IPA TECHNOLOGIES INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00810
`Patent 6,851,115 B1
`_____________
`
`
`
`
`Before LYNNE E. PETTIGREW, MINN CHUNG, and KEVIN C. TROCK,
`Administrative Patent Judges.
`
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`IPR2019-00810
`Patent 6,851,115 B1
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`
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`I. INTRODUCTION
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`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
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`Microsoft Corporation (“Petitioner”) challenges the patentability of claims 1,
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`4–10, 15, 16, 29–32, 38, and 39 (the “challenged claims”) of U.S. Patent
`
`No. 6,851,115 B1 (Ex. 1001, “the ’115 patent”), owned by IPA
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`Technologies Inc. (“Patent Owner”). This Final Written Decision is entered
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`pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
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`discussed below, we determine Petitioner has shown by a preponderance of
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`the evidence that claims 1, 4–7, 15, and 16 of the ’115 patent are
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`unpatentable, but has not proven by a preponderance of the evidence that
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`claims 8–10, 29–32, 38, and 39 of the ’115 patent are unpatentable.
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`II. BACKGROUND
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`A. Procedural History
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`On March 19, 2019, Petitioner filed a Petition (Paper 1, “Pet.”)
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`requesting an inter partes review of the challenged claims of the ’115 patent.
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`Patent Owner filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
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`On October 16, 2019, applying the standard set forth in 35 U.S.C.
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`§ 314(a), which requires demonstration of a reasonable likelihood that
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`Petitioner would prevail with respect to at least one challenged claim, we
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`instituted an inter partes review of the challenged claims. Paper 12
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`(“Inst. Dec.”). In the Institution Decision, we determined Petitioner
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`demonstrated a reasonable likelihood that it would prevail as to at least one
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`challenged claim, and we instituted trial on all claims and all grounds in the
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`Petition. Inst. Dec. 83–84.
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`2
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`IPR2019-00810
`Patent 6,851,115 B1
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`After institution, pursuant to our order consolidating briefing
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`(Paper 19), the parties filed consolidated papers in in IPR2019-00810,
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`IPR2019-00811, IPR2019-00812, IPR2019-00813, and IPR2019-00814.
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`Patent Owner filed a Patent Owner Response (Paper 22, “PO Resp.”),
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`Petitioner filed a Reply to Patent Owner Response (Paper 30, “Pet. Reply”),
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`and Patent Owner filed a Corrected Sur-reply (Paper 40, “PO Sur-reply”).
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`In addition, in IPR2019-00810, Patent Owner moved to exclude (Paper 35) a
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`portion of Exhibit 1129, as well as related testimony relied on by Petitioner;
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`Petitioner opposed (Paper 36); and Patent Owner replied (Paper 38).
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`A consolidated oral hearing in IPR2019-00810, IPR2019-00811,
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`IPR2019-00812, IPR2019-00813, IPR2019-00814, IPR2019-00835,
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`IPR2019-00836, and IPR2019-00837 was held on July 27, 2020 and July 28,
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`2020, and a copy of the hearing transcript has been entered into the record.
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`Paper 43 (“Tr.”).
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`B. Related Matters
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`According to the parties, the ’115 patent is the subject of the
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`following district court litigation: IPA Techs. Inc. v. Google LLC, No. 1:18-
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`cv-00318 (D. Del.); IPA Techs. Inc. v. Microsoft Corp., No. 1:18-cv-00001
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`(D. Del.); and IPA Techs. Inc. v. Amazon.com, Inc., No. 1:16-cv-01266
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`(D. Del.). Pet. 2–3; Paper 3, 2. The ’115 patent is also the subject of
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`co-pending petitions for inter partes review filed by Petitioner in Cases
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`IPR2019-00811, IPR2019-00812, IPR2019-00813, and IPR2019-00814.
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`Paper 3, 2.
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`IPR2019-00810
`Patent 6,851,115 B1
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`C. The ’115 Patent
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`The ’115 patent describes “software-based architectures for
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`communication and cooperation among distributed electronic agents.”
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`Ex. 1001, 1:27–29. Figure 4 of the ’115 patent is reproduced below.
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`Figure 4 depicts the structure of an exemplary distributed agent system of
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`the ’115 patent. Id. at 6:25–32. As shown in Figure 4, system 400 includes
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`facilitator agent 402, user interface agents 408, application agents 404, and
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`meta-agents 406. Id. at 6:25–28. The ’115 patent describes that system 400
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`is organized “as a community of peers by their common relationship” to
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`facilitator agent 402 (id. at 6:28–30), which is “a specialized server agent
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`4
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`IPR2019-00810
`Patent 6,851,115 B1
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`that is responsible for coordinating agent communications and cooperative
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`problem-solving” (id. at 6:32–35).
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`According to the ’115 patent, cooperation among agents is structured
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`around a three-part approach as follows: (1) providers of services register
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`their capabilities specifications with a facilitator; (2) requesters of services
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`construct goals and relay them to the facilitator; and (3) the facilitator
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`coordinates the efforts of the appropriate service providers in satisfying
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`these goals. Id. at 10:42–47. The ’115 patent describes that cooperation
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`among agents is achieved via messages expressed in a common language,
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`called the Interagent Communication Language (“ICL”). Id. at 10:40–48.
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`Referencing Figure 3 (not reproduced herein) and Figure 4, the ’115
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`patent describes the operation of a distributed agent system in a preferred
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`embodiment. Id. at 7:13–39. The ’115 patent describes that, when invoked,
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`a client agent makes a connection to a facilitator, e.g., facilitator agent 402,
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`and registers with the facilitator a specification of the capabilities and
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`services it can provide. Id. at 7:15–21. For example, a natural language
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`agent may register the characteristics of its available natural language
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`vocabulary. Id. at 7:21–23. When facilitator agent 402 receives a service
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`request and determines that registered services 416 of one of its client agents
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`will help satisfy a goal of the request, the facilitator sends that client a
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`request expressed in ICL 418. Id. at 7:25–29. The client agent parses this
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`request, processes it, and returns answers or status reports to the facilitator.
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`Id. at 7:30–32.
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`Referencing Figures 5 and 6 (not reproduced herein), the ’115 patent
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`describes an exemplary embodiment where user interface agent 408 runs on
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`5
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`IPR2019-00810
`Patent 6,851,115 B1
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`a user’s laptop, accepting user input, sending requests to facilitator agent 402
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`for delegation to appropriate agents, and displaying the results of the
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`distributed computation. Id. at 7:53–63. As illustration, the ’115 patent
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`describes that, when the question “What is my schedule?” is entered on user
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`interface (UI) 408, UI 408 sends the request to facilitator agent 402, which
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`in turn asks natural language (NL) agent 426 to translate the query into ICL.
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`Id. at 8:4–8. The translated ICL expression is then routed by facilitator
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`agent 402 to appropriate agents, e.g., calendar agent 434, to execute the
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`request. Id. at 8:13–15. Finally, results are sent back to UI agent 408 for
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`display. Id. at 8:15–16.
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`D. Illustrative Claim
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`Of the challenged claims, claims 1 and 29 are independent. Claim 1 is
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`illustrative of the challenged claims and is reproduced below.
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`1. A computer-implemented method for communication and
`cooperative task completion among a plurality of distributed
`electronic agents, comprising the acts of:
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`registering a description of each active client agent’s functional
`capabilities
`as
`corresponding
`registered
`functional
`capabilities, using an expandable, platform-independent,
`inter-agent language, wherein the inter-agent language
`includes:
`
`a layer of conversational protocol defined by event types and
`parameter lists associated with one or more of the events,
`wherein the parameter lists further refine the one or more
`events;
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`a content layer comprising one or more of goals, triggers and
`data elements associated with the events;
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`receiving a request for service as a base goal in the inter-agent
`language, in the form of an arbitrarily complex goal
`expression; and
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`dynamically interpreting the arbitrarily complex goal expression,
`said act of interpreting further comprising:
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`generating one or more sub-goals expressed in the inter-agent
`language;
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`constructing a goal satisfaction plan wherein the goal satisfaction
`plan includes:
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`a suitable delegation of sub-goal requests to best complete the
`requested service request—by using reasoning that includes
`one or more of domain-independent coordination strategies,
`domain-specific
`reasoning,
`and
`application-specific
`reasoning comprising rules and learning algorithms; and
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`dispatching each of the sub-goals to a selected client agent for
`performance, based on a match between the sub-goal being
`dispatched and the registered functional capabilities of the
`selected client agent.
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`Ex. 1001, 29:10–44.
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`E. Applied References and Declarations
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`Petitioner relies upon the following references in its challenges to
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`patentability.
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`Reference and Relevant Date(s)
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`Designation Exhibit No.
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`U.S. Patent No. 6,484,155 B1 (filed July 21,
`1999; provisional filed July 21, 1998)
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`Kiss1
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`Ex. 1005
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`1 For clarity and ease of reference, we only list the first named inventor.
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`Reference and Relevant Date(s)
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`Designation Exhibit No.
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`FIPA 97 Version 1.0 Specification (Oct. 10,
`1997)2
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`FIPA97
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`Exs. 1006–
`10123
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`Adam Cheyer, MVIEWS: Multimodal Tools
`for the Video Analyst, PROCEEDINGS OF 1998
`INTERNATIONAL CONFERENCE ON INTELLIGENT
`USER INTERFACES 55 (1998)4
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`Cheyer
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`Ex. 1015
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`Petitioner also cites the Declaration of Dr. Henry Lieberman, HDR
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`(Ex. 1003, “Lieberman Declaration” or “Lieberman Decl.”) in support of its
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`unpatentability contentions. In addition, Petitioner relies on the Declaration
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`of Dr. Timothy Finin, Ph.D. (Ex. 1049, “Finin Declaration” or “Finin
`
`
`2 Petitioner asserts that FIPA97 was accessible to the public by October
`1997 and submits various evidence in support of its contention. See Pet. 23–
`25. Patent Owner contends that Petitioner has not shown sufficiently that
`FIPA97 was accessible to the public before the priority date of the ’115
`patent. PO Resp. 45–65. As discussed below in Section III.D., we
`determine that Petitioner has shown by a preponderance of the evidence that
`FIPA97 was accessible to the public by October 1997.
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`3 Petitioner asserts that FIPA97 was made publicly available as a single
`document. Pet. 23 (citing Ex. 1055). Petitioner explains that, due to its size,
`the reference was broken up into 7 parts and filed as Exhibits 1006 through
`1012. Id. Patent Owner does not dispute that FIPA97 is one reference for
`purposes of §§ 102 and 103. See PO Resp. 117–120. As discussed below in
`Section III.C.2., we agree with Petitioner that FIPA97 constitutes a single
`prior art reference, and we treat it as such for purposes of our unpatentability
`analysis.
`
`4 Petitioner contends that Cheyer was published in 1998. Pet. 27. Patent
`Owner does not dispute the publication date of Cheyer. See PO Resp. 44–
`45. For the reasons explained below, we determine that Petitioner has
`shown sufficiently that Cheyer was accessible to the public in 1998.
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`IPR2019-00810
`Patent 6,851,115 B1
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`Decl.”). Patent Owner relies on the Declaration of Nenad Medvidovic,
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`Ph.D. (Ex. 2032, “Medvidovic Declaration” or “Medvidovic Decl.”) and the
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`Declaration of Philip R. Cohen, Ph.D. (Ex. 2033, “Cohen Declaration” or
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`“Cohen Decl.”) in support of its Patent Owner Response.
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`F. Instituted Grounds of Unpatentability
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`Petitioner asserts the following grounds of unpatentability:
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`Claims Challenged
`
`35 U.S.C. §
`
`Basis
`
`1, 4–10, 15, 29–32, 38
`
`§ 103(a)5
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`Kiss and FIPA97
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`7, 16, 39
`
`§ 103(a)
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`Kiss, FIPA97, and Cheyer
`
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`Pet. 3–4. We instituted an inter partes review on all challenged claims and
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`all grounds set forth in the Petition. Inst. Dec. 83–84.
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`III. ANALYSIS
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`A. Level of Ordinary Skill in the Art
`
`We begin our analysis by addressing the level of ordinary skill in the
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`art. Petitioner’s declarant, Dr. Lieberman, opines that a person of ordinary
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`skill in the art at the time of the invention of the ’115 patent would have
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`been someone familiar with the principles and conventions of computer
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`science and computer networking, and also with multi-agent systems and
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`inter-agent communication languages as documented in agent-centered
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`5 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`’115 patent has an effective filing date prior to the effective date of the
`applicable AIA amendments, we refer to the pre-AIA versions of §§ 102 and
`103.
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`literature by 1999. Ex. 1003 ¶ 34; see Pet. 4–5 (citing Ex. 1003 ¶ 34).
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`Dr. Lieberman also testifies that a person of ordinary skill in the art may
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`have been a graduate student in mathematics, engineering, or computer
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`science, and may have had an advanced degree in one of these disciplines,
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`and would also have had at least two years of experience working in the
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`field of computer science, or a related field, and may have worked in
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`academia, either as a professor or a graduate student, for a technology
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`company, or for a government. Id.
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`Citing the testimony of its declarant, Dr. Medvidovic, Patent Owner
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`asserts that a person of ordinary skill in the art at the time of the ’115
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`patent’s filing date would have had “a Bachelor’s degree in Computer
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`Science or equivalent field and at least two years of work experience in
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`design and development of distributed systems, software specification
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`languages, or a related area.” PO Resp. 23 (citing Ex. 2032 ¶ 37). Patent
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`Owner criticizes Petitioner’s articulation of the level of ordinary skill in the
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`art as being “vague and uncertain” due to Petitioner’s and Dr. Lieberman’s
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`use of the word “may” in their proposed definition. Id. at 23–24. Patent
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`Owner contends that Petitioner’s proposed definition “leav[es] every aspect
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`of the level of skill ‘fluid,’” which is “particularly problematic here, where
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`Petitioner claims that it would have been obvious to create an agent system
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`that is very complex and advanced in its facilitation, goal processing, and
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`inter-agent communication capacities.” Id. at 24 (citing Ex. 2032 ¶ 40).
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`Petitioner responds that its proposal “simply (and realistically)
`
`expresses alternatives—i.e., that a Skilled Artisan would have been at least a
`
`graduate student in several relevant fields (e.g, ‘mathematics, engineering, or
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`computer science’), and would have had at least two years of work
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`experience in those fields.” Pet. Reply 13–14 (citing Pet. 4–5). Petitioner
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`also argues that Patent Owner does not articulate how any differences
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`between the parties’ proposals that would alter or even affect the outcome of
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`this proceeding. Id. at 14.
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`Patent Owner asserts that it has “identified how the difference
`
`between the proposals would affect this proceeding” because Patent Owner
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`has pointed out that “it is Petitioner’s burden under the law to address each
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`Graham factor and Petitioner has failed to proffer a coherent level of
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`ordinary skill in the art, Petitioner’s obviousness assertion fails for that
`
`reason alone.” PO Sur-reply 15 (citing PO Resp. 24).
`
`But Patent Owner does not identify any “meaningful differences”
`
`between the parties’ proposed definitions or how “the outcome of [this
`
`proceeding] would have been different” if we adopted Patent Owner’s
`
`proposed definition, as opposed Petitioner’s proposal. See ESIP Series 2,
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`LLC v. Puzhen Life USA, LLC, 958 F.3d 1378, 1385 (Fed. Cir. 2020) (citing
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`Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d
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`1360, 1371–72 (Fed. Cir. 2016)). For example, Patent Owner does not argue
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`the challenged claims are not unpatentable under Patent Owner’s proposed
`
`definition of the level of ordinary skill in the art, nor does it identify any
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`claim limitation that would have been taught by the asserted prior art under
`
`Petitioner’s proposed definition, but not under Patent Owner’s proposal. See
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`PO Resp. 23–24; PO Sur-reply 14–16.
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`In our view, the parties’ proposals are not materially different despite
`
`the differences in wording between them (e.g., the education level of a
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`Bachelor’s degree in Computer Science or equivalent field under Patent
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`Owner’s proposal, as opposed to a graduate student’s level of education with
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`or without a Bachelor’s degree under Petitioner’s proposed definition). See
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`Pet. 4–5; Pet. Reply 13–14; PO Resp. 23. For purposes of this Final Written
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`Decision, we find no meaningful differences between the parties’ respective
`
`definitions that would materially alter the outcome of this Decision. These
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`proposals are similar for all purposes relevant to this Final Written Decision,
`
`and both are consistent with the level of ordinary skill in the art reflected in
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`the disclosure of the ’115 patent and the prior art of record. See Okajima v.
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`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d
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`1573, 1579 (Fed. Cir. 1995).
`
`Nonetheless, for this Final Written Decision, we adopt Patent Owner’s
`
`definition of a person of ordinary skill in the art at the time of the claimed
`
`invention. That is, a person of ordinary skill in the art at the time of the
`
`claimed invention would have had “a Bachelor’s degree in Computer
`
`Science or equivalent field and at least two years of work experience in
`
`design and development of distributed systems, software specification
`
`languages, or a related area.” Our analysis and conclusions in this Final
`
`Written Decision would be the same regardless of whether Petitioner’s or
`
`Patent Owner’s definition of the level of ordinary skill in the art is adopted.
`
`B. Claim Construction
`
`In an inter partes review, we apply the same claim construction
`
`standard that would be used in a civil action under 35 U.S.C. § 282(b),
`
`following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303
`
`(Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). In applying such
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`standard, claim terms are generally given their ordinary and customary
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`meaning, as would be understood by a person of ordinary skill in the art, at
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`the time of the invention and in the context of the entire patent disclosure.
`
`Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed
`
`claim limitation, we look principally to the intrinsic evidence of record,
`
`examining the claim language itself, the written description, and the
`
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
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`415 F.3d at 1312–17).
`
`In our Decision on Institution, we preliminarily interpreted five claim
`
`terms as follows.
`
`Term
`
`Construction
`
`“event”
`
`“a message or goal communicated between agents”
`
`“event type”
`
`“a type of an event”
`
`“goal”
`
`“a request for service”
`
`“arbitrarily complex
`goal expression”
`
`“a goal expressed in a language or syntax that
`allows an expression, when appropriate or when
`desired, that expresses multiple sub-goals and can
`potentially include more than one type of logical
`connector (e.g., AND, OR, NOT), and/or more
`than one level of logical nesting (e.g., use of
`parentheses), or the substantive equivalent,
`although not every goal is itself necessarily
`complex”
`
`“compound goal”
`
`“a single goal expression that specifies multiple
`sub-goals to be performed”
`
`
`Dec. on Inst. 29–38.
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`The parties do not dispute the constructions of these five terms in their
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`Patent Owner Response or Petitioner Reply. See PO Resp. 25–27;
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`Pet. Reply 1. Upon considering the complete record, we discern no reason
`
`to deviate from our preliminary constructions and, therefore, adopt the
`
`constructions of the claim terms “event,” “event type,” “goal,” “arbitrarily
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`complex goal expression,” and “compound goal” as set forth above for this
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`Final Written Decision.
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`In the Petition, Petitioner discusses constructions for six additional
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`claim terms, including “goal satisfaction plan,” “layer of conversational
`
`protocol,” “content layer,” “trigger,” “symbolic name,” and “parameter lists
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`further refine the one or more events.” Pet. 8–16. In addition, in the
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`Petitioner Reply, Petitioner discusses construction of the claim term
`
`“process characteristics.” Pet. Reply 12–13. Patent Owner disputes
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`constructions for two terms, “goal satisfaction plan” and “process
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`characteristics.” See PO Resp. 24–38; PO Sur-reply 13–14. We discuss
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`constructions for each of the two disputed terms in turn below.
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`Patent Owner does not discuss Petitioner’s proposed construction for
`
`the claim term “parameter lists further refine the one or more events” or
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`propose its own construction for the term. See PO Resp. 24–38.
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`Nonetheless, Patent Owner discusses meaning of this term in the context of
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`Patent Owner’s arguments that FIAP97 does not teach an “expandable . . .
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`inter-agent language” and “parameter lists” that “further refine the one or
`
`more events,” as recited in claim 1. See id. at 97–106. Although Patent
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`Owner’s arguments raise an issue of claim construction, Patent Owner’s
`
`arguments are closely related to and interspersed with Patent Owner’s
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`arguments that FIPA97 does not teach an “inter-agent language” recited in
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`claim 1. Thus, for efficiency and completeness, we address this issue in the
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`context of the patentability discussion below.
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`No other claim terms, beyond those terms noted above, need to be
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`construed expressly for purposes of this Final Written Decision. See Vivid
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`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
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`(holding that only terms that are in controversy need to be construed, and
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`“only to the extent necessary to resolve the controversy”); see also Nidec
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`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
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`(Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes
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`review).
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`1. “goal satisfaction plan”
`
`The claim term “goal satisfaction plan” is recited in all but one of
`
`independent claims of the ’115 patent—claims 1, 29, 61, 71, and 86, the one
`
`exception being claim 48. See Ex. 1001, 29:33–40 (claim 1), 32:9–21
`
`(claim 29), 35:24–29 (claim 61), 36:17–23 (claim 71), 37:22–38:5
`
`(claim 86). “[W]e presume, unless otherwise compelled, that the same claim
`
`term in the same patent or related patents carries the same construed
`
`meaning.” Paice LLC v. Ford Motor Co., 881 F.3d 894, 904 (Fed. Cir.
`
`2018) (quoting Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334
`
`(Fed. Cir. 2003). The parties do not contend that the term “goal satisfaction
`
`plan” has different meanings in different claims of the ’115 patent. See Pet.
`
`10; PO Resp. 27–38; Pet. Reply 1–12; PO Sur-reply 2–13.
`
`Petitioner contends that a “goal satisfaction plan” is a “procedure for
`
`sending one or more requests for service to one or more agents in order to
`
`
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`15
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`IPR2019-00810
`Patent 6,851,115 B1
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`satisfy a goal.” Pet. 10. Patent Owner disagrees and asserts that the claim
`
`term “goal satisfaction plan” should be construed to mean “a plan for the
`
`satisfaction of a complex goal expression in an optimal or near-optimal
`
`manner that is consistent with any advice parameters or constraints.” PO
`
`Resp. 28.
`
`a. Claim Language
`
`We begin our claim construction analysis by considering the language
`
`of the claims themselves. Phillips, 415 F.3d at 1314. Addressing the claim
`
`language of the disputed term, we note that the claim language “a goal
`
`satisfaction plan” indicates that the term’s plain meaning is “a plan for
`
`satisfying a goal.”
`
`In the challenged independent claims 1 and 29, the term “goal
`
`satisfaction plan” is further limited (in different ways) by specific limitations
`
`recited in the claims. For example, claim 1 recites:
`
`constructing a goal satisfaction plan wherein
`satisfaction plan includes:
`
`the goal
`
`a suitable delegation of sub-goal requests to best complete the
`requested service request—by using reasoning that includes
`one or more of domain-independent coordination strategies,
`domain-specific
`reasoning,
`and
`application-specific
`reasoning comprising rules and learning algorithms;
`
`Ex. 1001, 23:33–40 (emphases added). In contrast, claim 29 recites:
`
`constructing a base goal satisfaction plan including the sub-acts
`of:
`
`determining whether the request service is available,
`
`determining sub-goals required in completing the base goal
`by using reasoning that includes one or more of domain-
`independent coordination strategies, domain-specific
`
`
`
`16
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`IPR2019-00810
`Patent 6,851,115 B1
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`reasoning, and application-specific reasoning comprising
`rules and learning algorithms,
`
`selecting service-providing electronic agents from the agent
`registry suitable for performing the determined sub-goals,
`and
`
`ordering a delegation of sub-goal requests complete the
`requested service;
`
`Id. at 32:9–21 (emphasis added).
`
`As shown above, the “optimal or near-optimal”6 limiting feature
`
`argued by Patent Owner is recited in claim 1 (“a suitable delegation of
`
`sub-goal requests to best complete the requested service request”), but not in
`
`claim 29. This shows that the patentee knew how to restrict the “goal
`
`satisfaction plan” to “best complete the requested service request,” i.e.,
`
`satisfy a goal “in an optimal or near-optimal manner.” If the patentee had
`
`intended to similarly restrict the “goal satisfaction plan” in claim 29, it could
`
`have done so using the language of claim 1, but did not. See Intellectual
`
`Ventures I LLC v. T-Mobile USA, Inc., 902 F.3d 1372, 1379 (Fed. Cir. 2018)
`
`(citing Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1359 (Fed. Cir.
`
`2016)).
`
`Thus, Patent Owner’s proposed construction that generally requires a
`
`“goal satisfaction plan” to satisfy a goal “in an optimal or near-optimal
`
`
`6 Patent Owner asserts that the term “optimal” and “near optimal” has a
`well-established meaning in the context of computer engineering, citing a
`technical dictionary, which defines optimization as “[t]he process of finding
`the best solution to some problem, where ‘best’ accords to prestated
`criteria.” PO Sur-reply 6 (emphasis added) (citing Ex. 2078, 3).
`
`
`
`17
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`IPR2019-00810
`Patent 6,851,115 B1
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`manner” would have the effect of obfuscating the material differences in the
`
`claim language of claim 1 and claim 29 discussed above.
`
`In addition, for claim 1, Patent Owner’s proposed construction would
`
`render the limitation “suitable delegation of sub-goal requests to best
`
`complete the requested service request” recited in claim 1 superfluous. Such
`
`a construction is presumed improper. See Digital-Vending Servs. Int’l, LLC
`
`v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1274–75 (Fed. Cir. 2012) (rejecting
`
`the district court’s construction narrowing a term by a superfluous limitation
`
`when the claims explicitly recited the narrowing limitation, and discussing
`
`the “well-established rule that claims are interpreted with an eye toward
`
`giving effect to all terms in the claim”) (quoting Bicon, Inc. v. Straumann
`
`Co., 441 F.3d 945, 950 (Fed. Cir. 2006)) (internal quotation marks omitted);
`
`LSI Indus., Inc. v. ImagePoint, Inc., 279 F. App’x 964, 972 (Fed. Cir. 2008)
`
`(nonprecedential) (rejecting the district court’s construction of “display
`
`device” as necessarily including the superfluous limitation of “internal
`
`illumination” because other claim terms specifically recited an “illuminated
`
`display device”); but cf. ERBE Elektromedizin GmbH v. Canady Tech. LLC,
`
`629 F.3d 1278, 1286 (Fed. Cir. 2010) (“no canon of [claim] construction is
`
`absolute in its application”) (citation omitted).
`
`Considering next the Patent Owner-argued limiting feature of
`
`satisfying a goal “consistent with any advice parameters or constraints,” this
`
`feature is recited in claim 29, but not in claim 1. Claim 29 recites “the act of
`
`interpreting including the sub-acts of: determining any task completion
`
`advice provided by the base goal, and determining any task completion
`
`constraints provided by the base goal” (Ex. 1001, 32:4–8 (emphases
`
`
`
`18
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`added)), whereas claim 1 does not recite “advice” or “constraint” (see id. at
`
`29:10–44). Thus, Patent Owner’s proposed construction is disfavored
`
`because it would blur the material differences in the claim language of
`
`claim 1 and claim 29 discussed above.
`
`Finally, Patent Owner’s proposed construction replaces “goal” with
`
`“complex goal expression.” Again, this feature is recited in claim 1, but not
`
`in claim 29. Claim 1 recites “receiving a request for service as a base goal in
`
`the inter-agent language, in the form of an arbitrarily complex goal
`
`expression; and dynamically interpreting the arbitrarily complex goal
`
`expression” (Ex. 1001, 29:25–30), whereas claim 29 recites “interpreting a
`
`service request in order to determine a base goal that may be a compound,
`
`arbitrarily complex base goal” (id. at 31:59–61) (emphasis added). Because
`
`of the permissive language “may be” used in claim 29, a “goal” is not
`
`necessarily required to be in the form of an arbitrarily complex goal
`
`expression in claim 29. Again, Patent Owner’s proposed construction is
`
`disfavored because it would blur the material differences in the claim
`
`language of claim 1 and claim 29 discussed above.
`
`Thus, at least based on the claim language, it is not appropriate to
`
`limit “goal satisfaction plan” as Patent Owner contends. As discussed
`
`above, the meaning and the scope of “goal satisfaction plan” is clear on the
`
`face of each claim because claims 1 and 29 each recite specifically what a
`
`“goal satisfaction plan” includes or comprises in different claims.
`
`Therefore, absent compelling evidence to the contrary, it is neither necessary
`
`nor appropriate to limit the meaning of the term “goal satisfaction plan”
`
`
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`19
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`beyond the plain meaning indicated by the claim language—i.e., “a plan for
`
`satisfying a goal.”
`
`b. Written Description
`
`Turning to the Specification, Patent Owner cites the following
`
`statement in the “Summary of the Invention” section:
`
`is achieved through an architecture
`[e]xtreme flexibility
`organized around the declaration of capabilities by service-
`providing agents, the construction of arbitrarily complex goals
`by users and service-requesting agents, and the role of
`facilitators in delegating and coordinating the satisfaction of
`these goals, subject to advice and constraints that may
`accompany them.
`
`PO Resp. 31 (quoting Ex. 1001, 5:3–9). The very first sentence of the
`
`paragraph cited by Patent Owner states, however, “[a] first embodiment of
`
`the present invention discloses a highly flexible, Software-based architecture
`
`for constructing distributed systems.” Ex. 1001, 4:58–60 (emphasis added).
`
`Indeed, all of the portions of the Specification cited by Patent Owner,
`
`including the passage reproduced above, describe various embodiments of
`
`the ’115 patent. See PO Resp. 30–33 (citing Ex. 1001, 5:3–9, 5:48–49,
`
`15:37–39, 15:66–16:1, 16:11–21, 16:38–46, 18:35–48, 28:47–54, Fig. 11).
`
`In general, “a particular embodiment appearing in the written
`
`description may not be read into a claim when the claim language is broader
`
`than the embodiment.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d
`
`870, 875 (Fed. Cir. 2004) (citation omitted). As discussed above, the
`
`challenged independent claims 1 and 29 do not recite all of the limiting
`
`features required by Patent Owner’s proposed co
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