IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`VMware, Inc.
`Petitioner,
`
`v.
`
`Intellectual Ventures I LLC,
`Patent Owner.
`
`
`
`Case No. IPR2020-00470
`U.S. Patent No. 7,949,752
`
`
`
`PETITION FOR INTER PARTES REVIEW OF CLAIMS
`1–4, 6, 9–11, 13–14, and 22–26 OF U.S. PATENT NO. 7,949,752
`
`
`
`
`
`
`
`

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`
`
`TABLE OF CONTENTS
`
`Table of Contents ...................................................................................................... ii
`Petitioner’s Exhibit List ........................................................................................... vi
`I.
`Introduction ........................................................................................................ 1
`II. VMware Has Standing and the ’752 Patent is Eligible for Inter Partes
`Review........................................................................................................................ 1
`III. Background ........................................................................................................ 1
`IV. The ’752 Patent .................................................................................................. 2
`A. Specification................................................................................................... 2
`B. Prosecution History ........................................................................................ 7
`C. Effective Filing Date and Date of Invention ................................................11
`D. Level of Ordinary Skill in the Art ................................................................12
`V. Claim Construction ..........................................................................................12
`A. “Means” limitations .....................................................................................14
`B. “Service” and “Service resource” ................................................................15
`C. “Agent” ........................................................................................................16
`D. “URL defining a type of event and identifying the network-based agent” .17
`E.
`“Consumed” .................................................................................................18
`F.
`“Exhausted” .................................................................................................18
`G. “Event Handler” ...........................................................................................20
`H. “Service wrapper” ........................................................................................20
`VI. Precise Relief Requested ..................................................................................21
`A. Proposed Grounds and Prior Art ..................................................................21
`B. The Proposed Grounds Are Not Cumulative or Redundant. .......................23
`VII. Detailed Explanation of Grounds for Institution..............................................24
`A. Ground 1: Chow Rendered Claims 1–4, 9, 13–14, 22, and 24–26 Obvious.
`
`24
`1. Summary of Chow ....................................................................................24
`2. Claim 1 .....................................................................................................28
`a. Preamble ................................................................................................29
`b. “Means for receiving…” .......................................................................29
`ii
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`c. “Means for invoking…” ........................................................................30
`d. “Means … for using…” ........................................................................33
`e. “Means for communicating…” .............................................................35
`3. Claim 2 .....................................................................................................36
`4. Claim 3 .....................................................................................................37
`5. Claim 4 .....................................................................................................38
`6. Claim 9 .....................................................................................................39
`a. Preamble ................................................................................................40
`b. “Processor” ............................................................................................40
`c. “Memory storing instructions” .............................................................40
`7. Claim 13 ...................................................................................................42
`8. Claim 14 ...................................................................................................43
`a.
`Identifying .............................................................................................44
`b. Determining...........................................................................................44
`9. Claim 22 ...................................................................................................45
`10. Claim 24 ...................................................................................................46
`a. Preamble ................................................................................................46
`b. “Receiving…” .......................................................................................47
`c. “Invoking…” .........................................................................................47
`d. “Communicating…” .............................................................................48
`11. Claim 25 ...................................................................................................48
`12. Claim 26 ...................................................................................................50
`B. Ground 2: Chow and Bauer Rendered Claims 6, 10, 11, and 23 Obvious. .51
`1. Summary of Chow ....................................................................................51
`2. Summary of Bauer ....................................................................................51
`3. A POSITA would have combined Chow and Bauer ................................52
`4. Claim 6 .....................................................................................................53
`5. Claim 10 ...................................................................................................54
`6. Claim 11 ...................................................................................................55
`7. Claim 23 ...................................................................................................55
`
`iii
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`C. Ground 3: Chow and White Rendered Claims 1–4, 9, 13–14, 22, and 24–26
`Obvious. ...............................................................................................................56
`1. Summary of Chow ....................................................................................57
`2. Summary of White ...................................................................................57
`3. A POSITA would have combined Chow and White................................58
`4. Claims 1–4, 9, 13–14, 22, and 24–26 .......................................................59
`D. Ground 4: Chow, Bauer, and White Rendered Claims 6, 10, 11, and 23
`Obvious. ...............................................................................................................60
`1. Summary of Chow ....................................................................................60
`2. Summary of Bauer ....................................................................................60
`3. Summary of White ...................................................................................60
`4. A POSITA would have combined Chow, Bauer, and White ...................61
`5. Claims 6, 10, 11, and 23 ...........................................................................61
`E. Secondary considerations .............................................................................61
`VIII. Mandatory Notices .......................................................................................62
`A. Real Parties-in-Interest .................................................................................62
`B. Related Proceedings .....................................................................................62
`C. Lead and backup counsel .............................................................................63
`D. Electronic Service ........................................................................................63
`IX. Institution of This Inter Partes Review Would Be Equitable. .........................63
`X. Fees ...................................................................................................................65
`XI. Conclusion ........................................................................................................65
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`
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`
`iv
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ........................................................................................ 16
`
`Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`No. IPR2016-01357, 2017 WL 3917706 (P.T.A.B. Sept. 6, 2017) ................... 64
`
`NHK Spring Co., Ltd. v. Intri-Plex Technologies, Inc.
`IPR2018-00752, Paper No. 8, 19–20 (P.T.A.B. Sep. 12, 2018) ......................... 64
`
`Philips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 19
`
`Verizon Services Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007) .......................................................................... 19
`
`Statutes
`
`35 U.S.C. § 102 ........................................................................................................ 23
`
`35 U.S.C. § 103 .................................................................................................passim
`
`35 U.S.C. § 112 ........................................................................................................ 14
`
`Other Authorities
`
`83 FED. REG. 51340 (Oct. 11, 2018) ........................................................................ 12
`
`Rule 42.104(a) ............................................................................................................ 1
`
`
`
`v
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`PETITIONER’S EXHIBIT LIST
`
`Ex. No.
`
`Brief Description
`
`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`U.S. Patent No. 7,949,752
`
`File History of U.S. Patent No. 7,949,752
`
`File History of U.S. Patent No. 6,839,733
`
`File History of U.S. Patent No. 6,163,794
`
`Declaration of Darrell Long
`
`HCC Ins. Holdings, Inc. v. Intellectual Ventures I LLC,
`IPR2016-01431, Paper No. 1
`
`HCC Ins. Holdings, Inc. v. Intellectual Ventures I LLC,
`IPR2016-01431, Paper No. 6
`
`HCC Ins. Holdings, Inc. v. Intellectual Ventures I LLC,
`IPR2016-01431, Paper No. 8
`
`Report and Recommendation of United States magistrate
`judge, Intellectual Ventures I LLC v. HCC Insurance
`Holdings, Inc., 6:15-cv-660 (E.D.Tx. Aug. 26, 2016), ECF
`No. 102
`
`Plaintiff’s Objections to Magistrate Mitchell’s Report and
`Recommendation, Intellectual Ventures I LLC v. HCC
`Insurance Holdings, Inc., 6:15-cv-660 (E.D.Tx. Sep. 9,
`2016), ECF No. 110
`
`Joint Motion to Stay All Deadlines and Notice of Settlement,
`Intellectual Ventures I LLC v. HCC Insurance Holdings, Inc.,
`6:15-cv-660 (E.D.Tx. Dec. 26, 2018), ECF No. 207
`
`Scheduling Order, Intellectual Ventures I LLC v. VMware,
`Inc., 1:19-cv-01075 (W.D.Tx. Dec. 10, 2019), ECF No. 44
`
`1013
`
`IV’s infringement contentions for ’752 patent
`
`vi
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`
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`Ex. No.
`
`Brief Description
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`1014
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`1015
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`1016
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`1023
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`1024
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`1025
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`F. Cheong, Internet Agents (1996)
`
`U.S. Patent No. 7,043,532
`
`U.S. Patent No. 6,247,056
`
`U.S. Patent No. 5,740,231
`
`U.S. Patent No. 6,029,175
`
`U.S. Patent No. 5,367,635
`
`U.S. Patent No. 5,603,031
`
`Complaint, Intellectual Ventures I LLC v. VMware, Inc.,
`1:19-cv-01075 (W.D.Tx. Dec. July 31, 2019), ECF No. 1.
`
`Curriculum vitae of Darrell Long, Ph.D.
`
`Dolan, “But _I_ can’t FTP” Re: shared X systems available,
`comp.sources.d newsgroup post (January 13, 1991)
`
`Fielding, Relative Uniform Resource Locators, IETF
`RFC1808 (June 1995)
`
`Berners-Lee et al., Uniform Resource Locators (URL), IETF
`RFC1738 (December 1994)
`
`vii
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`
`
`I.
`
`Introduction
`
`During prosecution, the examiner located every element of the claims of
`
`U.S. Patent No. 7,949,752 (“the ’752 patent”) in the prior art, except for one minor
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`limitation about a “uniform resource locator” (“URL”). Petitioner VMware, Inc.
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`(“VMware”) has located a reference—unknown to the examiner—that disclosed
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`this missing element. Because all elements of the claims have now been located in
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`the prior art, often in a single reference, VMware requests Inter Partes review of
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`claims 1–4, 6, 9–11, 13–14, and 22–26 of the ’752 patent (Ex. 1001).
`
`II. VMware Has Standing and the ’752 Patent is Eligible for Inter Partes
`Review.
`
`VMware may file this petition. VMware certifies under Rule 42.104(a) that
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`the ’752 patent is available for inter partes review and that VMware is not barred
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`or estopped from requesting an inter partes review challenging the patent claims
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`on the identified grounds. VMware was sued in the U.S. District Court for the
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`Western District of Texas by the patent owner, Intellectual Ventures I LLC (“IV”),
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`on July 31, 2019. Ex. 1021. The complaint alleges infringement of the ’752 patent.
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`Id. VMware is not estopped from challenging the claims on the grounds identified
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`in this Petition.
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`III. Background
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`The ’752 patent generally relates to software agents—“personal software
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`assistants with authority delegated from their users,” Ex. 1014, 21. But software
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`agents were not new when the ’752 patent was filed. Teachings of software agents
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`go back to at least 1970. Id (citing the work of “early visionaries” from 1970,
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`1984, and 1989). By 1996, there were many existing agent systems. See id., 21–50
`
`(describing twenty-two existing agent systems in introductory chapter). Many of
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`these agents interacted with the Internet and the world wide web. For example,
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`“WebWalker” was an agent that maintained links in a webpage and “WebShopper”
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`was an agent that crawled the web for low-price audio compact discs. Id., 169–197,
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`309–361.
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`Three prior art agent systems are relevant to this petition: Chow, Bauer, and
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`White. Chow taught an agent system that monitored a webpage for any updates
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`and provided those updates to a user. Ex. 1018, 3:60–63. Bauer taught an agent
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`system that was user-extensible. Ex. 1019, 3:46–57. And White taught an agent
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`system where the agent process could execute on one computer and then move to a
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`second computer to continue its execution. Ex. 1020, 8:27–41.
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`IV. The ’752 Patent
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`A.
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`Specification
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`The ’752 patent described a problem with services such as email, voice mail,
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`electronic organizers, and on-line databases. Ex. 1001, 1:56–60, 2:5–6. The
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`problem was that the software applications supporting those services were “often
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`developed with a broad spectrum of subscribers in mind.” Id., 2:6–7. This meant
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`2
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`the applications “address[ed] the generalized needs of many subscribers, but not
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`the specialized needs of any one particular subscriber or group of subscribers.” Id.,
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`2:7–11. For a subscriber to obtain modified software to address the subscriber’s
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`specialized needs, the subscriber would have to convince the service provider to
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`bear the costs of developing, testing, and maintaining the modified software. Id.,
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`2:12–34.
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`The solution discussed as the “present invention” in the summary section of
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`the ’752 patent is to make the network system “extensible (e.g. programmable) by
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`‘end-users.’” Ex. 1001, 2:42–44. This is accomplished by augmenting the network
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`system with an agent system. Id., 2:54–55. This augmentation was made possible
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`by programmatically exposing capabilities of the network through services, service
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`resources, and service wrappers, which software agents could use to modify the
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`services. Id., 2:55–59.
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`Reading these portions of the ’752 patent specification, one might get the
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`impression that the applicants invented agent systems, or at the very least invented
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`extensible agent systems. But as discussed in the background section, this is not the
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`case. See § II supra. By October 1998, extensible network software agents were
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`known in the art. See id. And the independent claims at issue don’t recite that idea,
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`anyway. As discussed below, after a long prosecution, the claims only emerged
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`from prosecution after being narrowly amended to include one specific aspect of
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`3
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`the disclosed embodiment: invoking a network-based agent via a URL. See § IV.B,
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`infra.
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`The disclosed embodiment was implemented in the network system (2) of
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`Figure 1 (reproduced below). Ex. 1001, 5:23–25. The network system had two
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`main parts: “programmable functionality component” (4) and “hard-wired
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`functionality component” (6). Id., 5:55–56. The programmable functionality
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`component comprised an agent system, including an agent server (20) and agents
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`(22). Id., 5:63–67, Figure 1. The network system also included graphical and voice
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`user interfaces (12 and 16), through which users interacted with the network
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`system. Id., 6:5–6, 16–19, 49–52. And, finally, the network system also included
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`one or more services (24) with associated service wrappers (26) and service
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`resources (25). Id., Figure 1.
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`4
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`The agents were “implemented as a software application, program, or
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`process” which ran on behalf of an affiliated user or “principal.” Ex. 1001, 8:26–
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`29, 31–34. Agents were “responsible for performing a particular task or set of tasks
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`on behalf of the respective principal.” Id., 8:56–58. Such tasks included using
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`services (24). Id., 10:19–21. Examples included an agent placing or receiving calls
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`or voice mails with a service that supported call processing or an agent retrieving
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`documents, such as electronic periodicals, from an on-line data retrieval service.
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`Id., 10:21–25, 41–45.
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`In performing tasks like these, agents consumed computational resources
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`(21) and service resources (25). Ex. 1001, 9:31–36. Computational resources were
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`“resources provided or supported by a computer-based system” and included
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`“processing time, memory storage space, and the like.” Id., 8:15–21. Service
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`resources “enable[d] a service to be performed.” Id., 10:61–63. For example, in an
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`on-line data retrieval service, service resources could have “include[d] a telephony
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`connection, a modem for on-line communication, an on-line database provider
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`services, etc.” Id., 10:66–11:2. Furthermore, some service resources might have
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`“comprise[d] discrete units which [were] ‘consumed’ during utilization of the
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`respective resource by an agent 22,” And which could be exhausted. Id., 11:6–8,
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`25:31–34. For example, a service resource related to telephony services might have
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`5
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`comprised units of long-distance calling time that were consumed and exhausted
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`by placing a call. Id., 11:8–12.
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`Agents executed on the agent server, which “control[led], coordinate[d], and
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`otherwise manage[d] the overall operation of [the] programmable functionality
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`component.” Ex. 1001, 7:51–53. The agent server could be used to “invoke,
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`initiate, or execute various routines, processes, objects, and the like,” including
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`agents, and also controlled the consumption of computational resources and service
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`resources. Id., 7:53–55, 61–65. The agent server also communicated (exchanged
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`information) with the graphical and voice user interfaces. Id., 7:48–51. And,
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`finally, the agent server also interfaced with the services through their associated
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`service wrappers, which “mediate[d] the interaction between a service … and the
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`remainder of [the] programmable functionality component.” Id., 11:18–24.
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`Service wrappers “enable[d] communication between services 24 and agent
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`server 20” by, for example, “converting between a computer language (or
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`instruction set) used within agent server 20 and the computer language (or
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`instruction set) of the respective service 24.” Ex. 1001, 11:38–42. Each service
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`wrapper was “implemented, at least in part, with an application programming
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`interface (API),” which programmatically exposed the capabilities of a service to
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`an agent. Id., 11:42–47.
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`6
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`In operation, agents were executed upon the occurrence of “events.” Ex.
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`1001, 10:9–11, 15:23–26. Events could include “the lapse of a predetermined
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`amount of time (e.g., 24 hours) or the occurrence of a specified time (e.g., 6:00
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`a.m.)” or the “delivery of an e-mail message.” Id., 15:26–28, 18:27–28. An agent
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`would learn of an event via a “uniform resource locator (URL) which expresse[d]
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`or provide[d] an address for a web page.” Id., 18:29–31. “The URL specifie[d]
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`both the event’s type and the agent 22 which is [the] event’s intended recipient.”
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`Id., 18:31–32.
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`B.
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`Prosecution History
`
`The ’752 patent took a long and winding road to issuance, including multiple
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`restriction, rejection, and response milestones. In each response, the applicants
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`added aspects of the disclosed embodiment to the claims, one by one, until the
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`examiner finally relented and allowed the claims. The final limitation that the
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`examiner could not find in the disclosed prior art was “receiving a URL defining a
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`type of event and identifying the network-based agent.” As discussed in § VII
`
`below, at least Chow taught this limitation, but the examiner was unaware of that
`
`reference. See Ex. 1001, references cited.
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`Prosecution began with a restriction requirement and election followed by
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`the first substantive office action, which rejected all of the pending claims as
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`anticipated by U.S. Patent No. 7,043,532 to Humpleman (Ex. 1015). Ex. 1002,
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`7
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`511–516, 518–525, 533–537. In response, the applicants amended the pending
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`claims and added new claims 107–110. Id., 567–568. The amendments added
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`limitations that the service resources were “configured to be consumed by the
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`agent.” Id., 562, 564, 568. The applicants argued that Humpleman’s teaching of a
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`server which included “hardware as a resource,” differed from the recited service
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`resources that were “configured to be consumed by the agent.” Id., 570.
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`The next office action made the rejection final. Ex. 1002, 584–590. It
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`maintained all of the existing rejections and rejected the new claims over
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`Humpleman too. Id. In response to the applicants’ arguments, the office action
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`noted that “all resources can be considered to be ‘configured to be consumed,’”
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`and therefore the applicants failed to distinguish the claims from Humpleman. Id.,
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`585. The applicants responded with a request for continued examination and a
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`supplemental claim amendment that amended the prior claims and added new
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`claims 111–119. Id., 602–633. After the amendments all claims now recited that
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`“the service resource is exhausted after it is consumed by the agent.” Id., 604, 606,
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`609, 610. Applicants argued that Humpleman’s teaching of a server which
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`included “hardware as a resource,” differed from the recited service resources that
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`were “configured to be consumed by the agent … wherein the service resource is
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`exhausted after it is consumed by the agent.” Id., 612, 630.
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`8
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`Continued prosecution began with another restriction requirement and
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`election followed by the first substantive office action of continued prosecution.
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`Ex. 1002, 641–647, 650–658. That office action rejected all the claims for lack of
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`written description for “‘exhausting’ a resource” and also rejected all the claims as
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`anticipated by or obvious in view of U.S. Patent No. 6,247,056 to Chou (Ex. 1016).
`
`Id., 665–672. For the written description rejection, the office action pointed out
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`that the specification described “Computational Resources” being “consumed” or
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`“used up,” but that these were “situations where an agent may be ‘using up’ a
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`resource, but not necessarily ‘exhausting’ it.” Id., 667. The specification, therefore,
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`did not provide written description support for “exhausting a resource.” Id.
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`The applicants responded by cancelling one claim, amending the remaining
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`claims, and adding new dependent claims 137–140. Ex. 1002, 691–706. After
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`amendment all claims now recited that “an amount of the service resource is
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`exhausted after it is consumed by the agent” or “a discrete unit of the service
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`resource is exhausted upon being consumed by the agent” to remedy the written
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`description rejection. Id., 692–694, 699–701 (emphasis in original). In response to
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`the rejections over the Chou reference, applicants argued that Chou did not teach a
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`service resource that was exhausted upon being consumed. Id., 703. The examiner
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`had pointed to “cartridges” (software modules) that were “reused” by the agent.
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`Id., 703; see Ex. 1016, 5:58–67 (Chou’s teaching of “cartridges”). The applicants
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`argued that a reusable service resource was “the exact opposite” of “[a] …
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`resource [that] is exhausted upon being consumed” as recited in the claims. Ex.
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`1002, 703 (emphasis added).
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`The next office action made the rejection final. Ex. 1002, 711–717. The
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`office action found applicants’ argument about Chou “misleading” because in the
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`applicant’s invention “resources are reused” too. Id., 713. The office action points
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`out that in the specification, “resources are defined as including processing time,
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`memory storage space, and the like.” Id. “While these resources may be at full
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`capacity at any given time, the [sic] can always be reused later when they are not at
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`full capacity.” Id. Even so, the office action now rejected all the claims (including
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`the new claims) as anticipated by a different reference, U.S. Patent No. 5,740,231
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`to Cohn (Ex. 1017). Id., 713–715. But the office action notes that claim 135 would
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`be allowable if it were rewritten in independent form. Id., 715. The limitation
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`recited in dependent claim 135 was “identifying the predetermined event by a
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`URL, wherein the URL defines a type of the predetermined event and a recipient
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`network based agent.” Id., 697.
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`The applicants responded by amending all of the pending independent
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`claims to include “invoking, in response to receiving a URL defining a type of the
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`predetermined event and identifying the network-based agent, an execution of the
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`network-based agent,” which was similar to the limitation in claim 135 that the
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`10
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`office action had found allowable. Ex. 1002, 737–739, 741 (emphasis in original).
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`The applicants noted that the claims all now recited limitations like claim 135 and
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`requested reconsideration of the rejections. Id., 745–747. The examiner agreed,
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`issuing a notice of allowance in response. Id., 752–753.
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`By the end of prosecution, the claims were a far cry from the broad idea of a
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`network system made extensible through augmentation with an agent system,
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`which the specification’s “summary of the invention” section described as the
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`“present invention.” Ex. 1001, 2:52–55. Instead, the issued claims recited (1)
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`invoking an agent via a URL defining a type of event and identifying the agent and
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`(2) using the agent so that an amount of a service resource was exhausted upon
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`being consumed by the agent. See, e.g., Ex. 1001, 25:59–67 (“means for invoking”
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`and “means … for using” elements of claim 1). And the only limitation the
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`examiner ever found not present in the prior art was invoking an agent via a URL
`
`defining a type of event and identifying the agent. As discussed in § VII below,
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`this limitation was taught in Chow, but the examiner was unaware of that
`
`reference. See Ex. 1001, references cited.
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`C. Effective Filing Date and Date of Invention
`
`October 23, 1998, is the effective filing date of the ’752 patent. The
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`application for the ’752 patent was filed on November 24, 2004, as a continuation
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`of application no. 09/712,712, which was itself a continuation of application no.
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`09/178,366, which was filed on October 23, 1998.
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`Likewise, October 23, 1998, is the date of invention of the ’752 patent used
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`in this petition. Petitioner is unaware of any attempt by IV or its predecessors-in-
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`interest of asserting that the ’752 patent is entitled to an earlier invention date.
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`Petitioner is likewise unaware of any evidence that the ’752 patent is entitled to an
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`earlier invention date.
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`D. Level of Ordinary Skill in the Art
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`As of October 1998, a person of ordinary skill in the art (“POSITA”) at the
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`time of the ’752 patent’s effective filing date would typically be a person with a
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`bachelor’s degree in computer science or electrical engineering and at least two
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`years of experience in computer software systems. Ex. 1005, ¶ 21. This level of
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`skill in the art is reflected by the references cited in this Petition, the state of the
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`art, and the experience of Professor Darrell Long as described in his declaration. In
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`this Petition, reference to a POSITA refers to a person with these or similar
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`qualifications.
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`V. Claim Construction
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`The claims are to be construed under the same claim construction standard
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`as civil actions in federal district court. See Changes to Claim Construction
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`Standard, 83 FED. REG. 51340 (Oct. 11, 2018).
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`In prior district court and PTAB proceedings, IV agreed to certain
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`constructions and argued for constructions of certain disputed terms. VMware will
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`address all terms that have been subject to a prior construction dispute. But
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`VMware does not believe that the Board will need to reach a construction for all
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`previously disputed terms to resolve the issues in this petition. VMware will also
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`address terms that are expected to have disputed constructions in the currently
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`pending district court litigation between VMware and IV, but only where those
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`disputes might be relevant to the obviousness issues presented in this petition.
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`In the prior IPR proceeding, under the “broadest reasonable interpretation”
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`standard, petitioner HCC suggested constructions for various “means” limitations
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`and for “event handler.” Ex. 1006, 16–20. IV’s preliminary response did not
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`dispute any of HCC’s “means” constructions. Instead, it argued that “exhausted”
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`should be construed and disputed HCC’s “event handler” construction. Ex. 1007,
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`14–17. HCC and IV settled before the Board reached an institution decision on
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`HCC’s petition. Ex. 1008
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`More terms were at issue in the district court litigation between HCC and
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`IV. Before the District Court, both sides again agreed on the construction of the
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`“means” limitations, but disputed the constructions of “agent,” “service resource,”
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`two “URL” limitations, “consumed,” and “exhausted.” Ex. 1009, 6, 24–34. “Event
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`handler” was neither an agreed nor a disputed term at the District Court. Id. A
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`magistrate judge recommended constructions for all of the disputed terms. Id.
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`HCC and IV settled before the District Court ruled on the objections to the
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`magistrate’s recommended constructions. Ex. 1011.
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`A.
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`“Means” limitations
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`VMware proposes that all of the “means” limitations in claims 1, 3, 4, and 6,
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`are means-plus-function elements under 35 U.S.C. §112(f). In prior proceedings,
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`IV has agreed that these terms in claims 1 and 6 were means-plus-function
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`limitations and that they should be construed with the functions and corresponding
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`structure in the table below. Ex. 1009, 6. Although claims 3 and 4 were not at issue
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`in prior litigation, VMware expects that IV will agree that the means limitations in
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`those claims are also means-plus-function and will propose the functions and
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`corresponding structures for those claims shown in the table below. Without
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`prejudice to its right to argue that these terms are indefinite before the district court
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`for not disclosing sufficient corresponding structure, VMware will apply the
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`functions and corresponding structures from the table in the obviousness analysis
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`of claims 1, 3, 4, and 6.
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`Limitation
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`Function
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`means for receiving data for