Trials@uspto. gov
`571-272-7822
`
`Paper 10
`Entered: March 17, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`IRONSOURCE LTD.,
`Petitioner,
`
`V.
`
`DIGITAL TURBINE INC.,
`Patent Owner.
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`Before KALYAN K. DESHPANDE,Vice ChiefAdministrative Patent
`Judge, MONICA S. ULLAGADDIand IFTIKHAR AHMED,
`Administrative Patent Judges.
`
`AHMED,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`571-272-7822
`
`Paper 10
`Entered: March 17, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`IRONSOURCE LTD.,
`Petitioner,
`
`V.
`
`DIGITAL TURBINE INC.,
`Patent Owner.
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`Before KALYAN K. DESHPANDE,Vice ChiefAdministrative Patent
`Judge, MONICA S. ULLAGADDIand IFTIKHAR AHMED,
`Administrative Patent Judges.
`
`AHMED,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`1.
`
`INTRODUCTION
`
`IronSource Ltd. (“Petitioner”) requested a post-grant review of claims
`
`1—22 (the “challenged claims”) ofU.S. Patent 11,157,256 B2 (Ex. 1001,
`
`“the ’256 patent”). Paper 1 (“‘Petition”or “Pet.”). Digital TurbineInc.
`
`(“Patent Owner’) filed a Preliminary Response. Paper 9 (Prelim. Resp.”’).
`
`Under 35 U.S.C. § 324(a), a post-grant review may notbe instituted
`
`unlessit is determinedthatit is more likely than notthat at least one of the
`
`challenged claims is unpatentable. Based on the information presented in
`
`the Petition and the supporting evidence, we are persuadedthatthe Petition
`
`demonstratesit is morelikely than notthat at least one of the challenged
`
`claims is unpatentable. Accordingly, we institute a post-grant review of the
`
`challenged claims on the groundssetforth in the Petition.
`
`Ourfactual findings and conclusionsat this stage of the proceeding
`
`are based on the evidentiary record developed thus far. This is nota final
`
`decision as to patentability of the challenged claims. Any final decision will
`
`be based on the full trial record, including any responseto the Petition
`
`timely filed by Patent Owner.
`
`IT.
`
`BACKGROUND
`
`A.
`
`Real Parties in Interest
`
`Petitioner identifies itself as the real party-in-interest. Pet. 1. Patent
`
`Owneridentifies itself as the real party-in-interest. Paper 4, 1.
`
`B.
`
`RelatedMatters
`
`Theparties identify PGR2021-00096 challenging U.S. Patent
`
`10,782,951 (“the ’951 patent”), ofwhich the ’256 patent is a continuation.
`
`Pet. 1; Paper 4, 1.
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`C.
`
`The ’256 Patent (Ex. 1001)
`
`The ’256 patent, titled “Instant Installation of Apps,” wasfiled on
`
`August 13, 2020, as Application No. 16/992,194 (“the ’194 application’).
`
`Ex. 1001, codes (21), (22), (54). The patent describesan installation client
`
`for installing new software applications (“apps”) on a device, without
`
`redirecting the device to an app store.
`
`/d. at 1:52—54. The installation client
`
`enables users to download new appsin the background while maintaining
`
`interaction with their currently-used application.
`
`/d. at 2:6—12.
`
`Figure 1 of the ’256 patent is reproduced below.
`
`ESE ERI HD OULD E STE On nSI SE OESR
`
`
`
`Figure 1, above, showsa block diagram of device 100 for running software
`
`applications, which includes processor 110 connected to non-transitory
`
`memory 120 which stores apps 130 and installation client 140.
`
`/d. at 9:22—
`
`25, 36-54. Device 100 may be a mobile device.
`
`/d. at 9:41—42.
`
`The ’256 patent describes the following example of a user using an
`
`app running on device 100:
`
`The current app displays an “instant install” link (e.g. an ad
`containing a clickable link) for a different app (denoted herein
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`the new app). Whenthe userselects the “instant install” link in
`order to download the new app,installation client 140 is invoked
`torunin the background. The current app 1s not exited. The user
`may continue to use the current app without being aware that
`installation client 140 is now active in the background.
`Installation client 140 automatically downloadsan installation
`file for the newapp.... The installation file is used to install
`the new app onthe device.
`
`Id. at 9:43-54.
`
`Figure 6 of the ’256 patent is reproduced below.
`
`O19
`
`
`: Enstant ostall link fos
`
`Saneeenreinntnnretareinnninnrnnrnncintrsnsnrinnrnnrnanmanrnnmnanmsnmrney
`
`eeGB
`Installation Os.
`eherd =
`es,
`i OM available?
`YES)
`mA
`a
`t
`
`ae a
`
`-
`NO
`
`App Stare
`
`— ae AGL
`Redirect to
`|
`
`~ 640
`'
`Installation olies
`
`i downioads mstalle
`Bile for app
`
`iRacesenesnrnenenanoereen
`
`wept GSE
`i
`| Appinsisiied nsing |
`GU
`:
`installation file
`3
`
`Figure 6, above, showsa flowchart illustrating a methodforinstalling
`
`software applications ona device, beginning with selecting an install link for
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`an app (step 610), followed by determining whetheraninstallation clientis
`
`available (step 620).
`
`/d. at 13:55—63. If “YES,”the installation client is
`
`invokedin the background(step 630), and proceeds to downloadthe
`
`installation file for the app (step 640) and install the app using the
`
`installation file (step 650).
`
`/d. at 13:64—14:2. If “NO,”the deviceis
`
`redirected to an app store (step 660).
`
`/d. at 14:34.
`
`Figure 7 of the ’256 patent is reproduced below.
`
`instalation Client
`
`
`
`Figure 7, above, shows a schematic diagram ofinstallation client 700,
`
`including several modules.
`
`/d. at 14:10—13. User Experience (UX) module
`
`UX 710 handles interaction with the user, and supports functionality such as
`
`providing app details, handling animations for display, and handling
`
`operations whenaninstall link is selected.
`
`/d. at 14:19-31. Download and
`
`Installer 720 downloads andinstalls the new app whenthe install link is
`
`selected.
`
`/d. at 14:32—-37. Reporter 750 monitors events occurring in the
`
`installation client, suchasclicks on links, user confirmationto install app,
`
`successful download, successful install and other status/failure related
`
`events.
`
`/d. at 14:38—51.
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`D.
`
`Challenged Claims
`
`Petitioner challenges claims 1—22, ofwhich claims 1, 14, and 21 are
`
`independent claims. Claim 1 is reproduced below.
`
`[pre] A network-connected device configured for running
`1.
`software applications, comprising:
`
`[a] a network interface configured for communicating over a
`network;
`
`[b] at least one non-transitory computer readable storage medium
`storing instructions; and
`
`[c] at least one processor associated with said network interface
`and said storage medium, configured for executing said
`instructionsto:
`
`[d]
`
`identify that a link for mstallation of a first software
`application is selected by user interaction with a second
`software application running on said device, the link being
`embeddedin content displayed on said device by the second
`software application;
`
`[e]
`
`in response to said identifying, determine whether an
`installation client for downloading and installing applications
`on said device is available on said device, said installation
`chent comprising a third software application;
`
`[f] whensaid installation client is available on said device:
`
`[f1] invoke, without exiting said second software application,
`said installation client for downloading and installing
`applications on said device to run in the background on
`said device;
`
`[f2] mstruct said installation client to automatically download
`an installation file of said first software application to said
`device over said network using said network interface in
`the background onsaid device, without directing said user
`interaction to an app store; and
`
`[f3] using said downloadedinstallation file, install said first
`software application on said device in the background on
`said device while maintammg a user experience of
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`interaction with said second software application in the
`foreground; and
`
`[g] when said installation client is unavailable on said device,
`redirect said device to an app store for downloadingsaid first
`software application on said device.
`
`Ex. 1001, 21:2—40 (annotations from Pet. 8—9).
`
`E.
`
`The Asserted Grounds
`
`Petitioner asserts that claims 1-22 would have been unpatentable on
`
`the following grounds,relying on the declaration testimony of Kevin C.
`
`Almeroth, Ph.D. (Ex. 1008). See Pet. 4, 25-86. Patent Ownerrelies on the
`
`declaration testimony ofZhuoqing Morley Mao,Ph. D. (Ex. 2005). See
`
`Prelim. Resp. 1—28.
`
`103|Pasha, Moline
`
`101__|
`102(a)
`1, 2,4-15, 17-22!
`103
`2,3, 57,1517, 2
`i03|Pasha, Yamada
`
`Eligibility
`
`A.—Eligibilityfor Post-Grant Review
`
`I. ANALYSIS
`
`Post-grant review is available only for patents that, at one point,
`
`containedat least one claim with an effective filing date, as defined by
`
`' Welist the challenged claims for the anticipation and obviousness grounds
`based on actual arguments presentedin the Petition (see Pet. 49-86) and not
`the claimslisted at the beginning ofthe Petition (see id. at 4).
`7 U.S. Patent 10,353,686 B1, issued July 16, 2019 (Ex. 1003, “Pasha”).
`3U.S. Patent Application No. 2010/0095294 A1, published April 15, 2010
`(Ex. 1004, “Yamada’’).
`+U.S. Patent Application No. 2016/0142859 A1, published May 19, 2016
`(Ex. 1005, “Molinet”).
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`35 U.S.C. § 100(4), on or after March 16, 2013. Also, the request for
`
`post-grant review mustbefiled no /ater than nine monthsafter the patent is
`
`granted. 35 U.S.C. §321(c). Petitioner asserts that the ’256 patentis
`
`available for post-grant review. Pet.3. Weagree. The filing date for the
`
`°256 patent is August 13, 2020, and the patent issued on October 26, 2021,
`
`less than nine monthsbeforethe filing date of the Petition, July 25, 2022.
`
`Ex. 1001, codes (22), (45); Paper6, 1.
`
`B.
`
`Level ofOrdinary Skill in the Art
`
`Petitioner contendsthat a person of ordinary skill in the art “would be
`
`qualified to perform work as described in the ’256 patent through a
`
`combination of formal education in computer programming, computer
`
`science or similar discipline and/or work experience, such as two or more
`
`years of computer programming experience.” Pet. 11 (citing Ex. 1008
`
`4] 38-39). Petitioner further contends that formal education “in this field
`
`may range widely from certificate programsspecifically directed to creating
`
`apps for mobile devices to advanceddegreesup to and including a Ph.D.
`
`degree in computerscienceor a related field, such as computer engineering.”
`
`7d. at 11-12 (citing Ex. 1008 4 39). Patent Ownerproposesthat a person of
`
`ordinary skill in the art would have“at least a Bachelor’s degree in computer
`
`scienceor a related field, and three to five years of experience in thefield.”
`
`See Prelim. Resp.7 (citing Ex. 2005 § 12).
`
`Wedetermine, on the current record, that the level of ordinary skill
`
`proposedby Petitioner is consistent with the ’256 patent and the asserted
`
`prior art. See Inre GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). We
`
`adoptthat level in deciding whetherto institute trial. We will makeafinal
`
`determination as to the level of ordinary skill in the art, however, based on
`
`the full trial record.
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`C.
`
`Claim Construction
`
`In this post-grant review, claims are construed using the same claim
`
`construction standard that would be used to construe the claimsin a civil
`
`action under 35 U.S.C. § 282(b). See 37C.F.R. § 42.200(b) (2022). The
`
`claim construction standard includes construing claims in accordancewith
`
`the ordinary and customary meaning of such claims as understood by one of
`
`ordinary skill in the art at the time of the invention. See Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1312-14 (Fed. Cir. 2005) (en banc). In construing
`
`claims in accordance with their ordinary and customary meaning, we take
`
`into accountthe specification and prosecution history. Phillips,415 F.3d at
`
`1315-17. Additionally, only termsthat are in controversy need to be
`
`construed, and these need be construed only to the extent necessary to
`
`resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`
`200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be
`
`construedthat are in controversy, and only to the extent necessary to resolve
`
`the controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context
`
`of an AIA proceeding).
`
`Patent Ownerproposesconstructionsfor the terms “invoke” and
`
`“redirect,” which are at odds with the claim construction positions taken by
`
`Petitioner. See Prelim Resp. 7-12. Petitioner also proposes constructions
`
`for certain claim terms, including the term “invoke.” See Pet. 19-23. For
`
`the purposesofinstitution, we find it necessary to address the parties’
`
`argumentsas to the two terms argued by Patent Owner.
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
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`1.
`
`Invoke
`
`a) The Parties’ Arguments
`
`Patent Ownerarguesthat the term “invoke”or “invoking” “should be
`
`construed as “invoke to run’ or “invoking to run,’ from a state in which the
`
`installation client was not previously running.” Prelim. Resp. 8—10. Patent
`
`Ownerarguesthat the 256 patent specification repeatedly uses the term
`
`“invoked to run” and “doesnot disclose an instance in whichthe installation
`
`client is invoked to run whenit is already running.” /d. at 8—9 (citing
`
`Ex. 1001, code (57), 1:58-59, 3:49-51, 3:65-67, 4:15—17, 6:49-52, 9:46—-49,
`
`13:40—42, 13:64—-65, claims 1, 12, 17; Ex. 2005 9] 50-52). Thus, Patent
`
`Ownerargues, “a construction of invoking that requires the installation
`
`client to already be running would be improper becauseit is not supported
`
`by the written description of the specification.” /d. at9. According to
`
`Patent Owner,the extrinsic evidence also supports Patent Owner’s
`
`construction.
`
`/d. (citing Exs. 2003, 2004, 2007; Ex. 2005 4] 53-56)
`
`Petitioner arguesthat “the term ‘invoke’ is being used[in the claims]
`
`accordingto its plain and ordinary meaning andis properly understood
`
`simply as‘to call or activate.’” Pet. 19 (citing Ex. 10084 56). Petitioner
`
`arguesthat the “surrounding claim language provides context and specifies
`
`that the installation client will run in the background once invokedbut does
`
`not specify the state of the installation client whenit is being invoked (e.g.,
`
`running or not running).” /d. According to Petitioner, this is also true in
`
`each of the examples provided in the ‘256 Patent ofthe installation client
`
`being invoked. /d. (citing Ex. 1001, 4:49-52, 10:24—28, 10:38-39,
`
`12:25—27, 12:56—57, 13:8-9, 14:53—55, Fig. 4A, Figs. 4B, 5, 6).
`
`10
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`PGR2022-00053
`Patent 11,157,256 B2
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`b) Analysis
`
`Underthe claim construction standard applied in this proceeding,
`
`“[t|he words of a claim are generally given their ordinary and customary
`
`meaning as understood by a person of ordinary skill in the art when read in
`
`the context of the specification and prosecution history.” Thorner v. Sony
`
`Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing
`
`Phillips, 415 F.3dat 1313). “Thereare only two exceptionsto this general
`
`rule: 1) when a patenteesets out a definition and acts as his own
`
`lexicographer, or 2) when the patentee disavowsthe full scope of a claim
`
`term either in the specification or during prosecution.” /d. (citing Vitronics
`
`Corp. v. Conceptronic, Inc. ,90 F.3d 1576, 1580 (Fed. Cir. 1996)). Neither
`
`of those exceptions apply here, and for the reasons below,wefind the plain
`
`and ordinary meaning of “invoke”or “invoking”to be to call or activate, as
`
`proposedbyPetitioner.
`
`Webegin with the claim language at issue. See /n re Power
`
`Integrations, Inc. ,884 F.3d 1370, 1376 (Fed. Cir. 2018) (“Claim
`
`construction must begin with the wordsof the claims themselves.”). When
`
`considering the language of the claim overall, the usage of “invoke”in the
`
`claims does notin any way indicate whetherthe installation client is
`
`previously running or not. Claim 1 recites “invoke, without exiting said
`
`second software application, said installation client for downloading and
`
`installing applications on said device to run in the background on said
`
`device.” Ex. 1001, 21:21—27 (emphasis added). Patent Ownerfocuses on
`
`the phrase “to run,” arguing that the claim 1 itself recites the phrase “invoke
`
`...to run,” but that reading ignores the rest of the clam language. The
`
`claim uses the phrase “to run” in context of the installation client running in
`
`the backgroundon the device. Thatis,after all, a key goal of the invention
`
`11
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`
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`PGR2022-00053
`Patent 11,157,256 B2
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`described in the disclosure. See, e.g., Ex. 1001, 1:31—38 (discussing the
`
`problem with redirecting a user to an app store); Pet. Reply 2. Thus, we are
`
`not persuadedthat claim language necessarily ties “invoke”to only the
`
`phrase “to run” instead of the complete phrase “to run in the background on
`
`said device.”
`
`For the same reason, Patent Owner’s argumentthat“the specification
`
`is clear that ‘invoke’ means“invoketo run’”is not persuasive. In each of
`
`Patent Owner’s cited instances, the specification uses the words“to run”
`
`with “in the background,”thus, indicating that the installation client runs in
`
`the background, and not, as Patent Ownersuggests, to mandate that the
`
`chent be invoked to run from a non-running state. See, e.g., Ex. 1001,
`
`1:58—59 (“Whenaninstantinstall link is selected, the installation client 1s
`
`invokedto run in the background.”’). Moreover,as Petitioner points out, in
`
`manyinstances, the specification simply uses the term “invoke” without any
`
`referenceto “run,” contradicting Patent Owner’s position that “invoke” has
`
`to always mean “invoke to run.” Pet. 19 (citing Ex. 1001, 4:49-52,
`
`10:24—28, 10:38-39, 12:25—27, 12:56—-57, 13:8-9, 14:53—55, Figs. 4A, 4B,
`
`5,6). Patent Ownerfurther arguesthat “the specification does not disclose
`
`an instance in whichtheinstallation client is invoked to run whenit is
`
`already running,” and that “a construction of invoked that requires the
`
`installation client to already be running would be improperbecauseit is not
`
`supported by the written description of the specification.” Prelim. Resp. 9
`
`(citing Merck Co. v. Teva Pharms. USA, Inc. , 347 F.3d 1367, 1371 (Fed. Cir.
`
`2003). But neither does the specification expressly disclose an instance in
`
`whichtheinstallation client is invoked when tt is nofrunning, and Patent
`
`Owner’s construction importing such a requirement would also be improper.
`
`A construction of the term “invoke”as “to call or activate”permits (not
`
`12
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`
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`PGR2022-00053
`Patent 11,157,256 B2
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`requires) instances wherethe installation client is invoked from a running
`
`state or from a non-running state—both ofwhich are supported by the
`
`specification.
`
`Weare further persuadedthat the language of dependentclaim 3, that
`
`the installation client is “closed”(i.e., in a non-running state) when
`
`installation is completed, supports a broader construction ofthe term
`
`“invoke,” as recited in independent clam 1. See Ex. 1001, 21:36—39.
`
`Although claim differentiation doesnot fully resolve the claim construction
`
`issue here, it does provide guidanceasto the scope of claim 1 because
`
`dependent claim 3 specifically recites the installation client in non-running
`
`state, whereas independentclaim 1 issilent.
`
`Nor are we persuadedat this stage by Patent Owner’s extrinsic
`
`evidence to narrowly construe “invoke.” Patent Ownerrelies on Dr. Mao’s
`
`testimony that the term invoke would have been construed by a person of
`
`ordinary skill in the art as invoke to run fromastate in whichtheinstallation
`
`client was not previously running. Prelim. Resp.9 (citing Ex. 2005
`
`4] 53-56; Ex. 2007). Relying on a developer guidetitled “Running Android
`
`tasks in background threads,” Dr. Maotestifies that “[b]efore the thread or
`
`program)is invoked,it’s not ‘runnable.’ Onceit receives the execute()
`
`response, the program is ‘invoked’ to run.” Ex. 2005 4 54 (citing Ex. 2007).
`
`The developer guide, however, does not support Dr. Mao’s testimony. The
`
`cited portion refers to an interface called “Runnable” with a methodthatis
`
`executed in a thread when invoked;it does not state that the thread is not
`
`“runnable” when invoked. See Ex. 2007, 3. Onthe current record, we do
`
`not find Dr. Mao’s testimony persuasive to conclude that a person of
`
`ordinary skill in the art would have understoodthe claim term “invoke”to
`
`mean invoking the installation client from a state in which it was not
`
`13
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`PGR2022-00053
`Patent 11,157,256 B2
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`previously running.* For the purposesofinstitution, we construe “invoke”
`
`to meanto call oractivate.
`
`2. Redirect
`
`a) The Parties’ Arguments
`
`Patent Ownerarguesthat “redirect” should be construedas the device
`
`“causing the user device to be shifted to an app store without requiring a
`
`user interaction.” Prelim. Resp. 10. Patent Ownerpoints out that the
`
`specification expressly states that the term “redirected to an app store”
`
`means“that user interaction using the device is shifted to a site and/or
`
`application for obtaining apps,” and arguesthat the “disclosed ‘shift[ing]’ of
`
`the device to an application for obtaining apps(1.e., app stores) reinforces
`
`that the ‘redirect’ causes the browserto go to an app store without requiring
`
`a user interaction.” Id. (quoting Ex. 1001, 11:17—19; Ex. 2005 4 58)
`
`(emphasis added). Patent Ownerarguesthat the specification illustrates the
`
`lack ofuser interaction by describing redirecting is done “by a backend
`
`element” andthat “the browserintercepts the instant install link and redirects
`
`to the App Store.” /d. at 10-11 (citing Ex. 1001, 12:47—50, 16:36-38,
`
`18:47—-51; Ex. 2005 4 59-60). Patent Ownerfurtherrelies on the
`
`Dictionary of Computer and Internet Terms, which defines “redirect” as “a
`
`tag causing the browserto go to another web page without requiring the user
`
`to click.” /d. at 10 (citing Ex. 2003). Patent Owneralsorelies on its
`
`expert’s testimony and the use of the term redirect in a HTTP protocol
`
`specification.
`
`/d. at 11—12 (citing Ex. 2004 § 10.3; Ex. 2005 4§ 61-62).
`
`> Patent Owner’s citations to Exhibits 2003 and 2004 (see Prelim. Resp. 9)
`appearto be inadvertent as those are exhibits that Patent Ownerrelies on for
`its proposed construction ofthe term “redirect.” See id. at 11.
`
`14
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`PGR2022-00053
`Patent 11,157,256 B2
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`Petitioner argues that the patentee provided express definitions for a
`
`numberof claim terms, including the term “redirected to an app store,” and
`
`these express definitions are controlling. Pet. 21-22. Specifically,
`
`Petitioner points out that “the term ‘redirected to an app store’ meansthat
`
`user interaction using the deviceis shifted to a site and/or application for
`
`obtaming apps.” /d. at 22—23 (citing Ex. 1001, 11:17—19).
`
`b) Analysis
`
`For the reasons below, we construe of “redirect” on the current record
`
`to mean “to shift user interaction on the device,” and we disagree with
`
`Patent Ownerthat the claim term requires the shifting to take place without
`
`requiring a user interaction. We begin with the language of the independent
`
`claims. Claim 1 recites “redirect said device to an app store for
`
`downloadingsaid first software application on said device.” Ex. 1001,
`
`21:38-40. The claim language, therefore, does not recite any requirement
`
`relating to user interaction during the redirect.
`
`Turning to the specification, both parties agree that it includes an
`
`explicit definition of the term “redirected to an app store”as “user
`
`interaction using the device is shifted to a site and/or application for
`
`obtaining apps.” Pet. 24; Prelim. Resp. 10; Ex. 1001, 11:17-19. Ifthe
`
`specification “reveal[s]a special definition given to a claim term by the
`
`patentee that differs from the meaning it would otherwise possess[,]... the
`
`inventor’s lexicography governs.” Phillips,415 F.3d at 1316 (citing CCS
`
`Fitness, Inc. v. Brunswick Corp. , 288 F.3d 1359, 1366 (Fed. Cir. 2002)).
`
`There is no support in this lexicographic definition to import a requirement
`
`that the “shifting” take place “without requiring a user interaction.” Thus,
`
`the patentees defined the term but did not include any mention of user
`
`15
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`PGR2022-00053
`Patent 11,157,256 B2
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`interaction, further rejecting Patent Owner’s proposed requirementto
`
`exclude anyuserinteraction.
`
`Patent Ownerpointsto disclosure that “a backend element”or a
`
`“browser” performsthe redirection, arguing that “the specification describes
`
`that the ‘redirect’ causes the device to go to the App Store without any user
`
`interaction.” Prelim. Resp. 10—11 (citing Ex. 1001, 12:47—50, 16:36-38,
`
`18:47-51). None ofthe cited disclosures mention any requirementto
`
`include or preclude user interaction during the redirect. And, even if we
`
`understand these disclosures in the manner that Patent Ownerargues,the
`
`specification makesclear that these are alternate or optional embodiments.
`
`See, e.g., Ex. 1001, 12:45—50 (“In alternate embodiments, . .
`
`.””), 16:35-—38
`
`(“Optionally, the device has an installed browser. ..”). Given the
`
`specification’s express description of those embodimentsas non-limiting
`
`examples, nothing in the specification indicates “a clear intention to limit the
`
`claim scope using “wordsor expressions of manifest exclusion or
`
`restriction.”” Liebel-Flarsheim Co. v. Medrad, Inc. ,358 F.3d 898, 906-08
`
`(Fed. Cir. 2004) (declining to limit claim scope to disclosed embodiments
`
`wherethe specification did “not expressly or by clear implication reject the
`
`scope of the invention” to those embodiments); i47 Lid. P’shipyv. Microsoft
`
`Corp., 598 F.3d 831, 843-44 (Fed. Cir. 2010) (“[A] claim is notlimited to
`
`the embodiments described in the specification unless the patentee has
`
`demonstrated a clear intention to limit the claim’s scope with words or
`
`expressions of manifest exclusion orrestriction.” (internal quotation marks
`
`omitted)).
`
`Weturn now to Patent Owner’s extrinsic evidence. Patent Owner
`
`arguesthat the Dictionary of Computer and Internet Terms and the HTTP
`
`protocol specification support Patent Owner’s proposed construction of
`
`16
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`PGR2022-00053
`Patent 11,157,256 B2
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`“redirect.” Prelim. Resp. 11 (citing Ex. 2003; Ex. 2004 § 10.3; Ex. 2005
`
`4,61). The HTTP protocolspecification cited by Patent Ownerincludes a
`
`section titled “Redirection 3xx,” that states “[t]he action required M/AY be
`
`carried out by the user agent without interaction with the user ifand only if
`
`.... See Ex. 2004, 61 (emphasis added). Neither Patent Ownernorits
`
`expert explain whythe “redirect” action recited in the claimsis limited to
`
`this “Redirection 3xx”action listed in the HTTP protocolspecification, nor
`
`doesthe disclosure in this protocol specification mandate that a// redirect
`
`actions occur without requiring user interaction. Similarly, the dictionary
`
`definition relied upon by Patent Ownerspecifically defines “redirect in
`
`HTML,” while the claimsare not limited in that manner. See Ex. 2003. We
`
`give this extrinsic evidence no weight, and becausethe intrinsic evidence
`
`clearly supports an understanding of “redirect” as permissive of further user
`
`interaction, we do not adoptanarrowerconstruction based on the extrinsic
`
`evidence selected by Patent Owner. See Phillips, 415 F.3d at 1317
`
`(“[While extrinsic evidence ‘can shed usefullight on the relevantart,’ we
`
`have explained thatit is “less significant than the intrinsic record in
`299
`determining ‘the legally operative meaning of claim language.’”) (quoting
`
`CLR. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004));
`
`id. at 1322—23 (stating that a tribunal may “‘rely on dictionary definitions
`
`when construing claim terms, so long as the dictionary definition does not
`
`contradict any definition found in or ascertained by a reading ofthe patent
`
`documents’”’) (quoting Vitronics, 90 F.3d at 1584 n.6). The current record
`
`therefore does not support Patent Owner’s position.
`
`3. Other Claim Terms
`
`Wedetermine that we do not need to expressly construe any other
`
`terms in order to determine whetherto institute. The parties are reminded
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`17
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`Patent 11,157,256 B2
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`that our construction is preliminary andthat our ultimate interpretation of the
`
`claim terms will be based on the complete record developed duringtrial.
`
`D.—Subject Matter Eligibility under 35 U.S.C. § 101
`
`Petitionerasserts that the challenged claims are unpatentable under
`
`35 U.S.C. § 101 because they are directed to ineligible subject matter.
`
`Pet. 25-48. For the reasonsthat follow, we are not persuadedthat Petitioner
`
`establishesit is more likely than not to prevail with respect to this ground at
`
`this stage of the proceeding.
`
`1.
`
`Principles ofLaw
`
`35 U.S.C. § 101 defines patentable subject matter, but the Supreme
`
`Court has “long held that this provision contains an important implicit
`
`exception”that “[I]Jaws of nature, natural phenomena,andabstractideas are
`
`not patentable.” Mayo Collaborative Servs. v. Prometheus Labs., Inc. , 566
`
`U.S. 66, 70 (2012) (quotation omitted). “Eligibility under 35 U.S.C. §101 is
`
`a question of law, based on underlying facts.” SAP Am., Inc. v. InvestPic,
`
`LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018). To determine patentable subject
`
`matter, the Supreme Court has set forth a two-part test.
`
`“First, we determine whether the claimsat issue are directed to one of
`
`those patent-ineligible concepts”of “laws of nature, natural phenomena, and
`
`abstract ideas.” Alice Corp. v. CLS BankInt’], 573 U.S. 208, 217 (2014). A
`
`court must be cognizantthat “all inventions at some level embody,use,
`
`reflect, rest upon, or apply lawsof nature, natural phenomena,or abstract
`
`ideas” (Mayo, 566 U.S. at 71), and “describing the claims at. .
`
`. a high level
`
`of abstraction and untethered from the language of the claimsall but ensures
`
`that the exceptions to § 101 swallow the rule.” /nfish, LLC v. Microsoft
`
`Corp. , 822 F.3d 1327, 1337 (Fed. Cir. 2016). Instead, “we evaluate the
`
`18
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`PGR2022-00053
`Patent 11,157,256 B2
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`focus of the claimed advanceoverthe prior art to determineif the character
`
`of the claim as a whole, considered in light of the specification, 1s directed to
`
`excluded subject matter.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d
`
`1084, 1092 (Fed. Cir. 2019) (quotation omitted). “The inquiry often is
`
`whetherthe claims are directed to ‘a specific means or method’ for
`
`improving technology or whether they are simply directed to an abstract
`
`end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed.
`
`Cir. 2017).
`
`If the claims are directed to an abstract idea or other ineligible
`
`concept, then we continue to the secondstep and “consider the elements of
`
`each claim both individually and ‘as an ordered combination’ to determine
`
`whetherthe additional elements ‘transform the nature ofthe claim’ into a
`
`patent-eligible application.” Alice, 573 U.S. at217 (quoting Mayo, 566 U.S.
`
`at 79, 78). The Supreme Court has “described step twoofthis analysis as a
`
`search for an ‘inventive concept’—.e., an element or combination of
`
`elements that is sufficient to ensure that the patent in practice amounts to
`
`significantly more than a patent uponthe ineligible conceptitself.” Jd. at
`
`217-18 (quotation omitted). However, “[t]he abstractideaitself cannot
`
`supply the inventive concept, no matter how groundbreaking the advance.”
`
`Trading Techs. ,921 F.3d at 1093 (internal quotation omitted).
`
`In January 2019, the U.S. Patent and Trademark Office (USPTO)
`
`published revised guidance onthe application of § 101.° PatentExamining
`
`° 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
`(Jan. 7, 2019) (“Guidance”). In responseto received public comments, the
`Office issued further guidance on October 17, 2019, clarifying the 2019
`Revised Guidance. USPTO, October 2019 Update: Subject Matter
`Eligibility (the “October 2019 Update”). “All USPTO personnelare, as a
`
`19
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`PGR2022-00053
`Patent 11,157,256 B2
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`Procedure (“MPEP”) now incorporatesthis revised guidance and subsequent
`
`updates at § 2106 (9th ed. Rev. 10.2019, rev. June 2020). ’
`
`Under MPEP § 2106, wefirst look to whetherthe claim recites:
`
`including certain groupings of
`(1) any judicial exceptions,
`abstract ideas (1.e., mathematical concepts, certain methods of
`organizing human activity such as a fundamental economic
`practice, or mental processes) (“Step 2A, Prong One’’); and
`
`(2) additional elements that integrate the judicial exception into
`a practical application (“Step 2A, Prong Two’”).®
`
`MPEP § 2106.04(a), (d).
`
`Only if a claim (1) recites a judicial exception and (2) does not
`
`integrate that exception into a practical application, do we then look, under
`
`Step 2B, to whetherthe claim:
`
`(3) adds a specific limitation beyondthe judicial exception that
`is not “well-understood, routine, conventional activity” in the
`field; or
`
`routine, conventional
`simply appends well-understood,
`(4)
`activities previously knownto the industry, specified at a high
`level of generality, to the judicial exception.
`
`MPEP §2106.05(d); See Guidance, 84 Fed. Reg. at 52, 55, 56.
`
`Weevaluate the parties’ arguments underthe Office’s Guidance. Our
`
`reviewing court has warnedthat “the Office Guidance1s not, itself, the law
`
`matter of internal agency management, expected to follow the guidance.”
`84 Fed. Reg. at 51; see also October 2019 Updateat1.
`7 All referen
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