Trials@uspto.gov
`571-272-7822
`
` Paper 39
`Date: November 17, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WORKSPOT, INC.,
`Petitioner,
`v.
`CITRIX SYSTEMS, INC.,
`Patent Owner.
`
`IPR2019-01002
`Patent 8,135,843 B2
`
`
`
`
`
`
`
`
`
`Before JUSTIN T. ARBES, MIRIAM L. QUINN, and
`FREDERICK C. LANEY, Administrative Patent Judges.
`ARBES, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`INTRODUCTION
`I.
`A. Background and Summary
`Petitioner Workspot, Inc. filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 1, 5, 7–9, 12, 16, 18, 19, 23, 24, 29, and 30
`of U.S. Patent No. 8,135,843 B2 (Ex. 1001, “the ’843 patent”) pursuant to
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`IPR2019-01002
`Patent 8,135,843 B2
`35 U.S.C. § 311(a). On November 20, 2019, we instituted an inter partes
`review as to all challenged claims on all grounds of unpatentability asserted
`in the Petition. Paper 12 (“Decision on Institution” or “Dec. on Inst.”).
`Patent Owner Citrix Systems, Inc. subsequently filed a Patent Owner
`Response (Paper 20, “PO Resp.”), Petitioner filed a Reply (Paper 23,
`“Reply”), and Patent Owner filed a Sur-Reply (Paper 29, “Sur-Reply”).
`An oral hearing was held on August 25, 2020, and a transcript of the hearing
`is included in the record (Paper 37, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
`follow, we determine that Petitioner has not shown by a preponderance of
`the evidence that claims 1, 5, 7–9, 12, 16, 18, 19, 23, 24, 29, and 30 are
`unpatentable.1
`
`
`B. Related Matters
`The parties indicate that the ’843 patent is the subject of the following
`district court case: Citrix Systems, Inc. v. Workspot, Inc.,
`Case No. 18-588-GMS (D. Del.). See Pet. 1; Paper 4, 2. Petitioner filed a
`petition challenging another patent also asserted in the district court case,
`which was denied. See Workspot, Inc. v. Citrix Sys., Inc., IPR2019-01001,
`Paper 15 (PTAB Nov. 19, 2019).
`
`
`
`1 We previously granted Petitioner’s motion to seal portions of
`Exhibits 1011 and 1012 in this proceeding. Paper 14. We do not refer to
`any sealed material in this Decision.
`
`2
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`Patent 8,135,843 B2
`
`C. The ’843 Patent
`The ’843 patent discloses methods and systems for “providing access
`to a graphical user interface (GUI) application using web services.”
`Ex. 1001, col. 2, ll. 26–28. “[A] web portal can integrate numerous services
`from other web sites, such as travel information and search capabilities,”
`called “web services,” which “enables the web portal to offer more services
`to its users.” Id. at col. 1, ll. 12–21. The ’843 patent describes a prior art
`arrangement where a company publishes its web services using a web
`service directory on a content server and a client can access one of the web
`services through a programming interface. Id. at col. 1, ll. 42–49, 63–66.
`The prior art arrangement had various disadvantages, such as the need for
`“client-side applications (having client-side application logic) to be
`developed by the supplier of the web service to ensure that the client . . . can
`properly execute the web service through its interface.” Id. at col. 2, ll. 4–9.
`According to the ’843 patent, there was “a need to access web services in a
`more user-friendly manner, such as by providing greater interactivity
`between the client . . . and the web service and less dependence on suppliers
`of web services for applications to correctly execute with the web service.”
`Id. at col. 2, ll. 18–22.
`
`
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`Patent 8,135,843 B2
`Figure 2 of the ’843 patent, depicting an embodiment of the invention,
`is reproduced below.
`
`
`Figure 2 depicts computer system 200 comprising client 105, content server
`110, web server 115, and application server 205. Id. at col. 3, ll. 59–67.
`Client 105 includes web browser 140 and application client 215, which may
`be a GUI application, such as “an Independent Computing Architecture
`(ICA) client, developed by Citrix Systems, Inc.” Id. at col. 4, ll. 33–39. The
`’843 patent notes that “[a]lthough illustrated with three servers 110, 115, 205
`[in Figure 2 above], any number of servers can be used to implement the
`functions described . . . . In one embodiment, two or more of the servers 110,
`115, 205 are aggregated together and provided as a single physical
`machine.” Id. at col. 4, ll. 1–5.
`The ’843 patent describes the steps involved in first publishing a web
`service using web publishing tool 223 and web service directory 145 on
`content server 110, including storing an entry for a “service access point”
`(SAP), which is “a unique address for an application” (e.g., a Uniform
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`Resource Locator (URL)). Id. at col. 5, ll. 11–21, col. 6, l. 46–col. 7, l. 42,
`Fig. 3 (steps 300–320). Client 105 subsequently searches web service
`directory 145 for a particular web service. Id. at col. 4, ll. 49–50, col. 7,
`ll. 43–53, Fig. 3 (steps 322 and 325). Content server 110 responds by
`transmitting the SAP for the requested web service, and client 105, using the
`received SAP, transmits a request for the GUI application to web server 115.
`Id. at col. 7, l. 54–col. 8, l. 3, Fig. 3 (steps 330–345).
`Publishing server plug-in 220 on web server 115 determines the SAP
`entry for the request and transmits a document containing information for
`the GUI application (e.g., the Hypertext Transfer Protocol (HTTP) address
`of application server 205) to client 105. Id. at col. 8, ll. 4–27, Fig. 3 (steps
`350–355). If application client 215 is already installed on client 105, client
`105 launches application client 215 to view the document received from web
`server 115. Id. at col. 8, ll. 32–36, Fig. 3 (step 360). Otherwise, client 105
`first “communicates with the application server 205 to download and install
`the application client 215.” Id. at col. 8, ll. 29–32. “Once the application
`client 215 is installed and executing on the client 105, the application server
`[205] then executes the application and displays the application on the
`application client 215 (step 365).” Id. at col. 8, ll. 37–40. Application client
`215 provides “service-based access to published applications, desktops,
`desktop documents, and any other application that is supported” (e.g., word
`processing applications like Microsoft Word). Id. at col. 8, l. 63–col. 9, l. 7.
`According to the ’843 patent, providing access to a remote application
`in this manner is advantageous because it allows for “a more power interface
`than a web [user interface (UI)] and a more user-friendly environment” and
`avoids the need for “client-side application logic to properly execute on the
`client.” Id. at col. 2, ll. 26–36.
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`Patent 8,135,843 B2
`
`D. Illustrative Claims
`Claims 1, 9, 12, and 19 of the ’843 patent are independent. Claims 1
`and 19 recite:
`1. A method of providing access to a remote application to
`an application client or end user application comprising:
`(a) receiving, by a client, from a web service directory on
`a content server, a service access point associated with a first
`application, the service access point identifying a web server;
`(b) receiving, by the client, from the web server identified
`by the service access point, address information associated with
`the first application;
`(c) launching, by the client, a second application, the
`second application communicating via a presentation layer
`protocol with an application server identified by the received
`address information; and
`(d) launching, by the application server, the first
`application and returning information to the second application
`via the presentation layer protocol.
`19. A method of providing access to a remote application
`to an application client or end user application comprising:
`a) receiving, by a content server, from a client, a request
`to access a service access point associated with a first
`application;
`b) identifying, by the content server, that the requested
`service access point can be used with an application client;
`c) requesting, by the client, from a web server, address
`information associated with the first application identified by the
`service access point;
`d) converting, by the web server, the requested address
`information into a file, the format of the file associated with the
`application client;
`e) transmitting, by the web server, the file including the
`converted address information to the client;
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`(f) launching by the client a second application, the second
`application communicating via a presentation layer protocol with
`an application server identified by the converted address
`information; and
`(g) launching by the application server the first application
`and returning information to the second application via the
`presentation layer protocol.
`
`
`Publication
`(Ex. 1004,
`
`E. Evidence
`The pending grounds of unpatentability in the instant inter partes
`review are based on the following prior art:
`U.S. Patent No. 6,836,786 B1, filed Apr. 30, 2001, issued
`Dec. 28, 2004 (Ex. 1005, “Zoller”);
`International
`Patent
`Application
`No. WO 00/39678, published July 6, 2000
`“Duursma”); and
`Paul Stansel et al., Configuring Citrix MetaFrame for
`Windows 2000 Terminal Services (Melissa Craft ed., 2000)
`(Ex. 1003, “Craft”).2
`Petitioner filed declarations from D. Ethan Trooskin-Zoller3 (Ex. 1016) and
`Laura A. Whitbeck (Ex. 1014) with its Petition and a second declaration
`from Ms. Whitbeck (Ex. 1029) with its Reply. Patent Owner filed a
`declaration from Edwin A. Hernandez-Mondragon, Ph.D. (Ex. 2002), with
`its Preliminary Response and a second declaration from Dr. Hernandez
`(Ex. 2004) with its Response.
`
`
`
`2 When citing Craft, we refer to the original page numbers of the reference,
`consistent with Petitioner’s usage in the Petition.
`3 Mr. Zoller is the first named inventor of the Zoller reference. See
`Ex. 1005, code (75); Ex. 1016 ¶ 88.
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`IPR2019-01002
`Patent 8,135,843 B2
`
`F. Asserted Grounds
`The instant inter partes review involves the following grounds of
`unpatentability:
`Claims Challenged
`
`35 U.S.C. § References/Basis
`
`1, 5, 7–9, 12, 16, 18,
`19, 23, 24, 29, 30
`1, 5, 7–9, 12, 16, 18,
`19, 23, 24, 29, 30
`
`103(a)4
`
`Craft, Duursma
`
`103(a)
`
`Zoller, Craft, Duursma
`
`
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art for a challenged
`patent, we look to “1) the types of problems encountered in the art; 2) the
`prior art solutions to those problems; 3) the rapidity with which innovations
`are made; 4) the sophistication of the technology; and 5) the educational
`level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654,
`666–667 (Fed. Cir. 2000). “Not all such factors may be present in every
`case, and one or more of them may predominate.” Id.
`In the Decision on Institution, based on the parties’ arguments and
`record at the time, we preliminarily found that a person of ordinary skill in
`the art at the time of the ’843 patent (March 2002) would have had
`“a bachelor’s degree in computer science (or equivalent education) and
`
`
`4 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
`challenged claims of the ’843 patent have an effective filing date before the
`effective date of the applicable AIA amendments, we refer to the pre-AIA
`versions of 35 U.S.C. §§ 102 and 103.
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`3–4 years of experience working with remote-accessed computer systems
`(or equivalent work experience).” Dec. on Inst. 8–9; see Pet. 12; Paper 10,
`22–23; Ex. 1016 ¶ 63; Ex. 2002 ¶¶ 34–37. Patent Owner agrees with that
`assessment. PO Resp. 24–25. Petitioner disagrees “to the extent that [the]
`definition requires a formal computer science-related degree and excludes
`equivalent education or experience.” Reply 5. Petitioner instead proposes
`that a person of ordinary skill in the art would have had “at least a bachelor’s
`degree in computer science and 3–4 years of experience working in the field
`of remote-accessed computer systems, or an equivalent combination of
`education and/or experience in related fields.” Pet. 12 (emphasis added).
`Patent Owner responds that an ordinarily skilled artisan would have had a
`“formal” education “to understand the theory required to design and build a
`remote-accessed computer system” in addition to the required work
`experience. Sur-Reply 6–7; see PO Resp. 25–27.
`Based on the full record developed during trial, including our review
`of the ’843 patent and the types of problems and prior art solutions described
`in the ’843 patent, we adopt the preliminary definition of the level of
`ordinary skill in the art, with one clarification. The definition includes both
`an education and a work experience component. The education component
`is satisfied by a bachelor’s degree in computer science or equivalent
`education. We see no reason why such an education must have been
`acquired in a “formal” setting as Patent Owner suggests—as opposed to, for
`example, via on-the-job training or work experiences that would be the
`equivalent of the education one would receive by obtaining a bachelor’s
`degree in computer science. We find that a person of ordinary skill in the art
`would have had a bachelor’s degree in computer science (or equivalent
`education) and 3–4 years of experience working with remote-accessed
`
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`Patent 8,135,843 B2
`computer systems (or equivalent work experience), and apply that level of
`skill for purposes of this Decision.5
`
`
`B. Claim Interpretation
`We interpret the claims of the ’843 patent
`using the same claim construction standard that would be used to
`construe the [claims] in a civil action under 35 U.S.C. 282(b),
`including construing the [claims] in accordance with the ordinary
`and customary meaning of such [claims] as understood by one of
`ordinary skill in the art and the prosecution history pertaining to
`the patent.
`See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
`November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).
`“In determining the meaning of [a] 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
`
`
`5 We note that the parties disagree as to whether their respective declarants,
`Mr. Zoller and Dr. Hernandez, qualified as persons of ordinary skill in the
`art at the time of the ’843 patent. See PO Resp. 25–27; Reply 5–7;
`Sur-Reply 6–8. We have reviewed the witnesses’ respective backgrounds
`and are persuaded that they were persons of at least ordinary skill in the art
`at the relevant time. See Ex. 1016 ¶¶ 5–24, pp. 76–79; Ex. 2004 ¶¶ 6–16,
`App’x A. Also, the difference in their levels of experience with respect to
`coding and software development is not so great as to require discounting
`Mr. Zoller’s testimony as Patent Owner contends. See PO Resp. 25–27.
`Nevertheless, we credit Dr. Hernandez’s testimony over that of Mr. Zoller
`on various points, based on the explanations he provides and the support he
`cites regarding the asserted prior art, for the reasons explained herein. See
`infra Sections II.D, II.E.
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`(Fed. Cir. 2006). Claim terms are given their plain and ordinary 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 v. AWH
`Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two
`exceptions to this general rule: 1) when a patentee sets out a definition and
`acts as his own lexicographer, or 2) when the patentee disavows the full
`scope of a claim term either in the specification or during prosecution.”
`Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
`2012).
`
`
`1. “Service Access Point”
`In the Decision on Institution, based on the parties’ arguments and
`record at the time, we preliminarily interpreted the claim term “service
`access point” to mean “a unique address for an application.” Dec. on Inst.
`10–11 (citing Pet. 13–14; Paper 10, 24–27). The parties agree with that
`interpretation. See PO Resp. 12; Reply 1. Based on the full record
`developed during trial, we do not perceive any reason or evidence that
`compels deviation from the preliminary interpretation, and adopt the
`previous analysis for purposes of this Decision.
`
`
`2. “Web Service Directory”
`We also preliminarily interpreted the term “web service directory”
`in the Decision on Institution to mean “a directory of information for web
`services.” Dec. on Inst. 11–13. Patent Owner argues that the term should be
`given its plain and ordinary meaning or, alternatively, interpreted to mean a
`“searchable directory of information for web services,” citing as support
`various portions of the Specification. PO Resp. 12–14 (citing Ex. 1001,
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`col. 1, ll. 46–62, col. 2, ll. 47–49, col. 4, l. 66–col. 5, l. 2, col. 7, ll. 43–53;
`Ex. 2004 ¶¶ 52–57); Sur-Reply 5–6. Petitioner disagrees that the “web
`service directory” of the claims must be “searchable.” Reply 1–4. We agree
`with Petitioner.
`“Web service directory” is recited in independent claims 1, 9, and 12,
`and dependent claims 2, 20, 22, and 23. Claim 1, for example, recites
`“receiving, by a client, from a web service directory on a content server,
`a service access point associated with a first application, the service access
`point identifying a web server.” There is no reference in the challenged
`claims themselves to the “web service directory” being searchable. Indeed,
`the only reference to searching in any of the claims of the ’843 patent is in
`claim 2, which recites “transmitting a query to the web service directory to
`search for the first application prior to step (a).”6 Claim 2, however,
`depends from claim 1 and thus does not provide a basis to limit the parent
`claim to a “searchable” web service directory.
`The Specification does not define the term “web service directory” as,
`or state that a “web service directory” must be, capable of being searched.
`Rather, it describes searching a web service directory only in the context of
`exemplary embodiments. The computer system shown in Figure 2 is “an
`embodiment” of the invention in which “client 105 searches the web service
`directory 145 for a web service.” Ex. 1001, col. 3, ll. 52–53, 59–62, col. 4,
`ll. 49–50. “In one embodiment, the search is a manual search.
`Alternatively, the search is an automatic search. The web service directory
`145 may also provide a service based view, such as white and yellow pages,
`
`6 Claims 12 and 22 also recite a client sending a “query” to a web service
`directory, but do not recite that the query is to “search” for a first
`application.
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`to search for web services in the web service directory.” Id. at col. 4,
`ll. 50–54. Figure 3 likewise shows the sequence of steps for “an
`embodiment” of the invention where client 105 “queries a service name
`from the web service directory 145” in step 322 (similar to the step recited in
`dependent claim 2) and “content server 110 receives the query . . . and finds
`the requested service name in the web service directory 145” in step 325.
`Id. at col. 3, ll. 54–55, col. 7, ll. 43–46. These are only exemplary
`embodiments and do not support Patent Owner’s argument that a “web
`service directory” must be “searchable” in all cases. See id. at col. 10,
`ll. 17–19 (“the invention should not be limited to certain embodiments”);
`Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 735 (Fed. Cir. 2014)
`(concluding that descriptions in the specification of “preferred” and
`“example” embodiments were “not sufficient to redefine [a] term . . . to have
`anything other than its plain and ordinary meaning” (citation omitted)).
`Indeed, Patent Owner’s arguments themselves confirm that the cited
`embodiments of a web service directory are non-definitional and merely
`point out permissible examples. See PO Resp. 13 (“[w]eb service directories
`may include a table listing supported web services and documentation” and
`“a web service directory can allow a device or user to search for a published
`web service” (emphases added)).
`The Specification also discloses embodiments of a web service
`directory in which service access points may be accessed by “browsing” or
`“navigating” rather than submitting a search query. See, e.g., Ex. 1001,
`col. 4, ll. 54–57 (“In another embodiment, the web service directory 145
`supports a hierarchical browsing based on a structured service name and
`service kind for GUI applications.”), col. 7, ll. 46–49 (“In another
`embodiment, the user of the client 105 navigates the web service directory
`
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`145 until locating a particular service name that the user of the client 105
`was attempting to find.”), 50–53 (a client “can query or navigate the web
`service directory 145 to discover published web services” (emphasis
`added)). This further supports Petitioner’s position that a person of ordinary
`skill in the art would have understood the term “web service directory” to
`not require search capability.
`Finally, we note that our interpretation is consistent with that of the
`district court in the related district court case.7 See Ex. 2013, 4–5.
`Based on the full record developed during trial, we do not perceive
`any reason or evidence that compels deviation from our preliminary
`interpretation, adopt the previous analysis for purposes of this Decision, and
`interpret “web service directory” to mean “a directory of information for
`web services.”
`
`
`3. “Content Server” and “Web Server”
`We did not preliminarily interpret the terms “content server” and
`“web server” in independent claims 1, 9, 12, and 19 in the Decision on
`Institution. We noted, though, the parties’ agreement that “the content
`server and the web server may reside on the same physical machine.”
`Dec. on Inst. 36 (quoting Paper 10, 30). That reading of the claims is based
`on one paragraph of the Specification, relied upon by Petitioner, stating that
`
`
`7 The district court also construed claim 1 of the ’843 patent to not require
`that steps (c) and (d) be performed in order, and noted Patent Owner’s
`acknowledgement that steps (a) and (b) must be performed in order.
`Ex. 2013, 28–30 & n.5. We need not resolve these issues, given our
`determination that Petitioner has not met its burden to show that certain
`limitations of claim 1 are taught by the prior art. See infra Sections II.D.3,
`II.E.2.
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`“[a]lthough illustrated with three servers 110, 115, 205 [in Figure 2], any
`number of servers can be used to implement the functions described [in the
`Specification]. In one embodiment, two or more of the servers 110, 115,
`205 are aggregated together and provided as a single physical machine.”
`Ex. 1001, col. 4, ll. 1–5; see Pet. 15–16.
`In their papers filed during trial, the parties reiterate their agreement
`that the “content server” and “web server” may reside on the same physical
`machine, and also agree that the recited servers “must still be two distinct
`components, even if residing on the same physical machine,” because they
`can be implemented in software. See PO Resp. 14–15; Reply 4; see also
`Ex. 2007, 8 (Petitioner arguing to the district court that “critically, the
`context of claim 1 and the patent specification confirm that the same
`component cannot meet both ‘web service directory on a content server’ and
`the ‘web server’ limitations”); Ex. 2008, 9 (Petitioner’s proposed
`interpretation to the district court that the recited servers be “distinct”);
`Tr. 27:13–22 (Petitioner noting that “in the district court, the parties are in
`agreement that the web server and the content server need to be distinct”).
`We agree that the “content server” and “web server” must be distinct
`components.
`“Where a claim lists elements separately, the clear implication of the
`claim language is that those elements are distinct component[s] of the
`patented invention.” Becton, Dickinson & Co. v. Tyco Healthcare Group,
`LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (citation and quotation marks
`omitted). Independent claims 1, 9, 12, and 19 each recite a “content server”
`and “web server” performing various functions. Claim 1, for example,
`recites “receiving, by a client, from a web service directory on a content
`server, a service access point associated with a first application, the service
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`access point identifying a web server,” and “receiving, by the client, from
`the web server identified by the service access point, address information
`associated with the first application.” The client thus communicates with
`both servers, receiving certain information from a web service directory on a
`content server and other information from a web server. Moreover, the
`service access point transmitted to the client in the first step is what
`identifies the web server to the client, allowing the client to communicate
`with the web server in the second step.8 See Tr. 12:12–17 (Petitioner
`acknowledging that “the function of the service access point is to identify
`the web server, so that the web server can then create the connection, the
`application, to the client”). Claims 9, 12, and 19 recite similar limitations
`pertaining to information transmitted “to” and “from” the client, content
`server, and web server, with the service access point “identifying” the web
`server in claims 9 and 12.
`The Specification and prosecution history demonstrate further that the
`terms “content server” and “web server” are used to identify distinct
`components. The Specification describes exemplary content server 110 and
`web server 115 as having different roles communicating information to and
`from client 105. See Ex. 1001, col. 7, l. 26–col. 8, l. 29, Fig. 3. The
`Specification also defines a service access point as “a unique address for an
`application.” Id. at col. 5, ll. 11–12 (emphasis added). The service access
`point uniquely identifies the web server—as opposed to a different
`
`
`8 Petitioner acknowledged this purpose behind the recited identification in
`the related district court case. See Ex. 2007, 8 (arguing that the first step
`“would have no purpose if ‘web service directory on a content server’ and
`the ‘web server’ were the same thing—the ‘web service directory on a
`content server’ would merely be identifying itself”).
`
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`IPR2019-01002
`Patent 8,135,843 B2
`component, such as the content server that provided it—so that the client
`may communicate with the web server and obtain the necessary information
`from it (i.e., address information identifying an application server) after
`receiving the service access point. See, e.g., id. at col. 2, l. 37–col. 3, l. 10,
`col. 5, ll. 16–26.
`During prosecution of the ’843 patent, the applicant attempted to
`distinguish certain prior art by arguing that the claimed arrangement
`provides “a level of indirection” with the “the client first contacting a
`content server providing a web service directory and then . . . contacting a
`web server from which the client retrieves address information of an
`application server which the client then contacts,” unlike the prior art where
`the client “receives a response without having to contact each of the different
`web servers.” Ex. 1002, 124–127; see also id. at 123–124 (applicant arguing
`that “[t]he service access point directs a client from a web service directory
`to a web server, which then directs the client to an application server”
`(emphasis added)); Tr. 6:19–24 (Petitioner acknowledging that “the
`indirection that occurs between the client and the content server, web server,
`and application server” is “[a] key aspect of the invention”). An
`understanding of “content server” and “web server” as encompassing the
`same component would be contrary to this allegedly important point of
`distinction for the claimed invention because the client’s communications
`would be directed to the same component and, thus, would eliminate the
`need for any “level of indirection.”
`Based on the full record developed during trial, we interpret the terms
`“content server” and “web server” in independent claims 1, 9, 12, and 19 to
`be distinct components (even if provided on a single physical machine).
`Accordingly, to prove that the challenged claims are unpatentable, Petitioner
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`IPR2019-01002
`Patent 8,135,843 B2
`must establish that the relied upon prior art teaches or suggests a “content
`server” and “web server” as distinct components, regardless of whether
`those servers are on a single or multiple physical machines. No further
`interpretation of “content server” and “web server,” or any other term,
`is necessary to resolve the parties’ disputes over the asserted grounds of
`unpatentability in this proceeding. See Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because
`we need only construe terms ‘that are in controversy, and only to the extent
`necessary to resolve the controversy,’ we need not construe [a particular
`claim limitation] where the construction is not ‘material to the . . . dispute.’”
`(citations omitted)).
`
`
`C. Legal Standards
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)).
`The question of obviousness is resolved on the basis of underlying factual
`determinations, including “the scope and content of the prior art”;
`“differences between the prior art and the claims at issue”; and “the level of
`ordinary skill in the pertinent art.”9 Graham v. John Deere Co., 383 U.S. 1,
`
`
`9 Additionally, secondary considerations, such as “commercial success, long
`felt but unsolved needs, failure of others, etc., might be utilized to give light
`to the circumstances surrounding the origin of the subject matter sought to
`be patented. As indicia of obviousness or nonobviousness, these inquiries
`may have relevancy.” Graham, 383 U.S. at 17–18. Patent Owner has not
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`IPR2019-01002
`Patent 8,135,843 B2
`17–18 (1966). When conducting an obviousness analysis, we consider a
`prior art reference “not only for what it expressly teaches, but also for what
`it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed.
`Cir. 2019) (citation omitted).
`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR,
`550 U.S. at 418. 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
`(for 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 t