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

Supreme Court briefJan 22, 2019

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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 IPR2015-01752

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

37G.F.R. §42.108

I. INTRODUCTION

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

Petition for inter partes review of claims 2-6, 22-26,

and 42-46 ("the challenged claims") of U.S. Patent

No. 7,356,482 B2 (Ex. 1101, "the '482 patent"). Paper

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

("Patent Owner") filed a Preliminary Response (Paper

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20, 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 3-6 and 22-26. See 35 U.S.C. 314(a).

Accordingly, we institute trial as to claims 3-6 and

22-26 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 1, 7-21, 27-41, and 47-59 of the '482 patent in

IPR2015-01751 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

non-regulatory requirements for business activities at

an industrial or commercial facility." Ex. 1101,

Abstract. The integrated system described in the

'482 patent manages data that is constantly changing

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by (1) "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

non-regulatory changes that may affect a user's

business, (2) a Java data management layer that

generates a user interface ("UP), (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

Each of the challenged claims depends from one of

independent claims 1, 21, and 41, which as noted

above are challenged in related IPR2015-01751.

Claims 2-6 depend, directly or indirectly, from claim

1. Claims 22-26 depend, directly or indirectly, from

claim 21. Claims 42-46 depend, directly or indirectly,

from claim 41. Claims 1 and 41 of the '482 patent,

reproduced below, are illustrative of the subject

matter 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. 1101, 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. 47, 15-60.

Reference

Date

Exhibit No.

U.S. Patent No. 6,249,291 B1 ("Popp")

June 19, 2001

Ex. 1104

Srdjan Kovacevic, Flexible, Dynamic User

Interfaces for Web-Delivered Training, in AVI '96

1996

Ex. 1105

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

Sept. 8, 1998

Ex. 1106

Java Complete!, 42 DATAMATION MAGAZINE 5,

28-49 (March 1, 1996) ("Java Complete")

Mar. 1, 1996

Ex. 1107

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. 1109

PROCEEDINGS OF THE WORKSHOP ON ADVANCED

VISUAL INTERFACES 108-18 (1996) ("Kovacevic")

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Petitioner further relies on the Declaration of

Mark E. Crovella, Ph.D. (Ex. 1102).

E. The Asserted Grounds

Petitioner sets forth its challenges to claims 2-6,

22-26, and 42-46 as follows. Pet. 4-5, 15-60.

References

Basis

Claims Challenged

Popp

§ 102

§ 103

2, 22, 42

Balderrama and

Java Complete

Popp and Codd

Balderrama,

Java Complete,

and Codd

Kovacevic and

2, 22, 42

§ 103

3-6,23-26,43-46

§ 103

3-6,23-26,43-46

Codd

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

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

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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-interest" may be the petitioner itself,

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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,

acquisition syndication, patent intelligence,

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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-of-context 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. 1119 ¶ 47; see Reply' 1, 6-7 (citing Ex. 1119

¶T713, 34-44, 47; Ex. 1124). 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. 1119 1 45); see also Exs. 11201122 (

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. u. 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 RPX Corp. v.

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

Reply counting the page starting with the "Introduction" section

as page 1.

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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

IPR2014-00.946 (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

Sur-Reply 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. 1113, 32:934:8). 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. 1119 ¶J 14-19;

Reply 6-8.

As additional evidence that Salesforce should be /

named an RPI in this proceeding, Patent Owner

Owner's 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

dispositive. See Paper 11. In response to the

discovery requests, RPX provided declaration

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testimony that Mr. Robinson was not involved in the

decision to file the instant Petition. Reply 11-12

(citing Ex. 1119 IT 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).

provides 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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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

2 In its Preliminary Respon

se, 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. 36-37. 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 2, 41 (from which claims 42-46 depend),

and 42 include limitations that Petitioner identifies

as means-plus-function limitations under 35 U.S.C.

§ 112, ¶ 6.3 Pet. 10-11, 12-13.

In particular,

Petitioner identifies the "means for distributing

JAVA applets

limitation recited in claims 2 and

42, and the "means for dynamically generating a

particular application.

limitation recited in claim

41. Id. at 10, 12. We note that claim 41 includes an

additional limitation written in means-plus-function

. ."

3 Section 4(c) of the AlA re-designated

35 U.S.C. § 112,

¶IJ 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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format, 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. DirecTV Grp., 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

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server/client system that [performs the claimed

function]." Pet. 11, 13. 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

means-plus-function limitations of claims 2, 41, and

42. In fact, Petitioner expressly states in the 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. 10

(citing Ex. 1102 ¶ 45); see id. at 12-13 (citing Ex. 1102

Although Petitioner points to the

¶ 86).

generically- described "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 11 (citing Ex. 1101, 29:34-49;

Ex. 1102 ¶ 45); 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 2, 41, and 42.

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Claim 3

Claim 3, which depends from claim 1, recites

"wherein the second layer comprises a business

content database

Ex. 1101, 32:41-43.

Petitioner argues that "[c]laim 3 raises an

interpretation challenge given that the claim is not

consistent with the specification or other claims such

as 23 and 43." Pet. 38 (arguing that claims 23 and 24

recite the "first layer comprises a business content

database ."). Petitioner, thus, asks us to "interpret

claim 3 in a manner consistent with the specification,"

and argues that "the [broadest reasonable

interpretation] of 'second layer' in claim 3 is that it

refers to or includes the 'first layer' recited in claim

1." Id. at 39.

Based on the information presented in the

Petition, we are not persuaded that this is the type of

obvious drafting typographical error that may be

fixed by claim construction. See Ultimax Cement Mfg.

Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1353

(Fed. Cir. 2009) (courts can correct obvious

typographical errors "if the correction is not subject to

reasonable debate

and the prosecution history

does not suggest a different interpretation").

Accordingly, we do not accept Petitioner's invitation

to construe "second layer" in claim 3 to mean "first

layer," and instead will apply the cited art to the claim

as written.

Other claim terms

The parties propose construction for several other

claim terms. See Pet. 9-12; 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

...

. . .

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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 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).

MOM

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 maybe 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 2 and 42-46

Claims 2, 41, and 42 each recite limitations

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

43-46 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 2 and 41-46. 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.

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

Claim 42 also depends from claim 41.

267a

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 2 and 42. Because of their

dependency from claim 41, we also are unable to

conclude that there is a reasonable likelihood that

Petitioner would prevail in its challenges to claims

43-46. We now turn to Petitioner's challenges to

claims 3-6 and 22-26.

E. Asserted Grounds Based, at Least in Part, on

Popp

Petitioner asserts that claim 22 is unpatentable

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

15-23. Petitioner further asserts that claims 3-6 and

23-26 are unpatentable under 35 U.S.C. § 103(a) as

obvious in view of Popp and codd. Pet. 37-43. Patent

Owner argues that Popp does not disclose all

elements of the independent claims from which the

challenged claims depend. Prelim. Resp. 30-31, 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

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. 1104, 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:

269a

kl-

270a

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. 1104, 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. 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. 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

respond to user input." Pet. 15 (citing Ex. 1104, 3:6 1—

271a

65, 8:24-26; Ex. 1102 ¶J 29-35); see Id. at 18-20

(citing Ex. 1104, 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.; see Id. at 16-18 (citing Ex. 1104, 8:49-55,

18:62-65, 19:1-12, Fig. 2; Ex. 1102 ¶IJ 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. 1104, 7:28-33, 7:52— 58, 12:21-32; see

Pet. 19-20. 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 user interface for a database

application that can respond to user input," as

disclosing the "particular application" of the claim.

Pet. 15 (citing Ex. 1102 ¶ 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 19

(citing Ex. 1104, 9:4-10, 9:56-61); see Ex. 1102 36.

The claim further recites a "second layer

containing information about the user interface and

functions common to a variety of applications."

272a

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 user

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

radio buttons) that can be shared across Web

pages, and thus contain information about user

interface and functions common to a variety of

applications.

Pet. 16-17 (citing Ex. 1102 1 37); see id. at 19 (citing

Ex. 1104, 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

scriptedControl Object 602, which Popp uses "to

generate and manage a Web page," as disclosing this

claim feature. Pet. 17 (citing Ex. 1104, 18:62-65,

19:1-2; Ex. 1102 ¶ 39); see id. at 20 (citing Ex. 1104,

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

to Petitioner, the "scrip te dControl 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 user

interface 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 17 (citing Ex. 1104,

Fig. 6B; Ex. 1102 ¶J 38-39); see id. at 19-20 (citing

Ex. 1104, 19:18-19, 19:35-38).

Petitioner further points to the fact that Popp's

"Web page can include a Java applet that, when

...

273a

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. Pet. 16

(citing Ex. 1102 ¶J 41-44); see id. at 20-21 (citing Ex.

1104, 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. 17-18 (citing

Ex. 1102 ¶ 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. 1104,

22:28-48; Ex. 1102 ¶ 40); see id. at 20; Ex. 1104, Fig.

6B. 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." Id. at 18 (citing Ex. 22:28-62; Ex.

1102 ¶ 49).

Petitioner further asserts that

inputControl object 664 "automatically detects, for

example, user input that modifies a field in a Web

page form." Id. at 17 (citing Ex. 1104, 22:37-42; Ex.

1102 ¶ 40).

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

274a

should operate," and argues that instead Popp

discloses "automatically detect[ing] changes from [an

application's] own operation." Id. at 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. 1101,

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. 1101, 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).

Accordingly, for the reasons discussed, we are

persuaded, on the current record, that Petitioner has

shown a reasonable likelihood of prevailing on an

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. 1101,

33:34-58. In discussing this claim, Petitioner refers

back to its arguments with respect to claim 1, and

Patent Owner relies on the same arguments for each

of the independent claims. See Pet. 21-23 (citing Ex.

1102 ¶11 44, 67; Ex. 1107, 42); Prelim. Resp. 30-31.

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

275a

prevailing on an assertion that claim 21 is anticipated

by Popp.

Dependent Claim 22

We also have reviewed Petitioner's contentions

and supporting evidence regarding claim 22, 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 this

claim. See Pet. 21-23 (citing Ex. 1104, 19:28-31,

19:39-47, 19:50-53, 31:24-26, Fig. 6; Ex. 1111, 274;

Ex. 1102 ¶j 44). Patent Owner, at this stage of the

proceeding, has not presented separate arguments

regarding whether Popp discloses the additional

limitations of dependent claim 22. On the record now

before us, we are persuaded that Petitioner has shown

a reasonable likelihood of prevailing on its assertion

that claim 22 is anticipated by Popp.

Dependent Claims 3-6 and 23-26

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 3-6

and 23-26 "recite the term 'database,' which is

explicitly defined in the '482 patent specification."

Pet. 37; see Ex. 1101, 29:50-54. Petitioner asserts

that Popp discloses each of the limitations of these

claims, "with the exception of explicitly specifying a

database of the type meeting the specific definition

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

on Codd as disclosing a database as defined in the '482

patent. Id. According to Petitioner, "Codd lists all of

the major components of the '482 patent's defined

'database' (i.e., those that have their own

276a

sub-definitions—tables, views, columns, and rows) as

canonical features of relational databases." Id. (citing

Ex. 1108, 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. 1108, 60; Ex. 1102 ¶ 219). We are persuaded, on

the record before us, 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. 1102 ¶J 215, 219).

We have reviewed Petitioner's mapping of Popp to

each of claims 3-6 and 23-26, and are persuaded,

based on the record now before us, that Petitioner has

shown a reasonable likelihood of demonstrating that

Popp discloses all the additional limitations recited in

these claims. Pet. 39-43 (citing Ex. 1104, 16:49-65,

18:32-34, 19:55-20:33, 21:61-22:13, 22:64-65;

Ex. 1108, 54; Ex. 1102 ¶11 218-22). Patent Owner, at

this stage of the proceeding, has not presented

separate arguments regarding the additional

limitations of dependent claims 3-6 and 23-26, or

with respect to Petitioner's proposed combination of

references. See Prelim. Resp. 34. On the record now

before us, we are persuaded that Petitioner has shown

a reasonable likelihood of prevailing on its assertion

that claims 3-6 and 23— 26 would have been obvious

in view of Popp and Codd.

5. Conclusion

For the foregoing reasons, we institute an inter

partes review of whether Popp anticipates claim 22

under 35 U.S.C. § 102(e), and of whether Popp and

Cobb render obvious claims 3-6 and 23-26 under

35 U.S.C. § 103(a).

277a

F. Asserted Grounds Based, at Least in Part, on

Balderrama and Java Complete

Petitioner asserts that claim 22 is unpatentable

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

Balderrama and Java complete.

Pet. 25-35.

Petitioner further asserts that claims 3-6 and 23-26

are unpatentable under 35 U.S.C. § 103(a) as obvious

in view of Balderrama, Java Complete, and Cobb.

Pet. 37-39, 44-47. Patent Owner argues that the

cited combination does not teach all elements of the

independent claims from which the challenged claims

depend. Prelim. Resp. 31-34. 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 these asserted grounds.

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. 1106, 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

278a

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. 1107, 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 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

279a

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. 25 (citing Ex. 1106, Fig. 1; Ex. 1102 ¶11 145, 14850). According to Petitioner, Balderrama's manager

station 10 corresponds to the claimed server, in-store

database 86 with records/files 87a corresponds 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 30-32 (citing Ex. 1106, 2:16-21, 10:1421, 11:64-67, 12:34-38, 14:64-65, 16:20-21, 16:5517:5, Figs. 1, 3); see Pet. 25-27 (citing Ex. 1106, 8:679:2, 9:16-27, 10:14-21, 11:38-46, 11:64-67, 14:64-65,

16:20-21, 16:55-17:5; Ex. 1102 IT 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. 25 (citing Ex. 1106,

1:8-23, 2:11-16, Fig. 1; Ex. 1102 IT 145, 148-51).

Balderrama discloses that in-store database 86 with

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

records/information about items intended for sale at

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

280a

application"). Ex. 1106, 9:17-21, Fig. 3; see Pet. 2526, 30; Ex. 1102 ¶J 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

outlet-specific data," as disclosing this claim feature.

Pet. 26 (citing Ex. 1106, 6:48-58, 8:67-9:2, 11:43-46;

Ex. 1102 ¶ 152); see id. at 30-31 (citing Ex. 1106,

6:48-58, 8:64-9:2, 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 user interface

elements of the configured presentation (application)

for presentation to the customer," thus disclosing this

claim feature. Pet. 26-27 (citing Ex. 1106, 11:38-46,

Fig. 3; Ex. 1102 ¶IJ 153-54); see id. at 31 (citing

Ex. 1106, 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 into the corresponding cells

in the template presentation," thus disclosing the

claim limitation that "a particular application [is]

...

281a

generated based on the data in both the first and

second layers." Id. at 27 (citing Ex. 1106, 14:64-65,

16:20-21, 16:55-17:5; Ex. 1102 ¶ 154); see id. at 31

(citing Ex. 1106, 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. 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)." Id. (citing Ex. 1106, 10:14-21, 11:6467; Ex. 1102 ¶ 155); see id. at 31-32 (citing Ex. 1106,

2:16-21, 10:14-21, 11:64-67, 12:34-38, Fig. 3).

Petitioner further asserts that "[ijn response to

update/modification detector 82 detecting changes

a currently-running presentation is interrupted

and re-configured." Id. at 27 (citing Ex. 1106, 9:7-15;

Ex. 1102 ¶ 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. 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. Id. at 27-28 (citing

Ex. 1102 ¶J 148-50). Java Complete "describes

using browsers for UI delivery over the Internet and

282a

within a company's internal network." Id. at 28

(citing Ex. 1107, 30, 31, 40; Ex. 1102

¶ 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.

1102 TT 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 28-29 (citing Ex. 1107, 32, 40, 42;

Ex. 1102 ¶ 156).

Patent Owner argues that Balderrama does not

disclose the "change management layer" recited in

claim 1. Prelim. Resp. 31-33. 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 33. The

claim, however, does not recite the detection of an

external change, as Patent Owner appears to assert,

but merely recites "detecting changes that affect an

283a

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. 1106, 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 an

assertion that claim 1 would have been obvious in

view of Balderrama and Java Complete.

discussing independent claim 21—a method claim,

which includes limitations similar in scope to the

system limitations discussed with respect to claim 1—

Petitioner refers back to its arguments with respect

to claim 1, and Patent Owner relies on the same

arguments for each of the independent claims. See

Pet. 33-35 (citing Ex. 1107, 42; Ex. 1102 183);

Prelim. Resp. 31-33. 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 an assertion

that claim 21 would have been obvious in view of

Balderrama and Java Complete.

4. Dependent Claim 22

We also have reviewed Petitioner's contentions

and supporting evidence regarding claim 22, and are

persuaded, based on the record now before us, that

Petitioner has shown a reasonable likelihood of

demonstrating that the cited combination discloses

all elements of this claim. See Pet. 33, 35 (citing

Ex. 1106, 8:67-9:2, 10:10-13, Fig. 3; Ex. 1107, 42;

Ex. 1102 ¶J 153, 160-61). 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 claim 22, 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 claim 22 would have been obvious in

view of Balderrama and Java Complete.

5. Dependent Claims 3-6 and 23-26

As discussed above, we are persuaded on the

record currently before us that Petitioner has shown

a reasonable likelihood of demonstrating the

combination of Balderrama and Java Complete

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."

Pet. 37; see Ex. 1101, 29:50-54. Petitioner asserts

that Balderrama discloses each of the limitations of

these claims, "with the exception of explicitly

specifying a database of the type meeting the specific

definition given in the specification."

Pet. 37.

Petitioner relies on Codd as disclosing a database as

defined in the '482 patent. Id.

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. 1108, 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. 1108, 60; Ex. 1102 ¶ 219). We are

persuaded, on the record before us, that one of

...,

285a

ordinary skill would have used a relational database

as disclosed in Codd to implement the system of

Balderrama. See id. at 37-38 (citing Ex. 1102 ¶ 215,

219).

We have reviewed Petitioner's mapping of

Balderrama to each of claims 3-6 and 23-26, and are

persuaded, based on the record now before us, that

Petitioner has shown a reasonable likelihood of

demonstrating that Balderrama discloses all

elements of these claims. Pet. 44-47 (citing Ex. 1106,

6:48-63, 9:16-21, 16:55-7:5; Ex. 1108, 54; Ex. 1102

¶J 246-51). Patent Owner, at this stage of the

proceeding, has not presented separate arguments

regarding the additional limitations of dependent

claims 3-6 and 23-26, or with respect to Petitioner's

proposed combination of references. See Prelim.

Resp. 34. On the record now before us, we are

persuaded that Petitioner has shown a reasonable

likelihood of prevailing on its assertion that claims 36 and 23-26 would have been obvious in view of

Balderrama, Java Complete, and Codd.

6. Conclusion

For the foregoing reasons, we institute an inter

partes review of whether Balderrama and Java

Complete render obvious claim 22 under 35 U.S.C.

§ 103(a), and of whether Balderrama, Java Complete,

and Codd render obvious claims 3-6 and 23-26 under

35 U.S.C. § 103(a).

G. Asserted Obviousness in View of Kovacevic and

Codd

Petitioner asserts that claims 3-6 and 23-26 are

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

view of Kovacevic and Codd. Pet. 48-55. Patent

Owner argues that Kovacevic does not disclose all

MOM

elements of the independent claims from which the

challenged claims depend. Prelim. Resp. 34-36. 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.

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. 1105, 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." Ex. 1105,

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.

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

287a

computers connected to the server over a network;

first, second, and third layers "assodiated 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." Pet. 48 (citing Ex. 1105,

108 (col. 2 ¶ 2); Ex. 1102 ¶IJ 101-03). 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. Id. at 52-53

(citing Ex. 1105, 114 (col. 2 ¶ 6), 117 (col. 1 TT 4, 5),

Figs. 1, 7); see id. at 48-50 (citing Ex. 1105, 114 (col.

2 ¶ 6), 115 (col. 2), 117 (col. 1 ¶ 4, col. 2 7); Ex. 1102

¶J 104-108). The first, second, and third layers are

"associated with the server" because each is

downloaded therefrom. See id. at 49-50 (citing

Ex. 1105, 117 (col. 2 ¶ 7); Ex. 1102 ¶J 104, 105, 107).

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." Pet. 48 (citing

Ex. 1102 ¶j 101, 104). 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. at 48-49 (citing Ex.

1105, 117 (col. 1 ¶ 4, col. 2 ¶ 7); Ex. 1102 104); see

Pet. 52.

r,I.I.

VISIS1l

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. 49, 52.

According to Petitioner, the interaction-specific

library includes UI primitives and the library is

sharable among multiple applications. Id. at 49

(citing Ex. 1102 ¶11 105-06); see id. at 52 (citing

Ex. 1105, 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. 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)." Id. at 49 (citing Ex. 1105, 117 (col. 1

¶ 4, col. 2 ¶ 7); Ex. 1102 ¶ 107); see id. at 53 (citing Ex.

1105, 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

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 49

...

(citing Ex. 1102 ¶ 106); see id. at 52-53 (citing Ex.

1105, 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. 48

(citing Ex. 1102 ¶IJ 109-111); see id. at 50-51 (citing

Ex. 1105, 110 (col. 1 ¶ 6), 112 (col. 2 ¶ 5); Ex. 1102

¶ 126), 53-54 (citing Ex. 1105, 108 (col. 1 ¶ 4, col. 2

¶ 2), 109 (col. 1 ¶ 3, ¶ 5, col. 2 ¶ 4), 117 (col. 2 ¶ 7)).

Finally, regarding the claimed "change

management layer for automatically detecting

changes that affect an application," Petitioner relies

on Kovacevic's sequencing control primitives. Pet. 50.

Kovacevic describes that the "sequencing control

primitives automatically detect changes that affect

the information-flow-control primitives in an

application." Id. (citing Ex. 1105, 114 (col. 2 6);

Ex. 1102 1 108). 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 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. (citing Ex. 1105, 115 (col.

2); Ex. 1102 ¶ 108); see id. at 53 (citing Ex. 1105, 114

(col. 2 ¶ 6)).

Patent Owner argues that Kovacevic does not

disclose the "change management layer" recited in

290a

claim 1. Prelim. Resp. 34-36. 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 35.

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 35-36.

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. 1101, 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 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 an

assertion that claim 1 is anticipated by Kovacevic. In

discussing independent claim 21—a method claim,

which includes limitations similar in scope to the

291a

system limitations discussed with respect to claim 1—

Petitioner refers back to its arguments with respect

to claim 1, and Patent Owner relies on the same

arguments for each of the independent claims. See

Pet. 54-55 (citing Ex. 1105, 110 (col. 1 ¶ 6), 112 (col. 2

¶ 5); Ex. 1102 ¶ 126); Prelim. Resp. 34-36. 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 an assertion that claim 21 is anticipated

by Kovacevic.

3. Dependent Claims 3-6 and 23-26

As discussed above, we are persuaded on the

record currently before us that Petitioner has shown

a reasonable likelihood of demonstrating 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."

Pet. 37; see Ex. 1101, 29:50-54. Petitioner asserts

that Kovacevic discloses each of the limitations of

these claims, "with the exception of explicitly

specifying a database of the type meeting the specific

definition given in the specification."

Pet. 57.

Petitioner relies on Codd as disclosing a database as

defined in the '482 patent.

Id.

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. 1108, 54). Petitioner

also asserts that "Codd teaches a number of benefits

of relational databases, such as advantages of

performance, cost productivity, and distrib ut ability."

Id. at 57 (citing Ex. 1108, 60; Ex. 1102 ¶j 219, 233).

292a

We are persuaded, on the record before us, that one of

ordinary skill would have used a relational database

as disclosed in Codd to implement the system of

Kovacevic. See id. (citing Ex. 1102

¶J 215, 219).

We have reviewed Petitioner's mapping of

Kovacevic to each of claims 3-6 and 23-26, and are

persuaded, based on the record now before us, that

Petitioner has shown a reasonable likelihood of

demonstrating that Kovacevic discloses all elements

of these claims. Pet. 57-60 (citing Ex. 1105, 112, 113

(col. 2 ¶ 2), 114 (col. 1 ¶ 2), 117 (col. 1 4), Fig. 7;

Ex. 1108, 54; Ex. 1102 ¶J 232-36). Patent Owner, at

this stage of the proceeding, has not presented

separate arguments regarding the additional

limitations of dependent claims 3-6 and 23-26, or

with respect to Petitioner's proposed combination of

references. See Prelim. Resp. 34. On the record now

before us, we are persuaded that Petitioner has shown

a reasonable likelihood of prevailing on its assertion

that claims 3-6 and 23-26 would have been obvious

in view of Kovacevic and Codd.

4. Conclusion

For the foregoing reasons, we institute an inter

partes review of whether Kovacevic and Codd render

obvious claims 3-6 and 23-26 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

293a

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."

CONCLUSION

As discussed above, we institute an inter partes

review of claims 3-6 and 22-26 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 36 and 22-26 of the '482 patent on the following

grounds:

Claim 22 as anticipated under 35 U.S.C.

§ 102(e) by Popp;

Claims 3-6 and 23-26 as obvious under 35

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

Claim 22 as obvious under 35 U.S.C. § 103(a)

in view of Balderrama and Java Complete;

Claims 3-6 and 23-26 as obvious under 35

U.S.C. § 103(a) in view of Balderrama, Java

Complete, and Codd; and

Claims 3-6 and 23-26 as obvious under 35

U.S.C. § 103(a) in view of Kovacevic and Codd; and

FURTHER ORDERED that no other ground of

unpatentability is authorized for this inter partes

review;

294a

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.

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 5arvaiya

socAL IP LAW GROUP LLP

jpearce@socalip.com

ksarvaiya@socalip.com

295a

NOTE: This order is nonprecedential

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

APPLICATIONS IN INTERNET TIME, LLC,

Appellant

RPX CORPORATION,

Appellee

2017-1698, 2017-1699, 2017-1701

Appeals from the United States Patent and

Trademark Office, Patent Trial and Appeal Board in

Nos. IPR2015-01750, IPR2015-0175 1, IPR201501752.

ON PETITION FOR REHEARING EN BANC

Before PROST, Chief Judge, NEWMAN, LOuRIE, DYK,

O'MALLEY, REYNA, WALLACH, TARANTO, CHEN,

HUGHES, and STOLL, Circuit Judges *

PER CURLAM.

ORDER

Appellee RPX Corporation filed a petition for

rehearing en bane. A response to the petition was

invited by the court and filed by Appellant

Applications In Internet Time, LLC. The petition was

first referred as a petition for rehearing to the panel

that heard the appeal, and thereafter the petition for

296a

rehearing en banc was referred to the circuit judges

who are in regular active service.

Upon consideration thereof,

IT Is ORDERED THAT:

The petition for panel rehearing is denied.

The petition for rehearing en banc is denied.

The mandate of the court will issue on October 30,

2018.

FOR THE COURT

October 23, 2018

Date

Is! Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court

Circuit Judge Moore did not participate.

297a

35 U.S.C. § 312

§ 312. Petitions

(a) REQUIREMENTS OF PETITION.—A petition filed

under section 311 may be considered only if—

(1) the petition is accompanied by payment of

the fee established by the Director under section

311;

(2) the petition identifies all real parties in

interest;

(3) the petition identifies, in writing and with

particularity, each claim challenged, the grounds

on which the challenge to each claim is based, and

the evidence that supports the grounds for the

challenge to each claim, including—

copies of patents and printed

publications that the petitioner relies upon in

support of the petition; and

affidavits or declarations of supporting

evidence and opinions, if the petitioner relies

on expert opinions;

(4) the petition provides such other

information as the Director may require by

regulation; and

(5) the petitioner provides copies of any of the

documents required under paragraphs (2), (3), and

(4) to the patent owner or, if applicable, the

designated representative of the patent owner.

(b) PUBLIC AVAILABILITY.—As soon as

practicable after the receipt of a petition under section

311, the Director shall make the petition available to

the public.

298a

35 U.S.C. § 314

§ 314. Institution of inter partes review

(a) THRESHOLD.—The Director may not

authorize an inter partes review to be instituted

unless the Director determines that the information

presented in the petition filed under section 311 and

any response filed under section 313 shows that there

is a reasonable likelihood that the petitioner would

prevail with respect to at least 1 of the claims

challenged in the petition.

(b) TIMING.—The Director shall determine

whether to institute an inter partes review under this

chapter pursuant to a petition filed under section 311

within 3 months after—

receiving a preliminary response to the

petition under section 313; or

if no such preliminary response is filed,

the last date on which such response may be filed.

petitioner and patent owner, in writing, of the

Director's determination under subsection (a), and

shall make such notice available to the public as soon

as is practicable. Such notice shall include the date

on which the review shall commence.

(d) No APPEAL.—The determination by the

Director whether to institute an inter partes review

under this section shall be final and nonappealable.

299a

35 U.S.C. § 315

§ 315. Relation to other proceedings or actions

(a) INFRINGER'S CIVIL ACTION(1) INTER PARTES REVIEW BARRED BY CIVIL

ACTION.—An inter partes review may not be

instituted if, before the date on which the petition

for such a review is filed, the petitioner or real

party in interest filed a civil action challenging the

validity of a claim of the patent.

(2) STAY OF CIVIL ACTION.-If the petitioner or

real party in interest files a civil action challenging

the validity of a claim of the patent on or after the

date on which the petitioner files a petition for

inter partes review of the patent, that civil action

shall be automatically stayed until either—

the patent owner moves the court to lift

the stay;

the patent owner files a civil action or

counterclaim alleging that the petitioner or

real party in interest has infringed the patent;

the petitioner or real party in interest

moves the court to dismiss the civil action.

(3) TREATMENT OF COUNTERCLAIM.-A

counterclaim challenging the validity of a claim of

a patent does not constitute a civil action

challenging the validity of a claim of a patent for

purposes of this subsection.

(b) PATENT OWNER'S ACTION.—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

300a

of the petitioner is served with a complaint alleging

infringement of the patent. The time limitation set

forth in the preceding sentence shall not apply to a

request for joinder under subsection (c).

JOINDER.—If the Director institutes an inter

partes review, the Director, in his or her discretion,

may join as a party to that inter partes review any

person who properly files a petition under section 311

that the Director, after receiving a preliminary

response under section 313 or the expiration of the

time for filing such a response, determines warrants

the institution of an inter partes review under section

314.

MULTIPLE PROCEEDINGS.—Notwithstanding

sections 135(a), 251, and 252, and chapter 30, during

the pendency of an inter partes review, if another

proceeding or matter involving the patent is before

the Office, the Director may determine the manner in

which the inter partes review or other proceeding or

matter may proceed, including providing for stay,

transfer, consolidation, or termination of any such

matter or proceeding.

ESTOPPEL.

PROCEEDINGS BEFORE THE OFFICE.—The

petitioner in an inter partes review of a claim in a

patent under this chapter that results in a final

written decision under section 318(a), or the real

party in interest or privy of the petitioner, may not

request or maintain a proceeding before the Office

with respect to that claim on any ground that the

petitioner raised or reasonably could have raised

during that inter partes review.

CIVIL ACTIONS AND OTHER PROCEEDINGS.—

The petitioner in an inter partes review of a claim

301a

in a patent under this chapter that results in a

final written decision under section 318(a), or the

real party in interest or privy of the petitioner,

may not assert either in a civil action arising in

whole or in part under section 1338 of title 28 or in

a proceeding before the International Trade

Commission under section 337 of the Tariff Act of

1930 that the claim is invalid on any ground that

the petitioner raised or reasonably could have

raised during that inter partes review.

35 U.S.C. § 319

§ 319. Appeal

A party dissatisfied with the final written decision

of the Patent Trial and Appeal Board under section

318(a) may appeal the decision pursuant to sections

141 through 144. Any party to the inter partes review

shall have the right to be a party to the appeal.

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