in the united states patent trial and appeal...
TRANSCRIPT
IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
In re Covered Business Method Review of: U.S. Patent No. 6,182,078
Issued: January 30, 2001 Inventor: Wesley W. Whitmyer, Jr. Application No. 09/453,728 Filed: Dec. 2, 1999 For: SYSTEM FOR DELIVERING PROFESSIONAL SERVICES OVER THE INTERNET
))))))))))) ) ) ) ) ) ) )
U.S. Class: 707/010; 707/501;
707/513; 705/26; 709/217; 709/218
Group Art Unit: Confirmation No. Petition filed: February 5, 2015 FILED ELECTRONICALLY PER 37 C.F.R. § 42.6(b)(1)
Mail Stop Patent Board Patent Trial and Appeal Board U.S.P.T.O. P.O. Box 1450 Alexandria, VA 22313-1450
PETITION FOR POST-GRANT COVERED BUSINESS METHOD
PATENT REVIEW OF U.S. PATENT NO. 6,182,078 UNDER 35 U.S.C. § 321 AND § 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT
i
TABLE OF CONTENTS Page
I. MANDATORY NOTICES ............................................................................ 1
II. OVERVIEW OF THE ’078 PATENT ........................................................... 2
III. GROUNDS FOR COVERED BUSINESS METHOD STANDING ............ 7
A. At Least One Challenged Claim is Unpatenable. ................................ 7
B. At Least One of The Challenged Claims is Directed to a Covered Business Method. ................................................................................. 7
C. The Challenged Claims Are Not Directed to a “Technological Invention.” .......................................................................................... 10
D. Petitioner Has Been Sued for Infringement and Is Not Estopped. .... 13
IV. PRECISE RELIEF REQUESTED ............................................................... 14
V. CLAIM CONSTRUCTION ......................................................................... 15
A. Person of Ordinary Skill in the Art of the ’078 Patent ....................... 15
B. Broadest Reasonable Interpretation ................................................... 16
C. Support for Petitioner’s Broadest Reasonable Interpretations ........... 16
VI. THE CHALLENGED CLAIMS ARE INVALID UNDER 35 U.S.C. §§ 101, 102, 103, AND 112. ......................................................................... 18
A. [Ground 1] Claims 1, 7-10 Are Invalid Under 35 U.S.C. § 101 as Being Directed to a Patent-Ineligible Abstract Idea. ......................... 18
1. The Challenged Claims Are Directed to the Abstract Idea of Recordkeeping And Client Reminders. ............................... 18
2. Claims 1, 7-10 fail the second step of the Alice analysis......... 21
a. The generically claimed computer, software, and database elements are not “inventive concepts.” ........... 21
ii
b. The generic form templates and client reminders add no “inventive concept” to merit patent eligibility. ....................................................................... 25
c. Failure of the Machine-or-Transformation Test. ........... 27
3. The Claimed “Web Server,” “URL,” and “Email” Add No Inventive Concept. ................................................................... 28
B. [Ground 2] Claims 1, 7, and 8 Are Invalid Functional Claims Under 35 U.S.C. § 112, ¶ 6. .......................................................................... 29
1. Claims 1, 7-8 should be treated as MPF claims ....................... 29
2. The specification does not disclose any algorithm or code. .... 33
C. [Ground 3] Claims 1, 7-10 Are Indefinite Under Section 112, ¶ 2 .... 35
D. [Ground 4] Claims 1, 7-10 Are Invalid under 35 U.S.C. § 112, ¶ 1. . 36
E. [Ground 5] Claims 1 and 9-10 Are Anticipated Under 35 U.S.C. § 102 by the Network Solutions Message Ticketing System. ...................... 37
1. MTS was a publicly known and used prior art system. ........... 38
2. MTS contains each element of claims 1, 9, and 10. ................ 44
F. [Ground 6] Claims 1, 7-10 Are Invalid as Obvious Under § 103 in View of MTS and Knowledge of One Having Ordinary Skill. ......... 55
G. [Ground 7] Claims 1, 7-10 Are Obvious Under 35 U.S.C. § 103 in View of PerfectLaw, Alone or in Combination with MTS. ............... 59
1. PerfectLaw Qualifies as Prior Art. ........................................... 60
2. PerfectLaw Docketing and Document Assembly Software. .................................................................................. 61
3. One of Ordinary Skill Would Be Motivated to Combine PerfectLaw with Common Knowledge or with MTS. ............. 64
a. Combining PerfectLaw with Ordinary Skill.................. 65
b. Combining MTS with PerfectLaw ................................ 68
iii
4. MTS and PerfectLaw Obviousness Claim Charts ................... 70
VII. CONCLUSION ............................................................................................. 79
CERTIFICATE OF SERVICE ............................................................................... 80
iv
TABLE OF AUTHORITIES
Page(s) FEDERAL CASES
3M v. Chemque, Inc., 303 F.3d 1294 (Fed. Cir. 2002) .......................................................................... 61
Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728, F.3d 1336, 1344 (Fed. Cir. 2013) ............................................................... 20
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) ................................. 18, 19, 20, 21, 22, 23, 24, 25, 27, 28
Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364 (Fed. Cir. 2003) .................................................................... 29, 32
Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008) .......................................................................... 34
Aspen Eyewear, Inc. v. Altair Eyewear, Inc., 288 Fed. Appx. 697 (Fed. Cir. 2008) .................................................................. 31
Avante Int’l Tech. Corp. v. Premier Election Solns., Inc., 4:06cv0978 TCM, 2008 WL 2783237 (E.D. Mo. July 16, 2008) ...................... 36
Bancorp Servs., L.L.C. v. Sun Life Assurance Co., 687 F.3d 1266 (Fed. Cir. 2012) .......................................................................... 27
Bilski v. Kappos, 561 U.S. 593 (2010) ............................................................................................ 19
Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946 (Fed. Cir. 2007) ............................................................................ 32
CRS Advanced Techs., Inc. v. Frontline Techs., Inc., CBM2012-00005, Paper 17 (PTAB Jan. 23, 2013) .......................................................................... 11
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) .......................................................................... 28
Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012) .................................................................... 21, 28
v
Ebay, Inc. v. Kelora Sys., C10-4947CW, 2012 WL 1835722 (N.D. Cal. May 21, 2012) ........................... 59
Eclipse IP LLC v. McKinley Equip. Corp., SACV14-742-GW(AJWx), 2014 WL 4407592 (C.D. Ca. Sept. 4, 2014) ... 21, 25
Eolas Techs. Inc. v. Microsoft Corp., 399 F.3d 1325 (Fed. Cir. 2005) .......................................................................... 39
ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509 (Fed. Cir. 2012) ...................................................................... 35, 61
Ex Parte Smith, 2012-007631 (Dec. on Appeal), (PTAB Mar. 14, 2013) ..... 29, 30, 31, 33, 34, 36
Ex Parte Sung-Sik Jung, 2008-005636, 2009 WL 3089021 (BPAI 2009) ................................................. 59
Function Media, LLC v. Google, Inc., 708 F.3d 1310 (Fed. Cir. 2013) .......................................................................... 34
Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001 Paper 59 (PTAB Nov. 13, 2013) .............................................. 39
IMS Health Incorporated v. Symphony Health Solutions Corporation et al., Civil Action No. 13-2071-GMS (D. Del.) ............................................................ 1
In re Clay, 966 F.2d 656 (Fed. Cir. 1992) ............................................................................ 69
In re Lister, 583 F.3d 1307 (Fed. Cir. 2009) .......................................................................... 60
Inventio AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350 (Fed. Cir. 2011) .......................................................................... 31
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ............................................................................................ 64
Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-00002, Paper 66 (PTAB Jan. 23, 2014) ............................................ 56
vi
Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004) .......................................................................... 29
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed.Cir.1997) ................................................................ 36, 39, 43
Markem-Imaje Corp. v. Zipher Ltd., 07-cv-00006-PB, 2012 WL 3263517 (D.N.H. Aug. 9, 2012) ............................ 35
Maurice Mitchell Innovations, L.P. v. Intel Corp., 2:04-CV-450, 2006 WL 1751779 (E.D. Tex. June 21, 2006) ............................ 32
Medtronic, Inc. v. Cardiac Pacemakers, 721 F.2d 1563 (Fed. Cir. 1983) .......................................................................... 69
Microsoft Corp. v. Surfcast, Inc., IPR2013-00292, Paper 93 (PTAB Oct. 14, 2014) .............................................. 39
Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) .................................................................... 23, 58
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2013) ........................................................................................ 35
Netscape Commnc’ns Corp. v. Konrad, 295 F.3d 1315 (Fed. Cir. 2002) .......................................................................... 38
Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302 (Fed. Cir. 2012) .......................................................................... 33
Par Pharm., Inc. v. Jazz Pharms., Inc., CBM2014-00149, Paper 11 (PTAB Jan. 13, 2015) .............................................. 8
Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009) .......................................................................... 64
Ranpak Corp. v. Storopack, Inc., 168 F.3d 1316 (Fed. Cir. 1998) .......................................................................... 32
Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094 (Fed. Cir. 2014) .............................................................. 29, 31, 34
vii
SAP Am., Inc. v. Versata Dev. Grp., Inc., CBM2012-00001, Paper 36 (PTAB Jan. 9, 2013). ................................... 7, 11, 13
SAP America, Inc. v. Arunachalam, CBM2013-00013, Paper 61 (PTAB Sept. 18, 2014) .......................................... 36
Sci. Plastic Prods., Inc. v. Biotage AB, Slip op. 2013-1219 (Fed. Cir. Sept. 10, 2014) .................................................... 68
Teva Pharm. Inds. Ltd. v. AstraZeneca Pharms. LP, 661 F.3d 1378 (Fed. Cir. 2011) .......................................................................... 39
Thought, Inc. v. Oracle Corp., 12-cv-05601, 2014 WL 5408179 (N.D. Cal. Oct. 22, 2014) .............................. 33
Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628 (Fed. Cir. 1987) ............................................................................ 44
Versata Software, Inc. v. Internet Brands, Inc., 902 F. Supp. 2d 841 (E.D. Tex. 2012) ................................................................ 58
Visual Networks Operations, Inc. v. Paradyne Corp., DKC 2004-0604, 2005 WL 1411578 (D. Md. June 15, 2005) ........................... 33
W. L. Gore & Assoc. v.Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983) .......................................................................... 38
Walhonde Tools, Inc. v. Wilson Works, Inc., 1:09CV48, 2012 WL 1965628 (N.D. W. Va. May 31, 2012) ............................ 32
WhitServe LLC v. CPi, 694 F.3d 10 (Fed. Cir. 2012) ................................................................................ 9
WhitServe LLC v. GoDaddy.com, Inc., Civil Action No. 3:11-cv-00948-WGY (D. Conn.) ............................................ 13
Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010) .......................................................................... 65
Zenith Elecs. Corp. v. PDI Commnc’s Sys., Inc., 522 F.3d 1348 (Fed. Cir. 2008) .......................................................................... 39
viii
FEDERAL STATUTES
35 U.S.C. 112(a) ...................................................................................................... 35
35 U.S.C. 112(b) ...................................................................................................... 35
35 U.S.C. 112(f) ....................................................................................................... 35
35 U.S.C. § 101 .................................................................................. 1, 11, 14, 18, 26
35 U.S.C. § 102 ................ 1, 14, 18, 37, 38, 39, 43 47, 70, 71, 72, 73, 74, 76, 77, 78
35 U.S.C. § 102(a) ............................................................................................. 38, 43
35 U.S.C. § 102(g)(2)................................................................................... 38, 39, 43
35 U.S.C. § 103 ..................................................................... 1, 15, 55, 56, 59, 60, 70
35 U.S.C. § 112 ¶ 1 ...................................................................................... 14, 36, 37
35 U.S.C. § 112 ¶ 2 ...................................................................................... 14, 35, 36
35 U.S.C. § 112 ¶ 6 ...................................................................................... 14, 29, 35
35 U.S.C. § 321 .................................................................................................... 1, 14
35 U.S.C. § 324(a) ..................................................................................................... 7
REGULATIONS
37 C.F.R. § 42.300 ..................................................................................................... 1
37 C.F.R. § 42.301 ............................................................................................... 7, 11
37 C.F.R. § 42.302 ................................................................................................... 14
77 Fed. Reg. 48734-35 ........................................................................................... 7, 8
77 Fed. Reg. 48739 .................................................................................................... 9
77 Fed. Reg. 48756, 48763-48764 (Aug. 14, 2012) ................................................ 11
79 Fed. Reg. 74618-32 (“USPTO Eligibility Guidance”) ....................................... 18
ix
LIST OF EXHIBITS
Exhibit 1001: U.S. Patent No. 6,182,078
Exhibit 1002: U.S. Patent No. 6,182,078 File History
Exhibit 1003: Declaration of Dr. Benjamin Goldberg
Exhibit 1004: Foonberg, How to Start and Build a Law Practice (1976)
Exhibit 1005: Ulrich, Appellate Advocacy (1978)
Exhibit 1006: Vertical Marketing Software (1989)
Exhibit 1007: The Internet for Dummies (1993)
Exhibit 1008: 1995 Que’s Computer & Internet Dictionary (“web server”)
Exhibit 1009: New Merriam Webster Dictionary (“software”) (1989)
Exhibit 1010: IBM Dictionary of Computing (“software”) (1994) Exhibit 1011: IEEE Standard Dictionary of EE Terms (“software”) (1984) Exhibit 1012: Webster New World Dictionary (“FTP”) (1997) Exhibit 1013: Judge Young Markman Orders Exhibit 1014: PerfectLaw Materials (Duncan Dep. & Exs. 4-14) Exhibit 1015: Declaration of Matthew Ho Exhibit 1016: Declaration of Mark Kosters Exhibit 1017 U.S. Patent No. 6,049,801 Exhibit 1018 U.S. Patent No. 5,895,468
Pursuant to 35 U.S.C. § 321, Section 18 of the Leahy-Smith America
Invents Act (“AIA)” and 37 C.F.R. § 42.300 et seq., the undersigned Petitioner
respectfully requests a covered business method review of claims 1 and 7-10 of
U.S. Patent No. 6,182,078 (“the ’078 patent,” Ex. 1001), which was filed on
December 2, 1999 as Application No. 09/453,728.1 The ’078 patent issued on
January 30, 2001 to patent attorney Wesley W. Whitmyer, Jr, and is currently
assigned to Mr. Whitmyer’s company, WhitServe LLC (“WhitServe” or “Patent
Owner”). Petitioner demonstrates below that claims 1 and 7-10 of the ’078 patent
(“the Challenged Claims”) are more likely than not patent ineligible under 35
U.S.C. § 101 and fail the patentability requirements of 35 U.S.C. §§ 102, 103, and
112 ¶¶ 1, 2, and 6.
I. MANDATORY NOTICES
Real Party-in-Interest: GoDaddy.com, LLC (f/k/a GoDaddy.com, Inc.).
Related Matters: WhitServe LLC v. GoDaddy.com, Inc., Civil Action No.
3:11-cv-00948-WGY (D. Conn.) (“Litigation”); GoDaddy.com, LLC v. WhitServe
LLC, CBM2015-00066, Paper 1 (PTAB Jan. 22, 2015) (“’468 Petition”).
1 On January 22, 2015, Petitioner filed a petition seeking covered business method
review of the ’078 patent’s parent, U.S. Patent No. 5,895,468 (“’468 patent,” Ex.
1018), requesting judgment against claims in that patent under §§ 101-103 and 112
¶¶ 1-2 and ¶ 6.
2
Lead and Back-Up Counsel and Service Information:
Lead Counsel Scott D. Marty, Ph. D. USPTO Reg. No. 53,277 BALLARD SPAHR LLP 999 Peachtree Stree, Suite 1000 Atlanta, GA 30309-3915 Telephone: 678-420-9408 Fax: 678-420-9301 [email protected]
Back-up Counsel Jonathon A. Talcott USPTO Reg. No. 71,671 BALLARD SPAHR LLP 1 East Washington Street, Suite 2300 Phoenix, AZ 85004-2555 Telephone: 602-798-5485 Fax: 602-798-5595 [email protected]
Daniel A. Nadel USPTO Reg. No. 59,655 BALLARD SPAHR LLP 1735 Market Street, 51st Floor Philadelphia, PA 19103-7599 Telephone: 215-864-8844 Fax: 215-864-8999 [email protected]
II. OVERVIEW OF THE ’078 PATENT
The ’078 patent is entitled “System for Delivering Professional Services
Over the Internet.” Ex. 1001. The ’078 patent is a continuation-in-part of
Application No. 09/237,521, now U.S. Patent No. 6,049,801 (“’801 patent”), and
the ’801 patent was a continuation of the application leading to the ’468 patent.
See id. at 1 (63). The ’801 patent claims are directed solely to a “web site”
delivering professional services for receiving “reminder identifiers” that are not
claimed by Challenged Claims of the ’078 patent. See Ex. 1017 (claims). In
attempt to support these new claims, the ’801 patent adds new matter to the ’468
patent as Figures 6-7 and prose providing background for and describing those
3
figures. See id. at 2:10-22, 2:30-33, 2:55-59, 3:44-48, 7:18-8:13, Figs. 6-7.
But that new matter is irrelevant to the scope of the Challenged Claims. As
a continuation of the ’801 patent, the ’078 patent adopted the ’801 patent’s written
description and figures wholesale, including the new matter beyond what was
disclosed in the ’468 patent, whose prosecution had closed. Compare, e.g., Ex.
1017 at 2:10-22, 7:18-8:13, Figs. 6-7, with Ex. 1001 at 2:11-22, 7:3-64, Figs. 6-7
(same), and Ex. 1018 (’468 patent omitting same). The Challenged Claims of the
’078 patent, however, are nearly identical to the claims of the ’468 patent, and are
not impacted by the inapposite “reminder IDs,” “input web page,” “report web
page,” or “report of all reminder dates and types” disclosed in Figures 6 and 7 and
discussed in column 7 to the ’078 patent as “permit[ting] direct client entry of
reminders.” See Ex. 1001 at 7:3-63, Figs. 6-7 (ref. desigs. 76, 78, 82, 90, 98); Ex.
1003 ¶ 37.
In fact, the Challenged Claims are even broader than those claims
challenged in the ’468 Petition, removing “client response” from “client response
form” and removing the step for “receiving” the client’s response to that form. Ex.
1003 ¶¶ 1-127, ¶¶ 36-38. Patent Owner admitted this during prosection. See Ex.
1002 at 0036-37 (stating that the ’078 patent claims were “based on those of
issued, parent [’468 patent], however unnecessary limitations have been
removed.”); see also id. at 0038-39 (terminal disclaimer based on ’468 patent
4
expiration date). And the common Examiner for these patents agreed, rooting the
patentablity of the ’078 patent in the ’468 patent and allowing it without further
examination on condition of Patent Owner’s terminal disclaimer for the
Challenged Claims for exclusionary rights beyond expiration of the ’468 patent.
Ex. 1002 at 0040-42 (noting the difference between claim 24 of the ’468 patent and
the Challenged Claims was that the latter “omit the step of receiving a reply to the
response form from a client,” which “would have been obvious” in light of claim
24’s step for “transmitting a client response form to a client”). Thus, the invalidity
analysis of the Challenged Claims and those claims challenged in the ’468 Petition
are the same, only stronger for the ’078 patent and Challenged Claims due to their
added breadth. See Ex. 1003 ¶¶ 32-40.
As with the ’468 patent, the Challenged Claims are directed to automating
the delivery of deadline-oriented services using computers, databases, software,
and the Internet. See Ex. 1001 at Abstract, 1:12-13. The patent’s background
explains that tasks performed by “professionals” routinely involve actions taken in
response to deadlines. Id. at 1:17-32. Those deadlines naturally trigger a series of
events, including: (i) the professional sending the client reminders pertaining to the
deadline through response forms, (ii) the client taking action in response to those
reminders and response forms, (iii) the professional receiving the client’s reply,
(iv) the professional reacting to the client’s reply, and so forth. See id. at 1:33-59.
5
These events may, in turn, necessitate communications to third parties such as
authorizations to financial institutions, government agencies, and the like. Id. at
4:2-13. The ’078 patent observes that manually monitoring deadlines and handling
the responsive actions is expensive, time-consuming, and risky in terms of human
error creeping into the process. Id. at 1:17-32, 1:51-68. Thus, “[w]hat is desired . .
. is an automated system for obtaining authorizations from clients prior to
deadlines which will improve the speed, efficiency, and reliability of performing
professional services for clients.” Id. at 2:22-25.
However, as the specification concedes, the concept of “automating” these
conventional reminders and deadline-triggered tasks was far from new. Rather,
“[s]everal systems ha[d] been developed for facilitating some of the functions
which professionals must perform.” Id. at 1:33-34. In fact, the “most common”
prior art automated docketing systems already used a “networked computer” for
automatically “examining a calendar periodically to notice upcoming deadlines”
from “a database of deadlnes” based on “a preset time period before the deadline.”
Id. at 1:35-40. According to the ’078 patent, then, all that was missing was
automating certain remaining steps of the professional services delivery process
identified above (i.e., generating the reminders and response forms and receiving
replies thereto), and exchanging them through “modern computer communications
media, such as the Internet.” Id. at 1:41-2:10.
6
As representative claim 1 reveals, the ’078 patent supposedly claims
bridging this gap and automating prior art manual steps by running software on a
computer that automatically (i) queries a database for upcoming deadlines, (ii)
populates template forms using client-specific information from the database, and
then simply (iii) transmitting the form through the Internet. See Ex. 1001 (claim
1). The remaining Challenged Claims add little substance: adding the generation
of a “notice” containing a “URL” that, when activated, retrieves the form from a
“web server” (claims 7-8); implementing claim 1 as a “method” instead of a
“device” (claims 9-10); and generating the notice or form as “an email message”
(claims 8, 10). See id. (Challenged Claims); Ex. 1003 ¶ 40. Notably, the ’078
patent omits specifying the “client” as the recipient of the form or notice, and
further omits the steps required in the ’468 patent for continuing the chain of
communication—i.e., automatically receiving the client’s reply, generating a
response to the reply and sending it to a third party, updating the database based on
the reply, and confirming receipt of the reply. Cf. Ex. 1018; Ex. 1002 at 0040-42.
As set forth herein, the Challenged Claims essentially claim to automate
basic, routine activity undertaken by professionals for decades, if not centuries,
using only conventional computer hardware and software. Hence, this Petition.
7
III. GROUNDS FOR COVERED BUSINESS METHOD STANDING
A. At Least One Challenged Claim is Unpatenable.
For the reasons set forth herein, it is more likely than not that at least one
claim of the ’078 patent is unpatentable. 35 U.S.C. § 324(a).
B. At Least One of The Challenged Claims is Directed to a Covered
Business Method.
The ’078 patent is a “covered business method patent” as defined under § 18
of the AIA and 37 C.F.R. § 42.301. Section 18(d)(1) of the AIA identifies a
covered business method patent as “a patent that claims a method or corresponding
apparatus for performing data processing or other operations used in the practice,
administration, or management of a financial product or service.” See also 37
C.F.R. § 42.301(a) (reciting similar language). As supported by the legislative
history, the USPTO has indicated that it broadly defines the term “covered
business method patent” to encompass patents claiming activities that are financial
in nature, incidental to a financial activity or complementary to a financial activity.
See 77 Fed. Reg. 48734-35; SAP Am., Inc. v. Versata Dev. Grp., Inc., No.
CBM2012-00001, Paper 36 (Dec. to Inst.), Page 23 (PTAB Jan. 9, 2013) (“SAP”).
Further, the Board analyzes the claim language in light of the embodiments in the
specification to determine whether the claims recite an apparatus or method used in
or incidental to the “practice, administration, or management of a financial product
8
or service.” Cf. Par Pharm., Inc. v. Jazz Pharms., Inc., CBM2014-00149, Paper
11 (Decision), Pages 15-16 (PTAB Jan. 13, 2015). The ’078 patent plainly
qualifies as a “covered business method patent,” as it involves the movement of
money in providing a professional service such as paying a maintenance fee or
annuity due on an issued patent.
The Challenged Claims are directed to automatically delivering professional
services that are used in (and incidental to) the practice, administration and
management of financial products and services, and for activities that are financial
in nature. See Ex. 1001. Specifically, the Challenged Claims encompass
automating the delivery of “professional services” (including financial
professionals) to purportedly “improve[] the speed, efficiency, and reliability of
performing services for clients,” to avoid the client having “to pay enormous late
fees” due to a missed deadline. Id. at 1:17-32, 2:36-39. For example, claims 1, 7-
10 all recite “transmitting the form” through the Internet, placing no restrictions on
exactly to whom the “form” is sent. Ex. 1001 at 8:21-22, 9:8-9, 10:9. The ’078
patent specification explicitly contemplates that the claimed transmissions may
result in a bank authorization and funds transfer:
The type of action based on the reply 24 [to the form] depends on the
reply 22, and may include such actions as . . . generating a transfer of
funds authorization and transferring the authorization to a bank[.]
9
Ex. 1001 at 3:66-4:8 (emphasis added), 4:66-5:13, 6:39-52.2 This is only one of
the ’078 patent’s contemplated financial services. See id.; Ex. 1003 ¶¶ 8, 46-47.
Indeed, WhitServe successfully sued Computer Packages, Inc. (“CPi”) on the ’078
patent based on CPi’s patent annuity product that reminds clients of paying
upcoming patent or trademark annuity or maintenance fee deadlines. WhitServe
LLC v. CPi, 694 F.3d 10, 17 (Fed. Cir. 2012). This accused facilitation and
management of financial transactions makes clear that the ’078 patent qualifies as
a covered business method patent.
The ’078 patent is also classified under various data processing sub-
categories, most notably Class 705, Sub-Class 26, which relates to the financial
business process of “electronic shopping (e.g., remote ordering).” Ex. 1001 at 1
(52). “[P]atents subject to covered business method patent review are anticipated
to be typically classifiable in Class 705.” 77 Fed. Reg. 48739; see also
Travelocity.com L.P. v. Cronos Techs., LLC, CBM 2014-00082, Paper 10 at 9-11
(Sept. 15, 2014) (finding that claims covering e-commerce transactions meet the
2 While the Challenged Claims do not recite actions based on the client’s reply to
the form as do claims of the ’468 patent, Patent Owner has already admitted
through a terminal disclaimer that both patents’ claims are obvious over each other
(Ex. 1002 at 0038-39), so the Challenged Claims can also be read to encompass
communications with a bank.
10
CBM criteria). The Challenged Claims purportedly cover electronic commerce
and banking. For example, a customer can receive an electronic notification from
a credit card company informing the customer that payment is due on an account,
the credit card company can receive the shopper’s instructions to pay the account
online, and it can then transmit that instruction to a bank for payment. This
activity falls directly within the broad scope of the Challenged Claims, which at
their most basic level require reminding customers of deadlines and providing
“forms” through which instructions for payment can be made. Additionally,
during prosecution of the parent ’468 patent (as acknowledged in the ’078 patent’s
file history), the USPTO cited United States Patent No. 5,548,753 as prior art,
which teaches automation of electronic mail notification to accounting personnel.
Ex. 1002, 0043-45 at 0044. This prior treatment by the USPTO of the Challenged
Claims as covering e-commerce and accounting practices further supports the
patent’s qualification as a “covered business method patent.”
C. The Challenged Claims Are Not Directed to a “Technological
Invention.”
A “covered business method patent” under AIA § 18 does not include
patents for “technological inventions.” AIA § 18(d)(1). A patent claims a
“technological invention” if “the claimed subject matter as a whole recites a
technological feature that is novel and unobvious over the prior art; and solves a
11
technical problem using a technical solution.” AIA § 18(d)(2); 37 C.F.R. §
42.301(b). However, claim drafting techniques that merely recite (i) known
technologies; (ii) prior art technology to accomplish a process or method; or
(iii) combined prior art structures to achieve the expected result do not render a
patent a “technological invention.” 77 Fed. Reg. 48756, 48763-48764 (Aug. 14,
2012); see SAP at 25.
The Challenged Claims fail to claim any novel or nonobvious technological
feature. As set forth in detail in connection with the § 101 ineligibility analysis,
infra, the only technological features recited in the Challenged Claims are generic
computers, servers, databases, software, and the Internet—all technology that was
well-known in the art before the ’078 patent’s earliest possible priority date of
October 7, 1996. Ex. 1003 ¶¶ 55-66. The ’078 patent claims using this
conventional technology only in the most obvious way: to “automate” the delivery
of non-technical services like “the standard docketing system” to “improve[] the
speed, efficiency, and reliability of performing services for clients” and
“employ[ing] modern computer communications media, such as the Internet.” Ex.
1001 at 1:41-2:10, 2:23-31; Ex. 1003 ¶¶ 32-40. See SAP at 28; CRS Advanced
Techs., Inc. v. Frontline Techs., Inc., CBM2012-00005, Paper 17 (Dec. to Inst.), 6-
9 (PTAB Jan. 23, 2013). To the extent the other features recited by the Challenged
Claims could conceivably be considered technological—the “client reminder” and
12
“form”—the patentee expressly admitted those features were already in the prior
art. See Ex. 1001 at 1:15-58; Ex. 1003 ¶¶ 50-54. Certainly “executing” generic
“software” to retrieve or generate the reminders and forms adds nothing
technologically new, nor does “employ[ing] modern communications” like the
Internet or its inherent attendants of email, URLs, and web servers. E.g., Ex. 1001
at 1:59-61, 4:53-56, 5:28-7:2, claims 1, 7-10; Ex. 1003 ¶¶ 66, 72-81; DealerSocket,
Inc. v. AutoAlert, Inc., CBM2014-00146, Paper No. 19 (Dec. to Inst.) at 11-12
(PTAB Dec. 9, 2014) (“DealerSocket”).
Nor does the ’078 patent solve a technical problem using a novel or
nonobvious technical solution. It is obvious by law to “improve[] the speed,
efficiency, and reliability” through the automation of a process using known
technology, and this is all the patent’s purported solution accomplishes. Ex. 1001
at 1:41-58, 2:36-39. See DealerSocket at 12-13 (claimed calculation of payments
and generation of customer alerts based on retrieved information and conditions
“using known automated tools” was not a technical solution); MPEP § 2143(IV).
Likewise, storing and querying values relating to deadlines as the ’078 patent
claims cannot possibly be a technological invention or solution. To overcome the
prior art cited against the parent ’468 patent, the patentee amended the claims to
specifiy that the “client reminder” entry in the database must contain a certain
basic type of information—“a date field having a value attributed thereto”—which
13
the patentee explained “include[s] deadlines for the services to be rendered.” Ex.
1002 to ’468 Petition at 0116-0117, 0127-0128, 0131-0134. As a corollary, the
patentee amended the claimed “querying” process to clarify that the database is
queried “by the values attributed to each client reminder date field.” Id. at 0131-
0134. This was to clarify that the querying process as claimed “means identifying
those reminders with impending deadlines and discarding those without impending
deadlines . . . depending on the value of the field” instead of the prior art’s
“presence or absence of data.” Id. at 0117; Ex. 1002 at 0040-42; Ex. 1003 ¶ 60.
To the extent claiming date fields checked by “values” is a “solution” at all
(it is not), it is nowhere near any “technological” advancement over the prior art,
for the patent admits the prior art “examin[ed] a calendar periodically to notice
upcoming deadlines” that were “typically contain[ed in] a database.” Ex. 1001 at
1:33-44; see Ex. 1003 ¶¶ 16-33. The type of information claimed as the client
reminder and process of querying by values is fundamental to data management,
exactly like the allegedly novel “hierarchical data structures [for] organiz[ing]
pricing information” held by this Board to be non-technological. SAP at 28.
Accordingly, the Challenged Claims do not recite a “technological invention.”
D. Petitioner Has Been Sued for Infringement and Is Not Estopped.
On June 14, 2011, WhitServe sued Petitioner for infringement of the ’078
patent and the related ’468 patent in WhitServe LLC v. GoDaddy.com, Inc., Civil
14
Action No. 3:11-cv-00948-WGY (D. Conn.), and thus Petitioner meets the
requirements of AIA § 18(a)(1)(B) and 37 C.F.R. § 42.302. Petitioner is not
estopped from challenging the ’078 patent on the grounds identified, per 37 C.F.R.
§ 42.302(b), because no final judgment has been entered in the Litigation on the
validity of the claims, unpatentability of the claims have not been litigated under a
preponderance of the evidence standard as applied by this Board, and there is no
preclusive effect of any order issued by the district court regarding invalidity of the
claims presented by this Petition. Interthinx, Inc. v. Corelogic Solns., CBM2012-
00007, Paper 16 (Dec. to Inst.), Pages 9-10 (PTAB Jan. 31, 2013).
IV. PRECISE RELIEF REQUESTED
Petitioner respectfully requests review under 35 U.S.C. § 321 and AIA § 18
of following ’078 patent claims, and their cancellation on the following grounds:
Ground 1 (claims 1, 7-10): Invalid patent-ineligible abstract idea under 35
U.S.C. § 101.
Ground 2 (claims 1, 7-8): Invalid functional claiming under 35 U.S.C. §
112 ¶ 6.
Ground 3 (claims 1, 7-10): Invalid as indefinite under 35 U.S.C. § 112 ¶ 2.
Ground 4 (claims 1, 7-10): Invalid as lacking written description under 35
U.S.C. § 112 ¶ 1.
Ground 5 (claims 1 and 9-10): Anticipated under 35 U.S.C. § 102 by the
15
Network Solutions Message Ticketing System (“MTS”).
Ground 6 (claims 1, 7-10): Obvious under 35 U.S.C. § 103 in view of
MTS.
Ground 7 (claims 1, 7-10): Obvious under 35 U.S.C. § 103 in view of
PerfectLaw, alone or in combination with MTS.
As described in the Sections below, these grounds are not cumulative and, in fact,
each is based on separate statutory requirements for patentability or patent
eligibility.
V. CLAIM CONSTRUCTION
A. Person of Ordinary Skill in the Art of the ’078 Patent
The ’078 patent is directed to the problem of automating the monitoring and
delivery of deadline-based notices and forms over the Internet. See, e.g., Ex. 1001
at Abstract, 1:1-3:10. To automate the functions as claimed in computer-
implemented software, database, and Internet technology, a person of ordinary skill
(or “POSA”) in the subject matter of the ’078 patent would need to possess a
Bachelor’s degree in computer science or related field, and two to three years of
experience as a programmer in industry or the educational equivalent thereof (such
as a Master’s degree in computer science). See Ex. 1003 ¶¶ 41-44. However,
since the purported technological features of the ’078 patent claims 1, 7-10 involve
only conventional, general computing platforms, no specialized or sophisticated
16
computer-based or other technical knowledge is required—only general knowledge
of that technology which one would have with the educational and experience level
as noted is needed. Id.; see MPEP § 2141(II)(C).
B. Broadest Reasonable Interpretation
Petitioner submits that the Challenged Claims are to be given their broadest
reasonable constructions, as clarified below for certain terms for which a
construction may aid the Board. 37 C.F.R. § 42.300(b), Ex. 1003 ¶¶ 45-49.
C. Support for Petitioner’s Broadest Reasonable Interpretations
Professional services: While the ’078 patent specification provides an
example of the services to be rendered mainly in the context of legal professional
services, the claims are not limited to any particular kind of profession or service,
or even any profession at all, since “professional services” is recited only in their
preambles. Ex. 1001 at 1:17-2:33, 8:4-10:13. The district court in the underlying
Litigation did not construe this term as a limitation on the body of the claims,
which is consistent with the view of one having ordinary skill in the art that the
BRI of “professional services” is not limited to any particular profession or service.
Ex. 1003 ¶¶ 46-47; Ex. 1013.
Client reminder: This term should be construed as a “record containing
information pertinent to an upcoming service for a client.” The specification
describes a “client reminder” as “contain[ing] information pertinent to the
17
upcoming professional service to be rendered.” Ex. 1001 at 3:43-50. The ’078
patent gives various examples of such information, including a client name, client
e-mail address, type of service to be rendered, deadline for the service to be
rendered, an individual professional responsible for the client, name of the client
contact person, and “others.” Id. The ’078 patent describes querying a docket
database to retrieve these client reminders on a periodic basis to remind clients of
deadlines. See id. at 3:37-44; Ex. 1013; Ex. 1003 ¶ 48.
Form: The BRI of this term should be construed as a “template form
populated with client reminder information.” As with the ’468 patent’s claimed
“client response form,” the ’078 patent describes the claimed “form”
interchangeably as a “client response form” and “response form,” either of which
is automatically generated “based on the retrieved client reminder” and as
containing “pertinent information contained in the client reminder as well as the
client’s options regarding the professional service to be performed.” Ex. 1001 at
3:51-57. Such options include “choices for alternative professional services or
simply whether or not the client authorizes a professional service.” Id. at 3:57-60.
Accordingly, the claimed “form” contains client reminder information upon which
the client may act. Ex. 1003 ¶ 49.
18
VI. THE CHALLENGED CLAIMS ARE INVALID UNDER 35 U.S.C. §§
101, 102, 103, AND 112.
A. [Ground 1] Claims 1, 7-10 Are Invalid Under 35 U.S.C. § 101 as
Being Directed to a Patent-Ineligible Abstract Idea.
Under Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), there
is a two-step framework for determining patent-eligibility for computer-
implemented ideas: (1) determine whether the claims are directed to a law of
nature, natural phenomena, or abstract idea; and (2) if so, determine whether the
claims recite an “inventive concept,” meaning “an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon [the ineligible concept] itself.” Alice at
2354-59. See also 79 Fed. Reg. 74618-32 (“USPTO Eligibility Guidance” and
January 2015 examples thereto).
As analyzed below, the Challenged Claims cover no more than the abstract
idea of recordkeeping deadlines and client reminders relating thereto using generic
computer, software, and network technology that the Alice Court and its progeny
have found fail to add any “inventive concept” to the abstract idea as claimed.
1. The Challenged Claims Are Directed to the Abstract Idea of
Recordkeeping And Client Reminders.
Under the first step required by Alice, it is necessary to determine “whether
19
the claims at issue are directed to a patent-ineligible concept.” Alice at 2355. In
doing so, a court must “consider[] all claim elements, both individually and in
combination” consistent with the general rule that “patent claims ‘must be
considered as a whole.’” Id. at 2355 n.3. An idea can be ineligibly abstract even if
the particular concept is “narrow” or provides a specific solution to a specific
problem. See Bilski v. Kappos, 561 U.S. 593, 599-601 (2010) (highly specific
method of price hedging directed to an ineligible abstract idea); buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014) (abstract idea of third party
“transaction performance guaranty”).
The ’078 patent as a whole, and certainly the Challenged Claims, claims the
following abstract idea: keeping a record of client deadlines and providing a form
reminder to the client with a basic request for instructions on how to proceed. Ex.
1003 ¶¶ 50-51. This concept is fundamental to delivering business services to
clients that has been “long prevalent in our system of commerce” and “taught in
any introductory [profession] class” as a “building block” of practice management.
Alice at 2356. Indeed, as explained in detail by Dr. Goldberg, maintaining file
systems for storing client reminders, template forms, and using calendar “ticklers”
for acting on those reminders has been fundamental to law and other businesses for
decades, if not centuries. See Ex. 1003 ¶¶ 16-31, 50-54. The concepts of tickler
systems and using template forms are also well-documented by the American Bar
20
Association (“ABA”). Id. ¶¶ 21-28; Ex. 1004 (“Foonberg”) at 158, 165-69.
Indeed, the “heart” of the legal office management is the docketing and
calendaring system which, similar to the ’078 patent’s client reminders and forms,
includes “checklists for all appellate filing deadlines and time sequences; status
sheets for each appeal; [and] a dockets file” that is “essential” to avoid missing
deadlines.” Ex. 1005 (“Ulrich”) at 32. And it is “one of [a lawyer’s] most
valuable assets” to maintain a “form file” of templates to be filled in with client-
specific information. Ex. 1004 at 166-69. Certainly, it is axiomatic that lawyers
have checked deadlines and reminded clients about the same in a non-automated
fashion or by hand for decades, if not centuries.
The concepts found in these longstanding references are no different from
those claimed in the Challenged Claims. When stripped of their generic computer
elements, these claims boil down to the fundamental notion of monitoring
upcoming deadlines and providing clients reminders about basic information
needed to address them. See Ex. 1001 at claims 1, 7-10. This abstract idea is
similar to the claims directed to the “method of exchanging financial obligations”
covering a fundamental intermediated settlement concept in Alice, and similar to
other broadly claimed fundamental business practices that courts and this Board
have found too abstract for patent-eligibility. See, e.g., Accenture Global Servs.,
GmbH v. Guidewire Software, Inc., 728, F.3d 1336, 1344 (Fed. Cir. 2013)
21
(“generating tasks based on rules to be completed upon the occurrence of an event”
as patent-ineligibile); DealerSocket at 4-6, 32-36 (“automatically accessing”
vehicle lease terms from a database, “automatically generating a message,” and
“automatically transmitting the message” covered abstract idea of “providing
vehicle sales opportunities based on loan or lease payements”); Dealertrack, Inc. v.
Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (“processing [credit application]
information through a clearinghouse” by “receiving data . . ., selectively
forwarding the data . . . and forwarding reply data” too abstract for patent
eligibility); Eclipse IP LLC v. McKinley Equip. Corp., No. SACV 14-742-
GW(AJWx), 2014 WL 4407592 (C.D. Cal. Sept. 4, 2014) (“computer-based
notification system” with “message[s] requesting a response” held “directed to the
abstract idea of asking someone to do a task, getting an affirmative response, and
then waiting until the task is done.”). The Challenged Claims are likewise directed
to an abstract idea.
2. Claims 1, 7-10 fail the second step of the Alice analysis.
a. The generically claimed computer, software, and
database elements are not “inventive concepts.”
For the second step under Alice, it is necessary to determine whether the
elements of the claims “contain[] an inventive concept sufficient to transform the
claimed abstract idea into a patent-eligible application.” Alice at 2357. These
22
claim elements must include “additional features” that add “significantly more” to
the abstract idea. Id. The Alice Court explicitly found claiming abstract ideas
implemented on generic computers, databases, and networks performing their most
basic functions of storing, processing, and transmitting do not meet the criteria for
eligibility. Id. at 2358. But that is all the ’078 patent does when claiming to
“automate” the claimed reminder systems. Applying Alice to the ’078 patent’s
claims, the generic nature of the computer, database, forms, and Internet
limitations leaps out. The Challenged Claims recite “automatically” performing on
“a computer” the claimed functions of querying and retrieving the client reminder,
generating the form, and transmitting communications relating thereto. E.g., Ex.
1001 (claim 1). But the patent discloses no specifics on how the claimed
“computer” actually “automat[es]” any of these actions, nor is there any reference
to special computer hardware other than a general purpose computer. See Ex. 1001
at cols. 3-7; Ex. 1003 ¶¶ 55-66. Alice held that “function[s] performed by the
computer at each step—creating and maintaining ‘shadow’ accounts, obtaining
data, adjusting account balances, and issuing automated instructions—is ‘[p]urely
‘conventional’” when claimed to be implemented by a “wholly generic computer.”
Alice at 2358. So too here.
The claimed “database” for storing and retrieving client reminders and the
claimed “communications link” for connecting “to the Internet” likewise do not
23
pass muster under Alice. Alice held that the claimed “data storage unit” for storing
and accessing shadow records “was purely functional and generic” because
“[n]early every computer will include a communications controller’ and a ‘data
storage unit’ capable of performing the basic calculation, storage, and transmission
functions.” Alice, 134 S. Ct. at 2360. To the extent networking a computer
through the Internet added any “inventive concept” before Alice, the Federal
Circuit since has made clear that “claims’ invocation of the Internet also adds no
inventive concept.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir.
2014); buySAFE, 765 F.3d at 1355; DealerSocket at 40. Additionally, using a
“URL” to retrieve forms (or webpages) from a “web server” upon activating the
URL link is no more than standard Internet and World Wide Web architecture that
long predated the ’078 patent. Ex. 1001 at 5:28-56, claims 7-8; Ex. 1003 ¶¶ 63-
65; Ex. 1002 at 0044-45 (citing prior art Internet and web references). See
Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1326-27 (Fed. Cir. 2008).
So, too, with the generic “software executing” claimed throughout the ’078
patent. Alice held that claims for software, i.e. “automated instructions” or
“program code for performing the method of exchanging obligations” were
ineligible. Alice, 134 S. Ct. at 2353 (emphasis added). Here, “software executing”
is simply claimed and disclosed in the specification to “automatically” perform the
general steps of the abstract idea described above, so there is no special or
24
advanced programming. See Alice, 134 S. Ct. at 2351-53, 2358-60; see also
Ultramercial, 772 F.3d at 714 ( “eleven steps for displaying an advertisement” did
not specially program a computer); DealerSocket at 37, 41-42 ( “automated
computer processing” steps for “accessing” information, “determining a predictive
condition” based thereon, and “generating a message automatically” failed to
“recite any improved computer technology or advanced programming technique” ).
Indeed, the only references in the specification that refer to any software
(other than repeating the word “software” by itself) are unclaimed features of the
client’s creation through its reply to the response form through a generic “web
browser,” “cgi script 62 running on the server or a java applet, activex control or
the like running on the client computer (not shown),” and “script program.” See
Ex. 1001 at 5:57-6:26; cf. id. at claims 1, 7-10 (omitting step of client creating
reply). Even if these generic terms were claimed (they are not), they are
synonomous with generic program code that is silent as to how that code is to be
written to perform the claimed functions. Ex. 1003 ¶¶ 75-82. As explained in
further detail regarding indefiniteness of the “software executing” terms, infra, the
rest of the patent’s written description and high-level block diagrams are devoid of
any algorithms—whether in prose, code or otherwise—that would further tie down
or provide structure for the “software” as claimed. Id. Thus, the generically
claimed computer, software, and Internet limitations do not add the requisite
25
“significantly more” to the claimed abstract idea.
b. The generic form templates and client reminders add
no “inventive concept” to merit patent eligibility.
The claimed “automatically” generating and processing of forms is no
different from the processing of “shadow records” in Alice, the “message
requesting a response” in Eclipse IP, or the “automatically generat[ed] message” or
“alerts to dealers” in DealerSocket—all of which were held as insufficient to add
“significantly more” to the underlying abstract ideas. Alice, 134 S. Ct. 2351-52;
Eclipse IP, 2014 WL 4407592, at *11; DealerSocket at 3-4, 36-42. In fact, the
“shadow records” disclosed and claimed in Alice were far more detailed than those
here. Compare, Ex. 1001, with U.S. Patent 5,970,479 (Alice patent) at Figs. 41-70.
The concept of using template forms to be filled in with client-specific event
information is, of course, fundamental to business practices. See Ex. 1003 ¶¶ 21-
21; Exs. 1004-05. And while the ’078 patent offers no details on how it
“generates” the claimed forms, software for automatically “merging” information
with template forms was certainly nothing new or inventive—even in the specific
context of law office automation described in the ’078 patent. Ex. 1003 ¶¶ 29-31,
61, 69; Ex. 1006 (1989 advertisement describing “PereWriter” software that
“downloads provisions, merges in user token information and prints a formatted
contract” that “can be mailed electronically . . . for reference or final approval”).
26
The claimed “client reminder” also adds nothing inventive—it is nothing more
than information stored in a database, organized in a non-inventive way. The
patent shows no actual “client reminder” entry or special database required to
house it. E.g., Ex. 1001 at 3:41-42 (“client reminder (not shown)”), Fig. 1
(database 14), Fig. 2 (databases 14, 38, 42), Fig. 3 (database 14); Ex. 1003 ¶¶ 59-
60. Instead, the patent describes the client reminder only in the most general way,
as containing “information pertinent to the upcoming professional services to be
rendered,” and only generically describes that type of information as client contact
information, the “type of service to be rendered,” the deadline, and matter ID. Ex.
1001 at 3:43-48, 4:34-44, Fig. 2 at Ref. Desigs. 32, 34, 40, 36 (same). Such
generic information cannot possibly add the “additional features” to render the
claims patent eligible. Automating a long-standing practice of communicating
with clients about deadlines is very simply not patentable subject matter.
Patent Owner may argue it amended its claims in the parent ’468 patent to
overcome prior art by adding “a client reminder with a date field having a value
attributed thereto.” But this is irrelevant to § 101 as a non-technological
improvement, if any, over the art. See Ultramercial, 772 F.3d at 716 (“That some
of the eleven steps were not previously employed in this art is not enough—
standing alone—to confer patent eligibility . . . .”); id. (Mayer, J., concurring) at
721 n.1 (“[W]hether the ‘concept’ of intermediated settlement is an abstract idea is
27
a wholly different question from whether the claimed invention provided a useful
and innovative application of that concept.”). Aside from the utter obviousness of
storing deadline information by date or “value[s] attributed thereto,” it is simply
non-inventive “electronic recordkeeping” that is patent ineligible. Alice at 2359.
c. Failure of the Machine-or-Transformation Test.
While not dispositive of the eligibilty analyis, the machine-or-transformation
test remains a “‘useful clue’ in the second step of the Alice framework.”
Ultramercial, 772 F.3d at 716-17. As Alice emphatically confirmed, claims to
computer-automation of an otherwise patent ineligible idea fail to tie the invention
to a “particular machine” where the claimed automation is merely through a
generic computer running unspecified software or over the Internet. Id.; Bancorp
Servs., L.L.C. v. Sun Life Assurance Co., 687 F.3d 1266, 1275-81 (Fed. Cir. 2012);
DealerSocket at 37, 41-42. As stated, the Challenged Claims recite no more than
that. The claims also fail the transformation test. “Any transformation from the
use of computers or the transfer of content between computers is merely what
computers do and does not change the [eligibility] analysis.” Ultramcercial, 772
F.3d at 717. Patent Owner may argue that the articles transformed are the client
reminder data through retrieving it, generating a form or notice based on it, and
transmitting the form and notice. Not only is this simply “transfer of content
between computers” expressly rejected by the Federal Circuit in Ultramercial, but
28
these steps are far less transformative than similar claims directed to automated
processing and exchange of records previously rejected by the Federal Circuit
under pre-Alice standard. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1331-34
(Fed. Cir. 2012); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1370-71, 1375-76 (Fed. Cir. 2011).
3. The Claimed “Web Server,” “URL,” and “Email” Add No
Inventive Concept.
Claims 7-10 interject a “web server” as the conduit for transmitting the
generically claimed “form,” which occurs when a “URL” is clicked within a
“notice” relating to the form. See Ex. 1001, claims 7-10; id., claims 8, 10
(claiming the “notice” to be “an email message”). But a “web server,” “URL” for
downloading documents, and “email” were well-known and conventional
technologies as of the ’078 patent’s 1996 priority date (if it is so entitled), so those
generic components certainly add no “inventive concept” to render the otherwise
abstract idea patent eligible. Ex. 1003 ¶¶ 63-65, Exs. 1007-1008; DealerSocket at
42. Thus, these are mere “token postsolution components,” Bilski, 561 U.S. at 612,
and claims 1 and 7-10 are patent ineligible. Ex. 1003 ¶¶ 16-31, 50-71.
29
B. [Ground 2] Claims 1, 7, and 8 Are Invalid Functional Claims
Under 35 U.S.C. § 112, ¶ 6.
1. Claims 1, 7-8 should be treated as MPF claims.
While claims 1, 7 and 8 lack the term “means,” Section 112, ¶ 6 applies
because their purely functional “software . . . for” claim limitations lack any
structure. Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1375 (Fed. Cir.
2003). The Federal Circuit has consistently held that means-plus-function
claiming applies if the claim term “fails to recite sufficiently definite structure or
else recites functions without reciting sufficient structure for performing that
function.” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358
(Fed. Cir. 2004); see also Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094,
1100 (Fed. Cir. 2014) (finding that when language in the specification describing
the claims is “solely functional, one of ordinary skill in the art [cannot] find in the
specification a definition of the terms as referring to a particular structure.”); Ex
parte Smith, Appeal 2012-007631 (Decision on Appeal) at 2, 15-17 (PTAB Mar.
14, 2013) (applying § 112 ¶ 6 to “processor programmed” to “receive” assets,
“store” them, and “generate an opinion timeline” for those assets).
Claims 1, 7, and 8 recite the following functions to be “automatically”
performed by “software executing on [a] computer”: (1) “querying [a] database
by the values attributed to each client reminder date field to retrieve a client
30
reminder,” (2) “generating a form based on the retrieved client reminder,” and (3)
“transmitting the form.” Ex. 1001, claims 1, 7-8. The specification adds no
structure to these claimed functions, whether in the form of code, logic, prose, or
otherwise. Instead, the ’078 patent exclusively describes any references to
“software” by repeating or mildly rephrasing the functions as claimed. Ex. 1001
at 3:39-41 (querying), 3:51-54 (generating a form), 4:53-56 (transmitting the form
and/or notice). The ’078 patent also generically describes functionality of
unclaimed software on the unclaimed client computer, not the claimed professional
computer. Id. at 3:60-65, 5:63-6:19, 7:3-64; Ex. 1003 ¶¶ 78-82.
In light of this purely functional description in the claims and specification, a
person of ordinary skill in the art in 1996 would not understand there to be
sufficient structure for the “software” limitations. First, the term “software” does
not have a commonly accepted meaning to connote specific structure. Ex. 1003 ¶¶
72-74 (discussing the very broad nature of lay and technical dictionary definitions
of “software”); Ex parte Smith, No. 2012-007631 at 10-11 (“Mere reference to a
general purpose computer or processor with appropriate programming without
providing an explanation of the appropriate programming, or to ‘software’
without providing detail about the means to accomplish the software function, is
not an adequate disclosure.”) (emphasis added). Second, the specification lacks
code and algorithms that could be used to perform the claimed functions on a
31
general purpose computer, and also lacks any description of how the computer
hardware, databases, and web servers could be programmed. Ex. 1003 ¶¶ 75-81.
See Aspen Eyewear, Inc. v. Altair Eyewear, Inc., 288 F. App’x 697, 703-04 (Fed.
Cir. 2008); see also Inventio AG v. ThyssenKrupp Elevator Ams. Corp., 649 F.3d
1350, 1356-57 (Fed. Cir. 2011) (holding expert evidence is usually helpful “as the
litigated issue often reduces to whether skilled artisans . . . would conclude that a
claim limitation is so devoid of structure that the drafter constructively engaged in
means-plus-function claiming.”).
The specification’s simple re-recitation of the software’s functionality
cannot save the claims from means-plus-function treatment. Robert Bosch, 769
F.3d at 1099-1101; Ex parte Smith, No. 2012-007631 at 11 (“[S]imply reciting the
claimed function in the specification, while saying nothing about how the
computer or processor ensures that those functions are performed, is not a
sufficient disclosure for an algorithm which, by definition, must contain a sequence
of steps.”). As an example, the ’078 patent does not describe how to “generate a
form based on the retrieved client reminder.” To show structure, this limitation
requires code instructing the computer how to generate the claimed form based on
the client reminder such as what fields to include, what data to pull, how to present
it to the client, etc. Such code is wholly absent. See Ex. 1003 ¶¶ 77-79; e.g., Ex.
1001 at 3:43-48, Fig. 1 (depicting “[Generate] Response Form” in a block
32
diagram). See Ex parte Lakkala, App. 2011-001526 (Dec. on App.) at 8-12 (PTAB
Mar. 13, 2013); Ex parte Erol, App. 2011-001143 (Dec. on App.) at 13-16 (Mar.
13, 2013).
Patent Owner may attempt to rely on conclusory allegations from an expert
regarding how a person of ordinary skill in the art would understand the “software”
limitations. However, expert testimony cannot supply the missing structure.
Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950-53 (Fed. Cir. 2007)
Patent Owner will also attempt to argue that the presumption against means-plus-
function claiming is strong because of the lack of “means.” However, to rebut this
presumption, Petitioner need only show by a preponderance of the evidence—
which it has—that there is insufficient structure. Apex Inc. v. Raritan Computer,
Inc., 325 F.3d 1364, 1375 (Fed. Cir. 2003); Walhonde Tools, Inc. v. Wilson Works,
Inc., No. 1:09CV48, 2012 WL 1965628, at *4 (N.D. W. Va. May 31, 2012);
Maurice Mitchell Innovations, L.P. v. Intel Corp., No. 2:04-CV-450, 2006 WL
1751779, at *4 (E.D. Tex. June 21, 2006). Finally, district courts and the USPTO
have made clear that means-plus-function treatment is appropriate for software-
related claim terms, such as these, that are devoid of structure. E.g., Ranpak Corp.
v. Storopack, Inc., 168 F.3d 1316 (Fed. Cir. 1998) (“module”); Ex parte Lakkala,
App. 2011-001526 (Dec. on App.) (PTAB Mar. 13, 2013) (“processor . . .
configured with [a] program to . . .”); Ex parte Erol, App. 2011-001143 (Dec. on
33
App.) (Mar. 13, 2013) (“a processor adapted to”); Thought, Inc. v. Oracle Corp.,
No. 12-cv-05601, 2014 WL 5408179, at *19-*25 (N.D. Cal. Oct. 22, 2014)
(“computer logic capable of” and “sub-routine or sub-module for comparing”);
Visual Networks Ops., Inc. v. Paradyne Corp., No. DKC 2004-0604, 2005 WL
1411578, at *28 (D. Md. June 15, 2005) (“logic”); Ex parte Smith, App. 2012-
007631 at 10-11 (“Mere reference . . . to “software” without providing detail about
the means to accomplish the software function, is not an adequate disclosure”).
Additionally, the MPEP provides clear guidance that the means-plus-function
inquiry should be done on a case-by-case basis when analyzing “generic
placeholders” such as those above, including by proper resort to the specification
and extrinsic evidence—here, “software . . . for” performing functions is simply
used as a generic placeholder. See MPEP § 2181 (I.A.) (9th Ed. Rev. Mar. 2014).
2. The specification does not disclose any algorithm or code.
For means-plus-function claims requiring a computer as the structure, the
Federal Circuit has consistently required that the computer be “more than simply a
general purpose computer or microprocessor.” Noah Sys., Inc. v. Intuit Inc., 675
F.3d 1302, 1312 (Fed. Cir. 2012). Additionally, a patentee’s “[m]ere reference . . .
to ‘software’ without providing detail about the means to accomplish the software
function, is not an adequate disclosure” for means-plus-function claiming. Ex
parte Emigh, App. 2012-005145, 2013 WL 1450915, *6 (PTAB Mar. 12, 2013)
34
To meet the structure requirement, a patentee may express the requisite algorithm
to be employed by the general purpose computer as a mathematical formula, in
prose, or through a flow chart. Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d
1323, 1340 (Fed. Cir. 2008). Simply parroting the claimed function in the
specification is insufficient. Robert Bosch, 769 F.3d at 1100. Notably, the
disclosure in the specification must be evaluated from the perspective of a person
of ordinary skill. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521
F.3d 1328, 1337-38 (Fed. Cir. 2008).
Here, as discussed supra, the ’078 patent simply parrots the claimed
functions in the specification and claims black box “software” on a general
purpose computer. The ’078 patent does not contain any algorithm or code to
perform the functions which, however generic they are, still require some
programming of an off-the-shelf device at least to achieve the claimed function of
“generating a form based on the retrieved client reminder.” Ex. 1003 ¶¶ 75-82; Ex
parte Smith, App. 2012-007631 at 15, 17-20 (concluding that “at least generating
the opinion timeline by the processor in claim 1 is not a typical function found in a
general purpose processor”). The ’078 patent provides only a block diagram with
numerous generic “black box” components that do not provide structure. E.g.,
’078 patent, Figure 1; Ex. 1003 ¶ 79. This depiction fails as a mater of law to
satisfy the algorithm requirement for claims 1, 7-8. Function Media, LLC v.
35
Google, Inc., 708 F.3d 1310, 1318-19 (Fed. Cir. 2013); ePlus, Inc. v. Lawson
Software, Inc., 700 F.3d 509, 518-19 (Fed. Cir. 2012). Accordingly, the functional
limitations in claims 1, 7 and 8 are indefinite means-plus-function terms.
C. [Ground 3] Claims 1, 7-10 Are Indefinite Under Section 112, ¶ 2
Even if the Board disagrees that Section 112, ¶ 6 applies here, all of the
Challenged Claims must still pass muster under Section 112, ¶ 2. Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2013); see also MPEP § 2181,
Section II.A (9th ed. March 2014) (“The invocation of 35 U.S.C. 112(f) or pre-AIA
35 U.S.C. 112, sixth paragraph, does not exempt an applicant from compliance
with 35 U.S.C. 112(a) and 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, first and
second paragraphs.”) Indeed, a court or agency may find that the presumption
aginst means-plus-function is not rebutted, but that the lack of sufficient structure
still renders the claims indefinite under Section 112, ¶ 2. See Markem-Imaje Corp.
v. Zipher Ltd., No. 07-cv-00006-PB, 2012 WL 3263517, *7-9 (D. N.H. Aug. 9,
2012) (finding claims reciting “controllers” for performing functions to be
indefinite under Section 112, ¶ 2 after declining to invalidate the claims as means-
plus-function claims, because there were no algorithms). Indeed, under the
Supreme Court’s opinion in Nautilus, a claim is indefinite if when viewed in light
of the specification and prosecution history, it fails to “inform those skilled in the
art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v.
36
Biosig Insts., Inc., 134 S.Ct. 2120, 2124 (2013); SAP at 18-20 (finding as indefinite
the phrase “routed transactional data structure” because the specification contained
no description of “data structure” or how it was routed or transmitted over a
network). Here, as discussed above, a person of ordinary skill is not informed
about the scope of the claimed “software . . . for” system and device elements
(claims 1, 7, 8) or the “querying,” “generating,” and “transmitting” method steps
(claims 9-10) with reasonable certainty. See Ex. 1003 ¶¶ 75-82. Thus, the Board
should institute trial on claims 1 and 7-10 as indefinite under 35 U.S.C. § 112, ¶ 2.
D. [Ground 4] Claims 1, 7-10 Are Invalid under 35 U.S.C. § 112, ¶ 1.
Similarly, the Board should institute trial on the Challenged Claims under
the related but separate ground of lack of written description under 35 U.S.C. §
112, ¶ 1. The patentee here failed provide sufficient descriptions for the claimed
functions in the patent application, and patentee cannot rely on the obviousness of
the claims to satisfy 35 U.S.C. § 112, ¶ 1. Lockwood v. Am. Airlines, Inc., 107
F.3d 1565, 1572 (Fed. Cir. 1997); Ex parte Smith, App. 2012-007631 at 21
(specification failed § 112 ¶ 1 for failing to disclose algorithm for “generating an
opinion timeline” that was “[b]eyond general statements of the function to be
performed, which, at most, may render the claimed function obvious”); Avante
Int’l Tech. Corp. v. Premier Election Solns., Inc., No. 4:06cv0978 TCM, 2008 WL
2783237, at *9-13 (E.D. Mo. July 16, 2008). The Challeged Claims present a stark
37
example of pure functional claiming, supported by a specification that only
generally repeats the functions themselves. See Ex. 1003 ¶¶ 75-82. The Board
should institute trial under Section 112, ¶ 1 for claims 1 and 7-10.
E. [Ground 5] Claims 1 and 9-10 Are Anticipated Under 35 U.S.C. §
102 by the Network Solutions Message Ticketing System.
Network Solutions, Inc. (“NetSol”) was formed in the United States in 1979
to service the early infrastructure of the Internet. Ex. 1016 (“Kosters Decl.”) ¶¶ 1-
56; Ex. 1015 (“Ho Decl.”) ¶¶ 1-32. In September of 1991, NetSol became the sole
operator (i.e., “registrar” and “registry”) of the domain name system (DNS)
registry for managing Internet domain names. Kosters Decl. ¶ 7. In 1993, the
National Science Foundation created the Internet Network Information Center
(“InterNIC”) to provide domain name registration services for non-military
Internet networks, awarding NetSol the contract to manage InterNIC’s registration
services as the sole registrar for the most common and popular domain names,
including “.com,” “.net” and “.org.” Kosters Decl. ¶ 8. In March 1993, to manage
these popular domains, NetSol began to develop an automated, email-based
domain name registration system, called the Message Ticketing System (“MTS”).
Kosters Decl. ¶ 9. By September 14, 1995, NetSol required customer registrants to
make an initial payment after first registering a domain, and then a renewal
payment to maintain the registration. Id. As detailed below and in the declaration
38
of Mark Kosters—NetSol’s chief software engineer responsible for developing the
MTS system—at least as of August 1996, the MTS system automatically reminded
customers of deadlines for initial registration and renewal payments, and
automatically processed email-based template registration forms completed and
returned by customers in response to the reminders. Kosters Decl. ¶¶ 10, 1-56; Ho
Decl. ¶¶ 10-13; Ex. 1003 ¶¶ 83-86.
1. MTS was a publicly known and used prior art system.
Because the relevant features of the MTS system were all known or used in
this country by the public over the Internet before the Challenged Claims’ earliest
priority date of October 7, 1996, MTS qualifies as prior art under 35 U.S.C. §
102(a) (pre-AIA). And because MTS was not “abandoned, suppressed, or
concealed,” it also qualifies as prior art under 35 U.S.C. §102(g)(2) (pre-AIA).
“Known or used by others” means knowledge or use which is accessible to the
public. Carellav. Starlight Archery, 804 F.2d 135 (Fed. Cir. 1986); W. L. Gore &
Assoc. v.Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983) (secret use of a process still
constitutes invalidating public use if public could learn of the claimed process from
article produced by the secret process); MPEP § 2132 (same). The amount of
public disclosure required for a prior art “public use” is low. Netscape Commnc’ns
Corp. v. Konrad, 295 F.3d 1315, 1320 (Fed. Cir. 2002) (“any use of [the claimed]
invention” by someone “under no limitation, restriction or obligation of secrecy”
39
constitutes public use); Eolas Techs. Inc. v. Microsoft Corp., 399 F.3d 1325, 1334
(Fed. Cir. 2005) (finding public use of web browser demonstrated by inventor to
two engineers “under no confidentiality obligation”).
The use of a software-based system can be public even where it does not
enable a person of skill in the art to make the invention. See Zenith Elecs. Corp. v.
PDI Commc’ns Sys., Inc., 522 F.3d 1348, 1356 (Fed. Cir. 2008). Rather, the
inquiry is merely “whether the public use related to a device that embodied the
invention.” Id. (emphasis added); Lockwood v. American Airlines, Inc., 107 F.3d
1565, 1568 (Fed. Cir. 1997) (prior art software for “automated interactive sales
terminals” whose “critical aspects” and “essential algorithms” were confidential
trade secrets still held to be in public use because public used the system’s “high-
level aspects”). Further, under 35 U.S.C. § 102(g)(2), the MTS system need only
have been invented before October 7, 1996 in the United States and not have been
“abandoned, suppressed, or concealed.” Teva Pharm. Inds. Ltd. v. AstraZeneca
Pharms. LP, 661 F.3d 1378, 1382-86 (Fed. Cir. 2011). Patent Owner may attempt
to show an earlier conception date. However, it cannot legally do so. In, short the
documents patentee relied upon in the Litigation do not independently corroborate
an earlier conception date of the claim limitations. Microsoft Corp. v. Surfcast,
Inc., IPR2013-00292, et al., Paper 93 (Final Written Decision) at 15-17 (PTAB
Oct. 14, 2014); Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001
40
Paper 59 (Final Written Decision) at 21 (PTAB Nov. 13, 2013).
The features of MTS as recited in claims 1 and 9-10 of the ’078 patent were
all publicly accessible before October 7, 1996, at least through InterNIC’s website,
NetSol’s contractually required annual reports to the NSF, presentations at Internet
technology conferences, in online email discussion forums, and through MTS
emails to customers containing the template forms. Kosters Decl. ¶¶ 32-56; Ho
Del. ¶¶ 5-13, 27-30 Ex. 1003 ¶¶ 83-86. These publically available materials were
disseminated without any restrictions. See id. In March 1993, NetSol issued a
public “Request for Comments: 1400” (“RFC1400”) that disclosed the automated
processing of MTS template domain registration forms, stating that “[e]ffective
April 1, 1993,” requests for new registrations needed to use a new “autoreg
template” that customers were to fill in and email to InterNIC’s “[a]utomated
Internet registration services” for “parsing” by the InterNIC host software.
Kosters. Decl., Ex. 5 at NET316-322; Ho Decl., Ex. B (same). The MTS system
was being used publically as of March 1993 and was continuously used and
improved upon since then such that by August 30, 1996, InterNIC reported to a
publicy agency, NSF, that “[t]he ticketing system is in place and operating” and
that “[d]omain name registration and update templates are available and in use on
the web.” Kosters Decl., Ex. 2 at 2; Ex. 1003 ¶¶ 83-86.
InterNIC’s website also published features of MTS before October 7, 1996.
41
This included instructions for customers on how to complete the template
registration forms, email them to InterNIC for automatic processing, and for how
to respond to the automatically generated email reminder from InterNIC to either
make payment on the registration or modify or delete the registration. See Kosters
Decl. ¶¶ 32-56, Exs. 1 (form available at ftp://rs.internic.net/templates/domain-
template.txt), 3 (noting for “Maintenance Fee[s] Due” that “[t]he Registrar will not
attempt to notify the contacts by any means other than email.”), 4 (same), 8
(“Registration Process Overview” flow chart showing “[r]equest is automatically
acknowledged” and “[t]emplate is automatically checked for errors”).
Public discussion of MTS also occurred before October 7, 1996. In May
1996, Mr. Kosters presented the progress of the MTS services at that year’s North
American Network Operator’s Group (“NANOG”) convention open to the
interested public, confirming that the MTS “autoreg” initial registration services
were implemented in June of 1995. Kosters Decl., Exs. 6, 7 (slide 14). MTS was
clearly auto-processing emails by then, as “80% of new submissions” and “50% of
modifications” to registrations were “never seen by a human.” Id., Ex. 7 (slide 14).
Mr. Kosters also publicly announced that “60 day notices [were] being sent as of 1
May, 1996 on a regular basis” for “Billing - Renewals.” Id. (slide 18); see also id.,
Ex. 8 (“InterNIC sends renewal notice to registrant 60 days before the 2yr
anniversary of the initial registration”). Members of the public interested in
42
Internet domain names also publicly discussed MTS features via the NANOG
“[email protected]” distribution list, and NetSol used the “[email protected]”
customer email list to explain the automatic registration process and respond to
“frequently asked questions” about MTS. Kosters Decl., Exs. 9, 11.
The MTS automated features were also directly disclosed to the public
before October 7, 1996 through email exchanges between MTS and NetSol
customers—including exchanges with the named inventor of the ’078 patent, Mr.
Whitymer, regarding his domain registration for his law firm domain (ssjr.com)
and personal domain (whitmyer.org). Kosters Decl. ¶¶ 32-56, Exs. 10, 12-16, 18-
23; Ho Decl. ¶¶ 15-30, Exs. C-F; Ex. 1003 ¶¶ 83-86. These documents show that
email “notices” coming from MTS were automatically generated periodically
based on dates of the customer’s initial registration record in order to remind them
of an upcoming “maintenance fee,” and that MTS automatically processed the
customer’s reply emails and sent auto-reply confirmations acknowledging receipt.
See, e.g., Kosters Decl., Ex. 18 at ll. 28-32 (“The purpose of this notice is . . . 1) to
inform you that your annual $50 maintenance fee will be due in approximately 60
days, and 2) to give you an opportunity to update any information on your domain
registration template”), id. ll. 655-58 (“This is an automatic reply to acknowledge
that your message has been received”), Ex. 19 (same); Ex. 1003 ¶¶ 83-86.
Patent Owner may argue that the MTS database containing domain
43
registration records was not disclosed as being auto-queried by the MTS system in
order to trigger the MTS reminder emails. However, particularly because the ’078
patent itself discloses no code and only generically claims functions, it is not the
code itself that must be publicly discernible, but rather the high-level functions
(such as the querying function) as recited in claims 1 and 9-10 of the ’078 patent.
See Lockwood, 107 F.3d at 1568. In any event, the publicly available materials
expressly disclose that MTS utilized a “registration services database,” that the
emails were periodically sent out by MTS based on registration dates, and that the
system “depends on valid information from the template registration that [the
customers] fill out so that [the MTS] database will generate correct email and
postal invoices and notices.” Kosters Decl., Exs. 3-4, 9, 13. MTS customers could
even automatically query the registration database themselves and notice that
initial and renewal registration dates were stored by MTS. Id., Ex. A at 0021, Ex.
B at 0046-48 (fqmts query). Given the extensive automatic nature of the MTS
system as evidenced by the publically available materials, one of ordinary skill
would have readily concluded that the MTS system was automatically querying a
database by the registration activation or renewal date so as to achieve the purpose
of the system—i.e., to remind customers to pay for and thus keep their domains
active. See Ex. 1003 ¶¶ 83-86. MTS is prior art under § 102(a) and/or § 102(g)(2).
44
2. MTS contains each element of claims 1, 9, and 10.
A claim is anticipated if each and every element as set forth in the claim is
found, either expressly or inherently, in a single prior art reference. Verdegaal
Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Prior to
October 7, 1996, the MTS software operated on a clustered set of computers at
NetSol running the UNIX operating system and using a central filestore, called the
Ingres database, which contained domain name registration records. Kosters Decl.
¶ 12. These computers were connected to the Internet, and communications sent
by and to the MTS system were via Internet-based email. Id. As Mr. Kosters
explains and as authenticated by NetSol’s records custodian, Matthew Ho, all of
the programs and files contained in NSI-SOURCECODE_000001 to NSI-
SOURCECODE_003220 were used in the operation of MTS as of the dates
reflected in their “SCCS” repository timestamps shown in the code, all of which
are no later than July of 1996. Kosters Decl. ¶¶ 13-14; Ho Decl. ¶¶ 15-26.
Initial Invoicing. Prior to October 7, 1996, there were two types of
automatic processes that MTS performed. Kosters Decl. ¶¶ 17-24. In response to
a NetSol customer sending InterNIC an email containing a filled out registration
template selecting a “NEW” domain, MTS automatically parsed the email to create
a new record in NetSol’s registration records “Ingres” database. Id. A custom
Ingres application called “igen” automatically queried the registration database
45
daily, determining which records were “NEW” by selecting records with
“activation dates” falling on the query date and in need of an initial invoice. Id.
For each record requiring an initial invoice, the igen program automatically
created an email populated with initial invoice and payment instructions specific to
that customer, both in the body of the email and in its header. Id. MTS then
automatically transmitted that email to the customer and stored a copy within the
MTS ticketing system. Id. The customer responded to that email and MTS
automatically received, processed, and stored two types of customer responses to
the initial invoice email. Id. First, a customer could fill in a registration template
email selecting the “DELETE” or “MODIFY” option and email it back to
InterNIC, which would automatically parse that email and update the Ingres
registration database records accordingly. Id. The customer receiving the invoice
email could have either revised his previous email containing the registration form,
or obtained a new form through the InterNIC FTP server (residing at
rs.internic.net) by using the URL link in the MTS email. Id. The InterNIC FTP
server processed Internet-based requests from the MTS customer who clicked on
the URL in the MTS email, and sent the requested information (here, the domain
registration template) back to that MTS customer for revision. Id.; Ex. 1003 ¶ 85.
Second, per the instructions contained in the initial invoice email, a customer
could respond by emailing MTS at [email protected] to ask questions related to
46
the invoice. Kosters Decl. ¶ 22. For either type of response, MTS would auto-
parse the customer’s email to determine whether it contained information that
needed to be passed along to the billing department. Id. ¶¶ 21-23. If so, MTS
would automatically transmit the information contained in the customer’s response
to a separate billing department for further processing. Id., Ex. A; Ho. Decl. ¶¶ 13-
18; Ex. 1003 ¶¶ 83-86.
Renewal Reminders. Also on a daily basis, MTS software automatically
queried the same Ingres database to determine whether a customer’s domain
registration was soon expiring and in need of renewal payment. Kosters Decl. ¶¶
25-31. The MTS software queried records for domain registrations that had
“activation” dates within a preset date range in advance of their expiration, such as
in the next 60 days. Id. For each selected record, a custom application called
“rereg” automatically created renewal notice emails with template forms filled in
with customer-specific information coming from the queried record. Id. These
emails included a URL link that the customer could use to access the latest
registration template from InterNIC’s FTP server residing at rs.internic.net. Id.
MTS automatically transmitted and stored copies of these renewal notice emails to
the customers, and the customers could respond to the email by filling in
information in the form within the email body, such as by entering updated contact
information or modifying other registration information, or deleting the
47
registration. Id.
Once the customer emailed back the completed form, MTS software auto-
parsed the email, sent an auto-confirmation email with a ticket ID number to the
customer, and then parsed the filled-in template information to update the Ingres
database with any new or modified information. Id. ¶ 29. MTS also automatically
parsed any payment or billing information contained in the customer’s email, and
transmitted that information by email to a separate billing department for further
processing. Id.; Kosters Decl., Ex. B (detailed source code citations for renewals
process); Ho Decl. ¶¶ 19-25; Ex. 1003 ¶¶ 83-86.
The following claim chart (“MTS § 102 Chart”) demonstrates that MTS
discloses each and every element of the claims 1 and 9-10 of the ’078 patent. Ex.
1003 ¶ 85. Claim 9 is quite literally the “method” of claim 1, and therefore claim 9
is rendered anticipated by MTS in the same way as in claim 1 without the need for
separate charting. Id. ¶ 86.
’078 Claims § 102 – MTS 1. A device for automatically delivering professional services to a client comprising:
Kosters Decl., Exhibit 5 (RFC1400, NET000318).
[1A] a computer;
Initial & renewal processes – MTS software operated on computers at Network Solutions running the UNIX operating system and connected to a central filestore containing customers’
48
’078 Claims § 102 – MTS domain registration records. Kosters Decl. ¶ 12-16. See also Ho Decl. ¶¶ 1-33.
[1B.1] a database containing a plurality of client reminders,
Initial & renewal processes – MTS stored domain registration records in a database called “Ingress,” referred to in the code as the “id” database. Kosters Decl. ¶ 17-19. For each domain record, “activation_date” attributes were maintained, indicating the start of the pre-set registration period for a given domain name. Id. The source code provided a library of C structs which mapped directly to the database schema’s table structures. The contents of this file represented the database schema for the id_domain table in the id database, as shown here:
Kosters Decl. Ex. A at 0023, Ex. B at 0047; id. Ex. 17, NET000383 (highlights added). Evidence of the INGRES (“id”) database as storing domain registration information was also found in the MTS code for processing customer “finger” query requests to be able to obtain status of MTS’s processing of the customer’s renewal form. Kosters Decl., Ex. 5 at NET000319. Renewal process – The “rereg” program processed renewals. The rereg program connected to the database in rereg/db_mail.sc at line 164-175: printf("\nConnecting to database..."); if( !db_connect ("id")) ... else {
49
’078 Claims § 102 – MTS printf("\nConnected to the database..."); connected = TRUE; }
Kosters Decl., Ex. B at 0048, NSI-SOURCECODE_772 lines 164-75.
[1B.2] each of the client reminders comprising a date field having a value attributed thereto;
Initial & renewal processes – The domain registration records in the INGRES database contained fields showing the NetSol customer’s domain “activation date.” Kosters Decl. ¶¶ 17-31, Ex. A at 0023, Ex. B at 0047. Initial process – Based on the date and number of days, a date range was constructed by the code and the code selected domain registration records (“select_domain”) with a particular date: { fprintf (stderr, "selecting new domains |%s|\n", date); if (!select_period (inv_date, due_date, atoi(period), "days")) { ... } dtptr = select_new_domains (date, ticket_date, dtptr); fprintf (stderr, "ticket date |%s|\n", ticket_date); days--; if (days > 0) format_next_date (date); } while (days > 0);
Kosters Decl., Ex. A at 0024 (NSI-SOURCECODE_34 at lines 161-73). Renewal process – The Lgen program was called using the registration date, list of days to query, etc.: lgen(act_date, days, ticket_date, dtptr,mts_config, log_on, period, fudge);
Kosters Decl., Ex. B at 0049 (NSI-SOURCECODE-772 at line 230). The program then looped around based on the registration or activation date of the listed domains (lines 111-138 of lgen.c): /* Select dates 60 days from the activation date given. */ if(!select_period(act_date, search_act_date, atoi(lperiod))) ... format_search_date(search_act_date); do { ... if (!select_period (inv_date, due_date, atoi(lperiod))) ...
50
’078 Claims § 102 – MTS strcpy(global due date, search act date); select_new_domains (search_act_date, ticket_date, mts_config, log_on, fudge); ... days--; int_period++; itoa(int_period, lperiod); printf("\nDAYS: %i\n", days); if (days > 0) format_next_date (search_act_date); act_date = &search_act_date[0]; }while (days > 0);
Kosters Decl., Ex. B at 0050 (NSI-SOURCECODE-889 lines 11-138).
[1C] software executing on said computer for automatically querying said database by the values attributed to each client reminder date field to retrieve a client reminder;
On a daily or periodic basis using scheduled system jobs on UNIX called cronjobs, MTS would query the Ingres database to determine which domains were recently registered to determine which customers needed invoices emailed to them (initial process), and to determine which domains were expiring and thus required renewal emails (renewals process). Kosters Decl. ¶ 18, 26. Initial process – Based on the date value passed into select_new_domains, the sql query code selected domain registration records that matched the selected “activation_date” and added it to a linked list for further processing: llist_struct *select_new_domains (activation_date, tracking_no, llistptr) EXEC SQL BEGIN DECLARE SECTION; char *activation_date; char *tracking_no; EXEC SQL END DECLARE SECTION; llist_struct *llistptr;
. . . EXEC SQL SELECT handle, domainame, admincontact, techcontact, parentdom INTO :domrec.handle, :domrec.domainame, :domrec.admincontact, :domrec.techcontact, :domrec.parentdom FROM id_domain WHERE activation_date = :activation_date and parentdom != 'RSVD';
Kosters Decl., Ex. B at 0025 (NSI-SOURCECODE-10 at lines 78-83, 91-95). Renewals process – Based on the date value
51
’078 Claims § 102 – MTS passed into select_new_domains, the sql called domains that matched the registration date against the date selected “activation_date” and added it to a linked list for further processing: llist_struct *select_new_domains (activation_date, tracking_no, llistptr) EXEC SQL BEGIN DECLARE SECTION; char *activation_date; char *tracking_no; EXEC SQL END DECLARE SECTION; llist_struct *llistptr;
Kosters Decl., Ex. B at 0049-53, Ex. A (same). The select loop starts on line 91 that builds a list of domains that match that activation date. Kosters Decl., Exhibit 11 at lines 44-69.
[1D] software executing on said computer for automatically generating a form based on the retrieved client reminder;
Initial process – MTS software automatically generated initial invoices emails using the “igen” program. Kosters Decl. ¶ 18-22. For the initial process, the form is considered the initial invoice email containing instructions on how to email NetSol with billing questions /or to complete a template to delete the registration:
Kosters Decl. Exhibit 21. Renewal process – MTS software automatically generated renewal reminder emails using the “igen” program. Kosters Decl. ¶¶ 25-31, Ex. B. At the end of the select loop listed in claim 1 step 1C, the system sent a linked list via a procedure called use_db_entries (db.sc line 156) that used a linked list of domains to build a template (db.sc lines 345-355): /* PRINT THE TEMPLATE TO THE FILE "mail_template.txt" */ fill_template_error = fill_template_struc_v3(handle_in); if(fill_template_error == FALSE) ... print_template_error = print_template_v3("mail_template.txt");
52
’078 Claims § 102 – MTS Kosters Decl., Ex. B at 0025. This code called print_template_v3 that was a filled in registration template to the listed contacts. Id. at 0052-54. The form is considered the MTS email containing the template form to be filled out by the customer directly in the email, or to download the latest form and include it as filled out in the email. Kosters Decl. ¶ 25-31. For example:
Kosters Decl. ¶ 29, Exhibit 12 at ARIN73; see also id. at Exs. 18-19 (renewal email exchanges); id. at Ex. 18 (ARIN1-17), Ex. 19 (ARIN0018-46), Ex. 12 and Ex. 16.
[1E] a communication link between said computer and the Internet; and
Initial & renewals processes – MTS was connected to the Internet and it sent and received the MTS ticket emails over the Internet as described in the Kosters Declaration. Kosters Decl. ¶ 12; see also id., Ex. 5 at NET318 (InterNIC’s MTS was a “new Internet registration service” that “will be connected to SureNET via T1 around March 10, 1993”). Kosters Decl. ¶ 38. Additionally, the code shown in the Kosters Declaration for the step for “automatically transmitting the form” (step 1F) shows that MTS was connected to the Internet using the address in the
53
’078 Claims § 102 – MTS ip address range of 198.41.0.0/22. E.g., Kosters Decl. Exhibit A at 0027.
[1F] software executing on said computer for automatically transmitting the form through said communicat- on link.
Initial process – MTS software automatically transmitted the invoice reminder email, which was automatically populated with customer-specific information pulled from the Ingres database query in claim element 1[C]. Kosters Decl. ¶¶ 17-31. The .snd files generated in print_invoice used a process called sendit that sent the invoice files. Id. Sendit took a list of files and invoked the sendmail agent via the open_mail_agent. (lines 62-77 of sendit.c). Id. The open_mail_agent called the operating system’s sendmail agent that sent the email that comprises the invoice to the listed contacts: opens the mailer via popen ****************************************************************************/ FILE *open_mail_agent() { FILE *fp; fp = popen (MAIL_AGENT, "w+"); return fp;
Kosters Decl., Ex. A at 0027-30. Renewals process – MTS automatically transmitted an email template form to each customer whose registration “activation date” was within a certain time of expiration, starting with a reminder period of 60 days in advance of expiration. Kosters Decl. ¶¶ 25-31. The system called Function mail_POC that would send the resultant template to the points of contact (POCs) listed on the domain: strcpy(dom, domain); act_date_file = fopen("act_date.txt", "wt"); fprintf(act_date_file,"\n\n\n ---- Domain Name Registration Renewal Notice ----"); fprintf(act_date_file,"\n\nYour Anniversary Date is: %s", ad); fprintf(act_date_file,"\nDomain: %s\n\n", dom); fclose(act_date_file); out = fopen(NICout_file, "w"); setbuf(out, (char *)NULL); append_file(out, "temp_header.txt"); append_file(out, "act_date.txt"); append_file(out, bill_text); append_file(out, "mail_template.txt"); append_file(out, "/home/role/rereg/dom_template_inst.txt"); fclose(out);
54
’078 Claims § 102 – MTS Kosters Decl., Ex. B at 0053-54. Each template was stored in a file called “NICout,” which was uniquely called by the make_inc_filename that stored each rereg template in a directory constructed from filenaming.c (lines 63-79). Id. At the end of the run, a program called “sendit” would email the template file to the contacts from a listing of files in that directory: # for (i=optind; i< argc; i++) { filename = argv[i]; fprintf (stderr, "filename |%s|\n", filename); fp = open_mail_agent(); if (!cat_file_to_fp (filename, fp, log_on)) { ... else { log (0, log_on, "email_reply: mail sent!"); close_mail_agent(fp); unlink (filename);
Id. at 0054-55. As with the initial invoicing process, the program open_mail_agent was found in mts/reply.c at lines 151-159 that called the operating system’s sendmail agent, which sent the email that comprises the invoice to the listed contacts. Id. at 0055-57. See also Kosters Decl. ¶¶ 17-31, Ex. 10, Ex. A at 0026-0034, Ex. B. at 0056-57 (Spool_mail.c lines 92-103) and 0060-61; Kosters Decl. at ARIN0044. Other examples can be found at Exhibit 14 (NET000519), Exhibit 15 (NET000529).
Id., Exhibit 5 (NET000318-319).
55
’078 Claims § 102 – MTS 10. The method of claim 9 where in [sic] the generating step further comprises generating an email message.
See citations to claim 1. For example: Kosters Decl. ¶¶ 18-22, Exhibit 21 (initial invoicing process). /* PRINT THE TEMPLATE TO THE FILE "mail_template.txt" */ fill_template_error = fill_template_struc_v3(handle_in); if(fill_template_error == FALSE) ... print_template_error = print_template_v3("mail_template.txt");
Kosters Decl. ¶¶ 25-31, Ex. B at 0025 (renewals process).
Kosters Decl. ¶¶ 25-31, Exhibit 12 at ARIN73; see also id. at Exs. 18-19 (renewal email exchanges); id. at Ex. 18 (ARIN1-17), Ex. 19 (ARIN0018-46), Ex. 12 and Ex. 16.
F. [Ground 6] Claims 1, 7-10 Are Invalid as Obvious Under § 103 in
View of MTS and Knowledge of One Having Ordinary Skill.
As set forth above, each feature of claims 1 and 9-10 of the ’078 patent was
expressly found in the MTS prior art system. However, to the extent the Board
determines that Petitioner has not met its burden on showing MTS publicly
disclosed automatically performing the ’078 patent’s automatic “querying,”
56
“generating,” or “transmitting” limitations, those functions would have been
obvious based on information indisputably publicly disclosed in the MTS ticket
emails, RFC1400, and “rs-talk” email discussion forum. Claims 7 and 8 merely
replace the MTS FTP server with a generic and well-known “web server,” which
would likewise have been obvious to implement based on the operation of MTS.
When considering obviousness, “it is proper to take into account not only
specific teachings of the reference but also the inferences which one skilled in the
art would reasonably be expected to draw therefrom.” Liberty Mutual Ins. Co. v.
Progressive Casualty Ins. Co., CBM2012-00002, Paper 66 (Final Written
Decision), 19-20 (P.T.A.B. Jan. 23, 2014); see 35 U.S.C. § 103. Here, one of
ordinary skill would be educated in computer science and have experience in
computer programming. See Section V.A, supra. As Dr. Goldberg explains, this
would encompass knowledge of fundamental software functions of querying a
database based on date field values, and automatically generating forms based on
information stored in a database (even though the actual algorithm for those
functions is not disclosed in the ’078 patent’s specification). Ex. 1003 ¶ 88. One
of ordinary skill would use these skills with information contained in the MTS
tickets or MTS description in RFC1400 to arrive at every element in claims 1 and
7-10 in the ’078 patent. There would have been to motivation to perform these
functions. Ex. 1003 ¶¶ 89-90. The entire goal of MTS was to automate as many
57
functions of Internet domain name registration as possible. See Kosters Decl., Ex.
5 at NET316-22 (RFC1400). RFC1400 was entitled “Transition and
Modernization of the Internet Registration Services,” and described how the “new
autoreg templates” were designed “to facilitate automatic processing.” Id. at
NET316-17. RFC1400 further characterized the new MTS system as “[a]utomated
Internet registration services” designed to solve the same efficiency problem in the
art identified by the ’078 patent. Compare id. at NET318 (“This new automated
system will allow more accurate and timely processing of registration requests.”),
with Ex. 1001 at 2:23-26 (“What is desired, therefore, is an automated system . . .
which will improve the speed, efficiency, and reliability of performing professional
services for clients.”).
One of ordinary skill would therefore use basic programming to achieve this
efficiency through any further automation of the MTS system, by creating software
to automatically query a database to find expiring registrations. Indeed, the MTS
emails and RFC1400 even referred to MTS’s use of a database. Kosters Decl., Ex.
5; Ho Decl. ¶¶ 20-26, Ex. B at NET510 (referencing MTS “InterNIC database” as
storing “domain name records.”), NET321 (showing “[c]onnecting to the rs
Database” as part of customer processing for querying status of MTS ticket
processing). And since the automatic receipt and “parsing” of the customer’s reply
was expressly referenced in RFC1400 and the MTS ticket emails, automating the
58
remaining steps of generating the MTS ticket email and sending it out would have
been obvious. Ex. 1003 ¶¶ 88-90.
To the extent Patent Owner argues that MTS does not disclose using a “web
server” to transmit the forms as in claims 7 and 8 of the ’078 patent, that too would
have been well within the abilities and motivation of one having ordinary skill in
the art. Ex. 1003 ¶¶ 91-94. A web server is fundamental to the world wide web
architecture, so well known that it was published in “Internet for Dummies” at
least as of 1993, and thus would have been well within the computer science
knowledge of one having ordinary skill. Id. ¶¶ 91-93; Exs. 1007-1008; See
Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1326-27 (Fed. Cir. 2008)
(finding incorporation of “web browser technology” obvious and noting the
Internet, web, and browsers were well-known before October 1996); MPEP §
2143(I)(B) (Example 7). Motivation to use these standard web features can be
found in the MTS ticket emails themselves, which transmitted the templates to the
customer through the Internet from an FTP server the same way as a web server
would have, only using a different comunications protocol (HTTP instead of FTP).
Ex. 1003 ¶¶ 91-94; Kosters Decl., Exs. 13-16, 18-23.
The transition from FTP to HTTP protocol would have been trivial and well
within the capability of a person of ordinary skill. See Ex. 1003 ¶¶ 91-93; Versata
Software, Inc. v. Internet Brands, Inc., 902 F. Supp. 2d 841, 850 (E.D. Tex. 2012)
59
(upholding obviousness finding based on expert testimony that “many software
products were being adapted to work on the Internet, and it therefore would have
been obvious to put ‘any of th[e] functionality . . . on a second computer like a web
server’”); Ebay, Inc. v. Kelora Sys., No. C10-4947CW, 2012 WL 1835722, at *13-
14 (N.D. Cal. May 21, 2012) (concluding as a matter of law that “client-server
systems were known at the time of the invention . . . , [and] were obvious to try
and were taught by prior art”); Ex Parte Sung-Sik Jung, No. 2008-005636, 2009
WL 3089021, at *4 (BPAI 2009) (“In the latter part of the last century, data
distribution by web servers, for World Wide Web and Internet access, became
commonplace.”). Indeed, NetSol already had launched an InterNIC website that it
used in connection with the registration system—it just had not gotten around to
incorporating the web into MTS, likely due to the unexpected rapid influx of
automated registrations through the Internet email-based MTS. Kosters Decl. ¶¶
32-56, Exs. 1-4; Ho. Decl. ¶¶ 5-9, 27-30, Exs. C-F.
G. [Ground 7] Claims 1, 7-10 Are Obvious Under 35 U.S.C. § 103 in
View of PerfectLaw, Alone or in Combination with MTS.
“PerfectLaw” refers to the suite of legal docketing and document assembly
software sold by Executive Data Solutions, Inc. (“EDSi”), a company founded by a
former computer science professor at the University of Miami named John
Duncan. Ex. 1014 (“Duncan Dep.”) at 48:11-42, 51:10-56:24, 119-122, 136-39,
60
cover letters; id., Ex. 10 at WS27635. PerfectLaw was widely distributed to
several large law firms throughout the country well before the filing date of the
’468 patent. See id. There are at least two relevant software applications that
EDSi sold together and documented in manuals prior to the earliest priority date of
the ’078 patent: (1) the “PerfectLaw Docket” software; and (2) the “PerfectLaw
Document Assembly” software. See id. EDSi referred to these as “front office”
applications, and installed and customized them with PerfectLaw “back office”
applications like timekeeping and billing. Id., Ex. 10 at WS27635-39.
1. PerfectLaw Qualifies as Prior Art.
PerfectLaw constitutes § 103 prior art because (i) its documentation
constitutes a prior art printed publication under § 102(a), and (ii) because it was a
prior system known or used in the United States more than a year before the
earliest priority date of the ’078 patent under § 102(a)-(b). MPEP §
2144.08(II)(A)(1). To qualify as a “printed publication,” a reference does not
literally need to be published on printed on paper—software, and software manuals
can be “printed publications” so long as they are “disseminated or otherwise made
available to the extent that persons interested and ordinarily skilled” can access it
exercising reasonable diligence. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir.
2009); Ex Parte ePlus, Inc., Decision on App. in Reexam. Control No. 90/008,104
at 14-18 (BPAI May 18, 2011) (non-precedential). The PerfectLaw manuals and
61
brochures cited here were provided to dozens (if not hundreds) of EDSi customers
that licensed the software before October 7, 1995. Duncan Dep. at 48:11-42,
51:10-56:24, 119-122, 136-39; id., Ex. 4 (sold to SSJR in Feb. 1994), Ex. 10 at
WS27660-61 (brochure extensively describing the PerfectLaw software distributed
in 1993 at Arizona trade show called “LAWNET ’93”). Similar to ePlus, there
were no restrictions on who could purchase PerfectLaw, so anyone could obtain
the PerfectLaw manuals and brochures documentation—and many law firms did.
While Patent Owner may argue that the distribution dates of certain PerfectLaw
manuals are uncertain, the dates stated on their covers and elsewhere within them
are corroborated by Mr. Duncan’s testimony that PerfectLaw in fact contained
their disclosed functionality well before October 7, 1996. See, e.g., Duncan Dep.
at 77:23-25; 78:25-80:12; 84:7-86:19; 173:16-174:6. With far more detail than the
’078 patent, a POSA would have been able to practice the Challenged Claims
based on the PerfectLaw documentation without undue experimentation. Ex. 1003
¶¶ 61, 96-122; see 3M v. Chemque, Inc., 303 F.3d 1294, 1306 (Fed. Cir. 2002).
Thus, PerfectLaw qualifies as prior art for purposes of obviousness.
2. PerfectLaw Docketing and Document Assembly Software.
As with other docketing systems admitted as prior art by the ’078 patent,
PerfectLaw “contain[ed] a database of deadlines,” and automatically “notifie[d] the
professional of each upcoming deadline a preset time period before the deadline”
62
through a “networked computer.” Duncan Dep. at 64:18-66:23, 77:5-80:19, 98:19-
102:17, 173:16-174:6; id., Exs. 4-9, Ex. 10 at WS27638-39, Ex. 11, Ex. 12
(EDSI000521-25), Ex. 13 (WS27334, WS27344). But this was not the only
functionality of PerfectLaw available before the ’078 patent’s earliest priority date.
Rather, PerfectLaw automated many more steps of the claimed “professional
services” delivery process. EDSi packaged together its automated docketing and
document assembly software, integrating it with computers throughout a particular
law office through a centralized database and local area, intranet (or “LAN”)
network. Id. at WS27660. Packaging this software together into what EDSi
variously marketed as “Total PerfectLaw System,” “Attorney Information
Management” (AIM), or “Novell PerfectLaw Sofwtare Portfolio” (among others),
EDSi championed itself as a “one-stop automation shop.” Id. at WS27635-36,
WS27660; Ex. 1003 ¶¶ 96-106.
The PerfectLaw Docket software (also referenced as PerfectLaw
“Docket/Calendar” and “Docket II” or “Docket 2.0”) contained all the features of
the Challenged Claims’ “database,” “client reminders,” and “querying” thereof—
amounting to an automated “tickler” for tracking important dates and displaying
status reports and reminders for important upcoming deadlines. Duncan Dep., Ex.
10 at WS27640. This software monitored a centralized “table” database that stored
“client reminders” in the form of “master files” having “rule-based appointments”
63
with multiple fields, including a “due date” field, client, matter, and event codes.
Id. at WS27640; Duncan Dep. at 64:18-66:23, 77:5-80:19, Ex. 12 at EDSI000521-
25. The rule-based software automatically calculated reminder dates for events
based on an initial “key date,” such as the filing of a complaint. Duncan Dep. at
173:16-174:6; id., Ex. 12 at EDSI000552-557 (configurable “Sequence, Interval,
and Relative” fields triggered period for future deadline reminder); id. Ex. 10 at
WS27639 (characterizing this feature as implemented with “query software”). The
reminder would be displayed on a networked law office computer in a number of
different ways, including as an appointment slip, calendar, or master list showing
the upcoming deadlines and reminder information. Duncan Dep., Ex. 10 at
WS27640 (showing tickler on June 15, 1993 to “[p]repare reply to interrogatories”
due five days thereafter); Ex. 1003 ¶¶ 104-110. EDSi marketed the PerfectLaw
Docket software as “keep[ing] clients better informed by producing case status
reports [which] increases the chance for future business.” Duncan Dep. Ex. 10 at
WS27640.
In conjunction with the docketing software, the Document Assembly
software automatically merged client or event-specific data with template forms to
create what the ’078 patent claims simply as a “form.” Document Assembly
tapped into form documents that were created using a Microsoft WordPerfect word
processor, which were shared across the LAN network. Duncan Dep. at 64:14-
64
66:23, 79:16-2, 82:22-89:16, 93:6-94:7; Duncan Ex. 10 at WS27642. The forms
were compatible with a database management system called “dBASE,” which
facilitated the Document Assembly software function of automatically merging
client/matter and event-specific information with the WordPerfect template forms
to assemble documents. E.g., Duncan Ex. 10 at WS27642-43 (showing template
answer pleading populated with specific client/matter information like party name,
attorney contact information, and date). EDSi marketed the assembled forms as
“[p]rovid[ing] a more accurate and timely document to the client or court.” See id.
at WS27642; Ex. 1003 ¶¶ 107-08.
What PerfectLaw did not appear to have at the time was a connection to the
Internet to transmit its reminders and forms to outside of the law office in which
PerfectLaw was installed. See Ex. 1003 ¶¶ 109-110. It also apparently did not use
a web server. Id.
3. One of Ordinary Skill Would Be Motivated to Combine
PerfectLaw with Common Knowledge or with MTS.
Under the Supreme Court’s ruling in KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398 (2007), the USPTO need not identify an express teaching, motivation, or other
“specific hint or suggestion in a particular reference” in order to combine prior art
to arrive at the claimed invention. Perfect Web Technologies, Inc. v. InfoUSA,
Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (citations omitted); MPEP § 2141.
65
Instead, the obviousness analysis should employ the “common sense” of one
having ordinary skill in the art, with “a reasoned explanation” supporting the
proposed combination and a reasonable likelihood of success. See id; see also
Wyers v. Master Lock Co., 616 F.3d 1231, 1238-45 (Fed. Cir. 2010) (finding it was
common sense to combine prior art references to arrive at the claimed invention).
Here, one of ordinary skill in the art would have combined common sense or
features of MTS to arrive at automatically transmitting, receiving, and processing
the PerfectLaw document assembly forms and “tickler” notices in order to arrive at
claims 1 and 7-10 of the ’078 patent. This would have been simply applying
modern technology to further automate the PerfectLaw system.
a. Combining PerfectLaw with Ordinary Skill
EDSi installed the PerfectLaw software to operate on computers networked
together inside a law firm, but it is unclear whether those networks were connected
to the Internet or used URLs or websites to convey the forms generated by
Document Assembly. Nevertheless, it would have been routine and trivial for one
having ordinary skill in the art of the ’078 patent to connect the PerfectLaw
software to the Internet to exchange communications regarding the forms, and to a
web server for transmitting the form through the Internet or to another computer
upon activation of a URL. Ex. 1003 ¶¶ 111-17. It was well within the knowledge
of persons in the software, computing, and networking industry before October
66
1996 that the Internet and websites hosting forms on web servers were modern
communication standards and the wave of the future. See Ex. 1003 ¶¶ 115-17.
PerfectLaw itself was compatible with the Internet, expressly including hardware
and software infrastructure suitable for its LAN intranet, which itself was
compatible with an Internet connection simply through the use of the same modem
and telephone lines used by the LAN network. See Duncan Dep. Exs. 4-5 at
EDSI000728-732 (EDSi brochure sent to SSJR listing proposed hardware of
“External Modem” and “Novell Asynchronous Communications Server” and
software applications of “Electronic Mail” and “Novell Netware”); Duncan Dep. at
57:14-59:20, 71:1-73:9; 80:3-81:25, 102:1-103:11, 104:22-105:2, 106:1-4, 107:3-
5, 125:3-7. In fact, EDSi already offered various “on-line” services in connection
with the PerfectLaw software. Duncan Dep., Ex. 10 at WS27638-39.
The PerfectLaw materials showed motivation to modify the PerfectLaw
software to make its response forms available over the Internet. Ex. 1003 ¶¶ 112-
17. For example, in addition to all of the Internet-compatible and web server-
compatible hardware and software already deployed by EDSi to install PerfectLaw,
the overall mission of EDSi as the “one-stop automation” shop that “focus[ed] all
[its] energies on automating law offices” would motivate a POSA to implement a
connection to external clients through the Internet as part of a natural expansion of
technological capabilities to meet the “automation” mission. Duncan Ex. 10 at
67
WS27635-36; Ex. 1003 ¶ 114. One would also have been motivated to combine
the Internet and web servers to solve the common problems of both PerfectLaw
and the ’078 patent of “automation,” “reduc[ing] attorney preparation and reading
time, as well as the secretarial cost of document production,” and “provid[ing] a
more accurate and timely document to the client or court” (Duncan Ex. 10 at
WS27642)—i.e., to “improve the speed, efficiency, and reliability of performing
services for clients.” Ex. 1001 at 2:23-26; Ex. 1003 ¶ 115. Indeed, Mr. Duncan
testified that market demand required EDSi to integrate their PerfectLaw system
with email for automatic reminder reports. Duncan Dep. at 80:3-81:45.
There would also be a high likelihood of success when combining
PerfectLaw with modern communications technology like the Internet and web
servers. Ex. 1003 ¶¶ 116-17. EDSi’s emphasis on “high quality, industry standard
components” of “the highest quality available” were reportedly highly compatible
with state of the art technology, having “greater flexibility” to adapt to new
technologies like the Internet—which was available before October 1996. Duncan
Dep., Ex. 10 at WS27660. Further, Mr. Duncan testified that PerfectLaw was
compatible with being used over the Internet. Duncan Dep. at 73:4-9, 102:24-
103:11. Adapting the PerfectLaw software by transmitting its form outside law
firms through the Internet, instead of within the law firm through the Novell
intranet, is only consistent with EDSi’s stated purpose of providing systems and
68
networks to offer “one total solution to law office automation.” Id., Ex. 10 at
WS27660.
b. Combining MTS with PerfectLaw
As explained above, MTS automatically transmitted a form and
automatically received and processed replies to the forms through the Internet, and
also used URLs to send the forms through an FTP server. With the same
motivation for using common knowledge or the express teachings of the
PerfectLaw materials, one of ordinary skill could have simply added those
corresponding communication features found in MTS to PerfectLaw according to
well-known networking techniques. Ex. 1003 ¶¶ 118-22. In fact, those
networking techniques had already been deployed for PerfectLaw but using an
internal, “LAN” intranet network. Id.
While the MTS system was deployed in the domain name registration and
renewal industry, the problem of improving client services through increased speed
and efficiency was common to MTS and PerfectLaw. Duncan Ex. 10 at WS27642;
see Ex. 1003 ¶¶ 118-21. As such, someone working to automate sending client
reminders to provide services would almost certainly focus attention on not only
automated attorney docketing systems like PerfectLaw, but also automated domain
name renewal reminder systems such as MTS. Sci. Plastic Prods., Inc. v. Biotage
AB, 766 F.3d 1355, 1360-61 (Fed. Cir. 2014) (problem of preventing plastic screw-
69
on cap leakage for low pressure liquid cartridges for chromatography could be
solved using soda bottlecap solution). When confronting the problem of the ’078
patent—extending the automated services of PerfectLaw outside the four walls of a
law office—one of ordinary skill would naturally consider MTS’s use of the
Internet to extend the automated delivery of other services such as NetSol’s
domain registration invoicing or renewals. In re Clay, 966 F.2d 656 (Fed. Cir.
1992); Medtronic, Inc. v. Cardiac Pacemakers, 721 F.2d 1563 (Fed. Cir. 1983)
(electronic circuit device art solving high frequency power problem held analgous
art for patent directed to medical pacemaker device solving similar power
problem). Moreover, the result from combining PerfectLaw with MTS (or
common knowledge) would also have been predictable and successful, for the
technology apparently missing from PerfectLaw—the Internet, web server, and
URL activated to send the forms—was (and is) conventional without any specifics
unique to the Challenged Claims. See discussion above, Section VI.A. In sum,
adding to PerfectLaw the conventional Internet (claims 1, 9-10) and web features
(claims 7-8) recited in the ’078 patent claims would have been a minor and routine
modification, whether based on common knowledge of one having ordinary skill
or in combination with the specific MTS Internet and FTP forms server features.
70
4. MTS and PerfectLaw Obviousness Claim Charts
The following charts summarize where each element of the Challenged
Claims is found in the PerfectLaw and MTS references, as well as where
knowledge of one having ordinary skill in the art would be combined with those
references. Ex. 1003 ¶ 122. As Claim 9 is quite literally the “method” of claim 1,
claim 9 is rendered obvious by these references and POSA knowledge in the same
way as in claim 1 without the need for separate charting. Id. ¶¶ 122-27.
’078 Claims § 103 – PerfectLaw, MTS and/or Ordinary Skill 1. A device for automatically delivering professional services to a client comprising:
EDSI sold PerfectLaw to dozens of law firms between 1994 and October 7, 1996, which was software that automatically delivered billing, accounting, case and document management services. E.g., Ex. 1014, Duncan Dep. at 48:11-42, 51:10-56:24, 119-122, 136-39; id., Ex. 4 (sold to SSJR in Feb. 1994), Ex. 10 at WS27660-61.
[1A] a computer; PerfectLaw was software sthat operated on a computer, typically on one or more computers within a law office. E.g., Duncan Dep. at 98:19-102:17, 173:16-174:6; id., Exs. 4-5, Ex. 10 (WS27638). See citations to MTS § 102 Chart, claim 1 element [1A].
[1B] a database containing a plurality of client reminders, each of the client reminders comprising a date field having a value attributed thereto;
PerfectLaw “Docket” software monitored a centralized docketing database that stored “client reminders” in the form of “master files” or “rule-based appointments” containing multiple fields, the fields including a date field, client, matter, and event codes. Duncan Dep. at 64:18-66:23, 77:5-80:19 (since 1994, PerfectLaw used “table database” with “due dates” entered and “data to link” a “form document that was stored in the system” to manage events which were “a task having a data, a deadline, and appointment”); id., Exs. 5-9, Ex. 10 at WS27639 (“database editing”), Ex. 11, Ex. 12 (EDSI000521-25), Ex. 13 (WS27334, WS27344).
71
’078 Claims § 103 – PerfectLaw, MTS and/or Ordinary Skill
Id., Ex. 10 at WS27640 (automated “tickler” reminders). The client reminders stored in the database comprised a date field having a value attributed thereto:
Duncan Ex. 12 at EDSI522-23; see also id., Ex. 12 at EDSI516-21 (“Entering Rule-Based Events and Deadlines” that “automatically sets dates based on rules” stored in a “database”), EDSI552-65, EDSI80-82, Ex. 13 at EDSI495-502 (“tickers”); Duncan Dep. at 173:16-174:6. See citations to MTS § 102 Chart, claim 1 element [1B].
[1C] software executing on said computer for automatically querying said database by the values attributed to each client reminder date field to retrieve a client reminder;
PerfectLaw automatically queried a docketing database by a date and/or date range to retrieve reminders pertaining to client/matter records. Duncan Dep. at 64:18-66:23, 79:16-2 (“The basis of case management, as PerfectLaw defines it, is appointment tasked to do event functionality so it manages events, contract management functionality, document management functionality, and forms functionality. . . . an event is a task having a date, a deadline, and appointment.”)
72
’078 Claims § 103 – PerfectLaw, MTS and/or Ordinary Skill
Duncan Dep., Ex. 10 at WS27639; see also id. at WS27640-41, WS27643; id., Ex. 12 at EDSI000552 (“Entering Rule-Based Events and Deadlines”).
Id., Ex. 12 at EDSI000556; see also id., Ex. 5 at EDSI731 (“[c]ritical date management”); DuncanDep. at 173:16-174:6. See citations to MTS § 102 Chart, claim 1 [1C].
[1D] software executing on said computer for automatically generating form based on the retrieved client reminder;
PerfectLaw “Document Assembly” software stored template legal forms in a “Word” database, and the software automatically populated those forms by “merging” them with information retrieved from the client/matter information stored in the docketing database. Duncan Dep. at 64:14-66:22, 82:22-89:16, 93:6-94:7; id., Ex. 5 at EDSI731 (“PerfectLaw Document Assembly – Merges WordPerfect & Case Database Records” received by SSJR Feb. 4, 1994), Ex. 10 at WS27642.
73
’078 Claims § 103 – PerfectLaw, MTS and/or Ordinary Skill
Duncan Ex. 10 at WS27643; see also id., Ex. 14 at WS27334, WS2744, WS27354, WS27355-57, WS27370-72. To the extent PerfectLaw does not disclose that the completed template forms were created based on the client/matter reminder information in the docketing database, a POSA would have combined these PerfectLaw features together to do so, alone or in combination with the MTS functionality of creating emails with customer-specific template registration forms based on upcoming registration deadlines. See citations to MTS § 102 Chart, claim 1 element [1D].
[1E] a communication link between said computer and the Internet; and
PerfectLaw used a local area network (LAN) intranet to communicate intra-office, connected to a shared database. Duncan Dep. at 96:12-101:25; id., Exs. 4-5 at EDSI000728-732, Ex. 10 at WS27638-39, WS27635-36, WS27642, WS27660; Ex. 1001 at 1:33-44. EDSi used telephone lines to communicate with clients, but the hardware that EDSI installed, including modems, could be used to connect to the Internet and transmit the reminders and template forms over email. See Duncan Dep. at 57:14-59:20, 71:1-73:9; 80:3-81:25, 102:1-103:11, 104:22-105:2, 106:1-4, 107:3-5, 125:3-7. A POSA would have combined PerfectLaw with
74
’078 Claims § 103 – PerfectLaw, MTS and/or Ordinary Skill conventional Internet technology or the use of the Internet as taught by NetSol’s MTS message ticketing system in order to arrive at this limitation. See citations to MTS § 102 Chart, claim 1 element [1E].
[1F] software executing on said computer for automatically transmitting the form through said communication link.
PerfectLaw used a telephone line to communicate with other computers, and its client reminders and auto-populated template response forms could be emailed out to clients. Duncan Dep. at 57:14-59:20, 71:1-73:9; 80:3-81:25, 96:12-101:25, 102:1-103:11, 104:22-105:2, 106:1-4, 107:3-5, 125:3-7,; id., Exs. 4-5, 10. See also Duncan Dep. at 64:14-66:23, 79:16-2, 82:22-89:16, 93:6-94:7, Ex. 5 at EDSI731 (“PerfectLaw Document Assembly – Merges WordPerfect & Case Database Records” received by SSJR Feb. 4, 1994), Ex. 10 at WS27639, WS27640-43, Ex. 12 at EDSI000552-56, Ex. 14 at WS27334, WS2744, WS27354, WS27355-57, WS27370-72. A POSA would have combined PerfectLaw with conventional Internet technology or the use of the Internet or email as taught by NetSol’s MTS message ticketing system and its automatic transmission of domain registration emails containing forms sent to customers. See citations to MTS § 102 Chart, claim 1 element [1F]. Ex. 1003 ¶¶ 111-122.
7. [7A-C] A device for automatically delivering professional services comprising: a computer; a database containing a plurality of client reminders each of the client reminders comprising a date field having a value attributed
See citations to corresponding limitations in claim 1 (elements [1A]-[1C]), above, incorporated here by reference. Ex. 1003 ¶¶ 111-122.
75
’078 Claims § 103 – PerfectLaw, MTS and/or Ordinary Skill thereto; [7D] software executing on said computer for automatically generating a form and a notice based on the retrieved client reminder, the notice containing a URL;
See citations to corresponding elements in claim 1 (element [1D], above, incorporated here by reference. MTS initial & renewal processes – The initial invoice MTS email and renewal reminder MTS email transmitted to customers contained language that notified the customer that payment was due on the domain registration, and further contained a template domain registration form as described above. Kosters Decl. ¶¶ 12-31. The emails here are the claimed “notice based on the retrieved client reminder,” and the claimed “form” is the domain registration template. Id. These email notices contained a URL (rs.internic.net/templates/domain-template.txt). Id., Exhibit 10; see also id., Exhibits 14-15, Ex. 18 (ARIN0049), Ex. 21 (ARIN0055). Renewal process – MTS transmitted to customers emails that notified customers that the registration would be expiring, and further contained a template domain registration form as described above:
Id., Ex. 18 (ARIN0001). The MTS renewal reminder emails also contained a URL:
Id., Ex. 18 (ARIN0013 at lines 665-72); see also id., Exhibit 16 (NET000541), Ex. 18 (ARIN0036). PerfectLaw used automated merge form software and
76
’078 Claims § 103 – PerfectLaw, MTS and/or Ordinary Skill automated “tickler” reminders stored in databases. See citations to claim 1, elements [1B]-[1D]. A POSA would have combined these features of PerfectLaw with conventional Internet-based email, forms, and URL technology, or their use as taught by MTS in order to automatically generate a notice containing a URL as well as the “form.” See citations to MTS § 102 Chart, claim element [1D]. Ex. 1003 ¶¶ 111-122.
[7E] a web server; Initial & renewal processes – The MTS system stored the latest domain registration forms on an FTP server accessible through the rs.internic.net website. Kosters Decl., Exhibit 10; Exhibits 14-15; ARIN0049; ARIN0055; Kosters Decl., Ex. 18 (ARIN0013 at lines 665-72); see also id., Exhibit 16 (NET000541), Ex. 18 (ARIN0036). The InterNIC FTP server was discussed on the InterNIC’s website “Accessing Our Other Online Services” page along with reference to an InterNIC website having a “web interface” at least as of March 26, 1996. Kosters Decl., Ex. 1. A web server was conventional world wide web technology before October 7, 1996. Ex. 1007-1008; Duncan Dep. at 19:14-24:13, 31:21-33:2, 34:22-35:25. An FTP server is functionally similar to a web server but uses a different communication protocols (a web server uses HTTP requests). Exs. 1007-1008, 1012. A POSA would have converted the PerfectLaw LAN server or NetSol FTP server into a web server as of October 7, 1996 using well-known techniques. Ex. 1003 ¶¶ 111-122.
[7F] software executing on said computer for automatically transmitting the form to said web server and for automatically transmitting the notice; and
Initial & renewal processes – The MTS initial invoice and renewal reminder emails, which were notices to the customer of payment due and expiring registration (respectively), were automatically sent to the customer as described above in claim 1. Kosters Decl., Exhibit 10; Exhibits 14-15; ARIN0049; ARIN0055; Kosters Decl., Exhibit 1. The MTS system also electronically stored the template domain registration form at the InterNIC FTP server located at rs.internic.net. Id.
77
’078 Claims § 103 – PerfectLaw, MTS and/or Ordinary Skill
Kosters Decl., Ex. 2; id., Exhibit 2 at page 2 (8/30/1996 status report to NSF of 1995 InterNIC objectives). PerfectLaw used a telephone line to communicate with clients, but its client reminders and auto-populated template forms could be emailed out to clients. Duncan Dep. at 57:14-59:20, 71:1-73:9; 80:3-81:25, 96:12-101:25, 102:1-103:11, 104:22-105:2, 106:1-4, 107:3-5, 125:3-7,; id., Exs. 4-5, 10. A POSA would have combined PerfectLaw or MTS with conventional web server technology to automatically transmit either the PerfectLaw merged forms or the MTS template domain registration forms to a web server and, as MTS already did, transmit an email containing a notice with a URL to the client. Ex. 1003 ¶¶ 111-122. See citations to MTS § 102 Chart, claim 1 element [1F].
[7G] software executing on said web server for automatically transmitting the form when the URL is activated.
Initial & renewal processes – When the MTS customer clicked on the ftp://rs.internic.net/templates/domain-template.tx URL contained within the MTS email (described above), software executing on the InterNIC FTP server would automatically transmit the template domain registration form to the client through the Internet. Kosters , Ex. 23; id., Ex. 13. The InterNIC FTP server was discussed on the InterNIC’s website “Accessing Our Other Online Services” page along with reference to an InterNIC website having a “web interface” at least as of March 26, 1996. Kosters Decl., Ex. 1, Ex. 3. See also citations to § 102 MTS chart, claim 1 step 1G. A POSA would have combined PerfectLaw or MTS with conventional web server technology to use a web server to automatically transmit the PerfectLaw merged forms or the MTS template domain registration forms to the client when the URL is activated (as MTS did through an FTP server
78
’078 Claims § 103 – PerfectLaw, MTS and/or Ordinary Skill just using a different communications protocol). Ex. 1003 ¶¶ 111-122; see citations to MTS § 102 Chart, claim 1 element [1F]; Duncan Dep. at 57:14-59:20, 71:1-73:9; 80:3-81:25, 96:12-101:25, 102:1-103:11, 104:22-105:2, 106:1-4, 107:3-5, 125:3-7; id., Exs. 4-14.
8. The device of claim 7 when [sic] the notice is an email message.
See citations to claim 7. For example:
Kosters Decl. ¶¶ 18-22, Exhibit 21 (initial invoicing process); see also Kosters Decl. ¶¶ 25-31, Ex. B at 0025 (“mail_template.txt”), Exhibit 12 at ARIN73; see also id. at Exs. 18-19 (renewal email exchanges); id. at Ex. 18 (ARIN1-17), Ex. 19 (ARIN0018-46), Ex. 12 and Ex. 16. PerfectLaw was compatible with Internet-based email. Duncan Dep. at 57:14-59:20, 71:1-73:9; 80:3-81:25, 96:12-101:25, 102:1-103:11, 104:22-105:2, 106:1-4, 107:3-5, 125:3-7; id., Exs. 4-5 at EDSI000728-732, Ex. 10 at WS27638-39, WS27635-36, WS27642, WS27660. A POSA would have combined PerfectLaw with conventional Internet-based email technology as taught by NetSol’s MTS message ticketing system in order to arrive at this element. Ex. 1003 ¶¶ 111-122.
10. The method of claim 9, where in [sic] the generating step further comprises generating an email message.
See citations to claim 1. Kosters Decl. ¶¶ 18-22, Exhibit 21 (initial invoicing process); see also Kosters Decl. ¶¶ 25-31, Ex. B at 0025 (“mail_template.txt”), Exhibit 12 at ARIN73; see also id. at Exs. 18-19 (renewal email exchanges); id. at Ex. 18 (ARIN1-17), Ex. 19 (ARIN0018-46), Ex. 12 and Ex. 16. PerfectLaw was compatible with Internet-based email. Duncan Dep. at 57:14-59:20, 71:1-73:9; 80:3-81:25, 96:12-101:25, 102:1-103:11, 104:22-105:2, 106:1-4, 107:3-5, 125:3-7; id., Exs. 4-5 at EDSI000728-732, Ex. 10 at
79
’078 Claims § 103 – PerfectLaw, MTS and/or Ordinary Skill WS27638-39, WS27635-36, WS27642, WS27660. A POSA would have combined PerfectLaw with conventional Internet-based email technology as taught by NetSol’s MTS message ticketing system in order to arrive at this element. Ex. 1003 ¶¶ 111-122.
VII. CONCLUSION
Petitioner therefore requests that a Covered Business Method Post-Grant
Review of the Challenged Claims be instituted. The undersigned attorneys
welcome a telephone call should the Office have any requests or questions. If
there are any additional fees due in connection with the filing of this paper, please
charge the required fees to our Deposit Account No. 14-0629.
Respectfully submitted, this 5th day of February, 2015.
BALLARD SPAHR LLP
/ Scott D. Marty, Ph.D., Reg. No. 53,277/ Scott D. Marty, Ph.D., Lead Counsel USPTO Registration No. 53,277 [email protected] 999 Peachtree Stree, Suite 1000 Atlanta, GA 30309-3915 Phone: 678-420-9408
Jonathon A. Talcott, Back-up Counsel USPTO Registration No. 71,671 [email protected] 1 E. Washington Street, Ste. 2300 Phoenix, AZ 85004-2555 Phone: 602-798-5485
Daniel A. Nadel, Back-up Counsel USPTO Registration No. 59,655 [email protected] 1735 Market Street, 51st Floor Philadelphia, PA 19103-7599 Phone: 215-864-8844
Attorneys for Petitioner GoDaddy.com, LLC
80
CERTIFICATE OF SERVICE
Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
caused to be served a true and correct copy of the foregoing PETITION FOR
POST-GRANT REVIEW OF U.S. PATENT NO. 6,182,078 UNDER 35 U.S.C. §
321 AND § 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT by Federal
Express mail, on this 5th day of February, 2015, on the Patent Owner at the
correspondence address of the Patent Owner as follows:
Wesley Whitmyer, Jr., Esq. Todd Oberdick, Esq.
St. Onge Steward Johnston & Reens LLC 986 Bedford Street
Stamford, Connecticut 06905-5619 Dated this 5th day of February, 2015.
/Jonathon A. Talcott/ Jonathon A. Talcott USPTO Reg. No. 71,671 Attorney for Petitioner GoDaddy.com, LLC