Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 52
`Entered: December 22, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION,
`Petitioner,
`v.
`IPA TECHNOLOGIES INC.,
`Patent Owner.
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`
`
`
`
`
`
`
`
`
`Before LYNNE E. PETTIGREW, MINN CHUNG, and KEVIN C. TROCK,
`Administrative Patent Judges.
`PER CURIAM.
`
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. §§ 144, 318
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 52
`Entered: December 22, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION,
`Petitioner,
`v.
`IPA TECHNOLOGIES INC.,
`Patent Owner.
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`
`
`
`
`
`
`
`
`
`Before LYNNE E. PETTIGREW, MINN CHUNG, and KEVIN C. TROCK,
`Administrative Patent Judges.
`PER CURIAM.
`
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. §§ 144, 318
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`I. BACKGROUND
`This Remand Decision is a final written decision on remand from the
`United States Court of Appeals for the Federal Circuit, which affirmed in
`part and reversed in part the original Final Written Decisions in these five
`inter partes reviews and remanded for further proceedings regarding certain
`claims. See Microsoft Corp. v. IPA Techs. Inc., No. 2021-1412, 2022 WL
`989403 (Fed. Cir. Apr. 1, 2022) (nonprecedential); IPR2019-00810,
`Paper 44 (“810 Final Dec.”); IPR2019-00811, Paper 44 (“811 Final Dec.”);
`IPR2019-00814, Paper 44 (“814 Final Dec.”); IPR2019-00835, Paper 42
`(“835 Final Dec.”); IPR2019-00836, Paper 42 (“836 Final Dec.”). 1
`We have jurisdiction under 35 U.S.C. § 6, and we issue this Remand
`Decision under 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 8 and 86–89 of U.S. Patent No. 6,851,115 B1 (Ex. 1001,
`“the ’115 patent”)2 and claims 10 and 11 of U.S. Patent No. 7,069,560 B1
`(IPR2019-00835, Ex. 1001, “the ’560 patent”) are unpatentable. Petitioner
`has not proven by a preponderance of the evidence that claims 9, 10, and 63
`of the ’115 patent and claim 28 of the ’560 patent are unpatentable.
`
`A. Procedural History
`In IPR2019-00810 (“810 IPR”), Petitioner, Microsoft Corporation,
`filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of
`
`
`1 The parties also appealed the Final Written Decisions in IPR2019-00812,
`IPR2019-00813, and IPR2019-00837. The Federal Circuit affirmed the
`Final Written Decisions in these three proceedings in their entirety. See
`Microsoft, 2022 WL 989403.
`2 Unless otherwise indicated, citations to papers and exhibits refer to
`documents filed in IPR2019-00810.
`
`2
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`claims 1, 4–10, 15, 16, 29–32, 38, and 39 of the ’115 patent. Patent Owner,
`IPA Technologies Inc., filed a Preliminary Response. Paper 6. Applying
`the standard set forth in 35 U.S.C. § 314(a), we instituted an inter partes
`review of the challenged claims. Paper 12 (“810 Inst. Dec.”).
`In IPR2019-00811 (“811 IPR”), Petitioner filed a Petition (811 IPR,
`Paper 1, “811 Pet.”) requesting an inter partes review of claims 1, 12–14,
`26–29, 33, 35–37, 45–47, and 86–89 of the ’115 patent. Patent Owner filed
`a Preliminary Response. 811 IPR, Paper 6. We instituted an inter partes
`review of the challenged claims. 811 IPR, Paper 12 (“811 Inst. Dec.”).
`In IPR2019-00814 (“814 IPR”), Petitioner filed a Petition (814 IPR,
`Paper 1, “814 Pet.”) requesting an inter partes review of claims 61–85 of the
`’115 patent. Patent Owner filed a Preliminary Response. 814 IPR, Paper 6.
`We instituted an inter partes review of the challenged claims. 814 IPR,
`Paper 12 (“814 Inst. Dec.”).
`After institution, pursuant to our order consolidating briefing
`(Paper 19), the parties filed consolidated papers in IPR2019-00810,
`IPR2019-00811, IPR2019-00812, IPR2019-00813, and IPR2019-00814.
`Patent Owner filed a Patent Owner Response (Paper 22, “PO Resp.”),
`Petitioner filed a Reply to Patent Owner Response (Paper 30, “Pet. Reply”),
`and Patent Owner filed a Corrected Sur-reply (Paper 40, “PO Sur-reply”).
`In IPR2019-00835 (“835 IPR”), Petitioner filed a Petition (835 IPR,
`Paper 1, “835 Pet.”) requesting an inter partes review of claims 1, 20, 21,
`26–35, and 45–49 of the ’560 patent. Patent Owner filed a Preliminary
`Response. 835 IPR, Paper 6. We instituted an inter partes review of the
`challenged claims. 835 IPR, Paper 9 (“835 Inst. Dec.”).
`In IPR2019-00836 (“836 IPR”), Petitioner filed a Petition (836 IPR,
`Paper 1, “836 Pet.”) requesting an inter partes review of claims 1, 5–13, 22–
`
`3
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`25, and 50–55 of the ’560 patent. Patent Owner filed a Preliminary
`Response. 836 IPR, Paper 6. We instituted an inter partes review of the
`challenged claims. 836 IPR, Paper 9 (“836 Inst. Dec.”).
`After institution, pursuant to our order consolidating briefing (835
`IPR, Paper 16), the parties filed consolidated papers in IPR2019-00835,
`IPR2019-00836, and IPR2019-00837. Patent Owner filed a Patent Owner
`Response (835 IPR, Paper 19, “835 PO Resp.”), Petitioner filed a Reply
`(835 IPR, Paper 27, “835 Pet. Reply”), and Patent Owner filed a Sur-reply
`(835 IPR, Paper 32, “835 PO Sur-reply”).
`A consolidated oral hearing in IPR2019-00810, IPR2019-00811,
`IPR2019-00812, IPR2019-00813, IPR2019-00814, IPR2019-00835,
`IPR2019-00836, and IPR2019-00837 was held on July 27, 2020 and July 28,
`2020, and a copy of the hearing transcript has been entered into the record.
`Paper 43 (“Tr.”).
`We issued Final Written Decisions in these IPRs, concluding that
`Petitioner had demonstrated by a preponderance of the evidence that some
`challenged claims are unpatentable. See 810 Final Dec. 167–168; 811 Final
`Dec. 151–152; 814 Final Dec. 171–172; 835 Final Dec. 153; 836 Final Dec.
`143.
`
`In the 810 IPR, we determined that (1) Petitioner had shown that
`claims 1, 4–7, and 15 of the ’115 patent are unpatentable over Kiss3 and
`FIPA974; (2) Petitioner had not shown that claims 8–10, 29–32, and 38 of
`the ’115 patent are unpatentable over Kiss and FIPA97; (3) Petitioner had
`
`
`3 U.S. Patent No. 6,484,155 B1 (filed July 21, 1999; provisional filed July
`21, 1998) (Ex. 1005, “Kiss”).
`4 FIPA 97 Version 1.0 Specification (Oct. 10, 1997) (Exs. 1006–1012,
`“FIPA97”).
`
`4
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`shown that claims 7 and 16 of the ’115 patent are unpatentable over Kiss,
`FIPA97, and Cheyer5; and (4) Petitioner had not shown that claim 39 of the
`’115 patent is unpatentable over Kiss, FIPA97, and Cheyer. 810 Final Dec.
`167–168.
`In the 811 IPR, we determined that (1) Petitioner had shown that
`claims 1 and 26–28 of the ’115 patent are unpatentable over Kiss and
`FIPA97; (2) Petitioner had not shown that claims 29, 33, 45–47, and 86–89
`of the ’115 patent are unpatentable over Kiss and FIPA97; (3) Petitioner had
`shown that claims 12–14 of the ’115 patent are unpatentable over Kiss,
`FIPA97, and Moran6; and (4) Petitioner had not shown that claims 35–37 of
`the ’115 patent is unpatentable over Kiss, FIPA97, and Moran. 811 Final
`Dec. 151–152.
`In the 814 IPR, we determined that (1) Petitioner had shown that
`claims 61, 62, and 70–85 of the ’115 patent are unpatentable over Kiss and
`FIPA97; (2) Petitioner had not shown that claim 63 of the ’115 patent is
`unpatentable over Kiss and FIPA97; and (3) Petitioner had shown that
`claims 64–70, 84, and 85 of the ’115 patent are unpatentable over Kiss,
`FIPA97, and Cohen7. 814 Final Dec. 171–172.
`
`
`5 Adam Cheyer, MVIEWS: Multimodal Tools for the Video Analyst,
`PROCEEDINGS OF 1998 INTERNATIONAL CONFERENCE ON INTELLIGENT USER
`INTERFACES 55 (1998) (Ex. 1015, “Cheyer”).
`6 Douglas B. Moran, et al., Multimodal User Interfaces in the Open Agent
`Architecture, PROCEEDINGS OF 1997 INTERNATIONAL CONFERENCE ON
`INTELLIGENT USER INTERFACES 61 (1997) (Ex. 1013, “Moran”).
`7 Cohen et al., An Open Agent Architecture, 1994 Association for the
`Advancement of Artificial Intelligence Spring Symposia on March 21–23,
`1994 (814 IPR, Ex. 1014, “Cohen”).
`
`5
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`In the 835 IPR, we determined that (1) Petitioner had shown that
`claims 1, 20, 21, 26, 27, and 45–49 of the ’560 patent are unpatentable over
`Kiss and FIPA97; (2) Petitioner had not shown that claim 28 of the ’560
`patent is unpatentable over Kiss and FIPA97; (3) Petitioner had shown that
`claims 20, 21, and 29–35 of the ’560 patent are unpatentable over Kiss,
`FIPA97, and Cohen; and (4) Petitioner had not shown that claim 28 of the
`’560 patent is unpatentable over Kiss, FIPA97, and Cheyer. 835 Final Dec.
`153.
`
`In the 836 IPR, we determined that (1) Petitioner had shown that
`claims 1, 5–9, 12, 13, 22–25, and 52 of the ’560 patent are unpatentable over
`Kiss and FIPA97; and (2) Petitioner had not shown that claims 10, 11, 50,
`51, and 53–55 of the ’560 patent are unpatentable over Kiss and FIPA97.
`836 Final Dec. 143.
`On appeal, the Federal Circuit affirmed all of our determinations of
`unpatentability of challenged claims. See Microsoft, 2022 WL 989403,
`at *1. The Federal Circuit also affirmed our “determination of no proven
`unpatentability of claims 29–47 of the ’115 patent and claims 50–51 and
`53–55 of the ’560 patent.” Id.
`The Federal Circuit reversed certain findings we made in concluding
`that claims 8–10, 63, and 86–89 of the ’115 patent and claims 10, 11, and 28
`of the ’560 patent had not been proven unpatentable and remanded for
`further consideration of those claims. Id. Upon our authorization
`(Paper 45), the parties filed additional briefing limited to addressing the
`remanded claims. See Petitioner’s Remand Opening Brief (Paper 50, “Pet.
`Remand Opening Br.”), Patent Owner’s Remand Opening Brief (Paper 51,
`“PO Remand Opening Br.”), Petitioner’s Remand Response Brief (Paper 53,
`
`6
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`“Pet. Remand Resp. Br.”), Patent Owner’s Remand Response Brief (Paper
`52, “PO Remand Resp. Br.”).
`Analyzing the full record in view of the Federal Circuit’s directives,
`we address below the remaining grounds at issue based on Kiss and FIPA97,
`as summarized in the following tables.
`
`810 IPR (’115 Patent):
`
`Claim(s) Challenged
`8–10
`
`811 IPR (’115 Patent):
`
`Claim(s) Challenged
`86–89
`
`814 IPR (’115 Patent):
`
`35 U.S.C. §
`§ 103(a)8
`
`Reference(s)/Basis
`Kiss, FIPA97
`
`35 U.S.C. §
`§ 103(a)
`
`Reference(s)/Basis
`Kiss, FIPA97
`
`Claim(s) Challenged
`63
`
`35 U.S.C. §
`§ 103(a)
`
`Reference(s)/Basis
`Kiss, FIPA97
`
`
`835 IPR (’560 Patent):
`
`Claim(s) Challenged
`28
`28
`
`35 U.S.C. §
`§ 103(a)
`§ 103(a)
`
`Reference(s)/Basis
`Kiss, FIPA97
`Kiss, FIPA97, Cheyer
`
`
`8 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because both the ’115 patent
`and the ’560 patent have an effective filing date prior to the effective date of
`the applicable AIA amendment, we refer to the pre-AIA version of § 103.
`
`7
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`
`836 IPR (’560 Patent):
`
`Claim(s) Challenged
`10, 11
`
`
`35 U.S.C. §
`§ 103(a)
`
`Reference(s)/Basis
`Kiss, FIPA97
`
`B. Overview of the ’115 Patent and ’560 Patent
`The ’115 patent describes “software-based architectures for
`communication and cooperation among distributed electronic agents.”
`Ex. 1001, 1:27–29. Figure 4 of the ’115 patent is reproduced below.
`
`
`Figure 4 depicts the structure of an exemplary distributed agent system of
`the ’115 patent. Id. at 6:25–32. As shown in Figure 4, system 400 includes
`facilitator agent 402, user interface agents 408, application agents 404, and
`
`8
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`meta-agents 406. Id. at 6:25–28. The ’115 patent describes that system 400
`is organized “as a community of peers by their common relationship” to
`facilitator agent 402 (id. at 6:28–30), which is “a specialized server agent
`that is responsible for coordinating agent communications and cooperative
`problem-solving” (id. at 6:32–35).
`According to the ’115 patent, cooperation among agents is structured
`around a three-part approach as follows: (1) providers of services register
`their capabilities specifications with a facilitator; (2) requesters of services
`construct goals and relay them to the facilitator; and (3) the facilitator
`coordinates the efforts of the appropriate service providers in satisfying
`these goals. Id. at 10:42–47. The ’115 patent describes that cooperation
`among agents is achieved via messages expressed in a common language,
`called the Interagent Communication Language (“ICL”). Id. at 10:40–48.
`Referencing Figure 3 (not reproduced herein) and Figure 4, the ’115
`patent describes the operation of a distributed agent system in a preferred
`embodiment. Id. at 7:13–39. The ’115 patent describes that, when invoked,
`a client agent makes a connection to a facilitator, e.g., facilitator agent 402,
`and registers with the facilitator a specification of the capabilities and
`services it can provide. Id. at 7:15–21. For example, a natural language
`agent may register the characteristics of its available natural language
`vocabulary. Id. at 7:21–23. When facilitator agent 402 receives a service
`request and determines that registered services 416 of one of its client agents
`will help satisfy a goal of the request, the facilitator sends that client a
`request expressed in ICL 418. Id. at 7:25–29. The client agent parses this
`request, processes it, and returns answers or status reports to the facilitator.
`Id. at 7:30–32.
`
`9
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`Referencing Figures 5 and 6 (not reproduced herein), the ’115 patent
`describes an exemplary embodiment where user interface agent 408 runs on
`a user’s laptop, accepting user input, sending requests to facilitator agent 402
`for delegation to appropriate agents, and displaying the results of the
`distributed computation. Id. at 7:53–63. As illustration, the ’115 patent
`describes that, when the question “What is my schedule?” is entered on user
`interface (UI) 408, UI 408 sends the request to facilitator agent 402, which
`in turn asks natural language (NL) agent 426 to translate the query into ICL.
`Id. at 8:4–8. The translated ICL expression is then routed by facilitator
`agent 402 to appropriate agents, e.g., calendar agent 434, to execute the
`request. Id. at 8:13–15. Finally, results are sent back to UI agent 408 for
`display. Id. at 8:15–16.
`The ’560 patent is a continuation of the ’115 patent. IPR 835,
`Ex. 1001, code (63). The written description of the ’560 patent is
`substantially the same as that of the ’115 patent, the relevant portions of
`which are described above.
`
`C. Illustrative Claims
`Of the challenged claims in the 810 IPR and 811 IPR, claims 1, 29,
`and 86 are independent. Claims 1 and 86 are illustrative of the subject
`matter of the challenged claims remaining at issue on remand and are
`reproduced below.
`1. A computer-implemented method for communication and
`cooperative task completion among a plurality of distributed
`electronic agents, comprising the acts of:
`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:
`
`10
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`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;
`a content layer comprising one or more of goals, triggers and
`data elements associated with the events;
`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,
`said act of interpreting further comprising:
`generating one or more sub-goals expressed in the inter-agent
`language;
`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; 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.
`86. A data wave carrier providing a transport mechanism for
`information communication
`in a distributed computing
`environment having at least one facilitator agent and at least one
`active client agent, and an Interagent Communication Language
`(ICL), wherein the ICL 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; and
`a content layer comprising one or more of goals, triggers and
`data elements associated with the events;
`
`11
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`wherein said at least one facilitator agent is operable to construct
`a goal satisfaction plan 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 for
`satisfying one or more requests for service from said at least
`one active client agent, the data wave carrier comprising a
`signal representation of an inter-agent language description of
`an active client agent’s functional capabilities.
`Id. at 37:10–38:7.
`Of the challenged claims in the 814 IPR, claims 61 and 71 are
`independent. Claim 61 is illustrative of the challenged claims and is
`reproduced below.
`61. A facilitator agent arranged to coordinate cooperative task
`completion within a distributed computing environment having a
`plurality of autonomous service-providing electronic agents, the
`facilitator agent comprising:
`an agent registry that declares capabilities of service-providing
`electronic agents currently active within the distributed
`computing environment; and
`a facilitating engine operable to parse a service requesting order to
`interpret a compound goal set forth therein,
`the compound goal including both local and global constraints and
`control parameters, the service request formed according to an
`Interagent Communication Language (ICL),
`wherein the ICL 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; and a content layer comprising one or more of
`goals, triggers and data elements associated with the events; and
`the facilitating engine further operable to construct a goal satisfaction
`plan
`by using reasoning that includes one or more of domain-independent
`coordination strategies, domain-specific reasoning, and
`
`12
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`application-specific reasoning comprising rules and learning
`algorithms.
`
`
`Ex. 1001, 35:4–28.
`Of the challenged claims in the 835 IPR and 836 IPR, claims 1, 22,
`26, 47, 50, 52, and 53 are independent. Claims 1 and 26 are illustrative and
`reproduced below.
`1. A software-based, flexible computer architecture for
`communication and cooperation among distributed electronic
`agents, the architecture contemplating a distributed computing
`system comprising:
`a plurality of service-providing electronic agents;
`a distributed facilitator agent functionally distributed across at
`least two computer processes, the facilitator agent capable of
`bi-directional communications with the plurality of service-
`providing electronic agents, the facilitator agent including:
`an agent registry that declares capabilities for each of the
`plurality of service-providing electronic agents currently
`active within the distributed computing environment; and
`a facilitating engine operable to interpret a service request as a
`base goal, the facilitating engine further operable for
`generating a goal satisfaction plan associated with the base
`goal, wherein the goal satisfaction plan involves:
`using reasoning to determine sub-goal requests based on
`non-syntactic decomposition of the base goal and
`using said reasoning to co-ordinate and schedule
`efforts by the service-providing electronic agents for
`fulfilling the sub-goal requests in a cooperative
`completion of the base goal; and
`wherein the plurality of service-providing electronic agents and
`the distributed facilitator agent communicate using an
`interagent Communication Language (ICL), wherein the ICL
`includes:
`a layer of conversational protocol defined by event types
`and parameter lists associated with one or more of the
`
`13
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`events, wherein the parameter lists further refine the
`one or more events.
`835 IPR, Ex. 1001, 29:58–30:23.
`26. A distributed facilitator agent functionally distributed
`across at least two computer processes, the distributed
`facilitator agent arranged to coordinate cooperative task
`completion within a distributed computing environment having
`a plurality of autonomous service-providing electronic agents,
`the distributed facilitator agent comprising:
`an agent registry that declares capabilities of service-providing
`electronic agents currently active within the distributed
`computing environment; and
`a facilitating engine operable to parse a service request in order
`to interpret a compound goal set forth therein, the service
`request formed according to an Interagent Communication
`Language (ICL), the ICL including 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, the
`facilitating engine further operable to generate a goal
`satisfaction plan associated with the compound goal, wherein
`the goal satisfaction plan involves:
`using reasoning to determine sub-goal requests based on
`non-syntactic decomposition of the base goal and
`using said reasoning to co-ordinate and schedule
`efforts by the service-providing electronic agents for
`fulfilling the sub-goal requests in a cooperative
`completion of the base goal.
`835 IPR, Ex. 1001, 32:26–51.
`D. Testimonial Evidence
`In support of its unpatentability contentions in the 810 IPR, Petitioner
`relies on a declaration of Dr. Henry Lieberman (Ex. 1003) and a declaration
`of Dr. Timothy Finin (Ex. 1049). In support of its Patent Owner Response
`in the 810 IPR, Patent Owner relies on the Declaration of Dr. Nenad
`
`14
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`Medvidovic (Ex. 2032) and the Declaration of Dr. Philip R. Cohen
`(Ex. 2033). Patent Owner cross-examined Dr. Lieberman and Dr. Finin via
`deposition. Exs. 2013, 2014. Petitioner cross-examined Dr. Medvidovic via
`deposition. Ex. 1129.
`In support of its unpatentability contentions in the 811 IPR, Petitioner
`relies on a declaration of Dr. Henry Lieberman (811 IPR, Ex. 1003) and a
`declaration of Dr. Timothy Finin (811 IPR, Ex. 1049). In support of its
`Patent Owner Response in the 811 IPR, Patent Owner relies on the
`Declaration of Dr. Nenad Medvidovic (811 IPR, Ex. 2032) and the
`Declaration of Dr. Philip R. Cohen (811 IPR, Ex. 2033). Patent Owner
`cross-examined Dr. Lieberman and Dr. Finin via deposition. 811 IPR,
`Exs. 2013, 2014. Petitioner cross-examined Dr. Medvidovic via deposition.
`811 IPR, Ex. 1129.
`In support of its unpatentability contentions in the 814 IPR, Petitioner
`relies on a declaration of Dr. Henry Lieberman (814 IPR, Ex. 1003) and a
`declaration of Dr. Timothy Finin (814 IPR, Ex. 1049). In support of its
`Patent Owner Response in the 814 IPR, Patent Owner relies on the
`Declaration of Dr. Nenad Medvidovic (814 IPR, Ex. 2032) and the
`Declaration of Dr. Philip R. Cohen (814 IPR, Ex. 2033). Patent Owner
`cross-examined Dr. Lieberman and Dr. Finin via deposition. 814 IPR,
`Exs. 2013, 2014. Petitioner cross-examined Dr. Medvidovic via deposition.
`814 IPR, Ex. 1129.
`In support of its unpatentability contentions in the 835 IPR, Petitioner
`relies on a declaration of Dr. Henry Lieberman (835 IPR, Ex. 1050) and a
`declaration of Dr. Timothy Finin (835 IPR, Ex. 1049). In support of its
`Patent Owner Response in the 835 IPR, Patent Owner relies on a declaration
`of Dr. Nenad Medvidovic (835 IPR, Ex. 2032) and a declaration of
`
`15
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`Dr. Philip R. Cohen (835 IPR, Ex. 2033). Patent Owner cross-examined
`Dr. Lieberman and Dr. Finin via deposition. 835 IPR, Exs. 2068, 2069.
`Petitioner cross-examined Dr. Medvidovic via deposition. 835 IPR,
`Ex. 1129.
`In support of its unpatentability contentions in the 836 IPR, Petitioner
`relies on a declaration of Dr. Henry Lieberman (836 IPR, Ex. 1050) and a
`declaration of Dr. Timothy Finin (836 IPR, Ex. 1049). In support of its
`Patent Owner Response in the 836 IPR, Patent Owner relies on a declaration
`of Dr. Nenad Medvidovic (836 IPR, Ex. 2032) and a declaration of
`Dr. Philip R. Cohen (836 IPR, Ex. 2033). Patent Owner cross-examined
`Dr. Lieberman and Dr. Finin via deposition. 836 IPR, Exs. 2068, 2069.
`Petitioner cross-examined Dr. Medvidovic via deposition. 836 IPR,
`Ex. 1129.
`
`II. DISCUSSION
`A. Relevant Principles of Law
`To prevail in challenging Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes
`review], the petitioner has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
`§ 312(a)(3) (requiring inter partes review petitions to identify “with
`particularity . . . the evidence that supports the grounds for the challenge to
`each claim”)). This burden never shifts to Patent Owner. See Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–
`27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).
`
`16
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which the subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). 9
`An obviousness determination requires finding “both ‘that a skilled
`artisan would have been motivated to combine the teachings of the prior art
`references to achieve the claimed invention, and that the skilled artisan
`would have had a reasonable expectation of success in doing so.’”
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–
`68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (holding
`that in an obviousness analysis, “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant field to
`combine the elements in the way the claimed new invention does”). Further,
`“[t]o satisfy its burden of proving obviousness, a petitioner cannot employ
`mere conclusory statements. The petitioner must instead articulate specific
`reasoning, based on evidence of record, to support the legal conclusion of
`
`
`9 With respect to the fourth Graham factor, the parties in these proceedings
`do not present arguments or evidence regarding objective indicia of non-
`obviousness. Therefore, the obviousness analysis below is based on the first
`three Graham factors.
`
`17
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380
`(Fed. Cir. 2016).
`
`B. Level of Ordinary Skill in the Art
`In the Final Written Decisions, we determined that 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.” 810 Final
`Dec. 12; 811 Final Dec. 12; 814 Final Dec. 11; 835 Final Dec. 12; 836 Final
`Dec. 12. We see no reason to depart from this determination, which the
`parties did not challenge on appeal.
`
`C. Claim Construction
`In the Final Written Decisions in the 810 IPR and 835 IPR, we
`construed the claim term “process characteristics” recited in claim 9 of the
`’115 patent and claim 28 of the ’560 patent to mean “characteristics of a
`process for an agent.” 810 Final Dec. 23–26; 835 Final Dec. 24–26.
`In the Final Written Decisions in the 810 IPR, 811 IPR, 814 IPR,
`835 IPR, and 836 IPR, we also construed the claim terms “event,” “event
`type,” “goal,” “compound goal,” and “goal satisfaction plan.” 810 Final
`Dec. 13–23; 811 Final Dec. 13–23; 814 Final Dec. 12–21; 835 Final Dec.
`13–20; 836 Final Dec. 13–20. We additionally construed “arbitrarily
`complex goal expression” in the 810 IPR, 811 IPR, and 814 IPR (810 Final
`Dec. 13–14; 811 Final Dec. 13–14; 814 Final Dec. 12–13) and “non-
`syntactic decomposition of the base goal” and “computer process” in
`835 IPR and 836 IPR (835 Final Dec. 13–14, 20–23; 836 Final Dec. 13, 20–
`23).
`
`18
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`None of these claim constructions in the Final Written Decisions were
`appealed or addressed by the Federal Circuit. See Microsoft, 2022 WL
`989403. Considering the full record, we see no reason to depart from the
`claim constructions provided in the Final Written Decisions and, therefore,
`maintain the same claim constructions for purposes of this Remand
`Decision.
`The Federal Circuit reversed the Board’s “implicit claim construction”
`of the term “advisory suggestions.” Microsoft, 2022 WL 989403, at *9–10.
`We address the construction of this term in the context of the patentability
`analysis of claims 10 and 11 of the ’560 patent below.
`We additionally address claim construction of the terms “trigger,”
`“trigger declaration,” and “data wave carrier” in the context of the
`patentability analysis of claims 8 and 86 of the ’115 patent below.
`No other claim terms, beyond those terms noted above, need to be
`construed expressly for purposes of this Remand Decision. See Viv
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