EMC Corporationv.Clouding Corp.

Patent Trial and Appeal Board

Oct 22, 2015

09848394 (P.T.A.B. Oct. 22, 2015)

Trials@uspto.gov Paper No. 37
571-272-7822 Entered: October 22, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

EMC CORPORATION, EMC INTERNATIONAL U.S. HOLDINGS, INC.,
and VMWARE, INC.,
Petitioner,

v.

CLOUDING CORP.,
Patent Owner.
____________

Case IPR2014-01217
Patent 6,925,481 B2
____________

Before JAMESON LEE, MICHAEL W. KIM, and KRISTINA M. KALAN,
Administrative Patent Judges.

KIM, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Background
EMC Corporation, EMC International U.S. Holdings, Inc., and VMware,
Inc., (collectively, “Petitioner”) filed a Petition requesting inter partes review of
claims 1–5, 25, 28, 30, 40, 48, 49, 52, and 53 of U.S. Patent 6,925,481 B2 (“the
’481 patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 1 (“Pet.”). Clouding Corp.
(“Patent Owner”) filed a Preliminary Response. Paper 7, 2; Paper 9. On
January 26, 2015, we instituted an inter partes review of claims 1–5, 25, 28, 30,
40, 48, 49, 52, and 53 on one ground of unpatentability alleged in the Petition.
Paper 10 (“Dec.”). After institution of trial, Patent Owner filed a Patent Owner
Response (Paper 23, “PO Resp.”) and Petitioner filed a Reply (Paper 27, “Reply”).
An oral hearing was held on August 17, 2015. Paper 36 (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). In this Final Written
Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, we
determine that Petitioner has shown by a preponderance of the evidence that all
claims for which trial is instituted, namely, claims 1–5, 25, 28, 30, 40, 48, 49, 52,
and 53, are unpatentable.
B. The ’481 Patent
The ’481 patent sets forth:
The present invention relates to pervasive computing, and more
particularly to methods, systems, and computer program instructions
for enabling users of pervasive devices (such as limited-function
mobile devices, smart appliances, etc.) to remotely access and
manipulate information in ways that might otherwise be impossible or
impractical because of inherent limitations of the device.
Ex. 1001, 1:7–13 (emphasis added).
As explained in the ’481 patent, pervasive devices have become popular in
recent years as users increasingly seek “anywhere, anytime” access to services
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such as voice and data communications. Ex. 1001, 1:17–20. However, pervasive
devices have inherent drawbacks. Ex. 1001, 1:46–47. Pervasive devices typically
do not have sufficient memory to store all information that the user requires. Ex.
1001, 1:61–63. Pervasive devices also may not have sufficient software to access
all of data that the user might wish to use. Ex. 1001, 2:3–5. Pervasive devices
further may not have necessary drivers installed with which to support all data
manipulation operations the user might wish to perform. Ex. 1001, 2:12–14.
Accordingly, the ’481 patent discloses a technique for enabling pervasive devices
to access and manipulate data that avoids these drawbacks. Ex. 1001, 3:27–29.
C. Related Matters
Patent Owner identifies the following related district court proceeding
between Petitioner and Patent Owner that involves the ’481 patent: Clouding
Corp. v. EMC Corp., Case No. 1:14-cv-01178 (D. Del.). Paper 7, 2. Petitioner and
Patent Owner identify also the following inter partes reviews, involving different
petitioners than the present proceeding, that were before the Board involving the
’481 patent, but are now terminated: IPR2013-00075 (Ex. 1003); IPR2014-00299
(Ex. 1004). Paper 5, 2; Paper 7, 2.
D. Illustrative Claim
Independent claim 1 is reproduced below:
1. A method of enabling data access and manipulation from
a pervasive device, comprising steps of:
receiving a data access request from a pervasive device;
obtaining the requested data;
determining what data manipulation operations are available for
the obtained data, as well as a location of each available data
manipulation operation; and
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returning the determined data manipulation operations and
locations to the pervasive device, in addition to the obtained data.
E. Prior Art Reference Applied by Petitioner and Alleged
Ground of Unpatentability
Petitioner challenges the patentability of claims 1–5, 25, 28, 30, 40, 48, 49,
52, and 53 based on anticipation in view of the following item of prior art:
US 6,670,968 B1 (“Schilit”) Dec. 30, 2003 Ex. 1005
II. ANALYSIS
A. Claim Construction
In an inter partes review, a claim in an unexpired patent shall be given its
broadest reasonable construction in light of the specification of the patent in which
it appears. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793
F.3d 1268, 1275–79 (Fed. Cir. 2015) (“We conclude that Congress implicitly
approved the broadest reasonable interpretation standard in enacting the AIA.”)
Under the broadest reasonable construction standard, claim terms 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. In re Translogic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be
set forth in the specification with reasonable clarity, deliberateness, and precision.
In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to
read a particular embodiment appearing in the written description into the claim if
the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993). We construe the terms below in accordance with
these principles.
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1. Whether No More Than One Data
Access Request Is Permitted
Independent claims 1 and 52 each recite “receiving a data access request.”
Petitioner asserts the following:
For purposes of this inter partes review, Petitioners submit that
the broadest reasonable construction of “receiving a data access
request” is the construction adopted by the Board in the Oracle and
SAP proceedings. Specifically, the term “receiving a data access
request” as used in claims 1 and 52 of the ’481 Patent does not
preclude receiving additional data access requests, or having steps
performed also in response to another request. (Ex. 1003 at 7–9; Ex.
1004 at 6–8).
As the Board twice noted, this construction is consistent with
the open-ended transition “comprising” in the independent claims.
(Ex. 1003 at 7–8; Ex. 1004 at 6–7). It is also consistent with the
specification, which explicitly notes that the embodiments in which
only one request was disclosed were not to be construed as limiting.
(Ex. 1001 at 18:43–45; Ex. 1003 at 8; Ex. 1004 at 8–9).
Pet. 12–13 (citing Exs. 1001, 1003, 1004).
Patent Owner asserts that elements within claim 1 could be obtained in
response to additional data access requests not recited in claim 1, because that
would run contrary to the plain meaning and internal consistency of the claim’s
terms, as well as the disclosure in the specification as viewed by a person of
ordinary skill in the art. PO Resp. 6–11 (citing Ex. 1001, 2001). We disagree, and
agree with Petitioner in construing independent claim 1 such that elements within
claim 1 could be obtained in response to additional data access requests not recited
in claim 1.
Patent Owner asserts that the “requested data” is synonymous with the
“obtained data,” and is indeed the only data found in the claims. We agree. Patent
Owner’s assertion is misplaced, however, because giving the term that meaning
does not conflict with the above-stated claim construction of Petitioner. For
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example, independent claim 1 recites “obtaining the requested data,” where that
“requested data” is in response to a “data access request” received in “receiving a
data access request from a pervasive device.”
To clarify our construction, we provide the following illustrative scenario.
Assume a user makes a data access request, “we want the Elvis song ‘Jailhouse
Rock’.” This request for “Jailhouse Rock” is sent from the pervasive device to a
server. The server may find “Jailhouse Rock”, but then may wonder “what music
format for ‘Jailhouse Rock’ would the pervasive device prefer?” The server may
then send such a query back to the pervasive device, and the pervasive device can
respond “we request .wav files.” Based on the two requests from the pervasive
device, the server then sends “Jailhouse Rock” as a .wav file. “Jailhouse Rock” in
a .wav file format received by the pervasive device corresponds properly to the
“requested data” recited in “obtaining the requested data,” because it is clearly the
“Jailhouse Rock” song initially requested by the pervasive device. Of course,
“Jailhouse Rock” in the .wav file format is also responsive to the additional data
access request of “we request .wav files.” Indeed, Patent Owner does not appear to
dispute the applicability of this scenario. See Tr. 48:17–50:4.
What Patent Owner attempts to assert in distinguishing the prior art,
however, is that the recited obtained data (e.g., “Jailhouse Rock” in the .wav file
format) cannot be obtained based on both the recited data access request (e.g., “we
want the Elvis song ‘Jailhouse Rock’”) and an additional data access request (e.g.,
“we request .wav files”). Clearly, the recited obtained data (e.g., “Jailhouse Rock”
in the .wav file format) may be responsive to both. We are unpersuaded that
independent claims 1 and 52 require that the recited obtained data (e.g., “Jailhouse
Rock” in the .wav file format) be obtained only from the recited data access request
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(e.g., “we want the Elvis song ‘Jailhouse Rock’”) and to the exclusion of any other
additional data access request (e.g., “we request .wav files”) for several reasons.
First, independent claim 1, for example, recites the open-ended transitional
phrase “comprising” in conjunction with all of the recited steps, including
“receiving a data access request.” See Invitrogen Corp. v. Biocrest Mfg., L.P., 327
F.3d 1364, 1368 (Fed. Cir. 2003) (“The transition ‘comprising’ in a method claim
indicates that the claim is open-ended and allows for additional steps.”). Thus, the
recitation of “receiving a data access request” (e.g., “we want the Elvis song
‘Jailhouse Rock’”) does not preclude receiving additional data access requests
(e.g., “we request .wav files”) or having steps performed in response to both
requests (e.g., returning “Jailhouse Rock” in the .wav file format).
Second, other language in each independent claim is consistent with our
claim construction set forth above. For example, a subsequent step recited in
independent claim 1 and also subject to the open-ended transitional phrase
“comprising” is “obtaining the requested data.” While the requested data must be
obtained in response to the previously recited “data access request,” it does not
follow that the requested data must be obtained only in response to the same
recited “data access request,” and cannot also be obtained in response to other,
additional data access requests. Obtaining data in response to other data access
requests, in addition to the one particular data access request, is not excluded by
the claim language at issue.
Third, the specification is consistent also with the construction proposed by
Petitioner, which we agree with and adopt. For example, the Summary of the
Invention section of the specification mentions accommodating multiple data
access requests. Ex. 1001, 4:5–8 (“In preferred embodiments, the proxies, agents,
and DMS are not located within the WID, but instead are accessed by sending one
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or more request messages from the WID.”). In another example, the embodiments
in the specification, such as Figure 3 cited by Patent Owner, disclose performing
the obtaining, determining, and returning steps in response to one data access
request. There is no indication, however, that other embodiments are excluded,
and, indeed, the specification nowhere disclaims other embodiments. Moreover,
the specification actually indicates the contrary of Patent Owner’s position by
stating, “[t]he foregoing description of a preferred embodiment is for purposes of
illustrating the present invention, and is not to be construed as limiting thereof.”
Ex. 1001, 18:36–38; see also Ex. 1001, 4:49–56 (“As will be obvious to one of
ordinary skill in the art, these flowcharts are merely illustrative of the manner in
which the associated aspects of the present invention may be implemented, and
changes may be made to the logic that is illustrated therein (for example, by
altering the order of operations shown in some cases, by combining operations,
etc.) without deviating from the inventive concepts disclosed herein.”).
At oral argument, Patent Owner asserted that the aforementioned portions of
the specification are boilerplate language, and, thus, should be given minimal
weight as compared to the balance of the specification. Tr. 32:16–33:6. As an
initial matter, we note that column 4, lines 5–8 are cited above, and those portions
of the specification are directed to preferred embodiments. Moreover, we are
unable to discern, and Patent Owner does not cite, any authority on characterizing,
and, thus, disregarding certain prior art disclosure as boilerplate language.
Accordingly, we decline to disregard what Petitioner characterizes as “boilerplate”
language.
Patent Owner asserts also that any additional data access requests would be
undefined, for none are shown in Figure 3 or elsewhere described in the
specification. Patent Owner’s assertions are misplaced. While we agree that the
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’481 patent does not disclose explicitly additional data access requests, such an
absence does not support affirmatively precluding obtaining data responsive to
both the recited data access request and additional data access requests, for the
reasons set forth above.
Patent Owner asserts also that any additional data access requests would be
superfluous, for the requested data has already been obtained, and, therefore,
without meaning. Here, too, Patent Owner’s assertions are misplaced, for the
additional data access request is not superfluous in the above construction where
the obtained data (e.g., “Jailhouse Rock” in the .wav file format) is responsive to
both the recited data access request (e.g., “we want the Elvis song ‘Jailhouse
Rock’”) and an additional data access request (e.g., “we request .wav files”).
Patent Owner asserts further that the independent claims do not permit the
data that is operated upon in the balance of the claim to be obtained by the
additional, unrecited data request, because this would run contrary to the plain
meaning of the terms as well as the purpose and mechanics of the method as
disclosed in the specification. To the extent that Patent Owner is asserting that the
operating steps set forth in the balance of the claim should operate only on the
additional, unrecited data request to the exclusion of the recited data access request,
Patent Owner’s assertion is misplaced for the reasons set forth above.
Patent Owner cites In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149
(Fed. Cir. 2012), in support of several of its positions. Patent Owner asserts that
any additional data access requests would be superfluous, and that In re Abbott
Diabetes Care Inc. instructs that superfluous language is disfavored. We are
unpersuaded that the additional data access requests are superfluous, for the
reasons set forth above.
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Patent Owner asserts further that the specification as a whole is directed to
compensating for the limitations of a pervasive device—e.g., “access to limited-
bandwidth networks,” and “the need to maximize the device’s relatively short
battery life” (Ex. 1001 at 1:35–56), thus teaching a person of ordinary skill that
adding data access requests, where the specification teaches a method can be
accomplished using only one, would be undesirable. Patent Owner asserts that the
above-quoted language from the specification amounts to sufficient disparagement
of additional data access requests under In re Abbott Diabetes Care Inc. to warrant
exclusion from a proper claim construction. In effect, Patent Owner is asserting
that the specification indicates a disclaimer of additional data access requests. We
disagree. Unlike the explicit references to and disparagement of the disputed
subject matter in the background section of the patent at issue in In re Abbott
Diabetes Care Inc., the above-quoted language from the specification does not
even mention additional data access requests, a fact confirmed repeatedly by Patent
Owner. Such explicit references are necessary, because any special definition for a
claim term must be set forth in the specification with reasonable clarity,
deliberateness, and precision. In re Paulsen, 30 F.3d at 1480. It can be difficult to
show the necessary clarity, deliberateness, and precision without there being any
explicit discussion of the subject, and we are unpersuaded that Patent Owner has
made a sufficient showing. See also Hill-Rom Servs., Inc. v. Stryker Corp., 755
F.3d 1367, 1372–73 (Fed. Cir. 2014) (quoting Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1327 (Fed.Cir.2002)) (“[e]ven when the specification
describes only a single embodiment, the claims of the patent will not be read
restrictively unless the patentee has demonstrated a clear intention to limit the
claim scope using ‘words or expressions of manifest exclusion or restriction’”).
Indeed, Patent Owner’s assertion appears to be a hindsight attempt to
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impermissibly read a particular embodiment appearing in the written description
into the claim, where the claim language would support a broader embodiment.
See In re Van Geuns, 988 F.2d 1184.
In light of the lack of explicit reference to additional data access requests,
Patent Owner can at best show only a tangential relationship between additional
data access requests and the above-quoted language from the specification. Given
the need in a disclaimer for clarity, deliberateness, and precision using “words or
expressions of manifest exclusion or restriction,” in order to show that this
tangential relationship rises to the level of a disclaimer, Patent Owner would need
to show that the correlation between additional data access requests and bandwidth
and battery life is so undisputedly negative, that one of ordinary skill could not
have helped but come to the conclusion that any action that would negatively
impact bandwidth and battery life, such as additional data access requests, are
precluded by the claim. In support of this implication, Patent Owner cites the
Declaration of Dr. Scott M. Nettles, which recites the following:
There is no method corresponding to claim 1 that is described
in the ’481 patent that involves or suggests more than one data access
request. Indeed, such methods would run contrary to the goals of the
patentee to reduce power consumption at the mobile device while also
simplifying its operation. The method of claim 1 requires one send
and one receive at the pervasive device. And in fact, those sends and
receives would have been needed just to communicate. As discussed
above, a person of ordinary skill would have understood that this
minimal scheme was desirable to conserve resources.
Ex. 2001 ¶ 30. This paragraph constitutes the entirety of Patent Owner’s factual
support for its position in this regard.
In response, Petitioner relies on the Declaration of Dr. Benjamin Goldberg to
support its position that one of ordinary skill in the art would have understood that,
in certain circumstances, using multiple data access requests is commensurate with
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preserving bandwidth and battery life, for example, and, most notably, when
obtained data is in response to multiple requests, but also when a request for a
large data file is broken up into multiple smaller requests to preserve the possibility
that the rest of the data won’t be sent. Reply 3–4 (citing Ex. 1022 ¶¶ 22–28).1
Accordingly, when we consider that Patent Owner’s position is based on a
tangential extrapolation from the specification supported by minimal factual
support from Dr. Nettles, we are more persuaded by Petitioner’s reasoning and
response, which is supported by the more robust Declaration of Dr. Goldberg, the
contents of which we have considered and determine are more credible than those
of Dr. Nettles’s Declaration.
Accordingly, although independent claims 1 and 52 do require that the steps
recited therein, other than the receiving step and the requesting step, be responsive
to the same data access request, they do not preclude receiving additional data
access requests, or having steps performed also in response to another request.
2. “Location of Each Available Data Manipulation Operation”
Independent claims 1 and 52 each recite “location of each available data
manipulation operation.” Petitioner asserts the following:
For purposes of this inter partes review, Petitioners submit that
the broadest reasonable construction of the term “location of each
available data manipulation operation” is the construction adopted by
the Board in the Oracle and SAP proceedings. Specifically, the term
“location of each available data manipulation operation” as used in
claims 1 and 52 of the ’481 Patent means “a location identified by an
1 In reply to Patent Owner’s assertions on this issue, Petitioner cites Schilit for
disclosing that it, too, is directed to “minimiz[ing] transmissions over relatively
low-bandwidth wireless communications.” Reply 17 (citing Ex. 1005, 11:11–13).
Accordingly, as Schilit discloses additional data access requests, Schilit provides
objective evidence that additional data access requests are not undisputedly
correlated negatively with minimizing bandwidth and battery life.
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address, such as a URL, an e-mail address, or a combination of an e-
mail address and subject line, specifying where on a computer
network a data manipulation operation or service may be invoked.”
(Ex. 1003 at 9–10; Ex. 1004 at 8–9).
As the Board twice noted, this construction finds direct support
in the specification, which discloses that the references to data
manipulation operations “may employ address formats other than
URLs, such as e-mail addresses, or perhaps a combination of an e-
mail address and subject line, to designate a service to be invoked.”
(Ex. 1001 at 9:15–19; Ex. 1003 at 9–10; Ex. 1004 at 8–9).
Pet. 13–14 (citing Exs. 1001, 1003, 1004). Patent Owner does not indicate any
disagreement with Petitioner’s proposed construction.
The Specification interchangeably refers to a data manipulation operation
and a data manipulation service. Ex. 1001, 4:17–29. A service invocation address
specifies a location of a data manipulation service. Ex. 1001, 9:10–14. The
service invocation address is specified for each data manipulation service and
indicates an address at which the data manipulation service may be invoked.
Ex. 1001, 8:57–60. These addresses are provided as Uniform Resource Locators
(“URLs”). Ex. 1001, 8:60–62. The Specification discloses further that “[i]n
alternative embodiments, service invocation addresses may employ address
formats other than URLs, such as e-mail addresses, or a combination of an e-mail
address and subject line, to designate a service to be invoked.” Ex. 1001, 9:15–19.
Thus, we construe “location of each available data manipulation operation” as “a
location identified by an address, such as a URL, an e-mail address, or a
combination of an e-mail address and subject line, specifying where on a computer
network a data manipulation operation or service may be invoked.”
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3. Whether the Data Manipulation Operations, their Locations,
and the Obtained Data Must Be Returned Together
Independent claim 1 recites “returning the determined data manipulation
operations and locations to the pervasive device, in addition to the obtained data.”
Independent claim 52 recites a similar limitation. Patent Owner asserts that this
claim limitation requires that the data manipulation operations, their locations, and
the obtained data are returned together. PO Resp. 11–12 (citing Exs. 1001, 2001).
We disagree. To support its position, Patent Owner presents several assertions,
each of which we will address in turn.
Patent Owner asserts that its position is a logical conclusion from the fact
that “the claim language suggests that it is a single operation.” PO Resp. 11. We
disagree. As an initial matter, we note that Patent Owner only asserts that such a
construction is suggested. We are unclear as to the proper place of a suggestion in
the context of claim construction. Furthermore, we determine that the
aforementioned claim language does not indicate one way or the other whether or
not all the aforementioned data is returned together. There are no temporal or
delivery format limitations, as the only determination we are able to discern from
the aforementioned claim limitation for the operations and locations data is that it
is (1) returned and (2) additional to the obtained data, neither of which require the
data manipulation operations, their locations, and the obtained data to be returned
together.
Patent Owner asserts further that the specification supports their position,
because the only embodiments in the specification show that the data manipulation
operations, their locations, and the requested data are returned together. We
disagree. As an initial matter, our reviewing court has cautioned against reading
limitations into a claim from the preferred embodiment described in the
specification, even if it is the only embodiment described, absent clear disclaimer
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in the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed.
Cir. 2004). Furthermore, the first citation provided by Patent Owner reads as
follows: “When requested information is delivered to a client application on the
WID, a list of service invocation addresses for the available services is provided
along with that information . . . .” Ex. 1001, 9:20–23. Presumably, Patent Owner
asserts that the “along with” language supports their position. As an initial matter,
we note that the aforementioned claim limitations do not recite “along with.”
Moreover, we are unpersuaded that “along with,” as used in the specification,
places such strict temporal and delivery format limitations on the data
manipulation operations, their locations, and the obtained data. The same analysis
is applicable to Patent Owner’s subsequent citation: “Continuing on with FIG. 3,
at Block 360, the content, along with the annotated list of available services is
returned to the WID.” Ex. 1001, 15:52–54.
Patent Owner asserts additionally that nowhere does the specification teach
or suggest that the data and the data manipulation operations should be provided to
the pervasive device separately. We disagree. The specification indicates a broad
desire that the disclosed embodiments not be construed as limiting. See, e.g., Ex.
1001, 18:36–38 (“[t]he foregoing description of a preferred embodiment is for
purposes of illustrating the present invention, and is not to be construed as limiting
thereof”); Ex. 1001, 4:49–56 (“As will be obvious to one of ordinary skill in the
art, these flowcharts are merely illustrative of the manner in which the associated
aspects of the present invention may be implemented, and changes may be made to
the logic that is illustrated therein (for example, by altering the order of operations
shown in some cases, by combining operations, etc.) without deviating from the
inventive concepts disclosed herein.”). Accordingly, we determine that,
particularly given such language in the specification, it is reasonable to construe
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any reasonable ambiguity in the claim against importation of specific
embodiments. See In re Van Geuns, 988 F.2d 1184.
Patent Owner asserts also that not returning the aforementioned data
together would be waste of resources, an assertion similar to that set forth above
for the additional data access request. Our analysis is the same as set forth above,
and need not be repeated here.
Accordingly, we construe independent claims 1 and 52 as not requiring that
the recited data manipulation operations, their locations, and the obtained data be
returned together.
B. Claims 1–5, 25, 28, 30, 40, 48, 49, 52, and 53 as
Anticipated by Schilit
Petitioner contends that claims 1–5, 25, 28, 30, 40, 48, 49, 52, and 53 are
anticipated by Schilit. Pet. 14–35; Reply 11–20. Patent Owner disagrees.
PO Resp. 13–21.
1. Schilit (Ex. 1005)
Schilit relates to a Web Browser program, referred to as an “m-link,” which
converts HTML documents for displaying on a mobile display. Ex. 1005, 5:30–32.
The m-link program accesses a server to retrieve a document as identified by a
user-selected URL. Ex. 1005, 5:32–34. The document received from the server is
then parsed, and hyper-links contained in the document are separated from the
content. Ex. 1005, 5:34–36. The hyper-links are processed, re-organized, and
provided for display on the mobile device. Ex. 1005, 5:36–37. Once the links are
displayed, the mobile-device keypad can be used to navigate to and select one of
the displayed links. Ex. 1005, 5:46–48. As shown below in Figures 6A and 6B,
Schilit discloses a menu tree of links that can be navigated by user selection so as
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to allow a user to select the “Publications” link, and then the “Hypertext
Interaction revisited” link.

Figure 6A displays links from the FXPAL Web page with links
reorganized for better viewer accessibility, and new links for a
telephone number and an address are provided. Figure 6B shows
links provided after selection of the publications link in Figure 6A.
As shown below in Figure 6C, a list of situations, or content-appropriate
services, such as reading, printing, or faxing, is then provided to the mobile device
display after the “Hypertext Interaction revisited” link is selected in Figure 6B.
Ex. 1005, 5:48–49.

Figure 6C shows services available for the “Hypertext interact . . .”
publication link from Figure 6B.
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The services are hosted on a database. Ex. 1005, 10:1–2. The list of content-
appropriate services, including printing and faxing, are provided dynamically by
the database, for display on the mobile device display, based on the link owner or
link type selected by the user. Ex. 1005, 10:1–4. Selecting one of the services
from the list enables the service selected to be performed on the user-selected
URL. Ex. 1005, 5:49–51. Schilit discloses other services including links for
dialing telephone numbers identified in the content of the web page and map
locations for similarly identified addresses. Ex. 1005, 8:4–36.
2. Claims 1–5, 25, 28, 30, 40, 48, 49, 52, and 53
After considering the Petition, Patent Owner Response, Reply, and all
evidence relied on by Petitioner and Patent Owner, we are persuaded that
Petitioner has shown, by a preponderance of the evidence, that claims 1–5, 25, 28,
30, 40, 48, 49, 52, and 53 are anticipated by Schilit. The Petition sufficiently
accounts for each of the elements in these claims. For example, independent claim
1 recites “receiving a data access request from a pervasive device” and “obtaining
the requested data.” Schilit discloses that an m-link program accesses a server to
retrieve a document identified by a user-selected URL. Ex. 1005, 5:32–34.
Independent claim 1 also recites “determining what data manipulation operations
are available for the obtained data, as well as a location of each available data
manipulation operation” and “returning the determined data manipulation
operations and locations to the pervasive device.” Schilit discloses that, in
response to receipt of a user-identified URL, a list of situations, or content-
appropriate services, such as reading, printing, or faxing, for that user-identified
URL, are located on a database (Ex. 1005, 10:1–4) and provided to a mobile device
display. Ex. 1005, 5:48–49, Fig. 6C.
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The correspondence of Schilit’s disclosure to independent claim 1 is even
clearer for the phone number and address functions of Figure 6A. For example,
independent claim 1 recites “receiving a data access request from a pervasive
device” and “obtaining the requested data.” Schilit discloses that an m-link
program accesses a server to retrieve a document identified by a user-selected
URL. Ex. 1005, 5:32–34. Independent claim 1 also recites “determining what data
manipulation operations are available for the obtained data, as well as a location of
each available data manipulation operation” and “returning the determined data
manipulation operations and locations to the pervasive device.” Schilit discloses
that in response to receipt of a user-identified URL, a link is provided for a
telephone number identified in the user-identified URL (e.g., “(650) 813-7765” as
shown in Figure 6A of Schilit), the link listed as the telephone number identified in
the user-identified URL is displayed on a mobile device display, and the link is
configured such that when the link is selected the telephone number displayed on
the mobile device is dialed. Ex. 1005, 8:14–18, Fig. 6A. Thus, as distinguished
from the embodiment of Figure 6C of Schilit, one request for a user-selected URL
results in both obtained data from the user-selected URL (e.g., “(650) 813-7765” as
shown in Figure 6A of Schilit) and data manipulation operations (e.g., the link is
configured such that when the link is selected the telephone number displayed on
the mobile device is dialed). The same analysis applies to the address link (e.g.,
“FX Palo Alto Laboratory”), the selection of which brings up a map of the address
listed in identified in the user-identified URL. Ex. 1005, 8:22–35, Fig. 6A.
We are persuaded similarly that the Petition has set forth adequately how
Schilit discloses each and every limitation of claims 2–5, 25, 28, 30, 40, 48, 49, 52,
and 53. Pet. 26–35.
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Patent Owner asserts that Schilit does not disclose “returning the determined
data manipulation operations and locations to the pervasive device, in addition to
the obtained data,” in response to the data access request, as recited in independent
claims 1 and 52. Specifically, Patent Owner asserts that Schilit does not return
content (i.e., the obtained data) in response to a requested URL (i.e., the data
access request), but instead returns links parsed and separated from the content of
the requested URL, and, thus, more properly corresponds to the recited “data
manipulation operations” rather than the recited “obtained data.” As an initial
matter, we are unpersuaded that the recited “obtained data” is limited to content.
Moreover, Patent Owner has not articulated sufficiently the boundaries of what
would or would not constitute “content.” For example, Schilit discloses a
hyperlink listing a phone number identified on a webpage, and that selecting that
hyperlink will dial that phone number. Ex. 1005, 8:4–21. The phone number
would meet the definition of content from the webpage, even if the manner in
which the phone number is listed is in the form of a hyperlink. The same goes for
the address hyperlink. Ex. 1005, 8:4–36. In any case, even if we were to limit the
recited “obtained data” to what could be considered most typically as the “content”
of a webpage, we find that user selection of the “reading” operation in Schilit
would return such content to the user. Ex. 1005, 5:48–49, Fig. 6C.
In that regard, Patent Owner asserts that Schilit describes a process in which
a user of a mobile device must engage in a series of request-response operations
with an m-link browser in order to obtain separately requested data and data
manipulation operations available for that data. As an initial matter, we note that
this assertion is inapplicable to the embodiment in Figure 6A of Schilit, as that
embodiment does not engage in this series of request-response operations; the
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telephone content and link functionality are returned in response to one data access
request, without any intervening operations.
Even for the embodiment in Figure 6C of Schilit, however, when we focus
on the recited obtained data individually, Patent Owner is asserting that because
each request-response operation is a separate data access request, the obtained data
(i.e., content) in Schilit is returned not in response to an original data access
request (i.e., the URL request of Schilit), as required by the claims, but to a request
subsequent to the original data access request (i.e., the user selection of the “read”
option in Schilit). We disagree, because we find that the content in Schilit is
returned in response to both the original URL request and the subsequent “read”
selection of the original URL request. Specifically, the content in Schilit is not
obtained from a “read” request disembodied from the previous URL request, but is
instead information derived from the webpage associated with, and, thus,
inexorably intertwined with, the original URL request. Insofar as Patent Owner is
asserting that any returned data can only be responsive to one discrete, separate
data access request, we determined above that the claims are not so limiting. With
regards to the recited “data manipulation operations,” Patent Owner’s assertions
are also unavailing, as we find that the original URL request in Schilit results in the
return of the aforementioned hyperlinks, such as reading, printing, or faxing, which
we determine corresponds properly to the recited “data manipulation operations.”
Ex. 1005, 5:48–49, Figs. 6A–6C. Thus, unlike the supposed content of Schilit,
there are no intervening request-response operations.
Patent Owner asserts further that because the data manipulation operations,
their locations, and the requested data are not returned together in Schilit, Schilit
does not disclose “returning the determined data manipulation operations and
locations to the pervasive device, in addition to the obtained data,” in response to
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the data access request, as recited in independent claims 1 and 52. As set forth
above, however, the claims do not require that the data manipulation operations,
their locations, and the requested data all be returned together. Accordingly, in
that regard, Patent Owner’s assertions are unpersuasive.
Additionally, even if we were to agree that independent claims 1 and 52
require that the data manipulation operations, their locations, and the requested
data must be returned together, we are persuaded that Schilit discloses such an
option. Specifically, in reply to Patent Owner’s assertions on this issue, Petitioner
cites Schilit for disclosing that “[t]o minimize transmissions over relatively low-
bandwidth wireless communications, the mlink browser typically separates and
transmits links to mobile-devices, as indicated above.” Reply 17 (citing Ex. 1005,
11:11–13). Given this disclosure, we find that Schilit discloses the converse was
known: links and content can be transmitted together.
Patent Owner asserts that such a finding is incorrect, because Schilit does
not go into any details about transmitting links and content together; that the only
disclosures in Schilit are embodiments in which links and content and transmitted
separately. In support of its position, Patent Owner cites the Declaration of Dr.
Nettles. PO Resp. 18–20 (citing Ex. 2001 ¶¶ 49, 51, 53, 54). We have reviewed
Patent Owner’s supporting evidence, and are unpersuaded that they support
adequately Patent Owner’s position. Specifically, none of the cited testimony
addresses column 11, lines 11–13 of Schilit. Accordingly, we are unpersuaded by
Patent Owner’s contention.
Dependent claim 25 recites “determining what data manipulation operations
are available for a content type of the obtained data.” Petitioner cites portions of
Schilit as disclosing this limitation. Pet. 29–30 (citing Ex. 1005, 4:15–25, 4:48–51,
9:41–48; Ex. 1011 ¶¶ 20–21). We have reviewed Petitioner’s position, and
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determine that it is supported by a preponderance of the evidence. Patent Owner
asserts the following:
Schilit fails to disclose this feature of claim 25. Ex. 2001 at ¶ 36.
Schilit discloses making the service links available for a file
dependent on service links provided by the owner of the link and the
format of the link. Ex. 1005 at 9:41–48. However, the format of a
link does not indicate what types of content are associated with that
link at least because a link format is not analogous to a content type of
obtained data. For example, link of a particular format may be
associated with various types of content (e.g., images, text, graphs,
audio files, etc.).
PO Resp. 20 (citing Exs. 1005, 2001). We disagree, because Petitioner cites the
telephone number link function of Schilit as corresponding to the aforementioned
claim limitation. Pet. 29 (citing Ex. 1001, 1011). We are persuaded that Schilit
discloses determining that a telephone number link function is available for a
content type of the obtained telephone number data from the webpage.
Dependent claim 28 recites “determining what data manipulation operations
are available for a user of the pervasive device.” Petitioner cites portions of Schilit
as disclosing this limitation. Pet. 30 (citing Ex. 1005, 4:52–54, 10:22–25, 10:30–
33; Ex. 1011 ¶ 21). We have reviewed Petitioner’s position, and determine that it
is supported by a preponderance of the evidence. Patent Owner asserts the
following:
While Schilit may describe services that may be dependent on user
preferences or services typically executed by a specific user, such
services dependent upon user preferences or behavior (i.e., services
typically executed by a specific user) are not analogous to data
manipulation operations that are available for a user of a pervasive
device at least because user preferences and behavior do not dictate
the availability of data manipulation operations on a pervasive device.
For example, a user may have a preference for a particular data
manipulation operation that is not available or, conversely, a data
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manipulation operation may be available to the user even though it is
not a user’s preferred data manipulation operation.
PO Resp. 21. As an initial matter, we disagree Schilit does not disclose that user
preferences and behavior do not dictate the availability of data manipulation
operations on a pervasive device. We determine Schilit discloses that expressly,
for example, when disclosing the following: “the services portal enables a
dynamic contribution to the items in the services list dependent on the specific
user.” Ex. 1005, 4:52–54; see also Ex. 1005, 10:22–30. Furthermore, the last
sentence of Patent Owner’s assertion set forth above is immaterial, as the claim
language does not require that either every user preference must be available or
that every available data manipulation operation must be preferred by the user. So
long as both user preference and availability are taken into account, as we find they
are in the aforementioned portions of Schilit, we are persuaded that the claim
limitation is disclosed.
3. Conclusion
For the foregoing reasons, after considering the Petition, Patent Owner
Response, Reply, and all evidence relied on by Petitioner and Patent Owner, we
are persuaded that Petitioner has shown, by a preponderance of the evidence that
claims 1–5, 25, 28, 30, 40, 48, 49, 52, and 53 are anticipated by Schilit.
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–5, 25, 28, 30, 40, 48, 49, 52, and 53 of the ’481
patent are held unpatentable; and
FURTHER ORDERED that because this is a final written decision, parties
to the proceeding seeking judicial review of the decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.
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For PETITIONER:

Donald Daybell
d2dptabdocket@orrick.com

Bas de Blank
M2BPTABDocket@orrick.com

Monte M.F. Cooper
M26PTABDocket@orrick.com

Jason Yu
J2YPTABDocket@orrick.com

For PATENT OWNER:

Tarek Fahmi
tarek.fahmi@ascendalaw.com
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