Petition for Writ of Certiorari — RPX Corporation, Petitioner v. Applications in Internet Time, LLC

60a

UNITED STATES PATENT AND

TRADEMARK OFFICE

BEFORE THE PATENT TRIAL

AND APPEAL BOARD

RPX CORPORATION,

Petitioner, v.

V.

APPLICATIONS IN INTERNET TIME, LLC,

Patent Owner.

Case IPR2015-01750

Patent 8,484,111 B2

Before LYNNE E. PETTIGREW, MITCHELL G.

WEATHERLY, and JENNIFER MEYER CHAGNON,

Administrative Patent Judges.

CHAGNON, Administrative Patent Judge.

FINAL WRITTEN DECISION

Inter Partes Review

35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

I. INTRODUCTION

We have jurisdiction to hear this inter partes

review under 35 U.S.C. § 6. This Final Written

Decision is issued pursuant to 35 U.S.C. § 318(a) and

37 C.F.R. § 42.73. For the reasons discussed herein,

we determine that Petitioner has shown, by a

preponderance of the evidence, that claims 13-18 of

U.S. Patent No. 8,484,111 B2 (Ex. 1001, "the '111

patent") are unpatentable.

A. Procedural History

RPX Corporation ("Petitioner") filed a Petition for

inter partes review of claims 13-18 of the '111 patent.

Paper 1 ("Pet."). Petitioner provided a Declaration of

Mark E. Crovella, Ph.D. (Ex. 1002) to support its

positions. Applications In Internet Time LLC

("Patent Owner") filed a Preliminary Response.

Paper 21, Paper 26 (redacted version) ("Prelim.

Resp."). We also 'authorized additional briefing on

issues relating to real parties-in-interest. See Paper

28, Paper 29 (redacted version) ("RPI Reply"); Paper

38, Paper 37 (redacted version) ("RPI Sur-Reply").

Pursuant to 35 U.S.C. § 314(a), on February 25,

2016, we instituted inter partes review to determine

whether claims 13-18 are unpatentable under 35

U.S.C. § 102 as anticipated by Popp;' whether claims

13-18 are unpatentable under 35 U.S.C. § 102 as

anticipated by Kovacevic;2 and whether claims 13-18

are unpatentable under 35 U.S.C. § 103 as obvious in

view of Ba1derrama3 and Java Complete.4 Paper 51

("Inst. Dec.").

1

U.S. Patent No. 6,249,291 131, issued June 19, 2001 (Ex.

1004).

2 Srdjan Kovacevic, Flexible, Dynamic

User Interfaces for

Web-Delivered Training, in AVI '96 PROCEEDINGS OF THE

WORKSHOP ON ADVANCED VISUAL INTERFACES 108-18

(1996) (Ex. 1005).

1006).

U.S. Patent No. 5,806,071, issued Sept. 8, 1998 (Ex.

Java Complete!, 42 DATAMATION MAGAZINE 5, 2849 (Mar. 1, 1996) (Ex. 1007).

A public version of the Institution Decision is available

as Paper 60.

Subsequent to institution, Patent Owner filed a

Patent Owner Response (Paper 63 ("P0 Resp.")6),

along with Declarations of H. V. Jagadish, Ph.D. (Ex.

2032) and James Flynn (Ex. 2033) to support its

positions. Petitioner filed a Reply (Paper 70 ("Pet.

Reply")) to the Patent Owner Response, along with a

Reply Declaration of Dr. Crovella (Ex. 1062).

Pursuant to our authorization, Patent Owner filed a

limited Sur- Reply (Paper 73 ("P0 Sur-Reply")7). A

combined oral hearing for Cases IPR2015-01750,

IPR2015-01751, and IPR2015-01752 was held on

November 8, 2016. A transcript of the hearing is

included in the record. Paper 77 ("Tr.").

Related Proceedings

The '111 patent is the subject of the following

district court proceeding: Applications in Internet

Time LLC v. Salesforce.com, Inc., No. 3:13-cv-00628

(D. Nev.). Pet. 3; Paper 6, 2.

Claims 1, 3-8, and 10-40 of related U.S. Patent

No. 7,356,482 B2 ("the '482 patent") are the subject of

inter partes review in IPR2015-01751 and IPR201501752. Pet. 3; Paper 6, 2; IPR2015-01751, Paper 51;

IPR2015-01752, Paper 51.

The '111 Patent

The '111 patent, titled "Integrated Change

Management Unit," relates to an "integrated system

for managing changes in regulatory and nonregulatory requirements for business activities at an

industrial or commercial facility." Ex. 1001, Abstract.

6 Patent Owner filed a single Patent Owner Response in

this proceeding and Cases IPR2015-01751 and IPR2015-01752.

Patent Owner filed a single Sur-Reply in this proceeding

and Cases IPR2015-01751 and IPR2015-01752.

63a

The integrated system described in the '111 patent

manages data that is constantly changing by

"provid[ing] one or more databases that contain

information on operations and requirements

concerning an activity or area of business,"

"monitor[ing] and evaluat[ing] the relevance of

information on regulatory and non-regulatory

changes that affect operations of the business and/or

information

management

requirements,"

"convert[ing] the relevant changes into changes in

work/task lists, data entry forms, reports, data

processing, analysis and presentation

of data

processing and analysis results to selected recipients,

without requiring the services of one or more

programmers to re-program and/or re-code the

software items affected by the change," and

"implement[ing] receipt of change information and

dissemination of data processing and analysis results

using the facilities of a network, such as the Internet."

Id. at 8:37-52, 9:4-5.

Figure 1 of the '111 patent is reproduced below:

Change Layer

CHANGES ARE IDENTIFIED ON THE INTERNET USING

INTELLIGENT AGENTS AND PROVIDED FOR CONFIGURATION

END USER FUNCTIONS

ENABLED BY CONFIGURATION

CONFIGURATION TOOLS THAT

ENABLE THE END USER FUNCTIONS

Java Data Management Layer

END USER FUNCTIONS ARE ENABLED

[CONFIGURATION TOOLS DEFINE

I END USER FUNCTIONS IN METADATA

Metadata Layer

TABLES, VIEWS, FUNCTIONS AND

PROCEDURES ARE ACCESSED BY

END USER FUNCTIONS VIA METADATA

Business Content Layer

FIG. I

13

5

METADATA REFERENCES TABLES,

17

65a

As shown in Figure 1, the integrated system

operates at four layers: (1) change management layer

11 that identifies regulatory and non-regulatory

changes that may affect a user's business, (2) Java

data management layer 13 that generates a user

interface ("UP), (3) metadata layer 15 that provides

data about the user interface including "tools,

worklists, data entry forms, reports, documents,

processes, formulas, images, tables, views, columns,

and other structures and functions," and (4) business

content layer 17 that is specific to the particular

business operations of interest to the user. Id. at

9:38-52. According to the '111 patent, because the

system of the invention is "entirely data driven," the

need to write and compile new code in order to update

the system is eliminated. Id. at 10:24, 12:44-56.

D. Illustrative Claim

Of the claims subject to this inter partes review,

claim 13 is independent. Claims 14-18 depend from

claim 13. Claim 13 of the '111 patent, reproduced

below, is illustrative:

13. A system, comprising:

a server accessible by a browser executed on

a client device, the server including a first portion,

a second portion, a third portion, and a fourth

portion,

the first portion of the server having

information about unique aspects of a particular

application,

the second portion of the server having

information about user interface elements and one

or more functions common to various applications,

the various applications including the particular

application,

S..

the third portion of the server being

configured to dynamically generate a functionality

and a user interface for the particular application,

the functionality and the user interface of the

particular application being based on the

information in the first portion of the server and

the information in the second portion of the server,

the third portion of the server being configured to

send the functionality and the user interface for

the particular application to the browser upon

establishment of a connection between the server

and the client device,

the fourth portion of the server being

configured to automatically detect changes that

affect the information in the first portion of the

server or the information in the second portion of

the server.

Ex. 1001, 33:19-34:8.

II. ANALYSIS

A. Real Parties -in-Interest

In its Petition, Petitioner identifies itself, RPX

Corporation, as the "sole real party-in-interest in this

proceeding." Pet. 2. Prior to institution, Patent

Owner raised the issue of whether Petitioner has

identified all real parties-in-interest. In particular,

Patent Owner asserted that Salesforce.com, Inc.

("Salesforce") is an unnamed real party-in-interest.

See Prelim. Resp. 2-20.

In our Institution Decision, we determined that

Salesforce had not been shown to be a real party-ininterest in these proceedings. See Inst. Dec. 7-15. In

its Patent Owner Response, Patent Owner argues:

In its decision instituting [this trial], the

Board stated that there was insufficient

67a

evidence to find that the real party in interest

is Salesforce.com, Inc. Patent Owner disagrees

with the Board's view of the law and the facts,

and in particular believes that the Board

misconstrued the law. As explained

previously, the AlA was intended to prevent

defendants from getting "a second bite at the

apple." Yet, the Board is doing just that by

allowing Petitioner to act indirectly for

Salesforce. In its decision, the Board set an

improperly high burden of proof for the patent

owner, and also improperly shifted the burden

of proof to the patent owner. As explained in

Patent Owner's Preliminary Response,

Salesforce is the real party in interest and

Petitioner is acting as its proxy. Because

Salesforce is time limited, so is Petitioner and

patentability should be confirmed on this basis.

P0 Resp. 8. To the extent Patent Owner is

attempting to incorporate arguments made in the

Preliminary Response into the Patent Owner

Response, such incorporation is improper under our

rules. See 37 C.F.R. § 42.6(a)(3) ("Arguments must

not be incorporated by reference from one document

into another document."). In any event, Patent

Owner has neither presented any new evidence into

the record, beyond the evidence we considered

previously in rendering our Institution Decisions, nor

cited any legal authority to support its positions set

forth above. Based on the complete record now before

us, we see no reason to change our previous

determination, and we are not persuaded that

Salesforce should have been identified as a real partyin-interest in this proceeding.

ME

Level of Ordinary Skill in the Art

Petitioner asserts that a "person of ordinary skill

in the art in the timeframe of the December 1998

priority date of the '111 patent. would have had at

least a B.S. in Computer Science or the equivalent,

along with at least two years of computer

programming experience in developing applications

for client-server systems." Pet. 5-6 (citing Ex. 1002

¶ 10). Patent Owner indicates that it "does not

dispute Petitioner's definition of the person of

ordinary skill in the art." P0 Resp. 10; Ex. 2032 18;

¶

Ex. 2033 ¶ 17. For purposes of this Final Written

Decision, we agree with and adopt Petitioner's

proposed definition for the level of ordinary skill in

the art, which each declarant in this proceeding meets

or exceeds.8 See Ex. 1002 ¶J 2-6, 11; Ex. 2032 ¶J 49, 19; Ex. 2033 ¶J 2-5, 18. We further note that the

applied prior art reflects the appropriate level of skill

at the time of the claimed invention. See Okajima v.

Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).

Claim Construction

In an inter partes review, claim terms in an

unexpired patent are given their broadest reasonable

construction in light of the specification of the patent

in which they appear. See 37 C.F.R. § 42.100(b);

Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,

2144-46 (2016) (upholding the use of the broadest

.

.

8 Patent Owner argues that, in the relevant time frame,

Dr. Crovella "was already considerably more than ordinary,"

and, for this reason, we should give less weight to Dr. Crovella's

testimony. P0 Resp. 11; see also Tr. 53:4-9, 55:24-56:4. We

disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550

F.3d 1356, 1363-64 (Fed. Cir. 2008) (noting that under Fed. R.

Evid. 702, the expert must possess sufficient "expertise to be of

assistance" to the trier of fact).

U ..

reasonable interpretation standard). Pursuant to

that standard, the claim language should be read in

light of the specification, as it would be interpreted by

one of ordinary skill in the art. In re Suitco Surface,

Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we

generally give claim terms their ordinary and

customary meaning. See In re Translogic Tech., Inc.,

504 F.3d 1249, 1257 (Fed. Cir. 2007) ("The ordinary

and customary meaning 'is the meaning that the term

would have to a person of ordinary skill in the art in

question." (quoting Phillips v. AWH Corp., 415 F.3d

1303, 1313 (Fed. Cir. 2005) (en banc))).

The claims, however, "should always be read in

light of the specification and teachings in the

underlying patent," and "[e]ven under the broadest

reasonable interpretation, the Board's construction

'cannot be divorced from the specification and the

record evidence." Microsoft Corp. v. Proxyconn, Inc.,

789 F.3d 1292, 1298 (Fed. Cir. 2015) (citations

omitted).

In other words, "[u]nder a broadest

reasonable interpretation, words of the claim must be

given their plain meaning, unless such meaning is

inconsistent with the specification and prosecution

history." Trivascular, Inc. v. Samuels, 812 F.3d 1056,

1062 (Fed. Cir. 2016) (citing Straight Path IP Grp.,

Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1362 (Fed.

Cir. 2015)). Any special definition for a claim term

must be set forth in the specification with reasonable

clarity, deliberateness, and precision. See In re

Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).

However, limitations are not to be read from the

specification into the claims. In re Van Geuns, 988

F.2d 1181, 1184 (Fed. Cir. 1993).

The parties' dispute requires construction of the

phrase "fourth portion of the server being configured

70a

to automatically detect changes that affect the

information in the first portion of the server or the

information in the second portion of the server,"

recited in claim 13. No issue in this Decision requires

express construction of any other claim terms. See,

e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d

1355, 1361 (Fed. Cir. 2011) ("[C]laim terms need only

be construed 'to the extent necessary to resolve the

controversy.") (quoting Vivid Techs., Inc. v. Am. Sci.

& Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).

Claim 13 recites, in part, a "fourth portion of the

server

configured to automatically detect changes

that affect the information in the first portion of the

server or the information in the second portion of the

server." Ex. 1001, 34:5-8. In the Petition, Petitioner

argues that a "portion of the server" is "any one or

more components or functionality of or on the server."

Pet. 11 (citing Ex. 1002 ¶ 22).

In its Patent Owner Response, Patent Owner

asserts

.

.

.

This [fourth portion] limitation, especially the

phrase, "changes that affect," is clearly the

same as the "changes" discussed above

regarding the change management layer.

Thus, the "fourth portion," as understood by a

person of ordinary skill in the art and like the

"change management layer" automatically

detects changes that "arise from changes

external to the application."

P0 Resp. 21. With respect to the "change

management layer,"9 Patent Owner argues that "the

The term "change management layer" is not recited in

the claims at issue in this proceeding, but is recited in claim 1 of

71a

term 'change management layer' when interpreted in

view of the specification would readily be understood

to a person of ordinary skill in the art to mean 'a layer

that automatically detects changes external to the

application program which impact how the

application program should operate." Id. at 14 (citing

Ex. 2032 ¶ 27; Ex. 2033 ¶ 27) (emphases added); see

id. at 18. Patent Owner argues, in comparison, that

"detecting changes internal to an application program

is precisely what the claimed 'third layer' does."° Id.

at 14 (citing Ex. 2032 ¶J 34-36).

As can be seen by a comparison of Patent Owner's

proposed construction with the language of claim 1 of

the '482 patent, Patent Owner's construction adds an

additional requirement to the express language of the

claim that any detected changes are "external to the

application program." Pointing to discussion in the

'482 patent regarding so-called "intelligent agents"

that search on the internet for relevant regulatory

and/or non- regulatory changes in a selected business

area, Patent Owner argues that "[a]ll of these

'changes' shown in the '482 patent are all 'external to

the application program." Id. at 16 (citing Ex. 1001,

the '482 patent, at issue in the related proceedings IPR201501751 and IPR2015-01752. However, because Patent Owner

relies on its discussion of this term for its proposed construction

of the recited "fourth portion" of the '111 patent, we discuss

Patent Owner's arguments in this regard.

10 Patent Owner's argument in this regard is in reference

to claim 1 of the '482 patent. We note that the third layer of this

claim does not recite detecting any changes per se, but instead

the claim recites that the third layer "retrieves the data in the

first and second layers in order to generate the functionality and

user interface elements of the application." See IPR2015-01751,

Ex. 1001 (the '482 patent), 32:23-26.

72a

16:17-34, 19:66-20:6; Ex. 2032 ¶J 32-34; Ex. 2033

¶J 33-34). Patent Owner makes a further distinction

that "changes that affect an application," as claimed,

are not changes affecting the application in any way,

but must be "changes which impact how the

application program should operate." See Tr. 66:2169:3; Ex. 2032 ¶ 27; Ex. 2033 ¶ 27.

Patent Owner further argues that "it would be

nonsensical for application-internal 'changes' to be

the 'changes that affect the application." P0 Resp.

17. According to Patent Owner,

The specification includes an example that

highlights that the definition proposed by the

Patent Owner for the "change management

layer" and the associated "change" are the

broadest reasonable interpretation when read

in light of the specification. The '482 patent

explains that regulations and technical

requirements are constantly changing, and

that these changes are posted in various media,

including paper, microfiche and electronic

media.

Id. The example from the Specification cited by

Patent Owner is as follows:

Assume that a federal regulation, governing

disposal of hazardous waste in landfills, is

amended so that the regulation now requires

analysis, reporting and record keeping of

landfill samples. Part of the change language

addresses what landfill sample information

must be collected, including landfill type,

landfill

cell,

parameter(s)

sampled,

identification of chain-of-custody, and

laboratory results. The change is posted in

73a

the Federal Register and becomes

promptly available as a hard copy (paper)

and electronically, on the Internet.

The invention begins tracking change using

one or more intelligent agents ("IA's"). An

"intelligent agent" is a specialized program

that resides on a network, or at a server as an

applet, and can make decisions and perform

tasks based on pre-defined rules. Preferably,

two or more IA's used by a business will have

sufficiently different assignments that at most

modest overlap occurs between the IA's. An IA

function is part of the Logic Menu, which is

discussed subsequently.

A change made to landfill waste regulations

is identified by an IA on the Internet, and the

relevant change information is routed to

a selected metadata table in the

invention. The change information includes

one or more of five recommendations: (1) create

a new WorkList; (2) change one or more data

entry forms; (3) create one or more new reports;

(4) create a new process; and (5) add one or

more new document images. Configuration

Users can choose to automatically configure

the preceding recommendation based on a set

of default conditions, or can manually

implement the configuration using a

configuration toolkit.

Ex. 1001, 10:36-63 (emphases added by Patent

Owner); P0 Resp. 17-18.

In its Reply, Petitioner argues that Patent

Owner's proposed construction "should be rejected

because it does not construe the claim language at

74a

issue in this proceeding," but instead Patent Owner's

analysis is entirely focused on language present in the

claims of the '482 patent. Pet. Reply 7. Petitioner

asserts that the "claim language is plain on its face,

includes no terms of art and requires no construction."

Id. at 5 (citing Ex. 1058, 44:19-45:4, 83:13, 95:16-20).

Petitioner also addresses Patent Owner's proposed

construction. In this regard, Petitioner argues that

"[r]ather than interpret 'changes,' [Patent Owner]

twice repeats the word in its construction and tacks

on additional limitations that result in [Patent

Owner's] construction failing to give 'changes' its

broadest reasonable interpretation." Pet. Reply 8.

According to Petitioner, the "only limitation the '111

[patent] claims impose on 'changes' is that they 'affect

the information in the first

or

second portion

of the server." Id. Petitioner asserts that the "plain

language of the claims does not limit 'changes' to the

narrow category of changes [Patent Owner] alleges

(i.e., those that arise from changes external to the

application)." Id.

We agree with Petitioner that the Specification of

the '111 patent "nowhere refers to changes 'that arise

from changes external to the application,' and does

not limit 'changes' in any way" and "[t]here is no

disclaimer in the '111 patent that limits the meaning

of 'changes' in the manner [Patent Owner] alleges."

Pet. Reply 9; see Ex. 1062 ¶J 4-5.

While Patent Owner points to several portions of

the Specification of the '482 patent11 in support of its

argument that the claimed changes should be limited

to those external to the application, we are not

.

.

.

.

.

.

The '111 patent and the '482 patent "have substantially

identical specifications and drawings." P0 Resp. 1 n.2.

11

75a

persuaded that the discussion in the Specification

rises to the level of "reasonable clarity,

deliberateness, and precision" necessary to provide a

special definition for the claim term. See In re

Paulsen, 30 F.3d at 1480. In fact, as noted by

Petitioner, the "specification also describes an

embodiment in which intelligent agents pursue

'internal' as well as 'external Web activities." Pet.

Reply 12 (citing Ex. 1001, 19:66-67).

Based on the evidence in this record, we determine

that the plain meaning of the phrase "fourth portion

of the server being configured to automatically detect

changes that affect the information in the first portion

of the server or the information in the second portion

of the server" is consistent with the Specification. We

are not persuaded that the recited function of

"automatically detect[ing] changes" is limited to

detecting changes external to the application, as

proposed by Patent Owner. No further express

construction of the claim phrase is necessary.

D. Principles of Law

Anticipation and

Obviousness

To prevail in its challenges to the patentability of

the claims, a petitioner must establish facts

supporting its challenges by a preponderance of the

evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). "In

an [inter part es review], the petitioner has the burden

from the onset to show with particularity why the

patent it challenges is unpatentable." Harmonic Inc.

v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir.

2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter

partes review petitions to identify "with particularity

the evidence that supports the grounds for the

challenge to each claim")). This burden never shifts

-

fL1

to Patent Owner. See Dynamic Drinkware, LLC v.

Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.

2015) (citing Tech. Licensing Corp. v. Videotek, Inc.,

545 F.3d 1316, 1326— 27 (Fed. Cir. 2008)) (discussing

the burden of proof in inter partes review).

To establish anticipation, each and every element

in a claim, arranged as recited in the claim, must be

found in a single prior art reference. See Net

MoneylN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369

(Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf

Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Although

the elements must be arranged or combined in the

same way as in the claim, "the reference need not

satisfy an ipsissimis verbis test," i.e., identity of

terminology is not required. In re Gleave, 560 F.3d

1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910

F.2d 831, 832 (Fed. Cir. 1990).

A claim is unpatentable under 35 U.S.C. § 103(a)

if the differences between the subject matter sought

to be patented and the prior art are such that the

subject matter as a whole would have been obvious at

the time the invention was made to a person having

ordinary skill in the art to which said subject matter

pertains. See KSR Intl Co. v. Tel eflex, Inc., 550 U.S.

398, 406 (2007). The question of obviousness is

resolved on the basis of underlying factual

determinations including: (1) the scope and content of

the prior art; (2) any differences between the claimed

subject matter and the prior art; (3) the level of

ordinary skill in the art; and (4) objective evidence of

nonobviousness. See Graham v. John Deere Co., 383

U.S. 1, 17-18 (1966). In an inter partes review,

Petitioner cannot satisfy its burden of proving

obviousness by employing "mere conclusory

statements." In re Magnum Oil Tools Intl, Ltd., 829

77a

F.3d 1364, 1380 (Fed. Cir. 2016). Thus, to prevail

Petitioner must explain how the proposed

combinations of prior art would have rendered the

challenged claims unpatentable.

At this final stage, we determine whether a

preponderance of the evidence of the record shows

that the challenged claims are anticipated by and/or

would have been obvious in view of asserted prior art.

We analyze the asserted grounds of unpatentability

in accordance with those principles.

E. Anticipation by Popp

Petitioner asserts that independent claim 13, as

well as claims 14-18 which depend therefrom, are

anticipated by Popp. Pet. 13-23. Patent Owner

argues that Popp does not disclose a "fourth portion,"

as recited in independent claim 13. P0 Resp. 22-25.

We have reviewed the entire record before us,

including the parties' contentions and supporting

evidence presented during this trial. For the reasons

explained below, we determine that Petitioner has

demonstrated, by a preponderance of the evidence,

that claims 13-18 are unpatentable.

1. Overview of Popp

Popp relates to an "object-oriented approach [that]

provides the ability to develop and manage Internet

transactions." Ex. 1004, Abstract. According to Popp,

"[l]ocal applications can be accessed using any

workstation connected to the Internet regardless of

the workstation's configuration." Id. Popp describes

that "[olnce [a] connection is established, the present

invention is used with an application on the server

side of the connection to dynamically generate Web

pages [that] contain application information and

provide the ability for the user to specify input." Id.

mm

at 3:55-59. Web pages can be generated in response

to the user input.

Id. at 3:61-63.

Figure 2 of Popp is reproduced below:

200

204

Corporate Network

Internet

(WWW

208

Server Domain

202

Client

Browser

206

-

}{T1P

Server

I

210

eM

214

CC!Messenger

Application

Database

18

E

/

,

21\

22011

220A

HEADER

Figure 2

flODY

PO

As seen in Figure 2 of Popp, Client Browser 202 is

connected via Internet 204 to Server Domain 208,

which includes among other things Application 214

and Database 224. Ex. 1004, 6:40-7:23, 7:31-34.

Application 214 includes objects 216 that correspond

to the HTML elements that define a Web page and are

arranged in a tree structure that corresponds to the

hierarchical structure of the HTML elements that

they implement. Id. at 12:21-26. The self-contained

modules, or components, may be shared by one or

more Web pages in a single application and/or across

multiple applications executing on a server. Id. at

4:27-33, 4:41-43, 17:54-18:32.

A scriptedControl object controls generation of a

Web page. Id. at 18:62-19:19, Fig. GA. Further, an

inputControl object handles pushing and pulling data

to/from the Web page and the external data source

(e.g., database 224). Id. at 21:61-22:67, Fig. GB. The

inputControl object determines, for example, when a

database entry should be updated based on

information input to the Web page and sends an

appropriate message to update the database. Id. at

21:37-49.

2. Claim 13

Claim 13 recites a "system, comprising: a server

accessible by a browser executed on a client device,

the server including a first portion, a second portion,

a third portion, and a fourth portion." Petitioner

asserts that "Popp's Server Domain 208 is accessible

by Client Browser 202, executed on a client device."

Pet. 18 (citing Ex. 1004, Fig. 2). According to

Petitioner, Server Domain 208 of Popp "includes

database 224 (first portion), object tree 216 (second

portion), internal application 214 (third portion), and

inputControl object 664 (fourth portion, used by

no

internal application 214)," corresponding to the

server portions recited in claim 13. Id. (citing Ex.

1004, 7:52-58, 12:21-32, Figs. 2, GB); see id. at 14-17;

Ex. 1002 ¶J 31, 34, 35, 40. Popp further discloses that

"Database 224 can be resident on the same server as

application 214," which also includes object tree 216

and inputControl object 664. Ex. 1004, 7:32-33, 7:5258, 12:21-32; see Pet. 17, 18; Ex. 1002 ¶J 22, 31, 34,

35, 40. Thus, according to Petitioner, Popp discloses

all four claimed "portions" on the same server.

Regarding the claimed "first portion of the server

having information about unique aspects of a

particular application," Petitioner describes the Web

page of Popp as "meet[ing] the 'application' whose

functionality and UI are dynamically generated" of

the claim.

Pet. 13-14 (citing Ex. 1002 ¶ 32).

According to Petitioner, Popp discloses that database

224 (first portion) "contain[s] information about

unique aspects of a particular Web page (application),

e.g., for an Automobile Shopper's application that can

be used by a prospective car buyer to select a car." Id.

at 18 (citing Ex. 1004, 9:4-10, 9:56-61); see Ex. 1002

¶31.

The claim further recites "the second portion of the

server [has] information about user interface

elements and one or more functions common to

various applications, the various applications

including the particular application." Petitioner

relies on the following as disclosing this claimed

feature:

Web page objects 216 [of Popp] correspond to

HTML elements that define a web page and

include component sub-trees representing user

interface portions (e.g., text boxes, check boxes,

MM

radio buttons) that can be shared across Web

pages, and thus contain information about user

interface elements (e.g., data entry elements)

and functions (e.g., receiving and processing

input data) common to various applications

(Web pages), including any particular

application (Web page) whose data is stored in

the database.

Pet. 15 (citing Ex. 1002 ¶ 34); see id. at 18-19 (citing

Ex. 1004, 2:33-41, 4:26-33, 4:41-43, 11:37-44, 12:21,

17:54-55, 18:32-43); Ex. 1002 ¶IJ 26, 31.

Regarding the claimed "third portion of the server

being configured to dynamically generate a

functionality and a user interface for the particular

application," Petitioner points to internal application

214 of Popp, which "includes scriptedControl Object

602 to generate and manage a Web page," as

disclosing this claimed feature. Pet. 15 (citing Ex.

1004, 8:49-55, 18:62-65, 19:1-2; Ex. 1002 ¶ 36); see

id. at 19 (citing Ex. 1004, 3:55-59, 7:45-49, 8:49-55,

18:65-67, 19:29-38, 31:44-49).

According to

Petitioner, the "scriptedControl object 602 retrieves

application-specific data from the database (first

portion) and combines it with the object tree (second

portion) in order to dynamically generate the

functionality and user interface for the Web page

(application)," thus disclosing the claim limitation

that "the functionality and the user interface of the

particular application [are] based on the information

in the first portion of the server and the information

in the second portion of the server." Id. at 15 (citing

Ex. 1004, 18:65-67, 19:29-38, 22:37-42, Figs. GA, 6B;

Ex. 1002 ¶f 36-37); see id. at 19 (citing Ex. 1004,

19:18-19, 19:35-38).

Petitioner further points to the fact that Popp's

"Web page can include a Java applet that, when

downloaded over an established connection between

the client and the server and processed by a browser,

presents the UI and functionality to the user," as

disclosing that the claimed "third portion of the server

[is] configured to send the functionality and the user

interface for the particular application to the browser

upon establishment of a connection between the

server and the client device." Pet. 16 (citing Ex. 1004,

31:1-3; Ex. 1002 ¶IJ 38, 39); see id. at 20 (citing Ex.

1004, 3:55-65, Fig. 2).

Finally, regarding the claimed "fourth portion of

the server [that is] configured to automatically detect

changes that affect the information in the first portion

of the server or the information in the second portion

of the server," Petitioner relies on Popp's inputControl

object 664. Pet. 16-17. According to Petitioner,

inputControl object 664 is responsible for detecting

and responding to user input received from the web

page user interface, such as a modification of field 632

in Web page 662. Id. (citing Ex. 1004, 22:28— 62; Ex.

1002 ¶ 40); see id. at 20. Petitioner further asserts

that "[w]hen inputControl object 664 detects a change

the Web page objects (second portion) are

automatically modified by storing the data retrieved

from the Web page form in text object 654 and/or

context object 628, and the database 630 (first

portion) is automatically modified to store the

changed data." Id. at 17 (citing Ex. 1004, 22:28-62,

Fig. GB; Ex. 1002 ¶ 40).

We agree with Petitioner's mapping of Popp to

claim 13, and adopt it as our own.

Patent Owner argues that Popp does not disclose

the "fourth portion" recited in claim 13. P0 Resp. 22—

ROM

25. Regarding claim 13 specifically, Patent Owner

refers to its arguments regarding claim 1 of the '482

patent, and asserts that "[for similar reasons, Popp's

disclosure of reaction to user input text is inadequate

to anticipate the 'fourth portion' limitation required

in every claim of the '111 patent." Id. at 25 (citing Ex.

2032 ¶ 65; Ex. 2033 ¶J 49-50). We, thus, address

Patent Owner's arguments regarding claim 1 of the

'482 patent herein.

In this regard, Patent Owner argues that "Popp

does not disclose a 'change management layer' which

'automatically detects changes which impact how the

application program should operate' where those

'changes' 'arise from changes external to the

application." Id. at 24 (citing Ex. 2032 ¶J 63-64; Ex.

2033 ¶IJ 46-50). Patent Owner argues that Popp

instead discloses "automatically detect [ing] changes

from [an application's] own operation in this case,

user input of text data via a user interface." Id. at 23

(citing Ex. 2031, 67:10-25).

Patent Owner's

arguments rely upon its proposed construction of the

claimed "change management layer" and "fourth

portion," which we do not adopt for the reasons

discussed above (see supra Section II.C). We are

persuaded by Petitioner's assertion that

automatically detecting a change that affects

information (e.g., an employee name) stored in the

database (i.e., the claimed "first portion") discloses

detecting a change that affects the application, as

claimed. See, e.g., Ex. 1001, 12:20-32 (describing the

business content layer (i.e., "first portion") as a

database that may include data associated with a

selected area of business, such as finance or human

resources).

-

Based on the evidence of record, we determine

Petitioner has shown, by a preponderance of the

evidence, that Popp anticipates claim 13.

3. Claims 14-18

For each of claims 14-18, Petitioner provides

arguments as to how each claim limitation is

disclosed in Popp, and relies upon Dr. Crovella's

testimony. See Pet. 20-23 (citing Ex. 1004, 2:25-32,

3:55-63, 16:48-17:52, 18:32-34, 19:50-20:37 ) 21:6122:13, 22:37-48, 22:64-65, Fig. 2; Ex. 1002 ¶J 41-45).

We agree with Petitioner's mapping of Popp to these

claims, and adopt it as our own.

Patent Owner does not substantively discuss

dependent claims 14-18, apart from its discussion of

independent claim 13, which we have addressed

above. See P0 Resp. 22-25.

Based on the evidence of record, we determine

Petitioner has shown, by a preponderance of the

evidence, that Popp anticipates claims 14-18.

F. Anticipation by Kovacevic

Petitioner asserts that independent claim 13, as

well as claims 14-18 which depend therefrom, are

anticipated by Kovacevic. Pet. 24-33. Patent Owner

argues that Kovacevic does not disclose a "fourth

portion," as recited in independent claim 13. P0

Resp. 25-28. We have reviewed the entire record

before us, including the parties' contentions and

supporting evidence presented during this trial. For

the reasons explained below, we determine that

Petitioner has demonstrated, by a preponderance of

the evidence, that claims 13-18 are unpatentable.

1. Overview of Kovacevic

Kovacevic relates to a system called MUSE that

uses a model-based technology to implement an

.iSri

intelligent tutoring system having a flexible user

interface. Ex. 1005, Abstract. The system described

in Kovacevic includes an application-specific library,

which "contains procedural code implementing the

functional core of applications whose Uls are to be

generated," and an interaction-specific library, which

"contains a library of communications primitives—

interaction techniques and presentation objects—to

be used when assembling UI structures." Id. at 117.

The MUSE program uses these libraries to build and

generate a user interface. Id. As further discussed in

Kovacevic, the libraries, and if desired the entire

MUSE program, could be transported over a browser

using Java.

Id.

Kovacevic also discusses a

sequencing control primitive that monitors and

updates the system when something affecting

information-flow-control primitives occurs. Id. at

114.

2. Claim 13

Claim 13 recites a "system, comprising: a server

accessible by a browser executed on a client device,

the server including a first portion, a second portion,

a third portion, and a fourth portion." Petitioner

asserts that "Kovacevic's SLOOP Server is accessible

over the Web by an HTML browser executed on a UI

client device." Pet. 28 (citing Ex. 1005, Fig. 1).

According to Petitioner, the "SLOOP Server includes

the application- specific library (first portion), the

interaction-specific library (second portion), the main

MUSE program (third portion), and the sequencing

control primitives (fourth portion)," corresponding to

the server portions recited in claim 13. Pet. 28 (citing

Ex. 1005, 117 (col. 2 ¶ 7)); see id. at 24-28; Ex. 1002

¶J 50, 51, 53, 58. Thus, according to Petitioner,

no

Kovacevic discloses all four claimed "portions" on the

same server.

Regarding the claimed "first portion of the server

having information about unique aspects of a

particular application," Petitioner describes that a

"tutoring course generated with a particular UI is a

particular 'application' as recited in the claims." Pet.

24 (citing Ex. 1002 ¶ 50). According to Petitioner,

Kovacevic discloses that a "particular tutoring course

is represented by an application-specific model

specification with software primitives provided in an

application-specific library." Id. (citing Ex. 1005, 117

(col. 1 ¶ 4, col. 2 ¶ 7); Ex. 1002 ¶ 50); see id. at 28-29.

The claim further recites "the second portion of the

server [has] information about user interface

elements and one or more functions common to

various applications, the various applications

including the particular application." Petitioner

relies on an interaction-specific library in Kovacevic

as disclosing this claimed feature. Pet. 24-25, 29.

According to Petitioner, the interaction-specific

library has "information about user interface

elements (e.g., communication UI primitives in the

interaction- specific library) and one or more

functions (e.g., mapping between external inputs and

internal forms) common to various applications

(including the particular application represented by a

downloaded application-specific library)." Id. at 2425 (citing Ex. 1005, 114 (col. 1 ¶ 2), 115 (col. 1 ¶ 2),

116 (col. 1 ¶ 6), 117 (col. 1 ¶ 5); Ex. 1002 ¶ 51); see id.

at 29 (citing Ex. 1005, 113 (col. 2 ¶ 2), 114 (col. 1 ¶ 2),

117 (col. 1 ¶ 5, col. 2 ¶ 7)).

Regarding the claimed "third portion of the server

being configured to dynamically generate a

functionality and a user interface for the particular

r.r.r.I

application," Petitioner points to the "main program"

of Kovacevic as disclosing this claimed feature. Pet.

25, 29. According to Petitioner, Kovacevic's main

program "generates the tutoring application

(including the functionality and the UI of the tutoring

course) using the primitives in the applicationspecific library (first portion) and the applicationindependent interaction-specific library (second

portion)." Id. at 25 (citing Ex. 1005, 117 (col. 1 4,

¶

col. 2 1 7); Ex. 1002 ¶J 52-53); see id. at 29 (citing Ex.

1005, 109 (col. 1 ¶ 3, ¶ 5, col. 2 ¶ 4), 117 (col. 1 4, col.

¶

2 ¶ 7)). According to Petitioner, this generation of the

tutoring application "is done by mapping application

model primitives provided in the application- specific

library (first portion) onto UI primitives including the

communication primitives in the interaction-specific

library (second portion) to construct a fully specified

UI," thus disclosing the claim limitation that "the

functionality and the user interface of the particular

application [are] based on the information in the first

portion of the server and the information in the

second portion of the server." Id. at 25 (citing Ex.

1002 ¶ 54); see id. at 29-30 (citing Ex. 1005, 115 (col.

1 ¶ 2), 116 (col. 1 ¶ 6), Figs 5, 6, 8).

Petitioner further points to the fact that "[h]aving

downloaded the application-specific library for a

particular tutoring application, [Kovacevic's] main

MUSE program generates and sends the application's

functionality and UI to be rendered in the client's

browser," as disclosing the limitation that "the third

portion of the server [is] configured to send the

functionality and the user interface for the particular

application to the browser upon establishment of a

connection between the server and the client device."

Pet. 27-28 (citing Ex. 1005, 110 (col. 1 ¶ 4), 117 (col. 1

MM

T 4, col. 2 ¶ 7); Ex. 1002 ¶IJ 52-56); see id. at 30 (citing

Ex. 1005, 108 (col. 1 ¶ 2, ¶ 4), 117 (col. 2 ¶ 7)).

Finally, regarding the claimed "fourth portion of

the server [that is] configured to automatically detect

changes that affect the information in the first portion

of the server or the information in the second portion

of the server," Petitioner relies on Kovacevic's

sequencing control primitives.

Id. at 25-26.

Kovacevic describes that the "sequencing control

primitives maintain and monitor the relevant UI

context. They update the context whenever

something potentially affecting [information-flowcontrol] primitives happens, and they constantly

evaluate the context to enable/disable those

primitives." Ex. 1005, 114 (col. 2 ¶ 6); see Pet. 30.

According to Petitioner, "[c]hanges such as user input

via the UI or selection of UI elements affect the

information in the second portion of the server, e.g.,

by causing certain UI elements to be enabled or

disabled," and the sequencing control primitives of

Kovacevic monitor for such user input to enable

appropriate enable/disable response of the UI element

when a user selection is made. Pet. 25-26 (citing Ex.

1005, 114 (col. 2 ¶ 6), 115 (col. 2); Ex. 1002 ¶ 57).

We agree with Petitioner's mapping of Kovacevic

to claim 13, and adopt it as our own.

Patent Owner argues that Kovacevic does not

disclose the "fourth portion" recited in claim 13. P0

Resp. 25-28. Regarding claim 13 specifically, Patent

Owner refers to its arguments regarding claim 1 of

the '482 patent, and asserts that "[Ijikewise, claims

13-18 of the '111 patent cannot be anticipated by

Kovacevic because Kovacevic does not disclose the

required 'fourth portion." Id. at 28 (citing Ex. 2032

¶ 73; Ex. 2033 ¶ 55). We, thus, address Patent

6011711

Owner's arguments regarding claim 1 of the '482

patent herein.

In this regard, Patent Owner argues that "[w]hile

Kovacevic describes making the website responsive to

user interaction, Kovacevic has no disclosure relevant

to changes 'external to the application." P0 Resp. 25

(citing Ex. 2032 ¶ 69; Ex. 2033 ¶ 54). Patent Owner

argues that "change[s] from a user interacting with

the user interface, or

change[s] from a user

selecting different user interface elements" are not

"external to an application." Id. at 27; see id. at 2728 (citing Ex. 2032 ¶J 71-72; Ex. 2033 TT 54-55).

Again, Patent Owner's arguments rely upon its

proposed construction of the claimed "change

management layer" and "fourth portion," which we do

not adopt for the reasons discussed above (see supra

Section II.C).

As noted above, Petitioner relies on the UI

primitives in the interaction-specific library of

Kovacevic as disclosing the claimed second portion.

We are persuaded by Petitioner's assertion that

detecting user input (a change) that affects whether

certain UI elements are enabled or disabled (i.e.,

information regarding the UI primitives in the second

portion) discloses the fourth portion's claimed

function of detecting changes that affect the

information in the second portion.

Based on the evidence of record, we determine

Petitioner has shown, by a preponderance of the

evidence, that Kovacevic anticipates claim 13.

3. Claims 14-18

For each of claims 14-18 Petitioner provides

arguments as to how each claim limitation is

disclosed in Kovacevic, and relies upon Dr. Crovella's

.

.

.

91a

testimony. See Pet. 31-33 (citing Ex. 1005, 110 (col. 1

¶J 4-5, col. 2 ¶ 2), 112 (Fig. 4), 113 (col. 2 1 2), 114

(col. 1 ¶ 2), 117 (col. 1 ¶ 4); Ex. 1002 ¶J 59-63). We

agree with Petitioner's mapping of Kovacevic to these

claims, and adopt it as our own.

Patent Owner does not substantively discuss

dependent claims 14-18, apart from its discussion of

independent claim 13, which we have addressed

above. See P0 Resp. 28.

Based on the evidence of record, we determine

Petitioner has shown, by a preponderance of the

evidence, that Kovacevic anticipates claims 14— 18.

G. Obviousness in View of Balderrama and

Java Complete

Petitioner asserts that independent claim 13, as

well as claims 14-18 which depend therefrom, would

have been obvious in view of the combination of

Balderrama and Java Complete. Pet. 34-45. Patent

Owner argues that Balderrama does not disclose a

"fourth portion," as recited in independent claim 13.

P0 Resp. 28-32. We have reviewed the entire record

before us, including the parties' contentions and

supporting evidence presented during this trial. For

the reasons explained below, we determine that

Petitioner has demonstrated, by a preponderance of

the evidence, that claims 13-18 are unpatentable.

1. Overview of Balderrama

Balderrama relates to a system that can offer

various goods for sale, in a self-service fashion with

an "electronic device capable of accepting and

transmitting a customer's input," such as a touchscreen display. Ex. 1006, 1:8-12, Fig. 1. The system

of Balderrama includes template presentations and a

database containing items intended for sale at a

92a

particular sales outlet. Id. at 2:11-16, Fig. 3; see also

id. at 6:48-58 (discussing template files), 8:64-9:2

(discussing "transmitted copy" of a template); 9:15-20

(discussing database records).

A "configuring

routine" uses information from the template

presentation and the database for a particular sales

outlet to create a presentation to display on the

electronic device at the sales outlet. Id. at 11:37-48,

Fig. 3 (element 84). The system is also configured to

handle modifications to the database and/or updates

to the presentation template. Id. at 2:17-21, 11:6467, Fig. 6. Update/modification detector 82 receives

information about updates to the template

presentation and/or modifications to the database,

and acts accordingly to update the presentation at the

customer terminal. Id. at 8:21-64, 9:7-27, 10:11-24,

Fig. 3 (arrows 81b, 87b, 83b).

2. Overview of Java Complete

Java Complete is a compilation of several articles

in DATAMATION Magazine, discussing a "new

simplified object-based, open-system [programming]

language that allows software developers to engineer

applications that can be distributed over the

Internet." See Ex. 1007, 1-3, 28. Java Complete

provides information about the Java programming

language. For example, as discussed in the magazine,

"Java reinvents the way applications are distributed

to clients and executed," and provides "an easy way to

deliver business information broadly." Id. at 40. As

further described, "network-centric Java applets

don't have to be preinstalled—they install themselves

just in time, on the fly, and deinstall themselves when

they're no longer needed." Id. at 42. One example

provided in Java Complete of a type of business

.

.

93a

application that could be built with Java applets is an

order-entry system. Id.

3. Claim 13

Claim 13 recites a "system, comprising: a server...

including a first portion, a second portion, a third

portion, and a fourth portion." Petitioner asserts that

"Balderrama's manager station 10 is a server

accessible by customer terminal 20a (client device)

over POS LAN 14." Pet. 39 (citing Ex. 1006, Fig. 1).

According to Petitioner, Balderrama's "[m] anager

station 10 (server) includes in-store database 86 with

records/files 87a (first portion), transmitted copy

template presentation 80 (second portion),

configuring routine 84 (third portion), and

update/modification detector 82 (fourth portion),"

corresponding to the server portions recited in claim

13. Id. at 40 (citing Ex. 1006, Fig. 3); see id. at 34-37;

Ex. 1002 ¶J 71-73, 77. Petitioner asserts that each of

these portions is "disclosed as being stored or

executed on manager station 10." Pet. 37 (citing Ex.

1006, 8:67-9:2, 9:16— 27, 11:38-46). Thus, according

to Petitioner, Balderrama teaches all four claimed

"portions" on the same server.

Regarding the claimed "first portion of the server

having information about unique aspects of a

particular application," Petitioner describes

Balderrama's "order-entry presentation for a

particular sales outlet (configured presentation 90),"

which "is a UI for a user to view items for sale at the

outlet and enter and order in an automated fashion,

e.g., via a touch screen," as the "particular

application" of the claim. Id. at 34 (citing Ex. 1006,

1:8-23, 2:11-16, Fig. 1; Ex. 1002 ¶f 64, 71).

Balderrama discloses that in-store database 86 with

records/files 87a (i.e., the first portion) "contain data

M.

records/information about items intended for sale at

a particular sales outlet" (i.e., the "particular

application"). Ex. 1006, 9:17— 21, Fig. 3; see Pet. 3435, 40; Ex. 1002 ¶J 64, 71.

The claim further recites "the second portion of the

server [has] information about user interface

elements and one or more functions common to

various applications, the various applications

including the particular application." Petitioner

describes Balderrama's disclosure of "shared-acrossoutlets template presentation 80 from headquarters

is transmitted to manager station 10 (the outlet's

server) for combination with the outlet-specific data,"

as disclosing this claimed feature. Pet. 35-36 (citing

Ex. 1006, 6:48-58, 8:67-9:2, 11:43-46; Ex. 1002 ¶ 72);

see id. at 40-41 (citing Ex. 1006, 6:48-58, 7:19-23,

8:64-9:2, 11:43-46, Figs. 3, 11).

Regarding the claimed "third portion of the server

being configured to dynamically generate a

functionality and a user interface for the particular

application," Petitioner describes that "Balderrama

employs a configuring routine 84. to retrieve data

from the outlet-specific database 86 (first portion) and

combine it with the generic template presentation 80

(second portion) in order to generate the functionality

and user interface elements of the configured

presentation 90 (application) for presentation to the

customer," thus disclosing this claimed feature. Pet.

36 (citing Ex. 1006, 11:38-46, Fig. 3; Ex. 1002 ¶J 7374); see id. at 41 (citing Ex. 1006, 11:38-46, 14:64-65,

16:20-21, 16:55-17:5, Fig. 3). According to Petitioner,

"[c]onfiguring routine 84 matches items in the

template presentation (second portion) with items in

the database (first portion), activating the sales items

that are sold in the particular sales outlet, and

.

.

95a

incorporating those items' prices from the database

into the corresponding cells in the template

presentation," thus disclosing the claim limitation

that "the functionality and the user interface of the

particular application [are] based on the information

in the first portion of the server and the information

in the second portion of the server." Id. at 36 (citing

Ex. 1006, 14:64-65, 16:20-21, 16:55-17:5; Ex. 1002

¶ 73); see id. at 41 (citing Ex. 1006, 8:67-9:2, 10:1013, Fig. 3).

Regarding the claimed "fourth portion of the

server [that is] configured to automatically detect

changes that affect the information in the first portion

of the server or the information in the second portion

of the server," Petitioner relies on Balderrama's

update/modification detector 82.

Pet. 36-37.

According to Petitioner, update/modification detector

82 "automatically detects changes to the outletspecific database (affecting the information in the

first portion of the server) or the generic template

presentation (affecting the information in the second

portion of the server)." Id. at 36 (citing Ex. 1006,

10:14-21, 11:64-67; Ex. 1002 ¶ 77); see id. at 42

(citing Ex. 1006, 2:16-21, 10:14-21, 11:64-67, 12:3438, Fig. 3). Petitioner further asserts that "[i]n

response to update/modification detector 82 detecting

changes

a currently-running presentation is

interrupted and re-configured." Id. at 37 (citing Ex.

1006, 9:7-15; Ex. 1002 ¶ 77).

Petitioner relies on Java Complete in combination

with Balderrama for teaching that the server is

"accessible by a browser executed on a client device,"

as claimed, and that the claimed "third portion of the

server [is] configured to send the functionality and the

user interface for the particular application to the

..

.,

browser upon establishment of a connection between

the server and the client device" Id. at 38-40.

According to Petitioner, Balderrama teaches

distributing the application from a server to a client

over a LAN network but does not explicitly state that

the server is accessible by a browser executed on the

client device. Id. at 37 (citing Ex. 1002 ¶ 67). Java

Complete "describes using browsers for UI delivery

over the Internet and within a company's internal

network." Id. at 38 (citing Ex. 1007, 30, 31, 40; Ex.

1002 ¶ 68). Petitioner asserts that "[ut would have

been obvious to a [person of ordinary skill in the art]

to implement a browser on Balderrama's customer

terminal for receiving and executing the order-entry

application, as browsers were commonly used to

receive UI applications in client-server systems." Id.

at 37-38 (citing Ex. 1002 ¶J 68-69).

Petitioner further points to Java Complete's

teaching that "the client browser executes a Java

applet received from the server to dynamically

generate the UI functionality of the application,"

asserting that a person of ordinary skill "would have

been motivated to implement Balderrama's orderentry application as a Java applet delivered to a

browser executed by the customer terminal (client

device) because of the ease -of-implementation

benefits of using Java and readily-available web

browsers." Id. at 38 (citing Ex. 1007, 32, 40, 42; Ex.

1002 ¶J 68-69). According to Petitioner, Java applets

are delivered in client-server systems by being

downloaded upon establishment of a connection

between the server and the client device. Id. at 39

(citing Ex. 1007, 32). Thus, Petitioner asserts:

[un the obvious combination of Balderrama

and Java Complete, customer terminal 20a/94

97a

(client device) executes a browser to access the

server (manager station 10), and configuring

routine 84 (third portion of the server) is

configured to send the functionality and UI for

the particular application (configured

presentation 85) to the browser upon

establishment of a connection between the

server and the client device.

Id.

We agree with Petitioner's mapping of

Balderrama and Java Complete to claim 13, and

adopt it as our own.

Patent Owner argues that Balderrama does not

disclose the "fourth portion" recited in claim 13. P0

Resp. 28-32. Regarding claim 13 specifically, Patent

Owner refers to its arguments regarding claim 1 of

the '482 patent, and asserts that "[s]imilarly, the

Balderrama in view of Java Complete [combination]

cannot render any claim of the 'fourth portion' of claim

13 of the '111 patent obvious." Id. at 32 (citing Ex.

2032 ¶ 82; Ex. 2033 ¶ 62). We, thus, address Patent

Owner's arguments regarding claim 1 of the '482

patent herein.

In this regard, Patent Owner asserts that the

update/modification detector 82 of Balderrama (upon

which Petitioner relies as. teaching the claimed

change management layer) merely "detects [manual]

user input" and argues that "[o]ne of ordinary skill in

the art would not recognize the 'update/modification

detector 82' as [a] 'change management layer' that

detects 'changes' under the broadest reasonable

interpretation" thereof. P0 Resp. 29 (citing Ex. 2032

¶J 74-75, 77; Ex. 2033 ¶ 56; Ex. 1006, 2:10-21, 10:69, Table A (col. 7)). Patent Owner further argues that

update/modification detector 82 merely notifies the

system of a detected change. Id. at 30 (citing Ex.

1006, 9:2-14). Again, Patent Owner's arguments rely

upon its proposed construction of the claimed "change

management layer" and "fourth portion," which we do

not adopt for the reasons discussed above (see supra

Section II.C).

We are persuaded by Petitioner's assertion that

notifying Balderrama's update/modification detector

82 of a change in data records or template

presentations, see Ex. 1006, Fig. 3, constitutes the

claimed function of the "fourth portion."

Based on the evidence of record, we are persuaded

that Petitioner has shown that the combination of

Balderrama and Java Complete teaches or suggests

all of the limitations of claim 13, and has articulated

sufficient reasoning why it would have been obvious

to combine these references in the proposed manner.

We, thus, determine Petitioner has shown, by a

preponderance of the evidence, that the combination

of Balderrama and Java Complete renders claim 13

obvious.

4. Claims 14-18

For each of claims 14-18, Petitioner provides

arguments as to how each claim limitation is

disclosed in the combination of Balderrama and Java

Complete, and relies upon Dr. Crovella's testimony.

See Pet. 42-45 (citing Ex. 1006, 1:8-14,6:48-63,9:1321, 16:55-17:5, Fig. 3; Ex. 1007, 42; Ex. 1002 ¶J 7882).

We agree with Petitioner's mapping of

Balderrama and Java Complete to these claims, and

adopt it as our own.

Patent Owner does not substantively discuss

dependent claims 14-18, apart from its discussion of

S. .

independent claim 13, which we have addressed

above. See P0 Resp. 32.

Based on the evidence of record, we determine

Petitioner has shown, by a preponderance of the

evidence, that the combination of Balderrama and

Java Complete renders claims 14-18 obvious.

CONCLUSION

For the foregoing reasons, we determine that

Petitioner has demonstrated, by a preponderance of

the evidence, that claims 13-18 are unpatentable

under 35 U.S.C. § 102 as anticipated by Popp; claims

13-18 are unpatentable under 35 U.S.C. § 102 as

anticipated by Kovacevic; and claims 13-18 are

unpatentable under 35 U.S.C. § 103 as obvious in

view of Balderrama and Java Complete.

ORDER

Accordingly, it is

ORDERED that claims 13-18 of U.S. Patent No.

8,484,111 B2 are held unpatentable; and

FURTHER ORDERED that, because this is a

Final Written Decision, parties to the proceeding

seeking judicial review of the decision must comply

with the notice and service requirements of 37 C.F.R.

§ 90.2.

PETITIONER:

Richard F. Giunta

Elisabeth H. Hunt

Randy J. Pritzker

WOLF, GREENFIELD & SACKS, P.C.

RGiunta-PTAB@wolfgreenfield.com

EHunt-PTAB@wolfgreenfield.com

RPritzker-PTAB@wolfgreenfield.com

100a

PATENT OWNER:

Jonathan Pearce

M. Kala Sarvaiya

Steven C. Sereboff

SOCAL IP LAW GROUP LLP

ksarvaiya@socalip.com

jpearce@socalip.com

ssereboff@socalip.com

101a

UNITED STATES PATENT AND

TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL

BOARD

RPX CORPORATION,

Petitioner,

V.

APPLICATIONS IN INTERNET TIME, LLC,

Patent Owner.

Case IPR2015-01751

Case IPR2015-01752

Patent 7,356,482 B2

Before LYNNE E. PETTIGREW, MITCHELL G.

WEATHERLY, and JENNIFER MEYER CHAGNON,

Administrative Patent Judges.

CHAGNON, Administrative Patent Judge.

FINAL WRITTEN DECISION

Inter Partes Review

35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

I. INTRODUCTION

We have jurisdiction to hear this inter partes

review under 35 U.S.C. § 6. This Final Written

Decision is issued pursuant to 35 U.S.C. § 318(a) and

37 C.F.R. § 42.73. For the reasons discussed herein,

we determine that Petitioner has shown, by a

preponderance of the evidence, that claims 1, 3-8, and

102a

10-40 of U.S. Patent No. 7,356,482 B2 (Ex. 1001,1

"the '482 patent") are unpatentable.

A. Procedural History

RPX Corporation ("Petitioner") filed a Petition for

inter partes review of claims 1, 7-21, 27-41, and 4759 of the '482 patent. IPR2015-01751, Paper 1 ("1751

Pet."). Petitioner also filed a Petition for inter partes

review of claims 2-6, 22-26, and 42-46 of the

'482 patent. IPR2015-01752, Paper 1 ("1752 Pet.").

Petitioner provided a Declaration of Mark E.

Crovella, Ph.D. (Ex. 1002) to support its positions.

Applications In Internet Time LLC ("Patent Owner")

filed a Preliminary Response in each proceeding.

IPR2015-01751, Paper 20, Paper 26 (redacted

version) ("1751 Prelim. Resp."); IPR20 15-01752,

Paper 20, Paper 26 (redacted version) ("1752 Prelim.

Resp."). We also authorized additional briefing on

issues relating to real parties-in-interest.

See

IPR2015-01751, Paper 28, Paper 29 (redacted

version) ("RPI Reply"); IPR2015-01751, Paper 38,

Paper 37 (redacted version) ("RPI Sur-Reply") (the

same documents also were filed in IPR2015-01752,

Papers 28, 29, 37, 38).

Pursuant to 35 U.S.C. § 314(a), on February 25,

2016, we instituted inter partes review on the

following asserted grounds:

1

Citations to exhibits herein are to the Exhibit numbers

in IPR2O15-01751. The same Exhibits maybe found in IPR201501752.

For example, Exhibit 1001 in IPR2015-01751

corresponds to Exhibit 1101 in IPR2015-01752.

103a

IPR2015-01751

References

Basis

Claims Challenged

Popp2

§ 102

1, 7, 8,10-13,18-21,

Popp and

Anand3

§ 103

13-17,33-37

Kovacevic4

§ 102

1, 8, 10, 19-21, 28,

30, 39, 40

Balderrama5 and

Java Complete6

§ 103

1, 7, 8, 10-12,19-21,

27-32,39,40

27-33,38-40

IPR2015-01751, Paper 51 ("1751 Inst. Dec.").

2

1004).

1009).

U.S. Patent No. 6,249,291 Bi, issued June 19, 2001 (Ex.

U.S. Patent No. 5,710,900, issued Jan. 20, 1998 (Ex.

Srdjan Kovacevic, Flexible, Dynamic User Interfaces for

Web-Delivered Training, in AVI '96 PROCEEDINGS OF THE

WORKSHOP ON ADVANCED VISUAL INTERFACES 108-18 (1996)

(Ex. 1005).

U.S. Patent No. 5,806,071, issued Sept. 8, 1998 (Ex.

1006).

6 Java Complete!, 42 DATAMAT

ION MAGAZINE 5, 28-49

(Mar. 1, 1996) (Ex. 1007).

A public version of the Institution Decision is available

as Paper 62.

'

104a

IPR20 15-0 1752

References

Basis

Claims Challenged

Popp

§ 102

§ 103

22

References

Basis

Claims Challenged

Balderrama and

§ 102

22

§ 103

3-6,23-26

§ 103

3-6,23-26

Popp and Codd8

3-6,23-26

IPR20 15-01752

Java

Complete

Balderrama,

Java Complete,

and

Codd

Kovacevic and

Codd

IPR2015-01752, Paper 51 ("1752 Inst. Dec.")

Subsequent to institution, Patent Owner filed a

Patent Owner Response (IPR2015-01751, Paper 65

("P0 Resp.")'°), along with Declarations of H.V.

Jagadish, Ph.D. (Ex. 2032) and James Flynn (Ex.

2033) to support its positions. Petitioner filed a Reply

to the Patent Owner Response in each proceeding

(IPR2015-01751, Paper 72 ("1751 Pet. Reply");

IPR2015.01752, Paper 70 ("1752 Pet. Reply")), along

8 E. F. Codd, Does Your DBMS Run By the Rules?, XIX

COMPUTERWORLD 42, 49-60 (Oct. 21, 1985) (Ex. 1008).

A public version of the Institution Decision is available

as Paper 60.

10 Patent Owner filed an identical Patent Owner Response

in IPR2015-01752 (Paper 63). For convenience, we refer to both

documents as TO Resp." herein.

ID1i1

with a Reply Declaration of Dr. Crovella (Ex. 1062).

Pursuant to our authorization, Patent Owner filed a

limited Sur-Reply (IPR2015-01751, Paper 75 ("P0

Sur-Reply")hl). A combined oral hearing for Cases

IPR2015-01750, IPR2015-01751, and IPR2015-01752

was held on November 8, 2016. A transcript of the

hearing is included in the record. IPR2015-01751,

Paper 79 ("Tr."); IPR2015-01752, Paper 77.

Related Proceedings

The '482 patent is the subject of the following

district court proceeding: Applications in Internet

Time LLC v. Salesforce.com , Inc., No. 3:13-cv-00628

(D. Nev.). 1751 Pet. 3; 1751 Paper 5, 2; 1752 Pet. 3;

1752 Paper 5, 2.

Claims 13-18 of related U.S. Patent No. 8,484,111

B2 are the subject of inter partes review in IPR201501750. 1751 Pet. 3; 1751 Paper 5, 2; 1752 Pet. 3; 1752

Paper 5, 2.

The '482 Patent

The '482 patent, titled "Integrated Change

Management Unit," relates to an "integrated system

for managing changes in regulatory and

non-regulatory requirements for business activities at

an industrial or commercial facility." Ex. 1001,

Abstract. The integrated system described in the '482

patent manages data that is constantly changing by

"provid[ing] one or more databases that contain

information on operations and requirements

concerning an activity or area of business,"

"monitor[ing] and evaluat[ing] the relevance of

information on regulatory and non-regulatory

11

Patent Owner filed an identical Sur-Reply in IPR201501752 (Paper 73).

106a

changes that affect operations of the business and/or

information

management

requirements,"

"convert[ing] the relevant changes into changes in

work/task lists, data entry forms, reports, data

processing, analysis and presentation

of data

processing and analysis results to selected recipients,

without requiring the services of one or more

programmers to re-program and/or re-code the

software items affected by the change," and

"implement[ing] receipt of change information and

dissemination of data processing and analysis results

using the facilities of a network, such as the Internet."

Id. at 8:30-46, 66-67.

Figure 1 of the '482 patent is reproduced below:

Change Layer

CHANGES ARE IDENTIFIED ON THE INTERNET USING

INTELLIGENT AGENTS AND PROVIDED FOR CONfiGURATION

END USER FUNCTIONS

ENABLED BY CONFIGURATION

CONFIGURATION TOOLS THAT

ENABLE THE END USER FUNCTIONS

Java Data Management Layer

END USER FUNCTIONS ARE ENABLED

FROM METADATA DEFINITIONS

CONFIGURATION TOOLS DEFINE

END USER FUNCTIONS IN METADATA

Metadata Layer

TABLES, VIEWS, FUNCTiONS AND

PROCEDURES ARE ACCESSED BY

END USER FUNCTIONS VIA METADATA

Business Content Layer

FIG. I

13

15

METADATA REFERENCES TABLES,

17

-1

108a

As shown in Figure 1, the integrated system

operates at four layers: (1) change management

layer 11 that identifies regulatory and non-regulatory

changes that may affect a user's business, (2) Java

data management layer 13 that generates a user

interface ("UI"), (3) metadata layer 15 that provides

data about the user interface including "tools,

worklists, data entry forms, reports, documents,

processes, formulas, images, tables, views, columns,

and other structures and functions," and (4) business

content layer 17 that is specific to the particular

business operations of interest to the user. Id. at

9:33-48. According to the '482 patent, because the

system of the invention is "entirely data driven," the

need to write and compile new code in order to update

the system is eliminated. Id. at 10:20, 12:42-52.

D. Illustrative Claim

• Of the claims subject to these inter partes reviews,

claims 1 and 21 are independent. Claims 3-8 and 1020 depend, directly or indirectly, from claim 1. Claims

22-40 depend, directly or indirectly, from claim 21.

Claim 1 of the '482 patent, reproduced below, is

illustrative:

1. A system for providing a dynamically

generated application having one or more

functions and one or more user interface

elements, comprising:

a server computer;

one or more client computers connected to

the server computer over a computer network;

a first layer associated with the server

computer containing information about the

unique aspects of a particular application;

109a

a second layer associated with the server

computer containing information about the

user interface and functions common to a

variety of applications, a particular application

being generated based on the data in both the

first and second layers;

a third layer associated with the server

computer that retrieves the data in the first

and second layers in order to generate the

functionality and user interface elements of the

application; and

a change management layer for

automatically detecting changes that affect an

application,

each client computer further comprising a

browser application being executed by each

client computer, wherein a user interface and

functionality for the particular application is

distributed to the browser application and

dynamically generated when the client

computer connects to the server computer.

Ex. 1001, 32:9-34.

II. ANALYSIS

A. Real Parties- in-Interest

In its Petitions, Petitioner identifies itself, RPX

Corporation, as the "sole real party-in-interest in this

proceeding." 1751 Pet. 2; 1752 Pet. 2. Prior to

institution, Patent Owner raised the issue of whether

Petitioner has identified all real parties-in-interest.

In particular, Patent Owner asserted that

Salesforce.com, Inc. ("Salesforce") is an unnamed real

party-in-interest. See 1751 Prelim. Resp. 3-21; 1752

Prelim. Resp. 3-21.

llOa

In our Institution Decisions, we determined that

Salesforce had not been shown to be a real party-ininterest in these proceedings. See 1751 Inst. Dec. 816; 1752 Inst. Dec. 8-16. In its Patent Owner

Response, Patent Owner argues:

In its decision instituting these

trials,

the Board stated that there was insufficient

evidence to find that the real party in interest

is Salesforce.com, Inc. Patent Owner disagrees

with the Board's view of the law and the facts,

and in particular believes that the Board

misconstrued the law. As explained

previously, the AlA was intended to prevent

defendants from getting "a second bite at the

apple." Yet, the Board is doing just that by

allowing Petitioner to act indirectly for

Salesforce. In its decision, the Board set an

improperly high burden of proof for the patent

owner, and also improperly shifted the burden

of proof to the patent owner. As explained in

Patent Owner's Preliminary Response,

Salesforce is the real party in interest and

Petitioner is acting as its proxy. Because

Salesforce is time limited, so is Petitioner and

patentability should be confirmed on this basis.

P0 Resp. 8. To the extent Patent Owner is

attempting to incorporate arguments made in the

Preliminary Response into the Patent Owner

Response, such incorporation is improper under our

rules. See 37 C.F.R. § 42.6(a)(3) ("Arguments must

not be incorporated by reference from one document

into another document."). In any event, Patent

Owner has neither presented any new evidence into

the record, beyond the evidence we considered

.

.

.

lila

previously in rendering our Institution Decisions, nor

cited any legal authority to support its positions set

forth above. Based on the complete record now before

us, we see no reason to change our previous

determination, and we are not persuaded that

Salesforce should have been identified as a real partyin-interest in these proceedings.

B. Level of Ordinary Skill in the Art

Petitioner asserts that a "person of ordinary skill

in the art in the timeframe of the December 1998

priority date of the '482 patent. would have had at

least a B.S. in Computer Science or the equivalent,

along with at least two years of computer

programming experience in developing applications

for client-server systems." 1751 Pet. 6 (citing Ex.

1002 ¶ 10); 1752 Pet. 6 (citing the same evidence).

Patent Owner indicates that it "does not dispute

Petitioner's definition of the person of ordinary skill

in the art." P0 Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17.

For purposes of this Final Written Decision, we agree

with and adopt Petitioner's proposed definition for the

level of ordinary skill in the art, which each declarant

in this proceeding meets or exceeds.12 See Ex. 1002

111 2-6, ii; Ex. 2032 ¶J 4-9, 19; Ex. 2033 ¶J 2-5, 18.

We further note that the applied prior art reflects the

appropriate level of skill at the time of the claimed

.

12

.

Patent Owner argues that, in the relevant time frame,

Dr. Crovella "was already considerably more than ordinary,"

and, for this reason, we should give less weight to Dr. Crovella's

testimony. P0 Resp. 11; see also Tr. 53:4-9, 55:24-56:4. We

disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550

F.3d 1356, 1363-64 (Fed. Cir. 2008) (noting that under Fed. R.

Evid. 702, the expert must possess sufficient "expertise to be of

assistance" to the trier of fact).

112a

invention. See Okajima v. Bourdeau, 261 F.3d 1350,

1355 (Fed. Cir. 2001).

C. Claim Construction

In an inter partes review, claim terms in an

unexpired patent are given their broadest reasonable

construction in light of the specification of the patent

in which they appear. See 37 C.F.R. § 42.100(b);

Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,

2144-46 (2016) (upholding the use of the broadest

reasonable interpretation standard). Pursuant to

that standard, the claim language should be read in

light of the specification, as it would be interpreted by

one of ordinary skill in the art. In re Suitco Surface,

Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we

generally give claim terms their ordinary and

customary meaning. See In re Translogic Tech., Inc.,

504 F.3d 1249, 1257 (Fed. Cir. 2007) ("The ordinary

and customary meaning 'is the meaning that the term

would have to a person of ordinary skill in the art in

question." (quoting Phillips v. AWH Corp., 415 F.3d

1303, 1313 (Fed. Cir. 2005) (en banc))).

The claims, however, "should always be read in

light of the specification and teachings in the

underlying patent," and "[e]ven under the broadest

reasonable interpretation, the Board's construction

'cannot be divorced from the specification and the

record evidence." Microsoft Corp. v. Proxyconn, Inc.,

789 F.3d 1292, 1298 (Fed. Cir. 2015) (citations

omitted).

In other words, "[u]nder a broadest

reasonable interpretation, words of the claim must be

given their plain meaning, unless such meaning is

inconsistent with the specification and prosecution

history." Trivascular, Inc. v. Samuels, 812 F.3d 1056,

1062 (Fed. Cir. 2016) (citing Straight Path IP Grp.,

Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1362 (Fed.

113a

Cir. 2015)). Any special definition for a claim term

must be set forth in the specification with reasonable

clarity, deliberateness, and precision. See In re

Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).

However, limitations are not to be read from the

specification into the claims. In re Van Geuns, 988

F.2d 1181, 1184 (Fed. Cir. 1993).

The parties' dispute requires construction of the

phrases "change management layer for automatically

detecting changes that affect an application," recited

in claim 1, and "automatically detecting changes that

affect a particular application," recited in claim 21.

No issue in this Decision requires express

construction of any other claim terms. See, e.g.,

Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355,

1361 (Fed. Cir. 2011) ("[C]laim terms need only be

construed 'to the extent necessary to resolve the

controversy.") (quoting Vivid Techs., Inc. v. Am. Sci.

& Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).

1. change management layer.

Claim 1 recites, in part, "a change management

layer for automatically detecting changes that affect

an application." Ex. 1001, 32:27-28. In the Petitions,

Petitioner argues that "[c]hange management' would

have been understood by a [person of ordinary skill in

the art] to be a mere label for the layer that performs

the function recited in the claim, and thus the

[broadest reasonable interpretation] for 'change

management layer for automatically detecting

changes that affect an application' is 'a layer for

automatically detecting changes that affect an

application." 1751 Pet. 10 (citing Ex. 1002 23); see

¶

1752 Pet. 10 (citing the same evidence).

114a

In its Patent Owner Response, Patent Owner

argues that "the term 'change management layer'

when interpreted in view of the specification would

readily be understood to a person of ordinary skill in

the art to mean 'a layer that automatically detects

changes external to the application program which

impact how the application program should operate."

P0 Resp. 14 (citing Ex. 2032 ¶ 27; Ex. 2033 ¶ 27)

(emphases added); see id. at 18. Patent Owner

argues, in comparison, that "detecting changes

internal to an application program is precisely what

the claimed 'third layer' does."13 Id. at 14 (citing Ex.

2032 ¶j 34-36).

As can be seen by a comparison of Patent Owner's

proposed construction with the language of claim 1,

Patent Owner's construction adds an additional

requirement to the express language of the claim that

any detected changes are "external to the application

program." Pointing to discussion in the '482 patent

regarding so-called "intelligent agents" that search on

the internet for relevant regulatory and/or

non-regulatory changes in a selected business area,

Patent Owner argues that "[a]ll of these 'changes'

shown in the '482 patent are all 'external to the

application program." Id. at 16 (citing Ex. 1001,

16:17-34, 19:66-20:6; Ex. 2032 ¶J 32-34; Ex. 2033

¶J 33-34). Patent Owner makes a further distinction

that "changes that affect an application," as claimed,

are not changes affecting the application in any way,

We note that the claimed third layer does not recite

detecting any changes per Se, but instead the claim recites that

the third layer "retrieves the data in the first and second layers

in order to generate the functionality and user interface

elements of the application." See Ex. 1001, 32:23-26.

13

115a

but must be "changes which impact how the

application program should operate." See Tr. 66:2169:3; Ex. 2032 ¶ 27; Ex. 2033 1 27.

Patent Owner further argues that "it would be

nonsensical for application-internal 'changes' to be

the 'changes that affect the application." P0 Resp.

17. According to Patent Owner,

The specification includes an example that

highlights that the definition proposed by the

Patent Owner for the "change management

layer" and the associated "change" are the

broadest reasonable interpretation when read

in light of the specification. The '482 patent

explains that regulations and technical

requirements are constantly changing, and

that these changes are posted in various media,

including paper, microfiche and electronic

media.

Id. The example from the Specification cited by

Patent Owner is as follows:

Assume that a federal regulation, governing

disposal of hazardous waste in landfills, is

amended so that the regulation now requires

analysis, reporting and record keeping of

landfill samples. Part of the change language

addresses what landfill sample information

must be collected, including landfill type,

landfill

cell,

parameter(s)

sampled,

identification of chain-of-custody, and

laboratory results. The change is posted in

the Federal Register and becomes

promptly available as a hard copy (paper)

and electronically, on the Internet.

116a

The invention begins tracking change using

one or more intelligent agents ("IA's"). An

"intelligent agent" is a specialized program

that resides on a network, or at a server as an

applet, and can make decisions and perform

tasks based on pre-defined rules. Preferably,

two or more IA's used by a business will have

sufficiently different assignments that at most

modest overlap occurs between the IA's. An IA

function is part of the Logic Menu, which is

discussed subsequently.

A change made to landfill waste regulations

is identified by an IA on the Internet, and the

relevant change information is routed to

a selected metadata table in the

invention. The change information includes

one or more of five recommendations: (1) create

a new WorkList; (2) change one or more data

entry forms; (3) create one or more new reports;

(4) create a new process; and (5) add one or

more new document images. Configuration

Users can choose to automatically configure

the preceding recommendation based on a set

of default conditions, or can manually

implement the configuration using a

configuration toolkit.

Ex. 1001, 10:21-60 (emphases added by Patent

Owner); P0 Resp. 17-18.

In its Reply, Petitioner argues that "[r]ather than

interpret 'changes,' [Patent Owner] twice repeats the

'word in its construction and tacks on additional

limitations that result in [Patent Owner's]

construction failing to give 'changes' its broadest

reasonable interpretation." 1751 Pet. Reply 5; see

117a

1752 Pet. Reply 4. According to Petitioner, the "only

limitation the '482 [patent] claims impose on 'changes'

is that they 'affect an application." 1751 Pet. Reply 5;

see 1752 Pet. Reply 4. Petitioner asserts that the

"plain language of the claims does not limit 'changes'

to the narrow category of changes [Patent Owner]

alleges (i.e., those that arise from changes external to

the application)." 1751 Pet. Reply 5; see 1752 Pet.

Reply 4. Petitioner argues also that Patent Owner

seeks to import unwarranted limitations into the

claims with its proposal that changes that "affect an

application" should be limited to changes "which

impact how the application program should operate."

1751 Pet. Reply 8; see 1752 Pet. Reply 7.

Patent Owner admits that the term "change

management layer" is not a term of art. P0 Resp. 14;

see Ex. 1058, 44:19-45:4, 83:13, 95:16-20. Petitioner

agrees. 1751 Pet. 10; 1752 Pet. 10; 1751 Pet. Reply 9;

1752 Pet. Reply 8. We agree with Petitioner that the

Specification of the '482 patent "nowhere refers to

changes 'that arise from changes external to the

application,' and does not limit 'changes' in any way"

and "[t]here is no disclaimer in the '482 patent that

limits the meaning of 'changes' in the manner [Patent

Owner] alleges." 1751 Pet. Reply 6; see 1752 Pet.

Reply 5; Ex. 1062 TT 4-5.

While Patent Owner points to several portions of

the Specification of the '482 patent in support of its

argument that the claimed changes should be limited

to those external to the application and those that

impact how the application program operates, we are

not persuaded that the discussion in the Specification

rises to the level of "reasonable clarity,

deliberateness, and precision" necessary to provide a

special definition for the claim term. See In re

118a

Paulsen, 30 F.3d at 1480. In fact, as noted by

Petitioner, the "specification also describes an

embodiment in which intelligent agents pursue

'internal' as well as 'external Web activities." 1751

Pet. Reply 12 (citing Ex. 1001, 19:66-67); see 1752

Pet. Reply 11 (citing the same evidence). Further, the

Specification describes the detected changes, more

generally, throughout as changes that may affect

operation of a user's business, rather than as changes

that affect operation of the application program. See,

e.g., Ex. 1001, Abstract ("The system

receives

information on regulatory and non-regulatory

changes that affect operations of the business."),

9:34-38 ("[C]hange management layer 11. includes

one or more change agents that 'cruise the Web' and

identify and bring to the user's attention relevant

regulatory and non-regulatory changes found on the

Web that may affect a user's business."), 22:33-39

("The system. does not require that every employee

[of a business] become a programmer in order to

continue to respond to regulatory and/or technological

and/or social changes affecting business operations

and/or information management requirements."); see

also Ex. 1062 ¶ 5 (Dr. Crovella testifying that a

person of ordinary skill "would have understood that

changes can affect an application without impacting

how the application 'should' operate, and those types

of changes are also included in the plain and ordinary

meaning of 'changes that affect an application,' [such

as] a change to the processing resources available to

an application could affect the application (e.g., by

causing it to run faster or slower) without impacting

how the application 'should' operate (e.g., without

altering any of the steps that the application attempts

to perform)").

.

.

.

.

.

.

.

119a

Based on the evidence in this record, we determine

that the plain meaning of the phrase "change

management layer for automatically detecting

changes that affect an application" is consistent with

the Specification. We are not persuaded that the

recited "change management layer for automatically

detecting changes that affect an application" is

limited to detecting changes external to the

application, or that any such changes must impact

how the application program should operate, as

proposed by Patent Owner. No further express

construction of the claim phrase is necessary.

2. automatically detecting changes that

affect a particular application

Claim 21 recites, in part, "automatically detecting

changes that affect a particular application." Ex.

1001, 33:52-53. Patent Owner argues that this step

"corresponds to the 'change management layer" of

claim 1. P0 Resp. 20. Patent Owner further argues

that "[t]he meaning of 'automatically detecting'

should correspond to that of the 'change management

[layer]' and the 'changes' therein should likewise

'arise from changes external to the application." Id.

For the same reasons discussed above with respect

to the phrase "change management layer for

automatically detecting changes that affect an

application," we are not persuaded that claim 21

should be limited in the manner asserted by Patent

Owner.

No further express construction of

"automatically detecting changes that affect a

particular application" is necessary.

120a

D. Principles of Law

Anticipation and

Obviousness

To prevail in its challenges to the patentability of

the claims, a petitioner must establish facts

supporting its challenges by a preponderance of the

evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). "In

an [inter partes review], the petitioner has the burden

from the onset to show with particularity why the

patent it challenges is unpatentable." Harmonic Inc.

v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir.

2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter

partes review petitions to identify "with particularity

the evidence that supports the grounds for the

challenge to each claim")). This burden never shifts

to Patent Owner. See Dynamic Drinkware, LLC v.

Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.

2015) (citing Tech. Licensing Corp. v. Videotek, Inc.,

545 F.3d 1316, 1326-27 (Fed. Cir. 2008)) (discussing

the burden of proof in inter partes review).

To establish anticipation, each and every element

in a claim, arranged as recited in the claim, must be

found in a single prior art reference. See Net

MoneylN, Inc. v. VeriSign., Inc., 545 F.3d 1359, 1369

(Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf

Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Although

the elements must be arranged or combined in the

same way as in the claim, "the reference need not

satisfy an ipsissimis verbis test," i.e., identity of

terminology is not required. In re Gleave, 560 F.3d

1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910

F.2d 831, 832 (Fed. Cir. 1990).

A claim is unpatentable under 35 U.S.C. § 103(a)

if the differences between the subject matter sought

to be patented and the prior art are such that the

-

121a

subject matter as a whole would have been obvious at

the time the invention was made to a person having

ordinary skill in the art to which said subject matter

pertains. See KSR Intl Co. v. Teleflex, Inc., 550 U.S.

398, 406 (2007). The question of obviousness is

resolved on the basis of underlying factual

determinations including: (1) the scope and content of

the prior art; (2) any differences between the claimed

subject matter and the prior art; (3) the level of

ordinary skill in the art; and (4) objective evidence of

nonobviousness. See Graham v. John Deere Co., 383

U.S. 1, 17-18 (1966). In an inter partes review,

Petitioner cannot satisfy its burden of proving

obviousness by employing "mere conclusory

statements." In re Magnum Oil Tools Intl, Ltd., 829

F.3d 1364, 1380 (Fed. Cir. 2016). Thus, to prevail

Petitioner must explain how the proposed

combinations of prior art would have rendered the

challenged claims unpatentable.

At this final stage, we determine whether a

preponderance of the evidence of the record shows

that the challenged claims are anticipated by and/or

would have been obvious in view of asserted prior art.

We analyze the asserted grounds of unpatentability

in accordance with those principles.

E. Grounds Based, At Least in Part, on Popp

Petitioner asserts that independent claims 1 and

21, as well as claims 7, 8, 10-13, 18-20, 22, 27-33,

and 38-40 which depend therefrom, are anticipated

by Popp. 1751 Pet. 16-28; 1752 Pet. 15-23. Petitioner

also asserts that dependent claims 13-17 and 33-37

would have been obvious in view of the combination

of Popp and Anand (1751 Pet. 57-60), and that

dependent claims 3-6 and 23-26 would have been

obvious in view of the combination of Popp and Codd

122a

(1752 Pet. 37-43). Patent Owner argues that Popp

does not disclose a "change management layer," as

recited in each of independent claims 1 and 21. P0

Resp. 22-25.

We have reviewed the entire record before us,

including the parties' contentions and supporting

evidence presented during this trial. For the reasons

explained below, we determine that Petitioner has

demonstrated, by a preponderance of the evidence,

that claims 1, 3-8, and 10-40 are unpatentable.

1. Anticipation by Popp

a. Overview of Popp

Popp relates to an "object-oriented approach [that]

provides the ability to develop and manage Internet

transactions." Ex. 1004, Abstract. According to Popp,

"[l]ocal applications can be accessed using any

workstation connected to the Internet regardless of

the workstation's configuration." Id. Popp describes

that "[o]nce [a] connection is established, the present

invention is used with an application on the server

side of the connection to dynamically generate Web

pages [that] contain application information and

provide the ability for the user to specify input." Id.

at 3:55-59. Web pages can be generated in response

to the user input. Id. at 3:61-63.

Figure 2 of Popp is reproduced below:

200

I

204

208

/

Corporate Network

Server Domain

Internet

(WWW

202

Client

Browser

L I

206

HTf P

I I

Server

I

210

I

cclMessenger

214

fr

224.

Database

Application 4

/218

ND

PACE 216

CA

PO

220B

220A

HEADER

Figure 2

"OD'y

124a

As seen in Figure 2 of Popp, Client Browser 202 is

connected via Internet 204 to Server Domain 208,

which includes among other things Application 214

and Database 224. Ex. 1004, 6:40-7:23, 7:31-34.

Application 214 includes objects 216 that correspond

to the HTML elements that define a Web page and are

arranged in a tree structure that corresponds to the

hierarchical structure of the HTML elements that

they implement. Id. at 12:21-26. The self-contained

modules, or components, may be shared by one or

more Web pages in a single application and/or across

multiple applications executing on a server. Id. at

4:27-33, 4:41-43, 17:54-18:32.

A scriptedControl object controls generation of a

Web page. Id. at 18:62-19:19, Fig. GA. Further, an

inputControl object handles pushing and pulling data

to/from the Web page and the external data source

(e.g., database 224). Id. at 21:61-22:67, Fig. GB. The

inputControl object determines, for example, when a

database entry should be updated based on

information input to the Web page and sends an

appropriate message to update the database. Id. at

21:37-49.

b. Claim 1

Claim 1 recites a "system for providing a

dynamically generated application having one or

more functions and one or more user interface

elements" including a server computer; client

computers connected to the server over a network;

first, second, and third layers "associated with the

server computer;" and a "change management layer."

Petitioner asserts that "Popp discloses a client-server

system for generating Web pages that provide a

dynamic UI for a database application that can

125a

respond to user input." 1751 Pet. 16 (citing Ex. 1004,

3:61-65, 8:24-26; Ex. 1002 ¶J 29-35); see id. at 19-20

(citing Ex. 1004, 3:55-59, 7:45-49, Fig. 2); 1752 Pet.

15, 18 (citing the same evidence). According to

Petitioner, Server Domain 208 of Popp corresponds to

the claimed server, database 224 corresponds to the

claimed first layer, objects 216 correspond to the

claimed second layer, scriptedControl object 602

(which is part of internal application 214) corresponds

to the claimed third layer, and inputControl object

664 corresponds to the claimed change management

layer. 1751 Pet. 20-21; see id. at 17-19 (citing Ex.

1004, 8:49-55, 18:62-65, 19:1-12, Fig. 2; Ex. 1002

¶J 36-37, 39-40); 1752 Pet. 16-18 (citing the same

evidence), 18-20. Popp further discloses that

"[d]atabase 224 can be resident on the same server as

application 214," which also includes objects 216 and

inputControl object 664. Ex. 1004, 7:28-33, 7:52-58,

12:21-32; see 1751 Pet. 18, 20-21; 1752 Pet. 19-20.

Thus, according to Petitioner, Popp discloses all four

claimed "layers," with the first, second, and third

being associated with the server.

Regarding the claimed "first layer

containing

information about the unique aspects of a particular

application," Petitioner relies on Popp's "Web pages

that provide a dynamic UI for a database application

that can respond to user input," as disclosing the

"particular application" of the claim. 1751 Pet. 16

(citing Ex. 1002 ¶ 31); see 1752 Pet. 15 (citing the

same evidence). According to Petitioner, Popp

discloses that database 224 (first layer) "contain[s]

information about the unique aspects of a particular

Web page (application), e.g., for an Automobile

Shopper's application that can be used by a

prospective car buyer to select a car." 1751 Pet. 20

.

.

.

126a

(citing Ex. 1004, 9:4-10, 9:56-61); see 1752 Pet. 19

(citing the same evidence); Ex. 1002 ¶ 36.

The claim further recites a "second layer

containing information about the user interface and

functions common to a variety of applications."

Petitioner relies on the following as disclosing this

claimed feature:

.

Web page objects 216 [of Popp] correspond to

HTML elements that define a web page and

include component sub-trees representing UI

portions (e.g., text boxes, check boxes, radio

buttons) that can be shared across Web pages,

and thus contain information about UI and

functions common to a variety of applications.

1751 Pet. 17 (citing Ex. 1002 ¶ 37); see id. at 20-21

(citing Ex. 1004, 2:33-41, 4:26-33, 4:41-43, 11:37-44,

12:21, 17:54-55, 18:32-34, Fig. 2); 1752 Pet. 16-17, 19

(citing the same evidence).

Regarding the claimed "third layer

that

retrieves the data in the first and second layers in

order to generate the functionality and user interface

elements of the application," Petitioner points to

scriptedControl Object 602, which Popp uses "to

generate and manage a Web page," as disclosing this

claimed feature. 1751 Pet. 18 (citing Ex. 1004, 18:6265, 19:1-2; Ex. 1002 ¶ 39); see id. at 21 (citing Ex.

1004, 8:49-55, 18:65-67, 19:29-38, Figs. 6A, 6B);

1752 Pet. 17, 20 (citing the same evidence). According

to Petitioner, the "scriptedControl object 602 retrieves

application-specific data from the database (first

layer) and combines it with the object tree (second

layer) in order to generate the functionality and UI

elements of the Web page (application)," thus

disclosing the claim limitation that "a particular

...

127a

application [is] generated based on the data in both

the first and second layers." 1751 Pet. 18 (citing Ex.

1004, Fig. GB; Ex. 1002 IT 38-39); see id. at 21 (citing

Ex. 1004, 19:18-19, 19:35-38); 1752 Pet. 17, 19-20

(citing the same evidence).

Petitioner further points to the fact that Popp's

"Web page can include a Java applet that, when

downloaded and processed by a Java-enabled

browser..., dynamically generates and presents the

UI and functionality to the user," as disclosing that

the "user interface and functionality for the particular

application is distributed to the browser application

and dynamically generated when the client computer

connects to the server computer," as claimed. 1751

Pet. 17 (citing Ex. 1002 IT 41-44); see id. at 22 (citing

Ex. 1004, 3:55-63, 31:44-49); 1752 Pet. 16, 20-21

(citing the same evidence).

Finally, regarding the claimed "change

management layer for automatically detecting

changes that affect an application," Petitioner relies

on Popp's inputControl object 664. 1751 Pet. 18 (citing

Ex. 1002 1 40); see 1752 Pet. 17-18 (citing the same

evidence). According to Petitioner, inputControl

object 664 is responsible for responding to user input

received from the web page UI, such as a modification

of a field in a Web page form. 1751 Pet. 18 (citing Ex.

1004, 22:28-48; Ex. 1002 1 40); see id. at 21; 1752 Pet.

17-18, 20 (citing the same evidence); Ex. 1004, Fig.

GB. Petitioner asserts that "[i]n response to a change

detected by inputControl object 664, Popp's server

application 214 modifies the Web page objects (second

layer) by storing the user input in a context object,

and updates the database (first layer) with the

changed data." 1751 Pet. 19 (citing Ex. 1004, 22:2862; Ex. 1002 1 49); see 1752 Pet. 18 (citing the same

128a

evidence). Petitioner further asserts that

"[i]nputControl object 664 automatically detects when

a user inputs a change that affects a Web page, such

as modifying field 632 within page 622 to specify a

new name." 1751 Pet. 19 (citing Ex. 1004, 22:37-42);

see 1752 Pet. 17 (citing the same evidence); Ex. 1002

1 40.

We agree with Petitioner's mapping of Popp to

claim 1, and adopt it as our own.

Patent Owner argues that Popp does not disclose

the "change management layer" recited in claim 1.

P0 Resp. 22-25. In particular, Patent Owner argues

that "Popp does not disclose a 'change management

layer' which 'automatically detects changes which

impact how the application program should operate'

where those 'changes' 'arise from changes external to

the application." Id. at 24 (citing Ex. 2032 ¶J 63-64;

Ex. 2033 ¶J 46-50). Patent Owner argues that Popp

instead discloses "automatically detect [ing] changes

from [an application's] own operation in this case,

user input of text data via a user interface." Id. at 23

(citing Ex. 2031, 67:10-25).

Patent Owner's

arguments rely upon its proposed construction of the

"change management layer," which we do not adopt

for the reasons discussed above (see supra Section

II.C.1). We are persuaded by Petitioner's assertion

that automatically detecting a change that affects

information stored in the database (e.g., an employee

name stored in a database), from which the Web page

(i.e., the claimed application) is generated, discloses

detecting a change that affects the application, as

claimed. See, e.g., Ex. 1001, 12:17-28 (describing the

business content layer (i.e., "first layer") as a database

that may include data associated with a selected area

of business, such as finance or human resources).

-

129a

Based on the evidence of record, we determine

Petitioner has shown, by a preponderance of the

evidence, that Popp anticipates claim 1.

Claim 21

Independent claim 21 recites a "method for

dynamically generating an application" that includes

limitations similar in scope to the system limitations

discussed with respect to claim 1. See Ex. 1001,

33:34-58. In discussing this claim, the parties refer

back to their arguments with respect to claim 1. See

1751 Pet. 26-27 (citing Ex. 1002 ¶J 44, 67; Ex. 1007,

42); 1752 Pet. 21-23 (citing the same evidence); P0

Resp. 24. For the same reasons discussed with

respect to claim 1, we determine Petitioner has

shown, by a preponderance of the evidence, that Popp

anticipates claim 21.

Claims 7, 8, 10-13, 18-20, 22,

27-33. and 38-40

For each of claims 7, 8, 10-13, 18-20, 22, 27-33,

and 38-40, Petitioner provides arguments as to how

each claim limitation is disclosed in Popp, and relies

upon Dr. Crovella's testimony. See 1751 Pet. 22-28

(citing Ex. 1004, 7:28-30, 7:32-35, 7:62-8:2, 8:32-42,

9:13-26, 9:64-65, 19:39-47, 19:50-53, 19:61-20:8,

21:7-15, 22:15-62, Fig. 2, 3B, 6B; Ex.' 1007, 42; Ex.

1002 ¶T 46-57); 1752 Pet. 21-23 (citing Ex. 1004,

19:28-31, 19:39-47, 19:50-53, 31:24-26, Fig. 6; Ex.

1011, 274; Ex. 1002 ¶J 44).

We agree with

Petitioner's mapping of Popp to these claims, and

adopt it as our own.

Patent Owner does not substantively discuss

dependent claims 7, 8, 10-13, 18-20, 22, 27-33, and

38-40, apart from its discussion of independent

claims 1 and 21, which we have addressed above. See

130a

P0 Resp. 24 ("The remaining dependent claims are

not anticipated by Popp by virtue of their

dependencies on claims 1 and 21.").

Based on the evidence of record, we determine

Petitioner has shown, by a preponderance of the

evidence, that Popp anticipates claims 7, 8, 10— 13,

18-20, 22, 27-33, and 38-40.

2. Obviousness in View of Popp and Anand

As discussed above, we are persuaded that

Petitioner has shown by a preponderance of the

evidence that Popp discloses all features of

independent claims 1 and 21. As characterized by

Petitioner, dependent claims 13-17 and 33-37 "recite

a number of specific items that can be built in relation

to an application and/or its UI.,, 1751 Pet. 57. For

example, claim 13 recites "a report builder for

building a report for a particular application," claim

15 recites "a document builder for mapping a

document onto the first layer," and claim 16 recites "a

formula builder for generating formulas." See Ex.

1001, 33:12-25, 34:34-45. Petitioner relies on Anand

as disclosing each of the additional limitations recited

in claims 13-17 and 33— 37. 1751 Pet. 57-60.

Anand relates to a graphical user interface (GUI)

system for generating reports from a computer

database. Ex. 1009, Abstract, 1:4-7. Petitioner

provides arguments as to how each limitation

introduced in claims 13-17 and 33-37 is disclosed in

Anand, and relies upon Dr. Crovella's testimony.

1751 Pet. 57-60 (citing Ex. 1009, 4:21-28, 4:53-56,

4:64-65, 5:48-62, 7:47-48, 9:33-38, 9:48-50, 11:1318, 11:56-65, 17:58-65; Ex. 1008, 54; Ex. 1002

¶J 263-68). Further, Petitioner asserts that "[i]t

would have been obvious to a [person of ordinary skill

131a

in the art] to utilize Popp's system to generate the UI

for Anand's report system, for the benefit of

leveraging the efficiency of Popp's sharable

components for developing the functionality of

Anand's UI application." Id. at 58 (citing Ex. 1004,

3:23-31; Ex. 1002 1 261); see Ex. 1004, 3:61-65, 7:2435; Ex. 1002 ¶ 262. We agree with Petitioner's

mapping of Popp and Anand to these claims, and

adopt it as our own.

Patent Owner has not presented separate

arguments regarding whether Anand discloses the

additional limitations introduced in dependent claims

13-17 and 33-37, or with respect to Petitioner's

proposed combination of references. See P0 Resp. 24.

Based on the evidence of record, we are persuaded

that Petitioner has shown that the combination of

Popp and Anand teaches or suggests all of the

limitations of claims 13-17 and 33-37, and has

articulated sufficient reasoning why it would have

been obvious to combine these references in the

proposed manner. We, thus, determine Petitioner has

shown, by a preponderance of the evidence, that the

combination of Popp and Anand renders claims 13-17

and 33-37 obvious.

3. Obviousness in View of Popp and Codd

As discussed above, we are persuaded that

Petitioner has shown by a preponderance of the

evidence that Popp discloses all features of

independent claims 1 and 21. As characterized by

Petitioner, dependent claims 3-6 and 23-26 "recite

the term 'database,' which is explicitly defined in the

'482 patent specification." 1752 Pet. 37; see Ex. 1001,

29:50-54. Petitioner asserts that Popp discloses each

of the limitations introduced in these dependent

/

132a

claims, "with the exception of explicitly specifying a

database of the type meeting the specific definition

given in the specification." 1752 Pet. 37. Petitioner

provides arguments as to how each limitation of

claims 3-6 and 23-26 is disclosed in Popp, and relies

upon Dr. Crovella's testimony. Id. at 39-43 (citing

Ex. 1004, 16:49-65, 18:32-34, 19:55-20:33, 21:6122:13, 22:64-65; Ex. 1008, 54; Ex. 1002 ¶f 218-22).

Petitioner relies on Codd as disclosing a database

as defined in the '482 patent. Id. at 37. According to

Petitioner, "Codd lists all of the major components of

the '482 patent's defined 'database' (i.e., those that

have their own sub-definitions—tables, views,

columns, and rows) as canonical features of relational

databases." Id. (citing Ex. 1008, 54). Petitioner also

asserts that "Codd teaches a number of benefits of

relational databases

such as advantages of

performance, cost productivity, and distributability."

Id. at 38 (citing Ex. 1008, 60; Ex. 1002 ¶ 219). We are

persuaded that one of ordinary skill would have used

a relational database as disclosed in Codd to

implement the system of Popp. See id. at 37-38

(citing Ex. 1002 ¶J 215, 219). We agree with

Petitioner's mapping of Popp and Codd to these

claims, and adopt it as our own.

Patent Owner has not presented separate

arguments regarding the additional limitations

introduced in dependent claims 3-6 and 23-26, or

with respect to Petitioner's proposed combination of

references. See P0 Resp. 24.

Based on the evidence of record, we are persuaded

that Petitioner has shown that the combination of

Popp and Codd teaches or suggests all of the

limitations of claims 3-6 and 23-26, and has

articulated sufficient reasoning why it would have

..

.,

133a

been obvious to combine these references in the

proposed manner. We, thus, determine Petitioner has

shown, by a preponderance of the evidence, that the

combination of Popp and Codd renders claims 3-6 and

23-26 obvious.

F. Grounds Based, At Least in Part, on

Kovacevic

Petitioner asserts that independent claims 1 and

21, as well as claims 8, 10, 19, 20, 28, 30, 39, and 40

which depend therefrom, are anticipated by

Kovacevic. 1751 Pet. 31-40. Petitioner also asserts

that dependent claims 3-6 and 23-26 would have

been obvious in view of the combination of Kovacevic

and Codd. 1752 Pet. 48-55. Patent Owner argues

that Kovacevic does not disclose a "change

management layer," as recited in each of independent

claims 1 and 21. P0 Resp. 25-28.

We have reviewed the entire record before us,

including the parties' contentions and supporting

evidence presented during this trial. For the reasons

explained below, we determine that Petitioner has

demonstrated, by a preponderance of the evidence,

that claims 1, 3-6, 8, 10, 19-21, 23-26, 28, 30, 39, and

40 are unpatentable.

1. Anticipation by Kovacevic

a. Overview of Kovacevic

Kovacevic relates to a system called MUSE that

uses a model-based technology to implement an

intelligent tutoring system having a flexible user

interface. Ex. 1005, Abstract. The system described

in Kovacevic includes an application-specific library,

which "contains procedural code implementing the

functional core of applications whose Uls are to be

generated," and an interaction-specific library, which

134a

"contains a library of communications primitives—

interaction techniques and presentation objects—to

be used when assembling UI structures." Id. at 117.

The MUSE program uses these libraries to build and

generate a user interface. Id. As further discussed in

Kovacevic, the libraries, and if desired the entire

MUSE program, could be transported over a browser

using Java.

Id.

Kovacevic also discusses a

sequencing control primitive that monitors and

updates the system when something affecting

information-flow-control primitives occurs. Id. at

114.

b. Claim 1

Claim 1 recites a "system for providing a

dynamically generated application having one or

more functions and one or more user interface

elements" including a server computer; client

computers connected to the server over a network;

first, second, and third layers "associated with the

server computer;" and a "change management layer."

Petitioner asserts that "Kovacevic discloses a

client-server system called MUSE for generating Uls

for tutoring applications." 1751 Pet. 31 (citing Ex.

1005, 108 (col. 2 ¶ 2); Ex. 1002 ¶J 101-103); see 1752

Pet. 48 (citing the same evidence). According to

Petitioner, the SLOOP Server of Kovacevic

corresponds to the claimed server, the

application-specific library corresponds to the claimed

first layer, the interaction-specific library corresponds

to the claimed second layer, the main MUSE program

corresponds to the claimed third layer, and the

sequencing control primitives correspond to the

claimed change management layer. 1751 Pet. 34-36

(citing Ex. 1005, 114 (col. 2 ¶ 6), 117 (col. 1 ¶f 4, 5),

Fig. 1); see id. at 31-33 (citing Ex. 1005, 115 (col. 2),

135a

117 (col. 1 ¶ 4, col. 2 ¶ 7); Ex. 1002 ¶J 104-108); 1752

Pet. 48-50, 52-53 (citing the same evidence, and Ex.

1005, 114 (col. 2 1 6), Fig. 7). The first, second, and

third layers are "associated with the server" because

each is downloaded therefrom. See 1751 Pet. 32

(citing Ex. 1005, 117 (col. 2 ¶ 7); Ex. 1002 ¶J 104, 105,

107); 1752 Pet. 49-50 (citing the same evidence).

Regarding the claimed "first layer

containing

information about the unique aspects of a particular

application," Petitioner describes that a "tutoring

course generated with a particular UI is a particular

'application' as recited in the claims." 1751 Pet. 31

(citing Ex. 1002 ¶J 101, 104); see 1752 Pet. 48 (citing

the same evidence).

According to Petitioner,

Kovacevic discloses that a "particular tutoring course

is represented by an application-specific model

specification with software primitives provided in an

application-specific library." 1751 Pet. 31 (citing

Ex. 1005, 117 (col. 1 ¶ 4, col. 2 ¶ 7); Ex. 1002 104);

¶

see 1751 Pet. 34; 1752 Pet. 48-49 (citing the same

evidence), 52.

The claim further recites a "second layer

containing information about the user interface and

functions common to a variety of applications."

Petitioner relies on an interaction-specific library in

Kovacevic as disclosing this claimed feature. 1751

Pet. 31-32, 35; 1752 Pet. 49, 52. According to

Petitioner, the interaction-specific library includes UI

primitives and the library is sharable among multiple

applications. 1751 Pet. 31-32 (citing Ex. 1005, 111

(col. 2 ¶ 1); Ex. 1002 ¶J 99, 105-06); see id. at 35

(citing Ex. 1005, 113 (col. 2 ¶ 2), 114 (col. 1 ¶ 2), 117

(col. 1 ¶ 5, col. 2 ¶ 7)); 1752 Pet. 49, 52 (citing the

same evidence, except Ex. 1005, 111 (col. 2 ¶ 1); Ex.

1002 ¶ 99).

.

.

.

.

136a

Regarding the claimed "third layer

that

retrieves the data in the first and second layers in

order to generate the functionality and user interface

elements of the application," Petitioner points to the

"main program" of Kovacevic as disclosing this

claimed feature. 1751 Pet. 32, 35; 1752 Pet. 49, 53.

According to Petitioner, Kovacevic's main program

"generates the tutoring application (including the

functionality and the UI of the tutoring course) using

the primitives in the application-specific library (first

layer)

and

the

application-independent

interaction-specific library (second layer)." 1751 Pet.

32 (citing Ex. 1005, 117 (col. 1 ¶ 4, col. 2 ¶ 7); Ex. 1002

¶ 107); see id. at 35 (citing Ex. 1005, 117 (col. 1 ¶ 4,

col. 2 ¶ 7)); 1752 Pet. 49, 53 (citing the same evidence).

According to Petitioner, this generation of the

tutoring application "is done by mapping application

model primitives provided in the application-specific

library (first layer) onto UI primitives including the

communication primitives in the interaction-specific

library (second layer) to construct a fully specified

UI," thus disclosing the claim limitation that "a

particular application [is] generated based on the

data in both the first and second layers." 1751 Pet. 32

(citing Ex. 1002 ¶ 106); see id. at 35 (citing Ex. 1005,

115 (col. 1 ¶ 2), 116 (col. 1 ¶ 6), Figs 5, 6, 8); 1752

Pet. 49, 52-53 (citing the same evidence).

Petitioner further argues that, in Kovacevic, the

"UI and functionality of the tutoring application are

distributed to the client computer's browser and

dynamically generated when the client connects to

the server," thus disclosing the limitation that the

"user interface and functionality for the particular

application is distributed to the browser application

and dynamically generated when the client computer

...

137a

connects to the server computer," as claimed. 1751

Pet. 31 (citing Ex. 1002 ¶J 109-111); see id. at 33

(citing Ex. 1005, 110 (col. 1 ¶ 6), 112 (col. 2 ¶ 5);

Ex. 1002 ¶ 126), 36 (citing Ex. 1005, 108 (col. 1 ¶ 4,

col. 2 ¶ 2), 109 (col. 1 ¶ 3, ¶ 5, col. 2 ¶ 4), 117 (col. 2

¶ 7)); 1752 Pet. 48, 50-51, 53-54 (citing the same

evidence).

Finally, regarding the claimed "change.

management layer for automatically detecting

changes that affect an application," Petitioner relies

on Kovacevic's sequencing control primitives. 1751

Pet. 32-33; 1752 Pet. 50. Kovacevic describes that the

"sequencing control primitives automatically detect

changes that affect the information-flow-control

primitives in an application." 1751 Pet. 32 (citing

Ex. 1005, 114 (col. 2 ¶ 6); Ex. 1002 ¶ 108); see 1752

Pet. 50 (citing the same evidence). According to

Petitioner, "[c]hanges such as user input via the UI or

selection of UI elements affect the application, e.g., by

causing certain UI elements to be enabled or

disabled," and the sequencing control primitives of

Kovacevic monitor for such user input to enable

appropriate enable/disable response of the UI element

when a user selection is made. 1751 Pet. 32-33 (citing

Ex. 1005, 115 (col. 2); Ex. 1002 ¶ 108); see id. at 36

(citing Ex. 1005, 114 (col. 2 ¶ 6)); 1752 Pet. 50, 53

(citing the same evidence).

We agree with Petitioner's mapping of Kovacevic

to claim 1, and adopt it as our own.

Patent Owner argues that Kovacevic does not

disclose the "change management layer" recited in

claim 1. P0 Resp. 25-28. In particular, Patent

Owner argues that "[w]hile Kovacevic describes

making the website responsive to user interaction,

Kovacevic has no disclosure relevant to changes

138a

'external to the application." Id. at 25 (citing Ex.

2032 ¶ 69; Ex. 2033 1 54). Patent Owner argues that

"change[s] from a user interacting with the user

interface, or

change[s] from a user selecting

different user interface elements" are not "external to

an application." Id. at 27; see id. at 27-28 (citing

Ex. 2032 ¶J 71-72; Ex. 2033 ¶J 54-55). Again,

Patent Owner's arguments rely upon its proposed

construction of the "change management layer,"

which we do not adopt for the reasons discussed above

(see supra Section II.C.1).

As noted above, Petitioner relies on the UI

primitives in the interaction-specific library of

Kovacevic as disclosing the claimed second layer. We

are persuaded by Petitioner's assertion that detecting

user input (a change) that affects whether certain UI

elements are enabled or disabled (i.e., information

regarding the UI primitives in the second layer) is

sufficient to disclose the change management layer's

claimed function of detecting changes that affect the

application (i.e., the tutoring program generated

using the UI primitives).

Based on the evidence of record, we determine

Petitioner has shown, by a preponderance of the

evidence, that Kovacevic anticipates claim 1.

c. Claim 21

In discussing independent claim 21—a method

claim, which includes limitations similar in scope to

the system limitations discussed with respect to claim

1—the parties refer back to their arguments with

respect to claim 1. See 1751 Pet. 38-39 (citing

Ex. 1005, 110 (col. 1 ¶ 6), 112 (col. 2 ¶ 5); Ex. 1002

126); 1752 Pet. 54-55 (citing the same evidence); P0

Resp. 28. For the same reasons discussed with

.

.

.

MISIM

respect to claim 1, we determine Petitioner has

shown, by a preponderance of the evidence, that

Kovacevic anticipates claim 21.

d. Claims 8, 10, 19, 20, 28, 30, 39,

and 40

For each of claims 8, 10, 19, 20, 28, 30, 39, and 40

Petitioner provides arguments as to how each claim

limitation is disclosed in Kovacevic, and relies upon

Dr. Crovella's testimony. See 1751 Pet. 36-39 (citing

Ex. 1005, 108 (col. 2 ¶ 2), 110 (col. 2 ¶ 3), 117 (col. 2

¶ 7), Figs. 1, 2; Ex. 1002 ¶J 112-16). We agree with

Petitioner's mapping of Kovacevic to these claims,

and adopt it as our own.

Patent Owner does not substantively discuss

dependent claims 8, 10, 19, 20, 28, 30, 39, and 40,

apart from its discussion of independent claims 1 and

21, which we have addressed above. See P0 Resp. 28

("The remaining dependent claims are not anticipated

by Kovacevic by virtue of their dependencies on

claims 1 and 21.").

Based on the evidence of record, we determine

Petitioner has shown, by a preponderance of the

evidence, that Kovacevic anticipates claims 8, 10, 19,

20, 28, 30, 39, and 40.

2. Obviousness in View of Kovacevic and

Codd

As discussed above, we are persuaded that

Petitioner has shown by a preponderance of the

evidence that Kovacevic discloses all features of

independent claims 1 and 21. As characterized by

Petitioner, dependent claims 3-6 and 23-26 "recite

the term 'database,' which is explicitly defined in the

'482 patent specification." 1752 Pet. 37; see Ex. 1001,

29:50-54. Petitioner asserts that Kovacevic discloses

140a

each of the limitations introduced in these dependent

claims, "with the exception of explicitly specifying a

database of the type meeting the specific definition

given in the specification." 1752 Pet. 57. Petitioner

provides arguments as to how each limitation of

claims 3-6 and 23-26 is disclosed in Kovacevic, and

relies upon Dr. Crovella's testimony. Id. at 57-60

(citing Ex. 1005, 112, 113 (col. 2 ¶ 2), 114 (col. 1 2),

¶

117 (col. 1 ¶ 4), Fig. 7; Ex. 1008, 54; Ex. 1002 ¶11 23236).

Petitioner relies on Codd as disclosing a database

as defined in the '482 patent. Id. at 57. According to

Petitioner, "Codd lists all of the major components of

the '482 patent's defined 'database' (i.e., those that

have their own sub-definitions—tables, views,

columns, and rows) as canonical features of relational

databases." Id. at 37 (citing Ex. 1008, 54). Petitioner

also asserts that "Codd teaches a number of benefits

of relational databases, such as advantages of

performance, cost productivity, and distributability."

Id. at 57 (citing Ex. 1008, 60; Ex. 1002 ¶J 219, 233).

We are persuaded that one of ordinary skill would

have used a relational database as disclosed in Codd

to implement the system of Kovacevic. Id. (citing Ex.

1002 ¶J 215, 219). We agree with Petitioner's

mapping of Kovacevic and Codd to these claims, and

adopt it as our own.

Patent Owner has not presented separate

arguments regarding the additional limitations

introduced in dependent claims 3-6 and 23-26, or

with respect to Petitioner's proposed combination of

references. See P0 Resp. 28.

Based on the evidence of record, we are persuaded

that Petitioner has shown that the combination of

Kovacevic and Codd teaches or suggests all of the

141a

limitations of claims 3-6 and 23-26, and has

articulated sufficient reasoning why it would have

been obvious to combine these references in the

proposed manner. We, thus, determine Petitioner has

shown, by a preponderance of the evidence, that the

combination of Kovacevic and Codd renders claims 36 and 23-26 obvious.

G. Grounds Based, At Least in Part, on

Balderrama and Java Complete

Petitioner asserts that independent claims 1 and

21, as well as claims 7, 8, 10-12, 19, 20, 22, 27-32, 39,

and 40 which depend therefrom, would have been

obvious in view of the combination of Balderrama and

Java Complete. 1751 Pet. 40-55; 1752 Pet. 25-35.

Petitioner also asserts that dependent claims 3-6 and

23-26 would have been obvious in view of the

combination of Balderrama, Java Complete, and

Codd. 1752 Pet. 37-39, 44-47. Patent Owner argues

that Balderrama does not disclose a "change

management layer," as recited in each of independent

claims 1 and 21. P0 Resp. 28-32. We have reviewed

the entire record before us, including the parties'

contentions and supporting evidence presented

during this trial. For the reasons explained below, we

determine that Petitioner has demonstrated, by a

preponderance of the evidence, that claims 1, 3-8, 1012, 19-22, 23-32, 39, and 40 are unpatentable.

1. Obviousness in View of Balderrama and

Java Complete

a. Overview of Balderrama

Balderrama relates to a system that can offer

various goods for sale, in a self-service fashion with

an "electronic device capable of accepting and

transmitting a customer's input," such as a

142a

touch-screen display. Ex. 1006, 1:8-12, Fig. 1. The

system of Balderrama includes template

presentations and a database containing items

intended for sale at a particular sales outlet. Id. at

2:11-16, Fig. 3; see also id. at 6:48-58 (discussing

template files), 8:64-9:2 (discussing "transmitted

copy" of a template); 9:15-20 (discussing database

records). A "configuring routine" uses information

from the template presentation and the database for

a particular sales outlet to create a presentation to

display on the electronic device at the sales outlet. Id.

at 11:37-48, Fig. 3 (element 84). The system is also

configured to handle modifications to the database

and/or updates to the presentation template. Id. at

2:17-21, 11:64-67, Fig. 6. Update/modification

detector 82 receives information about updates to the

template presentation and/or modifications to the

database, and acts accordingly to update the

presentation at the customer terminal. Id. at 8:2164, 9:7-27, 10:11-24, Fig. 3 (arrows 81b, 87b, 83b).

b. Overview of Java Complete

Java Complete is a compilation of several articles

in DATAMATION Magazine, discussing a "new

simplified object-based, open-system [programming]

language that allows software developers to engineer

applications that can be distributed over the

Internet." See Ex. 1007, 1-3, 28. Java Complete

provides information about the Java programming

language. For example, as discussed in the magazine,

"Java reinvents the way applications are distributed

to clients and executed," and provides "an easy way to

deliver business information broadly." Id. at 40. As

further described, "network-centric Java applets

.

don't have to be preinstalled—they install themselves

just in time, on the fly, and deinstall themselves when

..

143a

they're no longer needed." Id. at 42. One example

provided in Java Complete of a type of business

application that could be built with Java applets is an

order-entry system. Id.

c. Claim 1

Claim 1 recites a "system for providing a

dynamically generated application having one or

more functions and one or more user interface

elements" including a server computer; client

computers connected to the server over a network;

first, second, and third layers "associated with the

server computer;" and a "change management layer."

Petitioner asserts that "Balderrama discloses a

network system for a sales outlet, and employs a

server computer (manager station 10) that distributes

an order-entry presentation over a local area network

(LAN) to client computers (customer terminals 20a,

20b, 20c) that are used by customers to enter orders."

1751 Pet. 42 (citing Ex. 1006, Fig. 1); see 1752 Pet. 25

(citing the same evidence); Ex. 1002 TT 145, 148-150.

According to Petitioner, Balderrama's manager

station 10 corresponds to the claimed server, in-store

database 86 with records/files 87a correspond to the

claimed first layer, transmitted copy template

presentation 80 corresponds to the claimed second

layer, configuring routine 84 corresponds to the

claimed third layer, and update/modification detector

82 corresponds to the claimed change management

layer. 1751 Pet. 47-49 (citing Ex. 1006, 2:16-21,

10:14-21, 11:64-67, 12:34-38, 14:64-65, 16:20-21,

16:55-17:5, Figs. 1, 3); see 1751 Pet. 42-44 (citing Ex.

1006, 8:67-9:2, 9:16-27, 10:14-21, 11:38-46, 11:6467, 14:64-65, 16:20-21, 16:55-17:5; Ex. 1002 ¶J 15155); 1752 Pet. 25-27, 30-32 (citing the same

evidence).

144a

Regarding the claimed "first layer

containing

information about the unique aspects of a particular

application," Petitioner describes Balderrama's

"order-entry presentation for a particular sales

outlet," which "is a UI for a user to view items for sale

at the outlet and enter and order in an automated

fashion, e.g., via a touch screen," as the "particular

application" of the claim. 1751 Pet. 42 (citing

Ex. 1006, 1:8-23, 2:11-16, Fig. 1; Ex. 1002 ¶J 145,

148-51); see 1752 Pet. 25 (citing the same evidence).

Balderrama discloses that in-store database 86 with

records/files 87a (i.e., the first portion) "contain data

records/information about items intended for sale at

a particular sales outlet" (i.e., the "particular

application"). Ex. 1006, 9:17-21, Fig. 3; see 1751

Pet. 42-43, 47; 1752 Pet. 25-26, 30; Ex. 1002 ¶ 145,

151.

The claim further recites a "second layer

containing information about the user interface and

functions common to a variety of applications."

Petitioner describes Balderrama's disclosure of

"shared-across -outlets template presentation 80 from

headquarters is transmitted to manager station 10

(the outlet's server) for combination with the outletspecific data," as disclosing this claimed feature. 1751

Pet. 43 (citing Ex. 1006, 6:48-58, 8:67-9:2, 11:43-46;

Ex. 1002 ¶ 152); see id. at 47-48 (citing Ex. 1006,

6:48-58, 8:64-9:2, 11:43-46, Fig. 3); 1752 Pet. 26, 3031 (citing the same evidence).

Regarding the claimed "third layer

that

retrieves the data in the first and second layers in

order to generate the functionality and user interface

elements of the application," Petitioner describes that

"Balderrama employs a configuring routine 84

to

retrieve data from the outlet-specific database

.

.

.

.

...

.

.

.

145a

files/records (first layer) and combine it with the

generic template presentation (second layer) in order

to generate the functionality and UI elements of the

configured presentation (application) for presentation

to the customer," thus disclosing this claimed feature.

1751 Pet. 43 (citing Ex. 1006, 11:38-46, Fig. 3; Ex.

1002 ¶J 153-54); see id. at 48 (citing Ex. 1006, 11:3846, 14:64-65, 16:20-21, 16:55-17:5, Fig. 3); 1752 Pet.

26-27, 31 (citing the same evidence). According to

Petitioner, "[c]onfiguring routine 84 matches items in

the template presentation (second layer) with items

in the database (first layer), activating the sales items

that are sold in the particular sales outlet, and

incorporating those items' prices from the database

into the corresponding cells in the template

presentation," thus disclosing the claim limitation

that "a particular application [is] generated based on

the data in both the first and second layers." 1751

Pet. 43-44 (citing Ex. 1006, 14:64-65, 16:20-21,

16:55-17:5; Ex. 1002 ¶ 154); see id. at 48 (citing Ex.

1006, 8:67-9:2, 10:10-13, Fig. 3); 1752 Pet. 27, 31

(citing the same evidence).

Regarding the claimed "change management layer

for automatically detecting changes that affect an

application," Petitioner relies on Balderrama's

update/modification detector 82. 1751 Pet. 44; 1752

Pet. 27. According to Petitioner, update/modification

detector 82 "automatically detects changes to the

outlet-specific database or the generic template

presentation that affect the application (the

configured outlet-specific presentation)." 1751 Pet. 44

(citing Ex. 1006, 10:14-21, 11:64-67; Ex. 1002 ¶ 155);

see id. at 48-49 (citing Ex. 1006, 2:16-21, 10:14-21,

11:64-67, 12:34-38); 1752 Pet. 27, 31-32 (citing the

same evidence, and Ex. 1006, Fig. 3). Petitioner

146a

further asserts that

"[i]n response to

update/modification detector 82 detecting changes

a currently-running presentation is interrupted

and re-configured." 1751 Pet. 44 (citing Ex. 1006, 9:715; Ex. 1002 1 167); see 1752 Pet. 27 (citing the same

evidence).

Petitioner relies on Java Complete in combination

with Balderrama for teaching that "each client

computer further compris[es] a browser application

being executed by each client computer," and that the

claimed "user interface and functionality for the

particular application is distributed to the browser

application and dynamically generated when the

client computer connects to the server computer."

1751 Pet. 45-46; 1752 Pet. 27-29. According to

Petitioner, Balderrama teaches distributing the

application from a server to a client over a LAN

network but does not explicitly state that the server

is accessible by a browser executed on the client

device. 1751 Pet. 44-45 (citing Ex. 1002 IT 148-50);

see 1752 Pet. 27-28 (citing the same evidence). Java

Complete "describes using browsers for UI delivery

over the Internet and within a company's internal

network." 1751 Pet. 45 (citing Ex. 1007, 30, 31, 40;

Ex. 1002 1 156); see 1752 Pet. 28 (citing the same

evidence). Petitioner asserts that "[i]t would have

been obvious to a [person of ordinary skill in the art]

to implement a browser application on Balderrama's

customer terminal for receiving and executing the

order-entry application, as browsers (including

Java-enabled browsers) were commonly used to

receive UI applications in client-server systems."

1751 Pet. 45 (citing Ex. 1002 IT 156-57); see 1752 Pet.

28 (citing the same evidence).

147a

Petitioner further points to Java Complete's

teaching that "the client browser executes a Java

applet received from the server to dynamically

generate the UI and functionality of the application,"

asserting that a person of ordinary skill "would have

been motivated to implement Balderrama's

order-entry application as a Java applet delivered to

a browser executed by the customer terminal (client

computer) because of the ease-of- implementation

benefits of using Java and readily-available web

browsers." 1751 Pet. 45-46 (citing Ex. 1007, 32, 40,

42; Ex. 1002 ¶ 156); see 1752 Pet. 28-29 (citing the

same evidence).

We agree with Petitioner's mapping of

Balderrama and Java Complete to claim 1, and adopt

it as our own.

Patent Owner argues that Balderrama does not

disclose the "change management layer" recited in

claim 1. P0 Resp. 28-32. In particular, Patent

Owner asserts that the update/modification detector

82 of Balderrama (upon which Petitioner relies as

teaching the claimed change management layer)

merely "detects [manual] user input" and argues that

"[o]ne of ordinary skill in the art would not recognize

the 'update/modification detector 82' as [a] 'change

management layer' that detects 'changes' under the

broadest reasonable interpretation" thereof. Id. at 29

(citing Ex. 2032 ¶J 74-75, 77; Ex. 2033 ¶ 56; Ex. 1006,

2:10-21, 10:6-9, Table A (col. 7)). Patent Owner

further argues that update/modification detector 82

merely notifies the system of a detected change. Id.

at 30 (citing Ex. 1006, 9:2-14). Again, Patent Owner's

arguments rely upon its proposed construction of the

"change management layer," which we do not adopt

IR-O

for the reasons discussed above (see supra

Section II. C.1).

We are persuaded by Petitioner's assertion that

notifying Balderrama's up date/modification detector

82 of a change in data records or template

presentations, see Ex. 1006, Fig. 3, from which the

configured presentation (i.e., the application) is

generated, meets the claimed function of the "change

management layer."

Based on the evidence of record, we are persuaded

that Petitioner has shown that the combination of

Balderrama and Java Complete teaches or suggests

all of the limitations of claim 1, and has articulated

sufficient reasoning why it would have been obvious

to combine these references in the proposed manner.

We, thus, determine Petitioner has shown, by a

preponderance of the evidence, that the combination

of Balderrama and Java Complete renders claim 1

obvious.

d. Claim 21

In discussing independent claim 21—a method

claim, which includes limitations similar in scope to

the system limitations discussed with respect to

claim 1—the parties refer back to their arguments

with respect to claim 1. See 1751 Pet. 53-54 (citing

Ex. 1007, 42; Ex. 1002 ¶ 183); 1752 Pet. 33-35 (citing

the same evidence); P0 Resp. 32. For the same

reasons discussed with respect to claim 1, we

determine Petitioner has shown, by a preponderance

of the evidence, that the combination of Balderrama

and Java Complete renders claim 21 obvious.

149a

e. Claims 7, 8, 10-12, 19, 20, 22,

27-32, 39, and 40

For each of claims 7, 8, 10-12, 19, 20, 22, 27-732,

39, and 40, Petitioner provides arguments as to how

each claim limitation is disclosed in the combination

of Balderrama and Java Complete, and relies upon

Dr. Crovella's testimony. See 1751 Pet. 49-55 (citing

Ex. 1006, 6:17-42, 8:67-9:2, 9:7-15, 9:33-10:3, 10:1013, 12:65-14:43, Fig. 3; Ex. 1007, 42; Ex. 1002

¶J 162-67, 169-73); 1752 Pet. 33, 35 (citing Ex. 1006,

8:67-9:2, 10:10-13, Fig. 3; Ex. 1007, 42; Ex. 1002

¶j 153, 160-61). We agree with Petitioner's mapping

of Balderrama and Java Complete to these claims,

and adopt it as our own.

Patent Owner does not substantively discuss

dependent claims 7, 8, 10-12, 19, 20, 22, 27-32, 39,

and 40, apart from its discussion of independent

claims 1 and 21, which we have addressed above. See

P0 Resp. 32 ("The remaining dependent claims are

not [obvious based on] Balderrama in view of Java

Complete by virtue of their dependencies on claims 1

and 21.").

Based on the evidence of record, we determine

Petitioner has shown, by a preponderance of the

evidence, that the combination of Balderrama and

Java Complete renders claims 7, 8, 10-12, 19, 20, 22,

27-32, 39, and 40 obvious.

2. Obviousness in View of Balderrama,

Java Complete, and Codd

As discussed above, we are persuaded that

Petitioner has shown by a preponderance of the

evidence that the combination of Balderrama and

Java Complete teaches all features of independent

claims 1 and 21. As characterized by Petitioner,

150a

dependent claims 3-6 and 23-26 "recite the term

'database,' which is explicitly defined in the '482

patent specification." 1752 Pet. 37; see Ex. 1001,

29:50-54. Petitioner asserts that Balderrama

discloses each of the limitations introduced in these

dependent claims, "with the exception of explicitly

specifying a database of the type meeting the specific

definition given in the specification." 1752 Pet. 37.

Petitioner provides arguments as to how each

limitation of claims 3-6 and 23-26 is disclosed in

Balderrama, and relies upon Dr. Crovella's testimony.

Id. at 44-47 (citing Ex. 1006, 6:48-63,9:16-21, 16:557:5; Ex. 1008, 54; Ex. 1002 TT 246-51).

Petitioner relies on Codd as disclosing a database

as defined in the '482 patent. Id. at 37. According to

Petitioner, "Codd lists all of the major components of

the '482 patent's defined "database" (i.e., those that

have their own sub-definitions—tables, views,

columns, and rows) as canonical features of relational

databases." Id. (citing Ex. 1008, 54). Petitioner also

asserts that "Codd teaches a number of benefits of

relational databases

such as advantages of

performance, cost productivity, and distributability."

Id. at 38 (citing Ex. 1008, 60; Ex. 1002 ¶ 219). We are

persuaded that one of ordinary skill would have used

a relational database as disclosed in Codd to

implement the system of Balderrama. See id. at 3738 (citing Ex. 1002 ¶J 215, 219). We agree with

Petitioner's mapping of Balderrama, Java Complete,

and Codd to these claims, and adopt it as our own.

Patent Owner has not presented separate

arguments regarding the additional limitations

introduced in dependent claims 3-6 and 23-26, or

with respect to Petitioner's proposed combination of

references. See P0 Resp. 32.

....

151a

Based on the evidence of record, we are persuaded

that Petitioner has shown that the combination of

Balderrama, Java Complete, and Codd teaches or

suggests all of the limitations of claims 3-6 and 2326, and has articulated sufficient reasoning why it

would have been obvious to combine these references

in the proposed manner. We, thus, determine

Petitioner has shown, by a preponderance of the

evidence, that the combination of Balderrama, Java

Complete, and Codd renders claims 3-6 and 23-26

obvious.

CONCLUSION

For the foregoing reasons, we determine that

Petitioner has demonstrated, by a preponderance of

the evidence, that claims 1, 7, 8, 10-13, 18-22, 27-33,

and 38-40 are unpatentable under 35 U.S.C. § 102 as

anticipated by Popp; claims 3-6 and 23-26 are

unpatentable under 35 U.S.C. § 103 as obvious in

view of Popp and Codd; claims 13-17 and 33-37 are

unpatentable under 35 U.S.C. § 103 as obvious in

view of Popp and Anand; claims 1, 8, 10, 19-21, 28,

30, 39, and 40 are unpatentable under 35 U.S.C. 102

§

as anticipated by Kovacevic; claims 3-6 and 23-26 are

unpatentable under 35 U.S.C. § 103 as obvious in

view of Kovacevic and Codd; claims 1, 7, 8, 10-12, 1922, 27-32, 39, and 40 are unpatentable under 35

U.S.C. § 103 as obvious in view of Balderrama and

Java Complete; and claims 3-6 and 23-26 are

unpatentable under 35 U.S.C. § 103 as obvious in

view of Balderrama, Java Complete, and Codd.

ORDER

Accordingly, it is

ORDERED that claims 1, 3-8, and 10-40 of U.S.

Patent No. 7,356,482 B2 are held unpatentable; and

152a

FURTHER ORDERED that, because this is a

Final Written Decision, parties to the proceeding

seeking judicial review of the decision must comply

with the notice and service requirements of 37 C.F.R.

§ 90.2.

PETITIONER:

Richard F. Giunta

Elisabeth H. Hunt

Randy J. Pritzker

WOLF, GREENFIELD & SACKS, P.C.

RGiunta-PTAB@wolfgreenfield.com

EHunt-PTAB@wolfgreenfield.com

RPritzker-PTAB@wolfgreenfield.com

PATENT OWNER:

Jonathan Pearce

M. Kala Sarvaiya

Steven C. Sereboff

SOCAL IP LAW GROUP LLP

ksarvaiya@socalip.com

jpearce@socalip.com

ssereboff@socalip.com