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

Supreme Court briefJan 22, 2019

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571-272-7822

Paper No. 51

Entered: February 25, 2016

UNITED STATES PATENT AND

TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL

BOARD

RPX CORPORATION,

Petitioner,

APPLICATIONS IN INTERNET TIME, LLC,

Patent Owner.

Case IPR2015-01751

Patent 7,356,482 B2

Before LYNNE E. PETTIGREW, MITCHELL G.

WEATHERLY, and JENNIFER MEYER CHAGNON,

Administrative Patent Judges.

CHAGNON, Administrative Patent Judge.

DECISION

Institution of Inter Partes Review

37C.F.R. §42.108

I. INTRODUCTION

RPX Corporation ("Petitioner" or "RPX") filed a

Petition for inter partes review of claims 1, 7-21, 2741, and 47-59 ("the challenged claims") of U.S. Patent

No. 7,356,482 B2 (Ex. 1001, "the '482 patent"). Paper

1 ("Pet."). Applications In Internet Time LLC ("Patent

Owner") filed a Preliminary Response (Paper 20,

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

Pursuant to our authorization (Paper 23), Petitioner

filed a Reply (Paper 28, Paper 29 (redacted version),

"Reply") and Patent Owner filed a Sur-Reply (Paper

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

We have authority to determine whether to

institute inter partes review. See 35 U.S.C. § 314(b);

37 C.F.R. § 42.4(a). Upon consideration of the Petition

and the Preliminary Response, as well as Petitioner's

Reply and Patent Owner's Sur-Reply, and for the

reasons explained below, we determine that the

information presented shows a reasonable likelihood

that Petitioner would prevail with respect to claims 1,

7, 8, 10-21, and 27-40. See 35 U.S.C. § 314(a).

Accordingly, we institute trial as to claims 1, 7, 8, 1021, and 27-40 of the '482 patent.

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.) ("Salesforce litigation"). Pet. 3; Paper 5, 2.

Petitioner concurrently seeks inter partes review of

claims 2-6, 22-26, and 42-46 of the '482 patent in

IPR2015-01752 and of claims 13-18 of related U.S.

Patent No. 8,484,111 B2 ("the '111 patent") in

IPR2015-01750. Pet. 3; 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 nonregulatory requirements for business activities at an

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

The integrated system described ih the '482 patent

manages data that is constantly changing by

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"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 8:30-46, 66-67.

Figure 1 of the '482 patent is reproduced below:

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As shown in Figure 1, the integrated system operates

at four layers: (1) a change management layer that

identifies on the Internet regulatory and nonregulatory changes that may affect a user's business,

(2) a Java data management layer that generates a

user interface ("UI"), (3) a metadata layer 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)

a business content layer 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, 12:4252.

C. Illustrative Claims

Of the challenged claims, claims 1, 21, and 41 are

independent.

Claims 7-20 depend, directly or

indirectly, from claim 1. Claims 27-40 depend,

directly or indirectly, from claim 21. Claims 47-59

depend, directly or indirectly, from claim 41. Claims

1 and 41 of the '482 patent, reproduced below, are

illustrative of the challenged claims.

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;

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a first layer associated with the server

computer containing information about the unique

aspects of a particular application;

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.

41. A server for dynamically generating an

application for one or more client computers

connected to the server computer by a computer

network, comprising:

a first layer associated with the server

containing information about the unique aspects of

a particular application;

a second layer associated with the server

containing information about the user interface

and functions common to a variety of applications;

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a third layer that retrieves the data in the first

and second layers in order to generate

functionality and user interface elements of the

application;

a change management layer for automatically

detecting changes that affect an application;

means for dynamically generating a particular

application based on the first and second layers

each time a client computer connects to the server

computer; and

means for distributing the user interface and

functionality of the particular application to a

client computer.

Id. at 34:54-35:5.

D. The Applied References and Evidence

Petitioner relies on the following evidence. Pet. 48,14-60.

Reference

Date

Exhibit No.

U.S. Patent No. 6,249,291 BI ("Popp")

June 19, 2001

Ex. 1004

U.S. Patent No. 6,249,291131 ("Popp")Srdjan

Kovacevic, Flexible, Dynamic User Interfaces for WebDelivered Training, in AVI '96 PROCEEDINGS OF THE

WORKSHOP ON ADVANCED VISUAL INTERFACES 108-18

(1996) ("Kovacevic")

1996

Ex. 1005

U.S. Patent No. 5,806,071 ("Balderrama")

Sept. 8, 1998

Ex. 1006

Java Complete!, 42 DATAMATION MAGAZINE 5, 28-49 Mar. 1, 1996

(March 1, 1996) ("Java Complete")

Ex. 1007

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

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

("Codd")

Oct. 21, 1985

Ex. 1108

U.S. Patent No. 5,710,900 ("Anand")

Jan. 20, 1998

Ex. 1009

I-i

Reference

Date

Exhibit No.

Glenn E. Krasner & Stephen T. Pope, A Description of

the Model- View- Controller User Interface Paradigm in

the Smalltalk-80 System, ParcPlace Systems (1988)

("Krasner")

1988

Ex. 1010

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Petitioner further relies on the Declaration of

Mark E. Crovella, Ph.D. (Ex. 1002).

E. The Asserted Grounds

Petitioner sets forth its challenges to claims 1, 721, 27-41, and 47-59 as follows. Pet. 4-5, 14-60.

References

Basis

Claims Challenged

Popp

§ 102

1,7-13,18-21,2 —

33,38-41,47-52,

57-59

Kovacevic

§ 102

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

30,39-41,47,49,58,

Balderrama and

Java Complete

§ 103

1,7-12,19-21,27—

32,39-41,47-51,58,

Popp and Anand

§ 103

13-17,33-37,52-56

II. ANALYSIS

A. Real Parties-in-Interest

The statute governing inter partes review

proceedings sets forth certain requirements for a

petition for inter partes review, including that "the

petition identif[y] all real parties in interest." 35

U.S.C. § 312(a); see also 37 C.F.R. § 42.8(b)(1)

(requirement to identify real parties-in-interest

("RPIs") in mandatory notices). In accordance with 35

U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8(b)(1),

Petitioner identifies RPX Corporation as the "sole real

party-in-interest in this proceeding." Pet. 2. In its

Preliminary Response, Patent Owner raises the issue

of whether Petitioner has identified all RPIs. See

I!AI1i

Prelim. Resp. 3-21. In particular, Patent Owner

asserts that Salesforce.com, Inc. ("Salesforce") is an

unnamed RPI. Id.

As noted above, the '482 patent has been asserted

against Salesforce in a district court action. See Paper

5, 2. Patent Owner asserts that "[b]ecause the

Salesforce Litigation is more than one year old,

Salesforce is barred from filing an inter partes review

under 37 C.F.R. § 42.101(b)." Prelim. Resp. 9; see also

35 U.S.C. § 315(b) ("An inter partes review may not be

instituted if the petition requesting the proceeding is

filed more than 1 year after the date on which the

petitioner, real party in interest, or privy of the

petitioner is served with a complaint alleging

infringement of the patent."); Ex. 2003 (showing

service of the complaint in the Salesforce litigation

was effected on November 20, 2013 (more than one

year prior to the August 17, 2015 filing date of the

instant Petition)). Thus, as an initial matter, we must

determine whether Salesforce should have been

identified as an RPI in this proceeding.

Whether an entity that is not named as a

participant in a given proceeding constitutes an RPI is

a highly fact-dependent question that takes into

account how courts generally have used the terms to

"describe relationships and considerations sufficient

to justify applying conventional principles of estoppel

and preclusion." Office Patent Trial Practice Guide,

77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012). According

to the Trial Practice Guide,

the spirit of that formulation as to IPR

proceedings means that, at a general level, the

"real party-in-interest" is the party that desires

review of the patent. Thus, the "real party-in..

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interest" may be the petitioner itself, and/or it

may be the real party or parties at whose

behest the petition has been filed.

Id. As stated in the Trial Practice Guide, there are

"multiple factors relevant to the question of whether

a non-party may be recognized as" an RPI. Id. (citing

Taylor v. Sturgell, 533 U.S. 880, 893-895, 893 n.6

(2008)).

There is no "bright line test."

Id.

Considerations may include, for example, whether a

non-party exercises control over a petitioner's

participation in a proceeding, or whether a non-party

is funding the proceeding or directing the proceeding.

Id. at 48,759-60.

A petition is presumed to identify accurately all

RPIs.

See Zerto, Inc. v. EMC Corp., Case

IPR2014-01295, slip op. at 6-7 (PTAB Mar. 3, 2015)

(Paper 34). When a patent owner provides sufficient

evidence prior to institution that reasonably brings

into question the accuracy of a petitioner's

identification of RPIs, the overall burden remains

with the petitioner to establish that it has complied

with the statutory requirement to identify all RPIs.

Id.

Patent Owner argues that RPX is acting as a proxy

for Salesforce in filing the Petition and Salesforce

should, therefore, be identified as an RPI. In this

regard, Patent Owner argues that "RPX is in the

business of acting as a proxy for accused infringers

like Salesforce." Prelim. Resp. 7. As support for this

assertion, Patent Owner quotes from portions of RPX's

website and public filings. For example, Patent

Owner points to a portion of RPX's website, which

indicates "RPX Corporation is the leading provider of

patent risk solutions, offering defensive buying,

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acquisition syndication, patent intelligence, insurance

services, and advisory services." Id. (quoting Ex.

2016). Patent Owner further argues that "RPX states

that its interests are '100% aligned' with those of

clients

id. (quoting Ex. 2015); that

"RPX serves as 'an extension of the client's in-house

legal team," id. (quoting Ex. 2006); and that "RPX.

act[s] as [its clients'] proxy to 'selectively clear'

liability for infringement as part of RPX's 'patent risk

management solutions," id. at 7-8 (quoting Ex. 2006;

Ex. 2008).

We are not persuaded, however, that the evidence

supports Patent Owner's argument that "Petitioner's

business model is built upon petitioner acting as an

agent or proxy for third parties in cases just like .this."

Prelim. Resp. 7. At the outset, we note that Patent

Owner provides several of these quotations out-ofcontext and/or mischaracterizes them. Nowhere in

the evidence of record does Patent Owner point to any

portion of RPX's website or public filings that

expressly indicates that RPX acts as a proxy for its

clients,

Further, in response to additional discovery

authorized in this proceeding (Paper 11), RPX

provided declaration testimony that, contrary to

Patent Owner's assertions that RPX is acting as a

proxy for Salesforce,

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Ex. 1019 ¶ 47; see Reply' 1, 6-7 (citing Ex. 1019 ¶J 713, 34-44, 47; Ex. 1024). RPX further provided

declaration testimony and evidence that "RPX did not

have any contractual obligation to file [this and the

related] IPRs or any 'unwritten,' implicit or covert

understanding with Salesforce that it would do so."

Reply 5 (citing Ex. 1019 ¶ 45); see also Exs. 1020— 022

which do

(

not include any discussion of filing petitions for inter

partes review). We are not persuaded that the generic

statements on RPX's website cited by Patent Owner

prove otherwise.

Patent Owner points to other inter partes review

proceedings in which RPX was a petitioner as evidence

that "RPX has a history of acting as a proxy." Prelim.

Resp. 9-10; see RPX Corp. v. VirnetX, Inc., Case

IPR2014-00171 (and six other related proceedings);

RPX Corp. v. Parker Vision, Case IPR2014-00946 (and

two other related proceedings). These cases are

distinguishable from the present case. In RPX Corp.

v. VirnetX, Inc., the Board found that Apple (the

alleged unnamed RPI) had both suggested that RPX

challenge the specific patents, as well as paid for it to

do so. Case IPR2014-00171, slip op. at 4, 7 (PTAB

June 5, 2014) (Paper 49). Additionally, the petitions

included grounds that were "substantially identical"

to those in Apple's time-barred petition. Id. at 5-6. In

The Reply does not include page numbers. We cite to the

Reply counting the page starting with the "Introduction" section

as page 1.

RPX Corp. v. Parker Vision, contrary to Patent

Owner's assertion, the Board did not find that RPX

acted as a proxy for any unnamed RPI. Rather,

although the Board authorized additional discovery on

this issue, Case IPR2014-00946 (Paper 25), no

additional briefing on the issue of RPI was ever

submitted.

Patent Owner's argument questioning RPX's

motives for challenging only two of three of Patent

Owner's patents (i.e., only the two asserted in the

Salesforce litigation) also is unpersuasive. See SurReply 4-5. RPX addresses this third patent (U.S.

Patent No. 6,341,287 ("the '287 patent"), which is the

ultimate parent of both the '111 patent and the '482

patent) in the Petition, stating that "[t]he parent '287

patent issued with a single claim, which is much

narrower than the '482 patent claims and is tied to the

issues of regulatory compliance as described in the

specification." Pet. 8-9 (citing Ex. 1013, 32:9-34:8).

We are not persuaded, based on the facts now before

us, that RPX's decision to challenge only certain of

Patent Owner's patents is evidence sufficient to show

that RPX is acting as a proxy on behalf of Salesforce

in this IPR proceeding.

Patent Owner further argues that RPX has

"adopted a 'willful blindness' strategy" and that "it

intentionally operates its business to circumvent the

PTAB's RPI case law." Prelim. Resp. 9-11 (citing e.g.,

Ex. 2018). We are not persuaded that the evidence of

record supports this assertion. Further, RPX has

provided declaration testimony that explains RPX's

"best practices" for identifying RPIs that contradicts

Patent Owner's assertion. Ex. 1019 ¶J 14-19; Reply

6-8.

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As additional evidence that Salesforce should be

argument to be based on conjecture without

evidentiary support, we are not persuaded that

Salesforce is funding this proceeding.

Patent Owner further argues that Mr. Sanford

Robinson, who is on the Board of Directors of both RPX

and Salesforce, "has the opportunity to exert

significant but hidden control over this proceeding."

Prelim. Resp. 13. There is no evidence in the record,

however, that Mr. Robinson has exerted any such

control. The fact that "RPX produced nothing," id. at

14, in response to a production request to produce

"[d]ocuments sufficient to show how [he] separates his

fiduciary duties to RPX and Salesforce despite serving

simultaneously as a Board Member of RPX and as a

Board Member of Salesforce," Ex. 2001, is not

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dispositive. See Paper 11. In response to the discovery

requests, RPX provided declaration testimony that

Mr. Robinson was not involved in the decision to file

the instant Petition. Reply 11-12 (citing Ex. 1019

TT 51-52). An overlapping Board member alone,

without evidence of his involvement, is not sufficient

to demonstrate an unnamed entity had control over or

was involved in an IPR. See Butamax Advanced

Biofuels LLC v. Gevo, Inc., Case IPR2013-00214, slip

op. at 4 (PTAB Sept. 30, 2013) (Paper 11).

declaration testimony expressly stating that:

RPX had no communication with Salesforce

whatsoever regarding the filing of IPR

petitions against [Patent Owner's] patents

before [this and the related] IPRs were filed.

Salesforce did not request that RPX file [this

and the related] IPRs, was not consulted about

the decision by RPX to file the IPRs, and did

not communicate with RPX about the

searching for or selection of prior art asserted

in [this and the related] IPRs, or any other

aspect of the IPRs.

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Ex. 1019 ¶ 20; see Reply 1-2.

To summarize, Patent Owner argues that, because

because the '482 patent

has been asserted against Salesforce, and because

Salesforce is time-barred under 35 U.S.C. 315(b)

from challenging the '482 patent, RPX must have filed

the instant Petition as a proxy for Salesforce, and,

thus, Salesforce must be an RPI in this proceeding.

However, as discussed above, Patent Owner has not

provided persuasive evidence to support this

assertion. Accordingly, based on the evidence

currently before us, we are not persuaded that

Salesforce should have been identified as an RPI in

this proceeding.2 We now turn to the substantive

issues presented in the Petition.

B. Claim Construction

In an inter partes review, claim terms in an

unexpired patent are given their broadest reasonable

In its Preliminary Response, Patent Owner also requests

we impose sanctions on Petitioner for "misrepresentation of a

fact," 37 C.F.R. § 42.12(a)(3), or for "abuse of process," 37 C.F.R.

§ 42.12(a)(6). See Prelim. Resp. 37-38. A motion for sanctions

based on alleged misconduct may not be filed without prior

Board authorization. See 37 C.F.R. § 42.20(b). Patent Owner

improperly has embedded such a motion for sanctions within its

Preliminary Response, without our authorization. Because we

are not, at this juncture, persuaded by Patent Owner's

arguments on the issue of RPI, rather than expunge the

Preliminary Response, we deny Patent Owner's unauthorized

motion for sanctions.

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construction in light of the specification of the patent

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

Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275-79

(Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed

Techs., LLC v. Lee, 84 U.S.L.W. 3218 (Jan. 15, 2016)

(No. 15-446).

Under the broadest reasonable

construction standard, claim terms generally are

given their ordinary and customary meaning, as

would be understood by one of ordinary skill in the art

in the context of the entire disclosure. See In re

Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.

2007). 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).

1. Means-plus-function terms

Claims 9, 41, and 48 include limitations that

Petitioner identifies as means-plus-function

limitations under 35 U.S.C. § 12, ¶ 6.3 Pet. 11-12, 13.

In particular, Petitioner identifies the "means for

automatically modifying the first and second layers

limitation recited in claims 9 and 48, and the

"means for dynamically generating a particular

application

limitation recited in claim 41. Id. at

11, 13. We note that claim 41 includes an additional

limitation written in means-plus-function format,

. . ."

Section 4(c) of the AlA re-designated 35 U.S.C. § 112,

¶J 2 and 6 as 35 U.S.C. §§ 112(b) and (f). Because the '482

patent has a filing date before September 16, 2012 (effective

date), we will refer to the pre-AIA version of 35 U.S.C. 112.

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namely the "means for distributing the user interface

and functionality.

limitation.

We agree that the limitations identified are

written in means-plus-function format and are

governed by 35 U.S.C. § 112, ¶ 6, because they all use

the phrase "means for" modified by functional

language without being modified by any structure to

perform the claimed function. See Williamson v.

Citrix Online, LLC, 792 F.3d 1339, 1347-48 (Fed. cir.

2015). The scope of these limitations is, thus, defined

by the structure disclosed in the specification plus any

equivalents of that structure. Aristocrat Techs. v. Intl

Game Tech., 521 F.3d 1328, 1331 (Fed. cir. 2008). The

"specification must contain sufficient descriptive text

by which a person of skill in the field of the invention

would 'know and understand what structure

corresponds to the means limitation." Typhoon Touch

Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1383-84 (Fed.

cir. 2011) (quoting Finisar Corp. v. DirecTVGrp., 523

F.3d 1323, 1340 (Fed. cir. 2008)). Except for a narrow

exception concerning functions that are "coextensive"

with a microprocessor itself, such as "processing" data,

"receiving" data, and "storing" data, a

computer-implemented means-plus-function element

is indefinite, under § 112, ¶ 2, unless the specification

discloses the specific algorithm used by the computer

to perform the recited function. EON Corp. IP

Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616,

621 (Fed. Cir. 2015) (quoting In re Katz Interactive

Call Processing Patent Litigation, 639 F.3d 1303, 1316

(Fed. cir. 2011)).

For each of the means-plus-function limitations,

Petitioner asserts that "for purposes of this Petition,

the claimed means is interpreted as covering 'a

server/client system that [performs the claimed

. ."

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function]." Pet. 12, 14. We are not persuaded that

Petitioner has shown that the specification of the '482

patent describes an algorithm adequate to provide

structure to the corresponding function of the meansplus-function limitations of claims 9, 41, and 48. In

fact, Petitioner expressly states in its Petition, "[t]he

claimed function. is not explicitly mentioned in the

specification, and the specification does not clearly

link any structure to this function." Pet. 11 (citing Ex.

1002 ¶ 50); see id. at 13-14 (citing Ex. 1002 86).

Although Petitioner points to the genericallydescribed "server/client system" described in the

specification of the '482 patent as the corresponding

structure, Petitioner also states that "there is no

algorithm disclosed for programming this

general-purpose hardware to the perform the recited

function." Id. at 12 (citing Ex. 1001, 29:34-49; Ex.

1002 1 50); see id. at 13-14. Patent Owner also fails

to identify any algorithms described in the

specification for performing the recited functions. See

Prelim. Resp. 23-28 (addressing claim interpretation

without addressing means-plus-function limitations).

We determine, therefore, that the specification of the

'482 patent simply does not "disclose the algorithm for

performing the function," as required by our

reviewing court, "[w]hen dealing with a 'special

purpose computer-implemented means-plus -function

limitation." Function Media, L.L.C. v. Google, Inc.,

708 F. 3d 1310, 1318 (Fed. Cir. 2013).

Accordingly, for the reasons discussed, we are

unable to construe the means-plus-function

limitations of claims 9, 41, and 48.

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2. Other claim terms

The parties propose construction for several other

claim terms. See Pet. 9-13; Prelim. Resp. 23-28.

Upon review of the parties' contentions and

supporting evidence, we determine no issue in this

Decision requires express construction of any other

claim term. 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)). Accordingly, for purposes of this Decision,

we do not provide any express claim construction.

C. Principles of Law

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. Teleflex Inc., 550 U.S. 398, 406

(2007). The question of obviousness is resolved on the

216a

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. Graham

v. John Deere Co., 383 U.S. 1, 17-18 (1966).

In that regard, an obviousness analysis "need not

seek out precise teachings directed to the specific

subject matter of the challenged claim, for a court can

take account of the inferences and creative steps that

a person of ordinary skill in the art would employ."

KSR, 550 U.S. at 418; accord In re Translogic Tech.,

Inc., 504 F.3d at 1259. The level of ordinary skill in

the art may be reflected by the prior art of record. See

Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.

2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.

1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).

We analyze the asserted grounds of

unpatentability in accordance with these principles.

D. Claims 9, 41, and 47-59

Claims 9, 41, and 48 each recite limitations written

in a means-plus-function format, and claims 47 and

49-59 depend ultimately from claim 41.4 As discussed

in the claim construction section above, we are not

persuaded that Petitioner has pointed out adequate

structure corresponding to these limitations in each of

claims 9, 41, and 47-59. Because of this deficiency,

Petitioner has not provided sufficient information for

a determination of the scope of these claims, and we

cannot conduct the necessary factual inquiry for

determining anticipation or obviousness of these

claims. See In re Aoyama, 656 F.3d 1293, 1298 (Fed.

Claim 48 also depends ultimately from claim 41.

217a

Cir. 2011) (quoting Enzo Biochem, Inc. v. Applera

Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010)) ("[A] claim

cannot be both indefinite and anticipated."); In re

Steele, 305 F.2d 859, 862-63 (CCPA 1962) (reversing

the Board's decision of obviousness because it relied

on "what at best are speculative assumptions as to the

meaning of the claims"). We are unable to conclude,

therefore, that there is a reasonable likelihood that

Petitioner would prevail in its challenges to claims 9,

41, and 47-59. We now turn to Petitioner's challenges

to claims 1, 7, 8, 10-21, and 27-40.

E. Asserted Grounds Based on Popp

Petitioner asserts that claims 1, 7, 8, 10-13, 18-21,

27-33, and 38-40 are unpatentable under 35 U.S.C.

§ 102(e) as anticipated by Popp.

Pet. 16-28.

Petitioner further asserts that claims 13-17 and 3337 are unpatentable under 35 U.S.C. § 103(a) as

obvious in view of Popp and Anand. Pet. 57-60.

Patent Owner argues that Popp does not disclose all

elements of the independent claims. Prelim. Resp. 3032. We have reviewed the parties' contentions and

supporting evidence. Given the evidence on this

record, and for the reasons explained below, we

determine that the information presented shows a

reasonable likelihood that Petitioner would prevail on

these asserted grounds.

1. Summary 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

218a

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:

219a

I..

q\{—

220a

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. 6A. 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. 6B. 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. Independent Claims 1 and 21

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

221a

respond to user input." Pet. 16 (citing Ex. 1004, 3:6165, 8:24-26; Ex. 1002 ¶J 29-35); see id. at 19-20

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

Id. at 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).

Popp further discloses that "Database 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 Pet. 18, 2021. Thus, according to Petitioner, Popp discloses all

four claimed "layers," 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. Pet. 16 (citing

Ex. 1002 ¶ 31). 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." Id. at 20 (citing Ex. 1004, 9:4-10,

9:56-61); see Ex. 1002 ¶ 36.

The claim further recites a "second layer

containing information about the user interface and

functions common to a variety of applications."

222a

Petitioner describes the following as disclosing this

claim 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.

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).

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

scripted Control Object 602, which Popp uses "to

generate and manage a Web page," as disclosing this

claim feature. Pet. 18 (citing Ex. 1004, 18:62-65,

19:1-2; Ex. 1002 1 39); see id. at 21 (citing Ex. 1004,

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

application [is] generated based on the data in both

the first and second layers." Id. at 18 (citing Ex. 1004,

Fig. 6B; Ex. 1002 ¶J 38-39); see id. at 21 (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 and processed by a Java-enabled browser

...

223a

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. Pet. 17

(citing Ex. 1002 ¶J 41-44); see id. at 22 (citing Ex.

1004, 3:55-63, 31:44-49).

Finally, regarding the claimed "change

management layer for automatically detecting

changes that affect an application," Petitioner relies

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

1002 ¶ 40). 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. Id. (citing Ex. 1004,

22:28-48; Ex. 1002 ¶ 40); see id. at 21; Ex. 1004, Fig.

6B. Petitioner asserts that "[ijn 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." Id. at 19 (citing Ex. 22:28-62; Ex. 1002 1 49).

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." Id.

(citing Ex. 1004, 22:37-42).

Patent Owner argues that Popp does not disclose

the "change management layer" recited in claim 1.

Prelim. Resp. 30-31. In particular, Patent Owner

argues that "Popp does not disclose

automatically

detect[ing] changes external to an application program

which impact how the application program should

operate," and argues that instead Popp discloses

224a

"automatically detect [ing] changes from [an

application's] own operation." Id. at 30-31. The

language of claim 1, however, is broad and requires

only that the change management layer

"automatically detect[ ] changes that affect an

application." Ex. 1001, 32:27-28. On the record now

before us, 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, is sufficient

to disclose detecting of a change to information about

the application, as claimed. See, e.g., Ex. 1001, 12:1728 (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).

Accordingly, for the reasons discussed, we are

persuaded, on the current record, that Petitioner has

shown a reasonable likelihood of prevailing on its

assertion that claim 1 is anticipated by Popp.

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, 33:3458. In discussing this claim, Petitioner and Patent

Owner each refers back to its arguments with respect

to claim 1. See Pet. 26-27 (citing Ex. 1002 ¶J 44, 67;

Ex. 1007, 42); Prelim. Resp. 31-32. For the same

reasons discussed with respect to claim 1, we also are

persuaded, on the current record, that Petitioner has

shown a reasonable likelihood of prevailing on its

assertion that claim 21 is anticipated by Popp.

225a

Dependent Claims 7, 8,10-13,18-20,27-33,

and 38-40

We also have reviewed Petitioner's contentions and

supporting evidence regarding claims 7, 8, 10-13, 1820, 27-33, and 38-40, and are persuaded, based on the

record now before us, that Petitioner has shown a

reasonable likelihood of demonstrating that Popp

discloses all elements of these claims. See 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 IT 46-57). Patent Owner, at this stage of the

proceeding, has not presented separate arguments

regarding whether Popp discloses the additional

limitations of dependent claims 7, 8, 10-13, 18-20,

27-33, and 38-40. On the record now before us, we

are persuaded that Petitioner has shown a reasonable

likelihood of prevailing on its assertion that claims 7,

8, 10-13, 18-20, 27-33, and 38-40 are anticipated by

Popp.

Dependent Claims 13-17 and 33-37

As discussed above, we are persuaded on the record

currently before us that Petitioner has shown a

reasonable likelihood of demonstrating 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."

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."

226a

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

Anand as disclosing each of these items. Id. at 57-60.

Anand relates to a graphical user interface (GUI)

system for generating reports from a computer

database. Ex. 1009, Abstract, 1:4-7. We have

reviewed Petitioner's mapping of Anand to each of

claims 13-17 and 33-37, and are persuaded, based on

the record now before us, that Petitioner has shown a

reasonable likelihood of demonstrating that Anand

discloses all the additional limitations recited in these

claims. 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

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

would have been obvious to a [person of ordinary skill

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 ¶ 261); see Ex. 1004, 3:61-65, 7:24-35; Ex. 1002

¶ 262.

Patent Owner, at this stage of the proceeding, has

not presented separate arguments regarding whether

Anand discloses the additional limitations of

dependent claims 13-17 and 33-37, or with respect to

Petitioner's proposed combination of references. On

the record now before us, we are persuaded that

Petitioner has shown a reasonable likelihood of

prevailing on its assertion that claims 13-17 and 3337 would have been obvious in view of Popp and

Anand.

227a

5. Conclusion

For the foregoing, reasons, we institute an inter

partes review of whether Popp anticipates claims 1, 7,

8, 10-13, 18-21, 27-33, and 38-40 under 35 U.S.C.

§ 102(e), and of whether Popp and Anand render

obvious claims 13-17 and 33-37 under 35 U.S.C.

§ 103(a).

F. Asserted Anticipation by Kovacevic

Petitioner asserts that claims 1, 8, 10, 19-21, 28,

30, 39, and 40 are unpatentable under 35 U.S.C.

§ 102(b) as anticipated by Kovacevic. Pet. 31-39.

Patent Owner argues that Kovacevic does not disclose

all elements of the independent claims. Prelim. Resp.

32-34. We have reviewed the parties' contentions and

supporting evidence. Given the evidence on this

record, and for the reasons explained below, we

determine that the information presented shows a

reasonable likelihood that Petitioner would prevail on

this asserted ground.

1. Summary 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

"contains a library of communications primitives—

interaction techniques and presentation object—to be

used when assembling UI structures." Ex. 1005, 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

228a

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-flowcontrol primitives occurs. Id. at 114.

2. Independent Claims 1 and 21

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 Uis

for tutoring applications." Pet. 31 (citing Ex. 1005, 108

(col. 2 ¶ 2); Ex. 1002 ¶J 101-03). According to

Petitioner, the SLOOP Server of Kovacevic

corresponds to the claimed server, the applicationspecific 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. Id. at 34-36

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

¶ 4, 5),

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

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

first, second, and third layers are "associated with the

server" because each is downloaded therefrom. See id.

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

¶J 104,

105, 107).

Regarding the claimed "first layer

containing

information about the unique aspects of a particular

...

229a

application," Petitioner describes that a "tutoring

course generated with a particular UI is a particular

'application' as recited in the claims." Pet. 31 (citing

Ex. 1002 ¶J 101, 104). According to Petitioner,

Kovacevic discloses that a "particular tutoring course

is represented by an application-specific model with

software primitives provided in an application-specific

library." Id. (citing Ex. 1005, 117 (col. 1 4, col. 2 7);

Ex. 1002 ¶ 104); see Pet. 34.

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 claim feature. Pet. 31-32,

35. According to Petitioner, the interaction-specific

library includes UI primitives and the library is

sharable among multiple applications. Id. at 31-32

(citing Ex. 1005, 111 (col. 2 ¶ 1); Ex. 1002

¶J 99, 10506); see id. at 35 (citing Ex. 1005, 113 (col. 2 2), 114

(col. 1 ¶ 2), 117 (col. 1 ¶ 5, col. 2 ¶ 7)).

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 claim

feature.

Pet. 32, 35. 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)." Id. at 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)). According to

Petitioner, this generation of the tutoring application

...

230a

"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." Id. at 32 (citing Ex. 1002 106); see

id. at 35 (citing Ex. 1005, 115 (col. 1 2), 116 (col. 1

¶ 6), Figs 5, 6, 8).

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

connects to the server computer," as claimed. Pet. 31

(citing Ex. 1002 ¶IJ 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. 1J3,1J5, col. 21j4), 117(co1.27)).

Finally, regarding the claimed "change

management layer for automatically detecting

changes that affect an application," Petitioner relies

on Kovacevic's sequencing control primitives. Pet. 3233. Kovacevic describes that the "sequencing control

primitives automatically detect changes that affect

the information-flow-control primitives in an

application." Id. at 32 (citing Ex. 1005, 114 (col. 2 6);

Ex. 1002 ¶ 108). 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

231a

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. Id. at 32-33 (citing Ex. 1005, 115 (col. 2); Ex.

1002 1 108); see Id. at 36 (citing Ex. 1005, 114 (col. 2

¶6)).

Patent Owner argues that Kovacevic does not

disclose the "change management layer" recited in

claim 1. Prelim. Resp. 32-34. In particular, Patent

Owner argues that, "[w]hile Kovacevic describes

making the website changeable, Kovacevic has no

disclosure relevant to detecting changes that impact

how the website should function or look." Id. at 33.

Patent Owner also argues that Kovacevic does not

disclose the claimed "change management layer,"

because Kovacevic's sequencing control element is

part of its controller, which Petitioner asserts to be the

claimed third layer. Id. at 33-34.

As discussed above (see supra Section II.E.2.),

however, the language of claim 1 is quite broad and

requires only that the change management layer

"automatically detect[ ] changes that affect an

application." Ex. 1001, 32:27-28. Petitioner relies on

the UI primitives in the interaction-specific library of

Kovacevic as disclosing the claimed second layer.

Based on the record currently before us, we find

persuasive 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). Further, the claimed "third layer"

and "change management layer" need not be described

232a

as separate components in the prior art to meet the

limitations recited in the claim.

Accordingly, for the reasons discussed, we are

persuaded, on the current record, that Petitioner has

shown a reasonable likelihood of prevailing on its

assertion that claim 1 is anticipated by Kovacevic. In

discussing independent claim 21—a method claim,

which includes limitations similar in scope to the

system limitations discussed with respect to claim 1—

Petitioner and Patent Owner each refers back to its

arguments with respect to claim 1. See Pet. 38-39

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

1002 ¶ 126); Prelim. Resp. 34. For the same reasons

discussed with respect to claim 1, we also are

persuaded, on the current record, that Petitioner has

shown a reasonable likelihood of prevailing on its

assertion that claim 21 is anticipated by Kovacevic.

3. Dependent Claims 8, 10, 19, 20, 28, 30, 39,

and 40

We also have reviewed Petitioner's contentions and

supporting evidence regarding claims 8, 10, 19, 20, 28,

30, 39, and 40, and are persuaded, based on the record

now before us, that Petitioner has a reasonable

likelihood of showing that Kovacevic discloses all

elements of these claims. See Pet. 36-39 (citing Ex.

1005, 108 (col. 2 ¶ 2), 110 (col. 2 ¶ 3), 117 (col. 2 7),

Figs. 1, 2; Ex. 1002 TT 112-16). Patent Owner, at this

stage of the proceeding, has not presented separate

arguments regarding whether Kovacevic discloses the

additional limitations of dependent claims 8, 10, 19,

20, 28, 30, 39, and 40. On the record now before us,

we are persuaded that Petitioner has shown a

reasonable likelihood of prevailing on its assertion

233a

that claims 8, 10, 19, 20, 28, 30, 39, and 40 are

anticipated by Kovacevic.

4. Conclusion

For the foregoing reasons, we institute an inter

partes review of whether Kovacevic anticipates claims

1, 8, 10, 19-21, 28, 30, 39, and 40 under 35 U.S.C.

§ 102(b).

G. Asserted Obviousness in view of Balderrama

and Java Complete

Petitioner asserts that claims 1, 7, 8, 10-12, 19-21,

27-32, 39, and 40 are unpatentable under 35 U.S.C.

§ 103(a) as obvious in view of Balderrama and Java

Complete. Pet. 41-53. Patent Owner argues that the

cited combination does not teach all elements of the

independent claims. Prelim. Resp. 34-37. We have

reviewed the parties' contentions and supporting

evidence. Given the evidence on this record, and for

the reasons explained below, we determine that the

information presented shows a reasonable likelihood

that Petitioner would prevail on this asserted ground.

1. Summary 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

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

234a

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 8:21-64,

9:7-27, 10:11-24, Fig. 3 (arrows 81b, 87b, 83b).

Summary 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

application that could be built with Java applets is an

order-entry system. Id.

Independent Claims 1 and 21

Claim 1 recites a "system for providing a

dynamically generated application having one or more

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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."

Pet. 42 (citing Ex. 1006, Fig. 1). 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. Id. at 47-49

(citing Ex. 1006, 2:16-21, 10:14-21, 11:64-67, 12:3438, 14:64-65, 16:20-21, 16:55-17:5, Figs. 1, 3); see Pet.

42-44 (citing Ex. 1006, 8:67-9:2, 9:16-27, 10:14-21,

11:38-46, 11:64-67, 14:64-65, 16:20-21, 16:55-17:5;

Ex. 1002 ¶J 151-55).

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. Pet. 42 (citing Ex. 1006, 1:823, 2:11-16, Fig. 1; Ex. 1002 ¶J 145, 148-51).

Balderrama discloses that in-store database 86 with

...

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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 Pet. 4243, 47; Ex. 1002 IT 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 claim feature. Pet. 43

(citing Ex. 1006, 6:48-58, 8:67-9:2, 11:43-46; Ex. 1002

1 152); see id. at 47-48 (citing Ex. 1006, 6:48-58, 8:649:2, 11:43-46, Fig. 3).

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

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 claim feature.

Pet. 43 (citing Ex. 1006, 11:38-46, Fig. 3; Ex. 1002

IT 153-54); see id. at 48 (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 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

...

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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." Id. at

43-44 (citing Ex. 1006, 14:64-65, 16:20-21, 16:5517:5; Ex. 1002 ¶ 154); see id. at 48 (citing Ex. 1006,

8:67-9:2, 10:10-13, Fig. 3).

Regarding the claimed "change management layer

for automatically detecting changes that affect an

application," Petitioner relies on Balderrama's

update/modification detector 82. Pet. 44. 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)." Id. (citing Ex. 1006, 10:14-21, 11:6467; Ex. 1002 ¶ 155); see id. at 48-49 (citing Ex. 1006,

2:16-21, 10:14-21, 11:64-67, 12:34-38). 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 44 (citing Ex. 1006, 9:7-15;

Ex. 1002 ¶ 167).

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." Pet.

45-46. 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

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client device. Id. at 44-45 (citing Ex. 1002 ¶J 148-50).

Java Complete "describes using browsers for UI

delivery over the Internet and within a company's

internal network." Id. at 45 (citing Ex. 1007, 30, 31,

40; Ex. 1002 ¶ 156). 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." Id. (citing Ex. 1002 ¶J 156-57).

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." Id. at 45-46 (citing Ex. 1007, 32, 40, 42;

Ex. 1002 ¶ 156).

Patent Owner argues that Balderrama does not

disclose the "change management layer" recited in

claim 1. Prelim. Resp. 34-36. In particular, Patent

Owner asserts that the update/modification detector

82 of Balderrama (upon which Petitioner relies as

teaching the claimed change management layer)

"detects changes from an application program's own

operation, but does not detect changes external to an

application program which impact how the application

program should operate." Id. at 36. The claim,

however, does not recite the detection of an external

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change, as Patent Owner appears to assert, but

merely recites "detecting changes that affect an

application." Based on the record now before us, 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, from which the configured

presentation (i.e., the application) is generated, meets

the claimed function of the "change management

layer."

Accordingly, for the reasons discussed, we are

persuaded, on the current record, that Petitioner has

shown a reasonable likelihood of prevailing on its

assertion that claim 1 would have been obvious in

view of Balderrama and Java Complete. In discussing

independent claim 21—a method claim, which

includes limitations similar in scope to the system

limitations discussed with respect to claim 1—

Petitioner and Patent Owner each refers back to its

arguments with respect to claim 1. See Pet. 53-54

(citing Ex. 1007, 42; Ex. 1002 1 183); Prelim. Resp. 3637. For the same reasons discussed with respect to

claim 1, we also are persuaded, on the current record,

that Petitioner has shown a reasonable likelihood of

prevailing on its assertion that claim 21 would have

been obvious in view of Balderrama and Java

Complete.

4. Dependent Claims 7, 8,10-12,19, 20, 27-32,

39, and 40

We also have reviewed Petitioner's contentions and

supporting evidence regarding claims 7, 8, 10-12, 19,

20, 27-32, 39, and 40, and are persuaded, based on the

record now before us, that Petitioner has shown a

reasonable likelihood of demonstrating that the cited

240a

combination discloses all elements of these claims.

See Pet. 49-55 (citing Ex. 1006, 6:17-42, 8:67-9:2,

9:7-15, 9:33-10:3, 10:10-13, 12:65-14:43, Fig. 3; Ex.

1007, 42; Ex. 1002 ¶J 162-67, 169-73). Patent

Owner, at this stage of the proceeding, has not

presented separate arguments regarding whether

Balderrama and Java Complete disclose the

additional limitations of dependent claims 7, 8, 10-12,

20, 27-32, 39, and 40, or with respect to

Petitioner's proposed combination of references. On

the record now before us, we are persuaded that

Petitioner has shown a reasonable likelihood of

prevailing on its assertion that claims 7, 8, 10-12, 19,

27-32, 39, and 40 would have been obvious in view

of Balderrama and Java Complete.

5. Conclusion

For the foregoing reasons, we institute an inter

partes review of whether Balderrama and Java

Complete render obvious claims 1, 7, 8, 10-12, 19-21,

27-32, 39, and 40 under 35 U.S.C. § 103(a).

H. Petitioner's Alleged Confidential Information

The parties have filed several Motions to Seal

alleging that certain information provided by

Petitioner in response to additional discovery requests

authorized in this proceeding (see Paper 11) contain

Petitioner's confidential information. See Papers 19,

27, 31, 36, 45. We will decide these Motions to Seal in

due course.

In the meantime, the allegedly

confidential information will be maintained under

seal. Additionally, this Decision, which references

several documents designated as "Parties and Board

Only," also will be designated as "Parties and Board

Only."

241a

CONCLUSION

As discussed above, we institute an inter partes

review of claims 1, 7, 8, 10-21, and 27-40 of the '482

patent. At this preliminary stage in the proceeding,

we have not made a final determination with respect

to the patentability of any challenged claim or the

construction of any claim term.

ORDER

Accordingly, it is

ORDERED that pursuant to 35 U.S.C. § 314(a), an

inter partes review is hereby instituted as to claims 1,

7, 8, 10-21, and 27-40 of the '482 patent on the

following grounds:

Claims 1, 7, 8, 10-13, 18-21, 27-33, and 38-40

as anticipated under 35 U.S.C. § 102(e) by Popp;

Claims 13-17 and 33-37 as obvious under 35

U.S.C. § 103(a) in view of Popp and Anand;

Claims 1, 8, 10, 19-21, 28, 30, 39, and 40 as

anticipated under 35 U.S.C. § 102(b) by Kovacevic;

and

Claims 1, 7, 8, 10-12, 19-21, 27-32, 39, and 40

as obvious under 35 U.S.C. § 103(a) in view of

Balderrama and Java Complete;

FURTHER ORDERED that no other ground of

unpatentability is authorized for this inter partes

review;

FURTHER ORDERED that Patent Owner's

unauthorized motion for sanctions is denied; and

FURTHER ORDERED that pursuant to 35 U.S.C.

314(c)

and 37 C.F.R. § 42.4, notice is hereby given of

the institution of a trial; the trial will commence on

the entry date of this decision.

242a

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

SOCAL IP LAW GROUP LLP

jpearce@socalip.com ksarvaiya@socalip.com

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