Express Mobile, Inc.

Patent Trials and Appeals Board

Jan 24, 2022

IPR2021-01146 (P.T.A.B. Jan. 24, 2022)

Trials@uspto.gov Paper 9 571-272-7822 Entered: January 24, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SAP AMERICA, INC., Petitioner, v. EXPRESS MOBILE, INC., Patent Owner. IPR2021-01146 Patent 9,928,044 B2 Before JEFFREY S. SMITH, AARON W. MOORE, and KRISTI L. R. SAWERT, Administrative Patent Judges. SAWERT, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 314 IPR2021-01146 Patent 9,928,044 B2 2 I. INTRODUCTION SAP America, Inc. (“Petitioner”) filed a Petition for inter partes review of claims 1, 3, 5-7, 11-13, 15, 17, 19-21, and 24-27 of U.S. Patent No. 9,928,044 B2 (Ex. 1001, “the ’044 patent”). Paper 2 (“Pet.”). Express Mobile, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). On our authorization, Petitioner filed a Reply (Paper 7) and Patent Owner filed a Sur-Reply (Paper 8). Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . 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.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, we determine the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’044 patent. Accordingly, we do not institute an inter partes review of claims 1, 3, 5-7, 11-13, 15, 17, 19-21, and 24-27 of the ’044 patent on the grounds asserted in the Petition. II. BACKGROUND A. Related Matters The parties identify several district court proceedings involving the ’044 patent. Pet. 6-10; Paper 3, 1-4 (Patent Owner’s Mandatory Notices). The parties also identify several Board proceedings involving the ’044 patent and related patents. Pet. 6; Paper 3, 1, 4-5. IPR2021-01146 Patent 9,928,044 B2 3 B. Real Parties in Interest Petitioner identifies SAP SE, SAP America, Inc., and SAP Labs, LLC, as real parties in interest. Pet. 6. Patent Owner identifies Express Mobile, Inc., as the real party in interest. Paper 3, 1. C. Overview of the ’044 patent The technical field of the ’044 patent relates to a platform for authoring software code for mobile devices. Ex. 1001, 1:6-9. A user of the authoring platform provides instructions for a mobile device in the form of device-specific instructions, referred to as a Player, and device-independent instructions, referred to as an Application. Id. at 5:13-19. The authoring tool can produce a plurality of Players for different devices, and a plurality of Applications for displaying pages on the devices. Id. at 5:46-53. The Player transforms device-independent instructions of the Application into device-specific instructions that are executable by the device. Id. at 5:60- 63. Thus, the authoring tool can be used to design device-independent Applications, and can generate Players that specific devices then use to generate displays from the Applications. Id. at 6:17-21. IPR2021-01146 Patent 9,928,044 B2 4 Figure 2A is reproduced below. Fig. 2A “is a schematic of an embodiment of system illustrating the communications between different system components.” Ex. 1001, 2:21-23. Figure 2A illustrates the communications between different system components. Id. at 2:21-23. Authoring platform 110 generates one or more Players which are provided to response director 210. Id. at 8:15-17. Device 130 requests a Player from response director 210, and receives and installs the Player. Id. at 8:18-20. Web service 230 is a plurality of services obtainable over the Internet. Id. at 8:26-27. Each web service is identified in an entry in web component registry 220. Id. at 8:27-30. Web component registry 220 is provided through server 120 to authoring platform 110 so that a user of the authoring platform may bind web services 230 to elements to be displayed on device 130. Id. at 8:30-34. A web component registry 220 IPR2021-01146 Patent 9,928,044 B2 5 for each registered web service 230 is loaded into authoring platform 110. Id. at 8:54-56. The user of the authoring platform can then assign components of any web service 230 to an Application without any need to write code. Id. at 8:64-66. D. The Challenged Claims Petitioner challenges claims 1, 3, 5-7, 11-13, 15, 17, 19-21, and 24- 27 of the ’044 patent. Pet. 12. Claim 1 (directed to a system) and claim 15 (directed to a method) are independent. Claim 1 is reproduced below. 1. A system for generating code to provide content on a display of a device, said system comprising: computer memory storing: a) symbolic names required for evoking one or more web components each related to a set of inputs and outputs of a web service obtainable over a network, where the symbolic names are character strings that do not contain either a persistent address or pointer to an output value accessible to the web service, where each symbolic name has an associated data format class type corresponding to a subclass of User Interface (UI) objects that support the data format type of the symbolic name, and where each symbolic name has a preferred UI object, and b) an address of the web service; an authoring tool configured to: define a UI object for presentation on the display, where said defined UI object corresponds to a web component included in said computer memory selected from a group consisting of an input of the web service and an output of the web service, where each defined UI object is either: 1) selected by a user of the authoring tool; or 2) automatically selected by the system as the preferred UI object corresponding to the symbolic IPR2021-01146 Patent 9,928,044 B2 6 name of the web component selected by the user of the authoring tool, access said computer memory to select the symbolic name corresponding to the web component of the defined UI object, associate the selected symbolic name with the defined UI object, where the selected symbolic name is only available to UI objects that support the defined data format associated with that symbolic name, store information representative of said defined UI object and related settings in a database; retrieve said information representative of said one or more said UI object settings stored in said database; and build an application consisting of one or more web page views from at least a portion of said database utilizing at least one player, where said player utilizes information stored in said database to generate for the display of at least a portion of said one or more web pages, wherein when the application and player are provided to the device and executed on the device, and when the user of the device provides one or more input values associated with an input symbolic name to an input of the defined UI object, the device provides the user provided one or more input values and corresponding input symbolic name to the web service, the web service utilizes the input symbolic name and the user provided one or more input values for generating one or more output values having an associated output symbolic name, and the player receives the output symbolic name and corresponding one or more output values and provides instructions for the display of the device to present an output value in the defined UI object. IPR2021-01146 Patent 9,928,044 B2 7 Ex. 1001, 37:48-38:40. E. Asserted Evidence Petitioner submits the following evidence: Evidence Exhibit No. Declaration of Henry H. Houh, Ph.D. 1004 U.S. Patent Publ. No. 2007/0118844 A1 (published May 24, 2007) (“Huang”) 1005 U.S. Patent No. 6,938,077 B2 (issued Aug. 30, 2005) (“Sanders”) 1007 U.S. Patent No. 6,915,306 B1 (issued July 5, 2005) (“Gong”) 1008 U.S. Patent Publ. No. 2004/0260820 A1 (published Dec. 23, 2004) (“Bearman”) 1009 F. Asserted Grounds of Unpatentability Petitioner asserts the following grounds of unpatentability: Claim(s) Challenged 35 U.S.C. § Reference(s) 1, 3, 5-7, 11-13, 15, 17, 19-21, 24-27 103(a) 1 Huang 1, 3, 5-7, 11-13, 15, 17, 19-21, 24-27 103(a) Huang, Sanders 1, 3, 5-7, 11-13, 15, 17, 19-21, 24-27 103(a) Huang, Gong 1, 3, 5-7, 11-13, 15, 17, 19-21, 24-27 103(a) Huang, Sanders, Gong 3, 7, 17, 21 Huang, Bearman 3, 7, 17, 21 Huang, Sanders, Bearman 3, 7, 17, 21 103(a) Huang, Gong, Bearman 3, 7, 17, 21 103(a) Huang, Sanders, Gong, Bearman Pet. 16. 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’044 patent has an effective filing date before the effective date of the applicable AIA amendments, we refer to the pre-AIA version of 35 U.S.C. § 103. IPR2021-01146 Patent 9,928,044 B2 8 III. ANALYSIS Petitioner contends that claims 1, 3, 5-7, 11-13, 15, 17, 19-21, and 24-27 of the ’044 patent are unpatentable under 35 U.S.C. § 103 as obvious over prior-art reference Huang with or without Sanders and/or Bearman. A patent claim is unpatentable under § 103(a) if the differences between the claimed subject matter 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. KSR Int’l 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) when in evidence, objective indicia of non-obviousness.2 Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, 2 With respect to the fourth Graham factor, the parties at this time do not present arguments or evidence regarding objective indicia of non- obviousness. Therefore, the obviousness analysis at this stage of the proceeding is based on the first three Graham factors. IPR2021-01146 Patent 9,928,044 B2 9 Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A. Level of Ordinary Skill in the Art We consider the asserted grounds of unpatentability in view of the understanding of a person of ordinary skill in the art. In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Access., Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id. Citing the Declaration of Dr. Houh, Petitioner contends that an ordinarily skilled artisan at the time of the invention “would have had a bachelor’s degree in electrical engineering, computer science, or the equivalent thereof, and at least two years of experience with web services.” Pet. 20 (citing Ex. 1004 ¶¶ 5-20, 31-34). Petitioner also contends that “[m]ore education can supplement practical experience, and vice-versa.” Id. (citing Ex. 1004 ¶¶ 5-20, 31-34). Patent Owner does not propose an alternative assessment of the level of ordinary skill in the art. See generally Prelim. Resp. To the extent necessary, and for this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’044 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). IPR2021-01146 Patent 9,928,044 B2 10 B. Claim Construction In this inter partes review, we apply the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by an ordinarily skilled artisan at the time of the invention and in the context of the entire patent disclosure. See id.; see also Phillips v. AWH Corp., 415 F.3d 1303, 1312-14 (Fed. Cir. 2005) (en banc). Petitioner contends that the Board need not construe any claim term “[b]ecause the prior art asserted herein discloses embodiments within the Challenged Claims’ indisputable scope.” Pet. 20. Petitioner lists the constructions of certain claim terms in co-pending district-court litigations, but contends that “the Board need not construe these terms to resolve this controversy, as any reasonable construction reads on the prior art.” Id. at 21-22. Patent Owner does not propose construing any claim terms. See generally Prelim. Resp. Because our determination below is not impacted by Petitioner’s proposed claim constructions, we need not expressly construe any claim term for this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). C. The Asserted Prior Art Before turning to Petitioner’s asserted grounds of unpatentability, we provide a brief summary of the asserted references. IPR2021-01146 Patent 9,928,044 B2 11 1. Huang Huang discloses a system for using web services as a data source for a software application. Ex. 1005, code (57). Figure 1A, reproduced below, shows an example of the system. FIG. 1A “is an illustrative drawing of a system for developing and executing browser-based applications.” Ex. 1005 ¶ 9. Figure 1A includes Application Designer 104 and Application Player 106. Id. ¶ 40. Application Designer 104 is a computer program that provides a user interface that allows a user to create application 111. Id. Application Player 106 is a computer program that executes application 111, receives values from web services, sends values to web services, and invokes other operations provided by web services. Id. Server 120 receives web service interaction requests from designer 104, such as a request for a list of objects provided by a web service, and interacts with web services provided by specific vendors. Id. ¶ 43. The components of server 120 IPR2021-01146 Patent 9,928,044 B2 12 include generic web service object model 130 (“WSObject”) and web service factory application programming interface 132 (“WSFactory API”). Id. ¶ 44. WSFactory API 132 includes WSObjectMapping 123, which maps, or converts, generic WSObject 130 to vendor-specific adapters, such as Siebel Web service adapter 134 for interacting with Siebel web service 140. Id. The mapping between generic WSObject 130 and the vendor-specific adapters is represented as WSObject XML definition 126, also referred to as an XML mapping file. Id. An example of the flow of data between an application component and a web service is shown in Figure 1B, reproduced below. Id. ¶ 57. Fig. 1B “is an illustrative drawing of a binding between an application component and a web service.” Ex. 1005 ¶ 10. IPR2021-01146 Patent 9,928,044 B2 13 Figure 1B shows application component 170, including value 192, which may be set by a user as a value of a text box or a drop-down list. Id. ¶ 57. Application component 170 is associated with script 196, which can access value 192. Id. Script 196 invokes engine 111 to perform web service interactions, such as setting and getting the value of web service attribute 155 associated with web service object 153 provided by vendor web service 156. Id. Each vendor web service 156 has a vendor-specific data model. Id. To allow designer 104 and player 106 to be vendor-independent and work with multiple web services without the need for vendor-specific code, generic WSObject 130 is provided to WSFactory server 120, which maps the generic WSObject to vendor-specific object 154. Id. Each vendor- specific object is mapped to the generic web services object by a definition stored in the XML mapping file. Id. ¶ 74. Applications interact with the generic web services object and need not contain hard-coded dependencies on vendor specific objects. Id. 2. Sanders Sanders relates to a service for overriding client version properties. Ex. 1007, code (57). “Override client version properties are used to selectively replace default client version properties of a web browser to obtain versions of web resources that are operational on the web browser.” Id. In one embodiment, “an index of web resource addresses is used to enable a web browser to download the most feature rich content available for that particular web browser.” Id. at 3:32-35. Sanders explains that “[e]ach web resource address has a set of corresponding override client version properties that have been determined to be appropriate for the content at the web resource address.” Id. at 3:35-38. The override client version properties comprise a combination of a “User-Agent header” that IPR2021-01146 Patent 9,928,044 B2 14 “enables the server associated with the web resource to provide an appropriate version of the web resource,” and/or “other information about the capabilities of the client.” Id. at 3:37-42. The override client version properties “are exposed by the client to client-side script to allow these override client version properties to additionally influence any client-side processing.” Id. at 3:42-46. If the client’s web browser is capable of processing the most feature- rich content from a first server, then “the override client version properties associated with the first server would be the client version properties that corresponds to those of the most recent versions of the most common web browsers” and “the client version properties used in the request are the override client version properties that cause the first server to transmit the most feature-rich content to the client.” Id. at 3:46-58. On the other hand, if the client’s web browser is not capable of processing the most feature-rich content from a second server (for example, because the client is using an older version of a common web browser), then “the override client version properties associated with the second server would be the client version properties that correspond to those of the specific older version of the most common web browsers” and “the client version properties used in the request are the override client version properties that cause the second server to transmit the less feature-rich content to the client.” Id. at 3:59-4:4. 3. Gong Gong relates to techniques for “automatically generat[ing] data models and user interfaces for catalog-type applications.” Ex. 1008, 1:43- 46. For these techniques, “[a] set of classification attributes is initially provided (e.g., by an administrator via a user interface screen or automatically generated) and used to classify the items in the item master IPR2021-01146 Patent 9,928,044 B2 15 into pagesets.” Id. at 1:51-54. Then, data models are “automatically generated for each pageset based in part on a set of candidate attributes.” Id. at 1:51-58. “The data models are thereafter used to generate user interface (UI) elements, which can present the items in each pageset in a clear and logical manner.” Id. at 1:58-61. Gong provides various examples of UI elements, including a “hierarchical tree structure” (showing, for example, gender and type selections), for a contents list page, “a set of list boxes” (showing, for example, style, size, and color selections) for the “Input Page,” and text boxes (showing, for example, price, item number, and image columns) for the “Output Page.” Id. at 14:30-62, 15:1-32, FIG. 6. According to Gong, these UI elements that may be generated by template. Id. at 15:33-34. “The use of the template allows for flexibility in creating both the contents and the data-based logic of the application files.” Id. at 15:34-36. 4. Bearman Bearman relates to “systems and methods for facilitating a user’s access to web services and disparate enterprise systems where data and commands may be exchanged using an instant messaging [IM] client and an automated attendant.” Ex. 1009 ¶ 3. The automated attendant “may be an automated client BOT.” Id. ¶ 8. The automated attendant receives requests (i.e., user commands), reformats those requests into “Web Service readable requests” (i.e., web service commands), and forwards the commands to the appropriate web service for execution. Id. The automated attendant may also “forward a response message from the Web Service back to the IM client and/or other IM clients.” Id. Bearman explains that the system thusly “facilitates the bidirectional exchange of information between users and web services in real time.” Id. IPR2021-01146 Patent 9,928,044 B2 16 D. Asserted Obviousness over Huang Petitioner contends that claims 1, 3, 5-7, 11-13, 15, 17, 19-21, and 24-27 of the ’044 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Huang. Pet. 16, 23-72. In particular, Petitioner contends that Huang teaches or suggests each and every limitation of the challenged claims. Id. Patent Owner opposes, relying on the Declaration of Kevin C. Almeroth, Ph.D. (Ex. 2001). Prelim. Resp. 24-36. In particular, Patent Owner argues that Huang fails to teach or suggest three claim limitations: (1) “the device provides the user provided one or more input values and corresponding input symbolic name to the web service,” id. at 28-34; (2) “the web service utilizes the input symbolic name and the user provided one or more input values,” id. at 34-35; and (3) “the Player receives the output symbolic name,” id. at 35-36. We address each of these limitations below. 1. “the device provides the user provided one or more input values and corresponding input symbolic name to the web service” Claim 1 recites that “the device provides the user provided one or more input values and corresponding input symbolic name to the web service.” Ex. 1001, 38:30-33. Petitioner contends that Huang discloses or renders this limitation obvious. Pet. 59-60. Specifically, Petitioner maps the claimed “symbolic name” to the name of a web service object, such as “OppName,” as disclosed by Huang. Pet. 59-60. Petitioner contends that Huang discloses that a filter can be defined to reduce the quantity of data to be retrieved from a web service. Id. at 60 (citing Ex. 1005 ¶ 62). Petitioner contends that Huang teaches an attribute-based filter in a drop-down menu, where a user selects an input value to cause the WS Player 112 to retrieve output objects for which the IPR2021-01146 Patent 9,928,044 B2 17 corresponding attribute is equal to the selected value from the web service. Id. Petitioner contends that the “‘OppName’ symbolic name and selected filtering value are sent to the web service from the device, such that the web service knows to what ‘filterfieldwsattribute’ the value corresponds.” Id. at 60 (citing Ex. 1004 ¶ 148). Petitioner contends that “conversely the ‘OppName’ or ‘Description’ symbolic names and value for each output are sent from the web service back to the device, such that the device knows to what ‘wsobjattribute’ (e.g., ‘Selection Lookup Table’ column) each value corresponds.” Id. (citing Ex. 1004 ¶ 148). According to Petitioner, “[a]t minimum, it would have been obvious to do so such that the web service knows to what the value corresponds.” Id. (citing Ex. 1004 ¶ 148). Patent Owner, in response, argues that Huang fails to teach or suggest this claim limitation because Huang’s device does not provide “anything at all” to the web service. Prelim. Resp. 29-30. Specifically, Patent Owner argues that Huang’s device running the application player does not provide symbolic names to the web service, but instead, interacts with a generic web service object on an intermediary server. Id. (citing Ex. 1005 ¶ 57, Fig. 1B; Ex. 2001 ¶ 42). Patent Owner contends that this intermediary server converts the generic web service object and provides the result of the conversion to the web service. Id. at 30 (citing Ex. 1007 ¶ 57). Thus, according to Patent Owner, the device provides the input symbolic name to an intermediary server, which uses mapping to convert the input symbolic name, and then provides the converted name to the web service. Id. at 30- 31 (citing Ex. 1005 ¶¶ 44, 57, 124; Ex. 2001 ¶¶ 42-43). Patent Owner contends that Petitioner has not explained how the filter embodiment of Huang discloses the device providing the input symbolic IPR2021-01146 Patent 9,928,044 B2 18 name to the web service. Id. at 31-32. Patent Owner contends that Dr. Houh’s statement-that the “‘OppName’ symbolic name and the selected filtering value are sent to the web service from the device, such that the web service knows to what ‘filterfieldwsattribute’ the value corresponds”-is unsupported, and that Huang does not teach providing the symbolic name to the web service. Id. (citing Ex. 1004 ¶ 148). Patent Owner also contends that Petitioner’s conclusion-that providing the symbolic name from the device to the web service would have been obvious-fails to account for Huang’s server and its function of converting information between the device and the web service. Id. at 32-33. Patent Owner contends that, to the extent Huang’s device provides any input symbolic name, it only provides it to the intermediary server, which uses mapping to convert the name before it is provided to the web service. Id. at 33 (citing Ex. 1005 ¶ 44; Ex. 2001 ¶ 46). We agree with Patent Owner. As we stated previously, Huang discloses that each vendor-specific object is mapped to the generic web service object by a definition stored in an XML mapping file. Huang discloses that WSObjectMapping 123 converts generic WS Object Model 130 to a vendor-specific adaptor, such as Siebel Web Service Adaptor 134 for interacting with Siebel Web Service 140. Contrary to Petitioner’s contention, Huang does not necessarily provide the claimed “input symbolic name” to the web service. Instead, Huang converts the input symbolic name to a vendor-specific adaptor, and uses the vendor specific adaptor to interact with the web service. Therefore, on this record, we are not persuaded that Petitioner has sufficiently shown for institution that Huang teaches or suggests “the device provides . . . [the] corresponding input symbolic name to the web service” as recited in claim 1. IPR2021-00711, Paper 7 (“the 711 Decision”), 15-16 (citations omitted). IPR2021-01146 Patent 9,928,044 B2 19 Although the Petition filed in IPR2021-00711 (“the 711 Petition,” Paper 1) presented an inherency argument, and Petitioner here presents an obviousness argument, we do not find this distinction persuasive, because the reasoning in both Petitions is similar. For example, Petitioner contends here that the symbolic names and values are communicated between the device and the web service “such that the web service knows to what [attribute] the value corresponds.” Pet. 60. This is substantially the same as the argument made in the 711 Petition-i.e., that “without the input symbolic name, Huang’s binding-based technique . . . would not be able to resolve which web service object to modify in response to the user’s request.” 711 Petition, 70. In this case, as in the 711 Petition, Petitioner does not address Huang’s disclosure of an intermediate server that converts a generic WS Object Model to a vendor-specific adaptor, then uses the vendor-specific adaptor to interact with the web service. On this record, we find that the web service, which receives a vendor-specific adaptor from the intermediate server, already knows to what attribute the value corresponds, without being modified in the manner proposed by Petitioner. See Ex. 2001 ¶¶ 45-46. Thus, a person of ordinary skill would not have had motivation to modify Huang so that “the device provides . . . [the] input symbolic name to the web service” as claimed. Further, we agree with Patent Owner that Huang teaches away from the device providing the symbolic name to the web service. Patent Owner contends that Huang teaches away from a device directly communicating with a web service because Huang discloses that “[t]hat approach requires the application to know details about each vendor specific object, and ties the application to a particular web services vendor.” Prelim. Resp. 24-25 (quoting Ex. 1005 ¶ 74). In contrast, Petitioner, citing the same paragraph of IPR2021-01146 Patent 9,928,044 B2 20 Huang, contends that Huang teaches that the application on the device can call vendor specific objects directly, which teaches that conversion is not required. Reply 4 (citing Ex. 1005 ¶ 74). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference . . . would be led in a direction divergent from the path that was taken by the applicant.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). What the prior art teaches and whether it teaches toward or away from the claimed invention are determinations of fact. Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995). Paragraph 74 of Huang, in its entirety, discloses: One approach to invoking the web service object would be to call vendor-specific objects directly from applications. That approach requires the application to know details about each vendor specific object, and ties the application to a particular web services vendor. Therefore a generic web services object is introduced. Each vendor-specific object is mapped to the generic web services object by a definition stored in an XML mapping file. Applications interact with the generic web services object and need not contain hard-coded dependencies on vendor specific objects. Ex. 1005 ¶ 74. In this paragraph, Huang is discussing the problem with calling a vendor-specific object directly from an application, and describing a solution of mapping each vendor-specific object to a generic web services object. Id. Huang teaches that with this solution, applications need not contain hard-coded dependencies on vendor specific objects. Id. Huang teaches that this solution allows the designer and the player to be vendor- independent and work with multiple web services without the need for vendor-specific code in the designer, player, or internet browser. Id. ¶ 57. A person of ordinary skill, upon reading Huang’s teaching that mapping each vendor-specific object to a generic web services object allows the IPR2021-01146 Patent 9,928,044 B2 21 designer and player to be vendor-independent, whereas calling vendor- specific objects without such mapping does not, would be led in a direction divergent from the path of “the device provides . . . [the] input symbolic name to the web service” that was taken by the applicant. Fulton, 391 F.3d at 1201. Lastly, Petitioner contends that Figures 1C and 1D of Huang show that the symbolic name does not change, because the term “OppName” is shown in the device and the web service. Reply 3-4. We do not agree with Petitioner, because Figures 1C and 1D, similar to Figure 1B, show that an intermediate server converts generic object 130 to vendor-specific object 154 using mapping 123. Ex. 1005 ¶ 57; see id. ¶ 44. 2. “the web service utilizes the input symbolic name and the user provided one or more input values” Claim 1 also recites that “the web service utilizes the input symbolic name and the user provided one or more input values.” Ex. 1001, 38:33-34. Petitioner relies on the same disclosure and analysis of Huang as that relied on in contending that Huang teaches the previous limitation discussed above. Pet. 59-60. Patent Owner argues that “the input symbolic name” receives antecedent basis earlier in the claim, and thus, “must be provided by the device.” Prelim. Resp. 34. Patent Owner argues that, as with the previous claim limitation, the web service of Huang “never receives the input symbolic name from the device, and, as such, cannot utilize an input symbolic name that it never receives.” Id. (citing Ex. 2001 ¶ 49). Again, we agree with Patent Owner. Because the web service of Huang receives a converted name from the intermediary server, rather than “the input symbolic name” from the device as claimed, we are not persuaded IPR2021-01146 Patent 9,928,044 B2 22 that Petitioner has sufficiently shown that Huang teaches this limitation. Supra § III.D.1. 3. “the Player receives the output symbolic name” Claim 1 recites that “the Player receives the output symbolic name.” Ex. 1001, 38:37. Petitioner contends that Huang teaches this limitation by disclosing sending XML data as a response to the player. Pet. 63-64 (citing Ex. 1005 ¶¶ 128-129). Petitioner contends that it would have been obvious to include the output symbolic name and the corresponding output value in the response, so that the application components that are bound with the web service attributes associated with the output symbolic name can be filled with the output value. Id. at 64 (citing Ex. 1004 ¶¶ 152-153). Patent Owner argues that Huang’s device does not receive the output symbolic name because “Huang converts vendor-specific names of the web service to generic names.” Prelim. Resp. 35. Patent Owner also contends that Petitioner’s obviousness theory fails to account for Huang’s intermediate server that converts information between the device and the web service. Id. at 36. Patent Owner contends that any output symbolic name from the web service would be converted by the intermediate server before being provided to the Player. Id. (citing Ex. 2001 ¶ 52-53). We again agree with Patent Owner. Because Huang converts vendor- specific names of the web service to generic names, we are not persuaded that Petitioner has sufficiently shown that Huang teaches or suggests this limitation. 4. Summary For these reasons, we determine that Petitioner fails to sufficiently show for institution that Huang teaches or suggests the disputed limitations of claim 1. The remaining challenged claims 3, 5-7, 11-13, 15, 17, 19-21, IPR2021-01146 Patent 9,928,044 B2 23 and 24-27 contain or depend from a claim containing limitations similar to those recited in claim 1. Because Petitioner has not sufficiently shown that Huang would have rendered claim 1 obvious, we determine that Petitioner also has not sufficiently shown that Huang would have rendered claims 3, 5- 7, 11-13, 15, 17, 19-21, and 24-27 obvious. E. Remaining Grounds In the remaining grounds, Petitioner proposes combining Huang with one or more references, but does not address the deficiencies of Huang discussed above. Therefore, Petitioner has not sufficiently shown that Huang, alone or in combination with one or more references as proposed by Petitioner, would have rendered claims 1, 3, 5-7, 11-13, 15, 17, 19-21, and 24-27 obvious. IV. CONCLUSION For the foregoing reasons, we determine that the information presented in the Petition does not establish that there is a reasonable likelihood that Petitioner would prevail with respect to obviousness of claims 1, 3, 5-7, 11-13, 15, 17, 19-21, and 24-27 of the ’044 patent. Thus, we do not institute an inter partes review of the challenged claims. V. DISCRETIONARY ISSUES Because we deny institution on the merits, we do not reach the discretionary issues raised by Patent Owner. See Prelim. Resp. 3-24. VI. ORDER Accordingly, it is ORDERED that the Petition is denied. IPR2021-01146 Patent 9,928,044 B2 24 FOR PETITIONER: James L. Davis, Jr. Scott McKeown Lance Shapiro ROPES & GRAY LLP james.l.davis@ropesgray.com scott.mckeown@ropesgray.com lance.shapiro@ropesgray.com FOR PATENT OWNER: Steven J. Rizzi Scott W. Hejny Steven Peters MCKOOL SMITH, P.C. srizzi@mckoolsmith.com shejny@mckoolsmith.com speters@mckoolsmith.com Bridget A. Smith LOWENSTEIN & WEATHERWAX LLP smith@lowensteinweatherwax.com