Trials@uspto.gov
`571.272.7822
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`
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` Paper No. 44
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` 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 IPR2019-00813
`Patent 6,851,115 B1
`____________
`
`
`Before LYNNE E. PETTIGREW, MINN CHUNG, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Exclude
`35 U.S.C. § 318(a); 37 C.F.R. § 42.64
`
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
` Paper No. 44
`
` Entered: October 15, 2020
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`IPA TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00813
`Patent 6,851,115 B1
`____________
`
`
`Before LYNNE E. PETTIGREW, MINN CHUNG, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Exclude
`35 U.S.C. § 318(a); 37 C.F.R. § 42.64
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00813
`Patent 6,851,115 B1
`
` INTRODUCTION
`
`We have authority to hear this inter partes review under 35 U.S.C.
`
`§ 6. This Final Written Decision issues pursuant to 35 U.S.C. § 318(a) and
`
`37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
`
`Microsoft Corporation (“Petitioner”) has shown, by a preponderance of the
`
`evidence, that claims 1–3, 11, and 48–60 (the “challenged claims”) of U.S.
`
`Patent No. 6,851,115 B1 (Ex. 1001, “the ’115 patent”) are unpatentable. See
`
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`
`A. Procedural History
`
`Petitioner filed a request for inter partes review of the challenged
`
`claims of the ’115 patent. Paper 1 (“Pet.” or “Petition”). IPA Technologies,
`
`Inc. (“Patent Owner”) filed a Preliminary Response, Paper 6 (“Prelim.
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`Resp.”), contending the Petition should be denied as to all challenged
`
`claims.
`
`On October 17, 2019, the Board entered a decision instituting an inter
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`partes review of all claims and all grounds presented in the Petition. Paper
`
`12 (“Inst. Dec.”).
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`After institution, Patent Owner filed a Response to the Petition. Paper
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`22 (“Resp.”). Petitioner thereafter filed a Reply to Patent Owner’s
`
`Response. Paper 30 (“Reply”). Patent Owner filed a corrected Sur-reply to
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`Petitioner’s Reply. Paper 40 (“Sur-reply”). An oral hearing was held on
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`July 27 and 28, 2020. A transcript of the hearing is included in the record.
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`Paper 43 (“Tr.”).
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`B. Related Proceedings
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`Petitioner states that the ’115 patent is the subject of the following
`
`actions: IPA Technologies Inc. v. Google LLC, 1-18-cv-00318 (D. Del.) filed
`
`2
`
`
`
`IPR2019-00813
`Patent 6,851,115 B1
`
`February 26, 2018; IPA Technologies Inc. v. Microsoft Corporation, 1-18-
`
`cv-00001 (D. Del.) filed January 2, 2018; and IPA Technologies Inc. v.
`
`Amazon.com, Inc. et al., 1-16-cv-01266 (D. Del.) filed December 19, 2016.
`
`Pet. 3.
`
`Petitioner lists four other petitions (IPR2019-00810, IPR2019-00811,
`
`IPR2019-00812, IPR2019-00814) filed by Petitioner against the ’115 patent.
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`Id. at 2–3.
`
`Petitioner also lists IPR petitions it has filed against other family
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`members of the ’115 patent (IPR2019-00835, IPR2019-00836, and
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`IPR2019-00837 (U.S. Patent No. 7,069,560 B1); IPR2019-00838, IPR2019-
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`00839, and IPR2019-00840 (U.S. Patent No. 7,036,128 B1)). Id. at 2–3.
`
`Petitioner also identifies numerous IPR petitions filed by Google
`
`against the ’115 patent and family members of the ’115 patent (IPR2019-
`
`00728, IPR2019-00729, IPR2019-00730, IPR2019-00731, IPR2019-00732,
`
`IPR2019-00733, IPR2019-00734, IPR2019-00735, IPR2019-00736). Id. at
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`2.
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`C. The ’115 Patent (Ex. 1001)
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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, 1:28–29. The ’115 patent describes an architecture that supports
`
`cooperative task completion by flexible, dynamic configurations of
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`autonomous electronic agents. Id. at 4:60–62. Service-providing agents
`
`declare their capabilities, and facilitator’s broker communication and
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`cooperation between the agents, such as by matching requests with
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`descriptions of capabilities. Id. at 4:63–66, 5:6–7.
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`3
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`IPR2019-00813
`Patent 6,851,115 B1
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`Figure 3 of the ’115 patent, shown below, depicts a distributed agent
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`system in accordance with one embodiment.
`
`
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`Figure 3, above, shows a distributed agent system 300 that includes a
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`plurality of agents 320 based around a facilitator agent 310. Id. at 6:3–6.
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`“The agents 320 forward service requests to the facilitator agent 310,” which
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`“interprets these requests, organizing a set of goals which are then delegated
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`to appropriate agents for task completion.” Id. at 6:10–13.
`
`Figure 4 of the ’115 patent is reproduced below.
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`4
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`IPR2019-00813
`Patent 6,851,115 B1
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`
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`Figure 4, above, depicts the structure of a small system 400 including
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`user interface agents 408, several application agents 404 and meta-agents
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`406, organized as a community of peers by their common relationship to a
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`facilitator agent 402. Id. at 6:25–30. The facilitator 402 is a specialized
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`server agent that is responsible for coordinating agent communications and
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`cooperative problem-solving and may also provide a global data store for its
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`client agents, allowing them to adopt a blackboard style of interaction. Id. at
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`6:32–37. Agents register with a parent facilitator a specification of the
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`capabilities and services that the agent can provide. Id. at 7:18–20. During
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`task completion, when a facilitator determines that the registered services
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`416 of one of its client agents will help satisfy a goal, the facilitator sends
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`that client a request expressed in the Interagent Communication Language
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`(ICL) 418. Id. at 7:25–30. The agent parses the request, processes it, and
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`returns answers or status reports to the facilitator. Id. at 7:30–32.
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`The Specification provides an express definition for “Interagent
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`Communication Language”: “Interagent Communication Language (‘ICL’)
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`418 refers to an interface, communication, and task coordination language
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`5
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`IPR2019-00813
`Patent 6,851,115 B1
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`preferably shared by all agents, regardless of what platform they run on or
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`what computer language they are programmed in.” Id. at 10:48–53.
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`Figure 7 of the ’115 patent is reproduced below.
`
`
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`Figure 7, above, shows data structures 700 internal to a facilitator
`
`including an agent registry 702. Each registered agent may be optionally
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`associated with one or more capabilities, which have associated Capability
`
`Declaration fields 708. The ’115 patent discloses that “[t]hese capabilities
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`may define not just functionality, but may further provide a utility parameter
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`indicating, in some manner (e.g., speed, accuracy, etc.), how effective the
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`agent is at providing the declared capability.” Id. at 16:65–17:2.
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`D. Challenged Claims
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`Petitioner challenges claims 1–3, 11, and 48–60 of the ’115 patent.
`
`Pet. 3. Claims 1 and 48 are independent. Claim 1 reads as follows.
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`1. [(a)] A computer-implemented method for communication and
`cooperative task completion among a plurality of distributed
`electronic agents, comprising the acts of:
`
`6
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`IPR2019-00813
`Patent 6,851,115 B1
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`[(b)(i)] registering a description of each active client agent’s
`functional capabilities as corresponding registered functional
`capabilities,
`[(b)(ii)] using an expandable, platform-independent, inter-agent
`language,
`[(c)(i)] wherein the inter-agent language includes: a layer of
`conversational protocol
`[(c)(ii)] defined by event types
`[(c)(iii)] and parameter lists associated with one or more of the
`events,
`[(c)(iv)] wherein the parameter lists further refine the one or more
`events;
`[(d)] a content layer comprising one or more of goals, triggers and
`data elements associated with the events;
`[(e)(i)] receiving a request for service as a base goal in the inter-
`agent language,
`[(e)(ii)] in the form of an arbitrarily complex goal expression;
`[(f)] and dynamically interpreting the arbitrarily complex goal
`expression,
`[(g)] said act of interpreting further comprising: generating one or
`more sub-goals expressed in the inter-agent language;
`[(h)(i)] constructing a goal satisfaction plan wherein the goal
`satisfaction plan includes:
`[(h)(ii)] a suitable delegation of sub-goal requests to best complete
`the requested service request
`[(h)(iii)] 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;
`[(i)] and 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.
`
`Ex. 1001, 29:10–44 (numbering and formatting designated by Petitioner; see
`
`Pet. Att. C).
`
`E. Prior Art References
`
`Petitioner relies upon the following prior art references:
`
`7
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`IPR2019-00813
`Patent 6,851,115 B1
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`(1) U.S. Patent No. 6,484,155, issued Nov. 19, 2002 (“Kiss”)
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`(Ex. 1005);
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`(2) 1997 FIPA v. 1.0 Specification (“FIPA97”) (Ex. 1006–1012);
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`Petitioner also relies on the Declaration of Dr. Henry Lieberman.
`
`Ex. 1003.
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`F. Asserted Ground of Unpatentability
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`
`
`Ground Reference(s)
`
`Kiss/FIPA97
`
`1
`
`
`
`Basis
`
`§ 103
`
`Claims
`Challenged
`1–3, 11, 48–60
`
` ANALYSIS
`
`A. Level of Ordinary Skill
`
`In determining whether an invention would have been obvious at the
`
`time it was made, we consider the level of ordinary skill in the pertinent art
`
`at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17
`
`(1966). “The importance of resolving the level of ordinary skill in the art
`
`lies in the necessity of maintaining objectivity in the obviousness inquiry.”
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`Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
`
`Petitioner describes a person of ordinary skill in the art as “someone
`
`familiar with the principles and conventions of computer science and
`
`computer networking, and also with multi-agent systems and inter-agent
`
`communication languages as documented in agent-centered literature by
`
`1999.” Pet. 4. Petitioner also explains that a person of ordinary skill in the
`
`art “may have been a graduate student in mathematics, engineering, or
`
`computer science, and may have had an advanced degree in one of these
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`IPR2019-00813
`Patent 6,851,115 B1
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`disciplines, and would also have had at least two years of experience
`
`working in the field of computer science, or a related field, and may have
`
`worked in academia, either as a professor or a graduate student, for a
`
`technology company, or for a government.” Pet. 4–5 (citing Ex. 1003 ¶ 34).
`
`In its Response, Patent Owner asserts that a person of ordinary skill in
`
`the art at the time of the ’115 patent’s filing date 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.” Resp. 23 (citing Ex.
`
`2032 ¶ 37). Patent Owner criticizes Petitioner’s description of the level of
`
`ordinary skill in the art as being “vague and uncertain” as to render it
`
`“meaningless” because of the use of the word “may” in its description. Id.
`
`Patent Owner contends that Petitioner’s proposed description is “particularly
`
`problematic here, where Petitioner claims that it would have been obvious to
`
`create an agent system that is very complex and advanced in its facilitation,
`
`goal processing, and inter-agent communication capacities.” Id. at 24 (citing
`
`Ex. 2032 ¶ 40).
`
`In its Reply, Petitioner argues 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 computer science’), and would have had at least two years of
`
`work experience in those fields.” Reply 13–14 (citing Pet. 4–5). Petitioner
`
`also argues that Patent Owner does not articulate how any differences
`
`between the parties’ proposals that would alter or even affect the outcome of
`
`this proceeding. Reply 14.
`
`In its Sur-reply, Patent Owner argues that it has “identified how the
`
`difference between the proposals would affect this proceeding” because
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`9
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`IPR2019-00813
`Patent 6,851,115 B1
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`Patent Owner has pointed out that “it is Petitioner’s burden under the law to
`
`address each Graham factor and Petitioner has failed to proffer a coherent
`
`level of ordinary skill in the art, Petitioner’s obviousness assertion fails for
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`that reason alone.” Sur-reply 15 (citing Resp. 24).
`
`Patent Owner, however, 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 description, as opposed to Petitioner’s proposal. See
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`ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378, 1385 (Fed.
`
`Cir. 2020) (citing Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin
`
`Pharm. Inc., 825 F.3d 1360, 1371–72 (Fed. Cir. 2016)). For example,
`
`Patent Owner does not argue the challenged claims are not unpatentable
`
`under Patent Owner’s proposed description of the level of ordinary skill in
`
`the art, nor does Patent Owner identify any claim limitation that would have
`
`been taught by the asserted prior art under Petitioner’s proposal, but not
`
`under Patent Owner’s proposal. See Resp. 23–24; Sur-reply 14–16.
`
`In our view, the parties’ proposals are not materially different despite
`
`the differences in wording between them (e.g., the education level of a
`
`Bachelor’s degree in Computer Science or equivalent field under Patent
`
`Owner’s proposal, as opposed to a graduate student’s level of education with
`
`or without a Bachelor’s degree under Petitioner’s proposal). For purposes of
`
`this Final Written Decision, we find no meaningful differences between the
`
`parties’ respective proposals that would materially alter the outcome of this
`
`Decision. These 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 the disclosure of the ’115 patent and the prior art of
`
`10
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`IPR2019-00813
`Patent 6,851,115 B1
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`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In
`
`re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
`
`Nonetheless, for this Final Written Decision, we adopt Patent Owner’s
`
`description 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 description 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
`
`standard, claim terms are generally given their ordinary and customary
`
`meaning, as would be understood by a person of ordinary skill in the art, at
`
`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,
`
`415 F.3d at 1312–17).
`
`11
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`IPR2019-00813
`Patent 6,851,115 B1
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`In our Decision on Institution, we preliminarily interpreted certain
`
`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. 27–36.
`
`The parties do not dispute the constructions of these terms in the
`
`Patent Owner Response or Petitioner Reply. See Resp. 25–27; 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 complex goal
`
`expression,” and “compound goal” as set forth above for this Final Written
`
`Decision.
`
`In the Petition, Petitioner discusses constructions for additional claim
`
`terms, including “goal satisfaction plan,” “layer of conversational protocol,”
`
`“content layer,” “trigger,” and “parameter lists further refine the one or more
`
`12
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`IPR2019-00813
`Patent 6,851,115 B1
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`events.” Pet. 8–16. In addition, in the Petitioner Reply, Petitioner discusses
`
`construction of the claim term “process characteristics.” Reply 12–13.
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`Patent Owner disputes constructions for two terms, “goal satisfaction plan”
`
`and “process characteristics.” See Resp. 24–38; Sur-reply 13–14. We
`
`discuss constructions for each of the two disputed terms in turn below.
`
`Patent Owner does not discuss Petitioner’s proposed construction for
`
`the claim term “parameter lists further refine the one or more events” or
`
`proposes its own construction for the term. See Resp. 24–38. Nonetheless,
`
`Patent Owner discusses meaning of this term in the context of Patent
`
`Owner’s arguments that FIAP97 does not teach an “expandable . . . 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 Owner’s
`
`arguments raise an issue of claim construction, Patent Owner’s arguments
`
`are closely related to and interspersed with Patent Owner’s arguments that
`
`FIPA97 does not teach an “inter-agent language” recited in claim 1. Thus,
`
`for efficiency and completeness, we address this issue in the context of the
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`patentability discussion below.
`
`No other claim terms need to be construed expressly for purposes of
`
`this Final Written Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`
`200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in
`
`controversy need to be construed, and “only to the extent necessary to
`
`resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad
`
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid
`
`Techs. in the context of an inter partes review).
`
`13
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`IPR2019-00813
`Patent 6,851,115 B1
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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; Resp. 27–38; Reply 1–12; 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
`
`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.” 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.”
`
`14
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`IPR2019-00813
`Patent 6,851,115 B1
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`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 the goal satisfaction plan
`
`includes:
`
`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, 29:32–39 (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 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”1 limiting feature
`
`argued by Patent Owner is recited in claim 1 (“a suitable delegation of
`
`
`
`1 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
`
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`IPR2019-00813
`Patent 6,851,115 B1
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`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
`
`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)
`
`
`
`the best solution to some problem, where ‘best’ accords to prestated
`criteria.” Sur-reply 6 (emphasis added) (citing Ex. 2078, 3).
`
`16
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`IPR2019-00813
`Patent 6,851,115 B1
`
`(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 the 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
`
`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
`
`17
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`IPR2019-00813
`Patent 6,851,115 B1
`
`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”
`
`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:
`
`[e]xtreme flexibility is achieved through an architecture 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.
`
`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
`
`18
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`IPR2019-00813
`Patent 6,851,115 B1
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`the ’115 patent. See 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 construction of “goal
`
`satisfaction plan.” Thus, unless one of the established exceptions, such as
`
`lexicography or disavowal, applies, the challenged claims are not restricted
`
`as Patent Owner contends. See, e.g., GE Lighting Sols., LLC v. AgiLight,
`
`Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“the specification and
`
`prosecution history only compel departure from the plain meaning in two
`
`instances: lexicography and disavowal”) (citation omitted). Here, Patent
`
`Owner does not argue lexicography or disavowal. Nor does Patent Owner
`
`explain any other reason why the Specification limits “goal satisfaction
`
`plan” as it contends. Thus, claim construction in this case is governed by the
`
`general principle that “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, 358 F.3d at 875; see also WesternGeco
`
`LLC v. ION Geophysical Corp., 889 F.3d 1308, 1323–24 (Fed. Cir. 2018)
`
`(“It is well established that claims are not limited to preferred embodiments,
`
`unless the specification clearly indicates otherwise.” (citing Comaper Corp.
`
`v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (“[T]his court has
`
`repeatedly cautioned against limiting claims to a preferred embodiment.”))).
`
`Accordingly, none of the embodiments in the Specification cited by Patent
`
`Owner limits “goal satisfaction plan” as Patent Owner contends.
`
`19
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`Patent 6,851,115 B1
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`c.
`
`Prosecution History
`
`Turning next to the prosecution history, Patent Owner asserts that “examples
`
`in the file history confirm the elements of ‘goal satisfaction plan’ reflected in
`
`Patent Owner’s proposed construction.” Resp. 35–36. Patent Owner argues,
`
`during the prosecution of the application for the ’115 patent,
`
`Applicant further stated that “the facilitating engine is able to use reasoning
`
`to delegate the sub-goals to service providing agents in such a way as ‘to
`
`best complete the requested service request.’…The facilitating engine is
`
`able to use reasoning to delegate the sub-goal task of roasting coffee to the
`
`service-providing agent that can roast beans in the least amount of time
`
`because the facilitating engine has reasoned that the least amount of time
`
`taken to make coffee is the best way to accomplish the base goal of making
`
`coffee.” Applicant concluded that “the base goal is carried out not by
`
`merely parsing the request into sub-goals” but rather “the facilitating
`
`engine used reasoning to decide upon using competing message transfer
`
`agents to reminding Bob of lunch, in lieu of delegating the task to just one
`
`message transfer agent.”
`
`Id. at 35 (citing Ex. 1002, 172–173). As discussed above, however, the
`
`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. Thus, Patent Owner’s argument is
`
`unpersuasive for the same reasons discussed above.
`
`d.
`
`Extrinsic Evidence
`
`Patent Owner also cites the testimony of its declarant,
`
`Dr. Medvidovic, in support of Patent Owner’s proposed construction of
`
`“goal satisfaction plan.” Resp. 36–37 (citing Ex. 2032 ¶¶ 51–52, 54–59,
`
`20
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`IPR2019-00813
`Patent 6,851,115 B1
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`129). We have reviewed the cited testimony from Dr. Medvidovic, but do
`
`not find anything in his testimony that would change our analysis based on
`
`intrinsic record discussed above. See Phil
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