`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`VMWARE, INC.,
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner
`
`___________________
`
`Case IPR2020-00470
`Patent 7,949,752
`___________________
`
`
`
`
`PATENT OWNER’S RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-145
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`Case IPR2020-00470
`U.S. Patent No. 7,949,752
`
`3.
`
`B.
`
`C.
`
`I.
`II.
`
`V.
`
`Introduction ................................................................................................. 1
`Background.................................................................................................. 2
`A.
`Summary of the ’752 patent ............................................................... 2
`1.
`General Magic ......................................................................... 2
`2.
`Prior art systems required extensive customization by the
`service provider ....................................................................... 2
`The ’752 patent is an improvement over the prior art
`because it allows end-user customization of network-
`based services .......................................................................... 4
`There is no dispute over the level of skill in the art. ........................... 6
`B.
`III. Claim Construction ...................................................................................... 7
`A. Agent means a process that occupies a place and that is mobile,
`i.e., can move from a first place to a second place.............................. 7
`1.
`Agent as defined by the Specification ...................................... 7
`2.
`Agent according to the plain meaning ...................................... 8
`Service resource means a resource which enables a service to be
`performed .......................................................................................... 8
`Service permission means permissions to ensure that other
`agents have adequate service resources .............................................11
`IV. Asserted References ................................................................................... 12
`A.
`Chow teaches a stationary program on a Revision Manager that
`periodically checks for static content unrelated to Remote
`HTTP Servers ...................................................................................12
`B. White teaches that there are two unrelated, different system
`paradigms regarding remote computing and teaches an
`improved system for one of those paradigms ....................................15
`Bauer teaches a networked agent ......................................................19
`C.
`Arguments ................................................................................................. 20
`A. Grounds 3 and 4 fail because Chow and White are not a proper
`obviousness combination for two reasons .........................................20
`
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`Case IPR2020-00470
`U.S. Patent No. 7,949,752
`
`1.
`
`2.
`
`3.
`
`The Petition’s obviousness rational for Chow and White
`is factually wrong ...................................................................20
`The combination of Chow and White articulated in the
`Petition renders Chow inoperable for its intended purpose ......24
`Claim 14 is patentable because it does not teach security
`permissions within the meaning of the claim ..........................29
`Grounds 1–4 fail because neither Chow nor White (either alone
`or in combination) teach all the elements of the ’752 patent
`because they do not teach tracking service resources to
`exhaustion .........................................................................................32
`Grounds 1 and 2 fail because they do not properly construe the
`term agent .........................................................................................34
`The combination of Bauer with the other references does not
`cure any of the above deficiencies.....................................................35
`VI. Conclusion ................................................................................................. 35
`
`
`B.
`
`C.
`
`D.
`
`
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`Case IPR2020-00470
`U.S. Patent No. 7,949,752
`
`Exhibit No.
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`PATENT OWNER’S UPDATED EXHIBIT LIST
`
`Description
`Joint Claim Construction Statement, Intellectual Ventures I, LLC et.
`al. v. VMware, Inc., No. 1:19-cv-01075, U.S. District Court for the
`Western District of Texas, April 17, 2020.
`
`Defendant’s Preliminary Invalidity Contentions, Intellectual
`Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-01075, U.S.
`District Court for the Western District of Texas, January 15, 2020.
`
`Order Resetting Markman Hearing, Intellectual Ventures I, LLC et.
`al. v. VMware, Inc., No. 1:19-cv-01075, U.S. District Court for the
`Western District of Texas, April 16, 2020.
`
`Exhibit C-1: Invalidity Chart for U.S. Patent No. 7,949,752,
`Intellectual Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-
`01075, U.S. District Court for the Western District of Texas, filed
`July 31, 2019.
`
`Preliminary Claim Construction Rulings, Intellectual Ventures I,
`LLC et. al. v. VMware, Inc., No. 1:19-cv-01075, U.S. District Court
`for the Western District of Texas, May 14, 2020.
`
`Disputed Claim Terms, Intellectual Ventures I, LLC et. al. v.
`VMware, Inc., No. 1:19-cv-01075, U.S. District Court for the
`Western District of Texas, April 17, 2020
`
`Plaintiffs’ Claim Construction Brief, Intellectual Ventures I, LLC et.
`al. v. VMware, Inc., No. 1:19-cv-01075, U.S. District Court for the
`Western District of Texas, March 6, 2020
`
`Defendant VMware, Inc.’s Opening Claim Construction Brief,
`Intellectual Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-
`01075, U.S. District Court for the Western District of Texas, March
`6, 2020
`
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`Case IPR2020-00470
`U.S. Patent No. 7,949,752
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`Exhibit No.
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`Description
`Defendant VMware, Inc.’s Responsive Claim Construction Brief,
`Intellectual Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-
`01075, U.S. District Court for the Western District of Texas, March
`27, 2020.
`
`Plaintiffs’ Reply Claim Construction Brief, Intellectual Ventures I,
`LLC et. al. v. VMware, Inc., No. 1:19-cv-01075, U.S. District Court
`for the Western District of Texas, April 10, 2020.
`
`Defendant VMware Inc.’s Reply Claim Construction Brief,
`Intellectual Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-
`01075, U.S. District Court for the Western District of Texas, April
`10, 2020.
`
`Plaintiffs’ Supplemental Construction Brief, Intellectual Ventures I,
`LLC et. al. v. VMware, Inc., No. 1:19-cv-01075, U.S. District Court
`for the Western District of Texas, May 13, 2020.
`
`Defendant’s Supplemental Claim Construction Statement,
`Intellectual Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-
`01075, U.S. District Court for the Western District of Texas, May
`13, 2020.
`
`Intellectual Ventures’ Technology Tutorial of the ’752 patent,
`Intellectual Ventures I, LLC et. al. v. VMware, Inc., No. 1:19-cv-
`01075, U.S. District Court for the Western District of Texas, April
`24, 2020.
`
`Curriculum Vitae of Prashant Shenoy, PH.D.
`
`Declaration of Prashant Shenoy, PH.D. in Support of Patent
`Owner’s Response
`
`Nieva, Richard, “At Premiere of General Magic Doc, Tech Icons
`Consider the Future,” Cnet.com (July 27, 2018)
`
`U.S. Trademark Registration No. 4,425,780 (filed Dec. 15, 2007)
`
`
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`Case IPR2020-00470
`U.S. Patent No. 7,949,752
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`Exhibit No.
`
`2019
`
`2020
`
`Description
`Remote Deposition Transcript of Darrell Long, Ph.d. (October 28,
`2020)
`Miloȷ́ičić et al., “Process Migration,” ACM Computing Surveys,
`Vol. 32, No. 3, 241-299 (September 2000)
`
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`I.
`
`Introduction
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`Case IPR2020-00470
`U.S. Patent No. 7,949,752
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`The Petition asks the Patent Trial and Appeal Board (“PTAB”) to believe
`
`that a junior programmer in 1998 would have simply and predictably converted a
`
`local web client designed to respond to a static web site’s pages (Chow) into a
`
`remote programming agent that could install itself on servers across the internet to
`
`create dynamic content (allegedly, White). Of course, this is not the case.
`
`Grounds 3 and 4 of the Petition, arguing the combination of Chow and
`
`White (with Bauer), fail both because there is no rationale to combine the
`
`references and because the combination renders Chow inoperable for its intended
`
`purpose.
`
`Grounds 1 and 2 of the Petition require the PTAB to adopt a claim
`
`construction that is different from the one the Petitioner agreed to and several
`
`courts have adopted. Under the proper construction, the Chow reference (with
`
`Bauer) fails to teach or suggest an “agent.”
`
`And separately, Grounds 1 through 4 of the Petition require the Board to
`
`accept that a “service resource” can be money despite intrinsic evidence to the
`
`contrary and the lack of any evidence in support of such a construction. Because
`
`none of the prior art teaches or suggests such a combination, the Board should find
`
`the challenged claims patentable.
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`U.S. Patent No. 7,949,752
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`II. Background
`
`A.
`
`Summary of the ’752 patent
`
`U.S. Patent No. 7,949,752 (“the ’752 patent”) represents a substantial leap
`
`over the prior art. The closest prior art reference, Chow, has no server side agent,
`
`no mobile programming at all, and is only concerned with downloading static web
`
`pages. White does not cure these defects.
`
`1. General Magic
`
`The invention of the ’752 patent was conceived by a team at a company
`
`called General Magic—a company founded in the 1990s by members of the
`
`original team that created the Macintosh Computer. EX1002, 163, 170. The team at
`
`General Magic created the enabling technology that underpins modern smart
`
`devices. EX2017, 2. The inventors of the ’752 patent recognized the limitations of
`
`the prior art and improved upon it.
`
`2.
`
`Prior art systems required extensive customization by the
`service provider
`
`Before the ’752 patent, conventional systems integrating networked services
`
`
`
`had a number of deficiencies. For example, the existing systems integrating
`
`networked services of computers and telephones (like email and PIM vs. voice-
`
`mail and directory, etc.) came pre-packaged from service providers. EX1001, 1:56–
`
`2:4. Customers of the service providers could not customize or add features or
`
`integrations to the existing systems. At most, customers of existing systems could
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`request that the service providers perform specific customizations or upgrades. Id.,
`
`2:5–34. These systems did not allow control for server-side programming; they
`
`certainly did not allow an agent to traverse from one computer to another. And the
`
`programming paradigm of this art was largely focused on dealing with static
`
`content on a server, not dynamically programming a remote computer. EX2016,
`
`¶28.
`
`Because of these problems, service providers incurred significant overhead
`
`to remain competitive. Although some systems allowed end users to request that
`
`the service providers add desired customizations or upgrades, service providers’
`
`existing systems did not easily allow this. EX1001, 2:12–25. Service providers
`
`instead created bespoke solutions for each requesting customer, incurring costs and
`
`delays, or risked losing the customer to competing service providers able to
`
`provide the desired functionality with more agility—no existing systems allowed
`
`users to directly customize services. Id., 2:25–34.
`
`Due to the above-noted deficiencies, prior-art systems failed to provide users
`
`a convenient system that was efficient for service providers to operate
`
`competitively.
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`U.S. Patent No. 7,949,752
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`3.
`
`The ’752 patent is an improvement over the prior art
`because it allows end-user customization of network-based
`services
`Recognizing these problems with prior systems, the inventors of the ’752
`
`patent invented a novel network-based agent architecture that allowed users to
`
`implement their own customized services and to contract with third parties to
`
`provide customized services, without including the service provider. EX1001,
`
`2:38–3:43; see also id., FIG. 1 (reproduced below). The ’752 patent describes a
`
`sophisticated architecture for service providers to implement, independent from
`
`client infrastructure of subscribers (users). EX1001, 2:42–51. In this way, users do
`
`not need to redesign the service provider’s infrastructure or demand that the
`
`service provider make changes to its own architecture to accommodate each end
`
`user.
`
`EX1001, FIG. 1
`
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`As shown above in Figure 1, a service provider operates a network system 2
`
`to provide technological services to users (or subscribers). EX1001, 5:32–42.
`
`Communication lines allow access for users to interact with network system 2 via
`
`various interfaces. Id., 6:5–27, 6:49–60 (interfaces 12 and 16 connect to network
`
`system 2 by communication lines as described in column 6 but not labeled in
`
`Figure 1.) Programmable functionality component 4 can be programmed “by
`
`subscribers or third parties,” id., 5:55–6:4, unlike prior art systems including those
`
`cited by the Petition.
`
`The ’752 patent specifically refers to users being subscribers of the provider.
`
`That is to say the user, not a service provider, is in charge of customization. The
`
`Petition’s prior art—Chow (EX1018), Bauer (EX1019), or White (EX1020)—does
`
`not show the novel user customization of the ’752 patent. Instead, the art shows a
`
`service provider performing alleged custom agent functionality for users, which
`
`would be inapposite to the primary purpose of the invention of the ’752 patent.
`
`Here is an exemplary claim of the ’752 patent:
`
`1. A system for performing user customized network-
`based operations, comprising:
`
`means for receiving data for creating a network-based
`agent;
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`means for invoking, in response to receiving a URL
`defining a type of event and identifying the network-
`based agent, an execution of the network-based agent;
`
`means, including the network-based agent, for using a
`service and a service resource configured to be consumed
`by the network-based agent for performing the operation,
`
`wherein an amount of the service resource is exhausted
`upon being consumed by the network-based agent; and
`
`means for communicating a result of the operation over a
`network communications link.
`
`EX1001, 25:55–26:2.
`
`The ’752 patent thus describes and claims a novel and innovative feature set
`
`that allows end-user customization of network-based services. These features of
`
`the ’752 patent were crucial to the development of modern integrations of network-
`
`based systems like telephone, e-mail, and Personal Information Management a
`
`decade before the iPhone debuted. See EX2018 (first used in commerce on June
`
`29, 2007).
`
`B.
`
`There is no dispute over the level of skill in the art.
`
`The Patent Owner agrees that, for the purposes of this inter partes revivew
`
`(“IPR”), a person of ordinary skill in the relevant art (“POSA”) at the time of filing
`
`would have had “a bachelor’s degree in computer science or electrical engineering
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`and at least two years of experience in computer software systems.” EX2016,
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`Case IPR2020-00470
`U.S. Patent No. 7,949,752
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`¶¶14–18.
`
`III. Claim Construction
`
`A. Agent means a process that occupies a place and that is mobile,
`i.e., can move from a first place to a second place
`Agent as defined by the Specification
`1.
`“Agent” means “a process that occupies a place and that is mobile i.e. can
`
`move from a first place to a second place.” EX1020, 15:59–67, incorporated by,
`
`EX1001, 5:27–31; EX2016, ¶¶85–87. The Petitioner has stipulated in the
`
`accompanying district court case that this claim construction is correct. EX2001, 2.
`
`The district judge issued an order adopting this construction. EX3001, 1. A
`
`magistrate judge reached this same claim construction in an earlier case. EX1009,
`
`24–26. And the Board has adopted this construction in its Institution Decision. ID,
`
`13. Neither party has presented the Board with any reason to deviate from this
`
`definition. See 37 C.F.R. 42.100(b) (“Any prior claim construction determination
`
`concerning a term of the claim in a civil action… will be considered.”).
`
`Indeed, the Petition tacitly agrees with this by recognizing that its alternative
`
`construction of agent is sufficiently weak as to require an entirely duplicative set of
`
`arguments.
`
`For these reasons, the Board should continue to use the construction of agent
`
`that it previously adopted.
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`2.
`
`Agent according to the plain meaning
`
`In the event the Board incorrectly construes agent according to its plain and
`
`ordinary meaning, this meaning must be narrower than merely any program. See,
`
`infra, Section V.C.
`
`B.
`
`Service resource means a resource which enables a service to be
`performed
`
`The specification of the ’752 patent defines “service resource” as “a resource
`
`
`
`which enables a service to be performed.” EX1001, 10:62–63; EX2016, ¶70. Every
`
`example in the specification of the patent is consistent with this definition. Id.,
`
`10:61–66; EX2016, ¶¶71–73. And the great weight of evidence also supports this.
`
`Money is not a “service resource.” The ’752 patent states that a “service
`
`resource… is a resource which enables a service to be performed.” EX1001,
`
`10:61–63; EX2016, ¶70. Examples of a service resource include “call processing
`
`service,” “a telephone, answering machine, a telephone line, a local telephone
`
`provider service, a long distance telephone provider services, etc.” Id., 10:63–66;
`
`EX2016, ¶¶71–73.
`
`The specification repeatedly discusses “service resource[s]” in contexts that
`
`do not identify costs, let alone monetary cost. For example, the ’752 patent teaches
`
`that service resources associated with on-line data retrieval “may comprise units of
`
`data-access time or inquiry… (e.g., stock quotes, newspaper articles, etc.).”
`
`EX2016, ¶72. Thus, “service resource[s]” are limited to things related to services
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`and exclude money. EX2016, ¶¶74–84. The specification is clear that “service
`
`resource[s]” have, at best, a distal relationship with money: “a service wrapper []
`
`may maintain a record of the amount of service resources [] consumed by the
`
`various agents so that the appropriate users/principles can be billed accordingly.”
`
`EX1001, 12:6–12.
`
`Tracking who should be billed or the amount to be billed is far from
`
`spending actual money in real time. Here, the specification unambiguously only
`
`associates money (e.g., billing) with whether and what a user is being charged for
`
`the consumption of “service resource[s]”. Money is not the service resource itself.
`
`The ’752 patent provides additional support for this understanding throughout the
`
`specification. For example, one embodiment taught by the ’752 patent is a “web
`
`server service [] and its associated service resources.” Id., 17:1–15, 17:41–43;
`
`EX2016, ¶73. This does not mean a web server and its associated costs. Rather, it
`
`refers to a resource that enables a service to be performed.
`
`The Petitioner’s own expert testimony supports Patent Owner’s construction.
`
`Dr. Long testified that a POSA used the term “cost” to mean monetary cost (and
`
`many other things). EX2018, 40:6–41:2 (“So typically, it’s very common to think
`
`we just often in computer science just say cost. Or we will say a resource is
`
`consumed and we will say it’s more expensive to use this resource this way than
`
`that other way.”). But Dr. Long cannot point to anything illustrating why the
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`claimed “service resource” should include a monetary cost. Id., 41:2–9. Indeed, Dr.
`
`Long testified repeatedly that “cost” is a resource without ever referring to it as a
`
`“service resource,” or explaining how a cost equates to the use of a service
`
`resource including a monetary cost. EX2018, 40:6–41:9; see EX2016, ¶76
`
`(discussing use of “cost” for overhead without referring to “monetary cost”). In
`
`other words, Dr. Long’s testimony appears to use the term “cost” to quantify the
`
`expenditure of resources resulting from using a service resource, which is
`
`consistent with Patent Owner’s position and contrary to Petitioner’s.
`
`Finally, claim differentiation supports the proposition that a service resource
`
`cannot be money. Specifically, claim 13, which depends from claim 9, refers to
`
`invoking an agent using a “service wrapper” to act upon the service resource.
`
`EX1001, 27:3–4; 26:55–60; EX2016, ¶¶83–84. This is completely consistent with
`
`the specification, which discusses service wrappers as linking service resources
`
`with agents. EX1001, 11:18–21. This makes sense in the context where service
`
`resources are characteristics of a service. A construction of “service resources” that
`
`includes money is inconsistent with all these points and is wrong.
`
`Service resources cannot be money or monetary cost regardless of whether
`
`the Board adopts the Patent Owner’s proposed claim construction or construes it
`
`according to its plain and ordinary meaning. EX2016, ¶82. No reasonable
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`construction of this term can possibly define service resources to include money.
`
`Id., ¶78.
`
`C.
`
`Service permission means permissions to ensure that other agents
`have adequate service resources
`
`The ’752 patent, in claim 14, adds the limitation “identifying, using the
`
`
`
`service wrapper, service permissions associated with the network-based agent.”
`
`The ’752 patent teaches that “service permissions” mean “permissions [to] ensure
`
`that other agents… have adequate… service resources.” EX1001, 9:45–51;
`
`EX2016, ¶105. Figure 13 shows this diagrammatically, depicting various “service
`
`permissions” within the category of “Permissions of Agent (A)”:
`
`
`
`EX1001, FIG. 13 (excerpt); see EX2016, ¶108.
`
`This claim term specifically refers to permissions, within computer systems,
`
`to execute certain tasks. This cannot mean (nor does the Petition seem to allege it
`
`means) that the agent can determine what web pages it can (or cannot) access.
`
`EX2016, ¶¶104–113. This distinction is not trivial. Whether a computer program
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`(or agent) has authority to access a certain web page might concern some type of
`
`permission. EX2016, ¶112. But the requirement that these permissions must
`
`“ensure that other agents have adequate resources” makes it plain that the POSA
`
`would have understood that web page access permissions on a remote web server
`
`was not within the claim scope. Id., ¶113. The service permissions claimed are
`
`authorizations that permit the agent to run on a computer and not, as the Petition
`
`contends, an agent’s ability to ascertain what web pages a user can access.
`
`IV. Asserted References
`A. Chow teaches a stationary program on a Revision Manager that
`periodically checks for static content unrelated to Remote HTTP
`Servers
`U.S. Patent No. 6,029,175 (EX1018, “Chow”) purports to describe “a
`
`software agent for automatically retrieving changed documents previously
`
`accessed from network and internetwork servers.” EX1018, 3:60–64. Chow may
`
`retrieve static web pages or documents from private sources, comparing changes
`
`and considering “costs associated with retrieval,” including various charges. E.g.,
`
`id., 18:50–19:7, 25:52–26:17, 28:2–52; see EX2016, ¶115.
`
`The purpose of Chow, though, is a system that is entirely “backwards
`
`compatibl[e]” and does not require “[c]hanging the behavior of the standard
`
`browser and server software.” EX1018, 3:52–57; EX2016, ¶126. Chow recognized
`
`that its options are necessarily limited because it cannot change webservers “now
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`in use by millions of people.” EX1018, 3:54–56. Accordingly, Chow teaches a
`
`separate computer—a Revision Manager—that “acts as an intermediary between a
`
`browser client… and a Remote HTTP [S]erver.” Id., 9:53–54; EX2016, ¶127. The
`
`Revision Manager is “linked” to the client and the Remote HTTP Server “by
`
`standard internet connections.” EX1018, 9:25–27.
`
`Dr. Long’s explanation of Chow was consistent. During cross-examination,
`
`Dr. Long stated that “the idea” of Chow “was not to replace the [Remote] HTTP
`
`[S]erver but to add an additional functionality that would provide the stateful
`
`behavior.” EX2019, 32:1–7 (emphasis added); accord EX2016, ¶128. Dr. Long
`
`reiterated this point, saying that Chow was only about “interpos[ing] a stateful
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`Revision Manager” and that “Chow didn’t modify the [Remote] HTTP [S]erver.”
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`EX2019, 32:8–17. This undercuts the Petition’s entire motivation-to-combine
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`theory, which says that a POSA would understand that Chow would be modified to
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`reprogram the Remote HTTP Servers. Pet., 59 (“Given the teaching that remote
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`programming was preferable to remote procedure calling, a POSITA would have
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`been motivated to modify the remote procedure calling agent process in Chow with
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`a remote programming agent process like the one taught in White….”); see
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`EX1005, ¶89 (discussing the combination of Chow and White). Since the explicit
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`purpose of Chow was to find a way to mediate between unmodified HTTP servers
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`and clients, changing Chow to instead modify said servers is illogical and would
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`render Chow inoperable for its intended purpose. EX2016, ¶¶125–128.
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`Furthermore, the Chow disclosure does not teach any server side agent being
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`executed.
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`To the contrary, as confirmed by Petitioner’s expert, all of Chow’s scripts
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`actually reside on the Revision Manager. Dr. Long was clear that “[y]ou cannot
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`execute a script that is not on your computer.” EX2019, 37:10–38:6. Knowing that
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`Chow’s Revision Manager could not execute programs on the Remote HTTP
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`Server was—according to the Petitioner’s expert—“freshman computer science.”
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`Id., 37:10–38:6; EX2016, ¶130. In fact, Dr. Long went far beyond characterizing
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`this as a limitation of just Chow.
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`Dr. Long’s own words tell us that for a POSA at the time of Chow, using a
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`remote programming paradigm might even have been impossible. Dr. Long told
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`the Board, on cross-examination, that Chow’s inability to execute a script that is
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`not on its own computer is a “mental experiment,” given after an offer of “do[ing]
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`a little tutorial of computer architecture.” EX2019, 36:22–37:9.
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`Chow’s Revision Manager is not a server that controls or otherwise issues
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`agents to control the Remote HTTP Server. Quite the opposite, from the
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`perspective of the Remote HTTP Server, the Revision Manager is just another a
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`client. EX2016, ¶129. This is not an incidental omission. Rather, it is an essential
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`feature of Chow’s system and framework. Chow is clear—the Revision Manager is
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`merely another computer that asks a Remote HTTP Server for a web page.
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`EX2016, ¶¶129–131.
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`Chow’s agent is also not “mobile”—the Petition does not contend
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`otherwise—a critical omission, as shown below. Pet., 21–22; see, infra, Section
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`V.C. Indeed, the program of Chow resides—and executes—on the Revision
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`Manager alone, a fact Dr. Long essentially admits. EX2019, 36:22–37:9.
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`Further, the Revision Manager of Chow has very simple functionality. It is
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`strictly limited to monitoring static content on Remote HTTP Servers. EX2016,
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`¶¶114–131. The Revision Manager does not (and cannot) execute complicated
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`scripts on the Remote HTTP Server. EX2016, ¶130.
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`B. White teaches that there are two unrelated, different system
`paradigms regarding remote computing and teaches an improved
`system for one of those paradigms
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`U.S. Patent No. 5,603,031 (EX1020, “White”), which is commonly owned
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`
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`by Patent Owner and incorporated by reference by the ’752 patent, describes “an
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`agent” that is enabled to “transport itself from a first place process… in [a]
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`network to a second place process in the network.” EX1020, 8:27–38. In other
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`words, White describes an agent as “a process which occupies a place and which is
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`mobile, i.e.[,] can move from a first place to a second place.” Id., 16:65–67.
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`White does not teach improving a remote process call by using remote
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`programming. EX2016, ¶137. Rather, White describes remote programming as an
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`entirely different scheme from remote procedure calls. EX1020, 4:22–28; EX2016,
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`¶¶138–140. In fact, White’s background lays out two different, alternative
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`paradigms for remote computing (i.e., remote procedure calls and remote
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`programming) that are not simple substitutions for one another. The structure of
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`White demonstrates this.
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`First, White discusses remote procedure calls in the background. EX1020,
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`2:66–67 (“Many computer communications systems implement what is called
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`‘remote procedure calling.’”). White explains that remote procedure call systems
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`have a “server process [that] performs any of an inevitably finite list of operations
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`on behalf of the client process.” Id., 3:6–8. White then discusses how remote
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`procedure calls work, beginning with a logic flow diagram of Figure 2A. Id., 3:16–
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`4:21; 13:39–40 (“FIG. 2A is a logic flow diagram of a prior art method using
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`remote procedure calling.”).
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`Second, White’s Background discusses a completely different paradigm for
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`remote computing, “remote programming.” Id., 4:22–23. The background then
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`describes how remote programming works, beginning with a logic flow diagram of
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`Figure 2B. Id., 4:32–39; accord id. 13:42–45 (“FIG. 3A is a logic flow diagram of
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`a prior art method using remote programming.”) Here are Figures 2A and 3A, both
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`stamped “prior art” by White:
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`
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`EX1020, FIGs. 2A and 3A (annotated).
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`White also describes systems that are an “improvement over remote
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`programming” described by Wolfson. EX1020, 5:40–43. And then White explains
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`another method described by Tsichritzis, which was an object oriented system that
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`“added to the system described by Wolfson.” Id., 6:7–9. White finishes its
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`background by describing the limitations of the prior art remote programming
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`references, Wolfson and Tsichritzis. Id., 7:1–23.
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`Next, White’s Specification summarizes how it improves on the object-
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`oriented remote programming systems. Id., 7:25–34.
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`White does not teach or suggest that that its improved remote programming
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`paradigm can be substituted—or is in any way coextensive with—the discussed
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`prior art remote procedure call paradigm. EX2016, ¶¶138–140. While White
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`discloses two distinct prior art alternatives (remote procedure calling and remote
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`programming), it teaches only an improvement on remote programming. EX2016,
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`¶¶137–140. Nothing in White teaches or suggests to a POSAthat remote
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`programming can substitute for remote procedure calls. Rather, White teaches that
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`they are two different, incompatible paradigms, and that remote programming can
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`be improved upon. EX2016, ¶¶263, 137. As White says, “the process of this
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`invention are a novel implementation of ‘remote programming,’ and not the more
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`familiar ‘remote procedure calling’ paradigm.” EX1020, 9:17–20. White never
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`teaches a POSA to use remote programming in place of remote procedure calls.
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`Throughout the disclosure, White contrasts remote programming and remote
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`procedure calls as nothing less than a “paradigm shift.” EX1020, 127:47–49; see,
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`e.g., id., 11:50–52 (“The paradigm of this prior art system is therefore more closely
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`related to remote procedure calling”), 11:56–59 (“Therefore, the paradigm of the
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`present invention is more closely related to remote programming”), 19:63–67 (“In
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`remote programming paradigms typically found in the p