- SAP America, Inc. v. Pi-Net International, Inc.Rehearing deniedPTAB · Oct 15, 2013 · IPR2013-00194 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied SAP’s rehearing request, leaving in place the denial of institution on the Goradia-based challenges because the Petition did not show that Goradia disclosed object routing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Goradia is a VAN switch because it is an OSI application layer switch having a switching component, an object routing component and a management component. Rehearing Req. 3. Citing the Petition at pages 14-15, Petitioner argues that the Money Tool is an application that runs on top of the Internet in the application layer and includes a switching component in that it routes information, such as the address and product ID of requested content. Rehearing Req. 4. The Request for Rehearing does not contend that the Petition specifically argued that the Money Tool discloses object routing or that the Board misapprehended or overlooked such a position advanced by Petitioner. Petitioner now argues Goradia discloses object routing because it describes a genIDl code generator creating object stub source code modules that are linked to the client and server applications and because Goradia states that the client object stub will marshal object parameters, encrypt them, and invoke the Distributed Computing Environment (DCE) stub for the corresponding Remote Procedure Call (RPC) procedure. Id. at 6-8. None of these arguments were advanced in the Petition. In view of Petitioner’s belated arguments, particularly after acknowledging at page 12 of the Petition the association of object routing with the VAN switch, we deny Petitioner’s Request For Rehearing.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We further note that in related proceeding CBM2013-00013, we construed “‘object routing’ to mean the use of individual network objects to route a user from a selected transactional application to the processing provided by the service provider.” CBM2013-00013, Decision To Institute 17. Goradia discloses the RPC providing a distributed application program interface in which heterogeneous computers communicate over a network using their local call function syntax. Ex. 1003, 48. When a client computer invokes an RPC to a server, the client marshals parameters into a machine independent form, establishes a network connection, and transmits the arguments to the server. Id. The server unmarshals the arguments, invokes a corresponding local procedure, marshals the results arguments, and sends them back to the client. Id. The client then unmarshals the results arguments and returns them to the calling function. Id. Petitioner has identified in Goradia a code generator, genIDl, that generates code linked to client and server applications that can be used to marshal and exchange parameters between the respective applications. However, Petitioner has not identified how Goradia performs object routing in which individual network objects route a user from a transactional application to the processing provided by the service provider. Petitioner has not identified in Goradia how the code generated by genIDl is linked to the client and server applications.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not reached
“Petitioner has identified in Goradia a code generator, genIDl, that generates code linked to client and server applications that can be used to marshal and exchange parameters between the respective applications. However, Petitioner has not identified how Goradia performs object routing in which individual network objects route a user from a transactional application to the processing provided by the service provider. Petitioner has not identified in Goradia how the code generated by genIDl is linked to the client and server applications.” slip op. at 4
Claim construction§ 102 anticipationPatents in suitUS 8,108,492 - SAP America, Inc. v. Pi-Net International, Inc.Rehearing deniedPTAB · Oct 15, 2013 · CBM2013-00013 · APJ Brian J Mcnamara · CBM · Rehearing
The Board denied rehearing on claims 4–6, finding the cited references did not disclose the claimed object routing or virtual information store.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petition contends that “‘object routing’ should be construed as encompassing actions or data that execute a user’s request, which may include sending an object from one point to another” and that “[a]n object in the context of object routing could include a message.” Pet. 18. In the Decision To Institute, the Board construed “‘object routing’ to mean the use of individual network objects to route a user from a selected transactional application to the processing provided by the service provider.” Decision To Institute, Paper No. 15, p. 17. The Petition does not discuss individualized network objects.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“between computing entities and, at least in the case of Lawlor, the additional feature of converting internal system transactions information into a format that is compatible with the network. In the rehearing request, Petitioner contends that a pair of messages generated in Lawlor, i.e., a POS debit and a POS credit, constitutes networked objects that facilitate the routing of a user for the selected transactional application to the processing provided by the service provider. Rehearing Req. 3-5. Petitioner notes that Lawlor also describes an interface module that converts internal system transaction information, such as user and service provider accounts and transaction amounts, to a format that is compatible with the network, so that the computer system can interface with the interchange network. Pet. 37. It is not clear from the Petition or the rehearing request how the use of such standard messages constitutes the use of individualized network objects required for object routing. In particular, there is no discussion in the Petition or Rehearing Request of how the user is routed to the processing provided by the service provider.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,037,158 - PTAB · Jul 13, 2013 · IPR2013-00054 · APJ Howard B Blankenship · IPR · Rehearing
The Board denied rehearing of its refusal to institute review of claims 1-3, 5, 6, 10, 12-14, 16, 17, 21, 23-26, 28, 29, and 33 because the petition did not establish a reasonable likelihood of …
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner‟s allegations in the Petition did not comply with 37 C.F.R. § 42.104(b)(4)1, we should treat the Petition as incomplete under § 42.106(a)(1), issue a Notice of Incomplete Petition under § 42.106(b), and provide one month to correct the deficiency. Req. Reh‟g 1-2. We are not persuaded by the argument that Petitioner, having failed to meet its statutory burden of proof initially, should now be given a second opportunity on the merits based on supposed procedural deficiencies in the petition, as filed. Petitioner‟s argument confuses minimum procedural compliance with 35 U.S.C. § 312(a), necessary to obtain a filing date, with the statutory threshold requirements of § 314(a). Under the statute, the” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner has the burden of proving unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e). However, the USPTO determines whether a petition for inter partes review meets the minimum procedural requirements of the statute without regard to the substance or merits of the challenge.” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. 37 C.F.R. § 41.65(a). The U.S. Court of Appeals for the Federal Circuit discounts expert testimony that is not based on the underlying facts or data:” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Sherman Decl. 51. Notably absent from the testimony is an explanation of how specific references might be combined to arrive at the claimed invention; e.g., by combining and applying specific teachings in the references to a claim. See ActiveVideo Networks, 694 F.3d at 1328 (“This testimony is generic and bears no relation to any specific combination of prior art elements. It also fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.”).” slip op. at 5
Claim construction§ 103 obviousnessPatents in suitUS 8,051,287 - PTAB · Jan 29, 2013 · IPR2012-00037 · APJ Sally Gardner Lane · IPR · Rehearing
The Board denied Nissan’s request to modify its order on conduct of the proceeding, finding its email an improper ex parte communication and no basis for further argument.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“an issue of the contents of the Collins Preliminary Response, it should do so by requesting a conference call. Nissan argues that its email communication (Exh. 1040) was in response to this advice. However, we note that the email communication does not contain an explicit request for a conference call. In addition, as noted in the Order (Order at 2, fn. 1), an improper ex parte communication cannot be made proper simply by requesting a conference call somewhere within the communication.” slip op. at 2
NonePatents in suitUS 5,478,650
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.