APPLE INC. v EVOLUTIONARY INTELLIGENCE, LLC

Patent Trials and Appeals Board

Apr 28, 2014

09284113 - (D) (P.T.A.B. Apr. 28, 2014)

Trials@uspto.gov Paper 12
571-272-7822 Entered: April 28, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TWITTER, INC. and YELP INC.
Petitioner

v.

EVOLUTIONARY INTELLIGENCE, LLC
Patent Owner

Case IPR2014-00092
Patent 7,010,536 B1

Before KALYAN K. DESHPANDE, TREVOR M. JEFFERSON,
BRIAN J. McNAMARA, NEIL T. POWELL, and
GREGG I. ANDERSON, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

Case IPR2014-00092
Patent 7,010,536 B1

2
I. INTRODUCTION
Twitter, Inc. and Yelp Inc. (collectively “Petitioner”) filed a Petition
requesting an inter partes review of claims 1-16 of
U.S. Patent No. 7,010,536 B1 (Ex. 1001, “the ’536 patent”). Paper 1
(“Pet.”). Evolutionary Intelligence, LLC (“Patent Owner”) timely filed a
Preliminary Response. Paper 9 (“Prelim. Resp.”). We have jurisdiction
under 35 U.S.C. § 314.
The standard for instituting an inter partes review is set forth in
35 U.S.C. § 314(a), which provides as follows:
THRESHOLD—The Director may not authorize an inter partes
review to be instituted unless the Director determines that the
information presented in the petition filed under section 311
and any response filed under section 313 shows that there is a
reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.
Upon consideration of the Petition, we determine that the information
presented by Petitioner has not established that there is a reasonable
likelihood that Petitioner would prevail in showing the unpatentability of
claims 1-16 of the ’536 patent. Accordingly, we do not institute an inter
partes review of these claims.
A. Related Proceedings
Petitioner indicates that the ’536 patent is the subject of litigation in
the following cases: Evolutionary Intelligence LLC v. Yelp Inc., Case No.
4:13-cv-03587 (DMR) (N.D. Cal.); Evolutionary Intelligence LLC v. Apple
Inc., Case No. 3:13-cv-04201-WHA (N.D. Cal.); Evolutionary Intelligence
Case IPR2014-00092
Patent 7,010,536 B1

3
LLC v. Facebook, Inc., Case No. 3:13-cv-04202-JSC (N.D. Cal.);
Evolutionary Intelligence LLC v. FourSquare Labs, Inc., Case No. 3:13-cv-
04203-EDL (N.D. Cal.); Evolutionary Intelligence LLC v. Groupon, Inc.,
Case No. 3:13-cv-04204-LB (N.D. Cal.); Evolutionary Intelligence LLC v.
LivingSocial, Inc., Case No. 3:13-cv-04205-EDL (N.D. Cal.); Evolutionary
Intelligence LLC v. Millennial Media, Inc., Case No. 5:13-cv-04206-HRL
(N.D. Cal.); and Evolutionary Intelligence LLC v. Twitter, Inc., Case No.
5:13-cv-04207-JSW(N.D. Cal.). Pet. 1-2.
Additionally, the ’536 patent is the subject of the following inter
partes reviews: IPR2014-00082; IPR2014-00083; IPR2014-00085;
IPR2014-00086; and IPR2014-00093.
B. The ’536 Patent
The ’536 patent is directed to developing intelligence in a computer or
digital network by creating and manipulating information containers with
dynamic interactive registers in a computer network. Ex. 1001, 1:11-20,
3:1-5. The system includes an input device, an output device, a processor, a
memory unit, a data storage device, and a means of communicating with
other computers. Id. at 3:6-11. The memory unit includes an information
container made interactive with, among other elements, dynamic registers, a
search engine, gateways, data collection and reporting means, an analysis
engine, and an executing engine. Id. at 3:15-23.
A container is an interactive nestable logical domain, including
dynamic interactive evolving registers and maintaining a unique network-
wide lifelong identity. Id. at 3:29-35. A container, at minimum, includes a
Case IPR2014-00092
Patent 7,010,536 B1

4
logically encapsulated portion of cyberspace, a register, and a gateway. Id.
at 9:2-4. Registers determine the interaction of that container with other
containers, system components, system gateways, events and processes on
the computer network. Id. at 3:43-46. Container registers may be values
alone or contain code to establish certain parameters in interaction with other
containers or gateways. Id. at 9:19-22. Gateways are structurally integrated
into each container or strategically placed at container transit points. Id. at
4:54-57. Gateways govern the interaction of containers encapsulated within
their domain by reading and storing register information of containers
entering and exiting that container. Id. at 4:57-66, 15:46-49.
The system for creating and manipulating information containers is
set forth in Figure 2B, which is reproduced below:

Figure 2B illustrates a computer network showing nested containers,
computer servers, and gateways at Site 1 through Site 7. Id. at 10:59-62.
Any of Sites 1 through 7 may interact dynamically within the system; for
Case IPR2014-00092
Patent 7,010,536 B1

5
example, Site 1 shows a single workstation with a container and gateway
connected to an Intranet. Id. at 10:64-67. Site 2 shows a server with a
gateway in relationship to various containers. Id. at 11:2-3. Site 3 shows an
Internet web page with a container residing on it. Id. at 11:3-4. Site 4 shows
a personal computer with containers and a gateway connected to the
Internet. Id. at 11:4-6. Site 5 shows a configuration of multiple servers and
containers on a Wide Area Network. Id. at 11:6-7. Site 6 shows a work
station with a gateway and containers within a container connected to a
Wide Area Network. Id. at 11:7-9. Site 7 shows an independent gateway,
capable of acting as a data collection and data reporting site as it gathers data
from the registers of transiting containers, and as an agent of the execution
engine as it alters the registers of transient containers. Id. at 11:8-13.
Case IPR2014-00092
Patent 7,010,536 B1

6
An example of a configuration the containers may have is provided in
Figure 4, included below:

Figure 4 shows an example of container 100 that includes
containerized elements 01, registers 120, and gateway 200. Id. at 12:65-67.
Registers 120 included in container 100 include, inter alia, active time
register 102000, passive time register 103000, neutral time register 104000,
active space register 111000, passive space register 112000, neutral space
register 113000, and acquire register 123000. Id. at 14:31-39.
Case IPR2014-00092
Patent 7,010,536 B1

7
C. Illustrative Claims
Petitioner challenges claims 1-16 of the ’536 patent. Pet. 16-58.
Independent claims 1 and 15 are illustrative of the claims at issue:
1. An apparatus for transmitting, receiving and
manipulating information on a computer system, the apparatus
including a plurality of containers, each container being a
logically defined data enclosure and comprising:
an information element having information;
a plurality of registers, the plurality of registers forming
part of the container and including
a first register for storing a unique container
identification value,
a second register having a representation designating
time and governing interactions of the container with other
containers, systems or processes according to utility of
information in the information element relative to an external-
to-the-apparatus event time,
an active time register for identifying times at
which the container will act upon other containers,
processes, systems or gateways,
a passive time register for identifying times at
which the container can be acted upon by other
containers, processes, systems or gateways, and
a neutral time register for identifying times at
which the container may interact with other containers,
processes, systems or gateways; and
a gateway attached to and forming part of the container,
the gateway controlling the interaction of the container with
other containers, systems or processes.

15. An apparatus for transmitting, receiving and
manipulating information on a computer system, the apparatus
including a plurality of containers, each container being a
logically defined data enclosure and comprising:
Case IPR2014-00092
Patent 7,010,536 B1

8
an information element having information;
a plurality of registers, the plurality of registers forming
part of the container and including
a first register for storing a unique container
identification value,
a second register having a representation
designating time and governing interactions of the
container with other containers, systems or processes
according to utility of information in the information
element relative to an external-to-the-apparatus event
time, and
at least one acquire register for controlling whether
the container adds a register from other containers or
adds a container from other containers when interacting
with them; and
a gateway attached to and forming part of the container,
the gateway controlling the interaction of the container with
other containers, systems or processes.
D. The Alleged Grounds of Unpatentability
The information presented in the Petition sets forth Petitioner’s
contentions of unpatentability of claims 1-16 of the ’536 patent under
35 U.S.C. § 102, as follows (see Pet. 4-8, 16-58):
Reference Basis
Claims
Challenged
Theimer
1
§ 102(b) 1-16

1
U.S. Patent No. 5,493,692 (Ex. 1002) (“Theimer”).
Case IPR2014-00092
Patent 7,010,536 B1

9
II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012). Claim terms are given their ordinary and customary meaning, as
would be understood by one of ordinary skill in the art in the context of the
entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). A claim term will not be given its ordinary and customary
meaning, however, when an inventor acts as his or her own lexicographer,
defining the term in the specification with reasonable clarity, deliberateness,
and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
1243, 1249 (Fed. Cir. 1998).
1. “container”
Independent claims 1, 2, 15, and 16 recite “a plurality of containers,
each container being a logically defined data enclosure.” As discussed
above, the ʼ536 patent specification describes a container as an interactive
nestable logical domain, including dynamic interactive evolving registers
and maintaining a unique network-wide lifelong identity. Ex. 1001, 3:29-35.
Petitioner argues that the broadest reasonable interpretation of a “container”
is “a logically defined data enclosure which encapsulates any element or
digital segment (text, graphic, photograph, audio, video, or other), or set of
digital elements.” Pet. 12 (citing Ex. 1007 ¶ 26). Patent Owner also
Case IPR2014-00092
Patent 7,010,536 B1

10
proposes that the broadest reasonable construction of “container” is “a
logically defined data enclosure which encapsulates any element or digital
segment (text, graphic, photographic, audio, video, or other), or set of digital
elements.” Prelim. Resp. 14-15.
Patent Owner acknowledges that both proposed constructions are
facially identical, but asserts that Patent Owner’s proposed construction is
narrower because of Patent Owner’s narrow interpretation of the terms
“logically defined” and “encapsulated.” Id. at 14-16. Patent Owner argues
that “encapsulated” refers to “treat[ing] a collection of structured
information as a whole without affecting or taking notice of its internal
structure” and further refers “to the process of wrapping data in protocols
that allow its transmission from one network to another, as occurs when a
web page is sent using HTML.” Prelim. Resp. 15 (citing Ex. 2001).
We are not persuaded by Patent Owner’s arguments. The ’536 patent
states that a container “at minimum includes in its construction a logically
encapsulated portion of cyberspace, a register and a gateway” and a
container “at minimum encapsulates a single digital bit, a single natural
number or the logical description of another container, and at maximum all
defined cyberspace, existing, growing and to be discovered, including but
not limited to all containers, defined and to be defined in cyberspace.” Ex.
1001, 9:2-9. The ’536 patent does not describe the terms “logically defined”
or “encapsulated” as limited to “structured information as a whole”
regardless of its internal structure or “wrapping data” in preparation for
transmission. The claims also do not require such limitations. Therefore,
Case IPR2014-00092
Patent 7,010,536 B1

11
we do not agree with Patent Owner that “logically defined” or
“encapsulated” require anything more than “contained within.”
2

Accordingly, based on the proposed construction of “container” by
both Petitioner and Patent Owner, and for the purposes of this decision, we
construe “container” to mean “a logically defined data enclosure which
encapsulates any element or digital segment (text, graphic, photograph,
audio, video, or other), or set of digital elements.”
2. “register”
Independent claims 1, 2, 15, and 16 recite “a plurality of registers, the
plurality of registers forming part of the container.” Petitioner argues that a
“register” is defined in a dictionary as “[a] device capable of retaining
information, often that contained in a small subset (for example, one word),
of the aggregate information in a digital computer” or “[a] storage device or
storage location having a specified storage capacity.” Pet. 12 (citing
Ex. 1010; Ex. 1007 ¶ 28). Petitioner further argues that “register” includes
“[a] part of internal storage having a specified storage capacity and usually
intended for a specific purpose.” Pet. 12-13 (citing Ex. 1011; Ex. 1007
¶ 28). Based on these dictionary definitions, Petitioner proposes that the

2
Related U.S. Patent No. 7,702,682 B2, the patent at issue in IPR2014-
00079 and IPR2014-00080, recites the terms “logically defined” and/or
“encapsulated” in independent claims 1 and 19-23. Our interpretation of
these terms is consistent with our analysis in IPR2014-00079 and IPR2014-
00080.
Case IPR2014-00092
Patent 7,010,536 B1

12
plain meaning of “register” is “value or code associated with a container.”
Pet. 13 (citing Ex. 1007 ¶ 30).
Patent Owner argues that the term “register,” based on dictionary
definitions, encompasses “a group of (usually) bistable devices that are used
to store information within a computer system for high speed access” and “a
memory location within a microprocessor, used to store values and external
memory addresses while the microprocessor performs logical and arithmetic
operations on them.” Prelim. Resp. 16-17 (citing Ex. 2002; Ex. 2003).
Based on these dictionary definitions, Patent Owner proposes that “register”
means “a memory location within a computer that stores data.” Id. at 16.
Patent Owner acknowledges that its proposed construction is similar to
Petitioner’s construction, but argues that Petitioner’s construction is
unreasonably broad and may encompass unpatentable subject matter. Id. at
17.
We disagree with Patent Owner. Specifically, we do not agree with
Patent Owner that “register” must require “a memory location within a
computer.” The ’536 patent specification, including the claims, does not
impose such a limit to the meaning of “register.” The ’536 patent broadly
describes “container registers” as follows:
Container registers 120 are interactive dynamic values
appended to the logical enclosure of an information
container 100, and serve to govern the interaction of that
container 100 with other containers 100, container
gateways 200 and the system 10, and to record the historical
interaction of that container 100 on the system 10. Container
registers 120 may be values alone or contain code to establish
Case IPR2014-00092
Patent 7,010,536 B1

13
certain parameters in interaction with other containers 100 or
gateways 200.
Ex. 1001, 9:14-23. We see no reason to limit the scope of “register” to
include limitations neither described by the specification nor required by the
claims. Therefore, we are persuaded by Petitioner’s argument that the
broadest reasonable construction of “register,” as it is used in the ʼ536
patent, is “value or code associated with a container.”
3. “gateway”
Independent claims 1, 2, 15, and 16 recite “a gateway attached to and
forming part of the container, the gateway controlling the interaction of the
container with other containers, systems or processes.” Petitioner argues
that although the ’536 patent does not explicitly define “gateway,” the ’536
patent describes a gateway to “govern the interactions of containers 100
within their domain, and alter the registers 120 of transiting containers 100
upon ingress and egress” and to “gather and store container register
information according to system-defined, system-generated, or user
determined rules . . . governing how containers [sic] system processes or
system components interact within the domain of that container.” Pet. 13
(citing Ex. 1001, 4:58-66, 9:22-28). Based on this description from the
’536 patent, Petitioner proposes that “gateway” means “a hardware or
software unit that facilitates the transfer of information between containers,
systems, networks, and/or processes.” Id. at 14 (citing Ex. 1007 ¶ 33).
Patent Owner argues that a person with ordinary skill in the art would
understand that a “gateway” is “a device that interconnects two networks.”
Case IPR2014-00092
Patent 7,010,536 B1

14
Prelim. Resp. 17 (citing Ex. 2002). Patent Owner further argues that this
definition is consistent with the ’536 patent claims, where claim 1 recites the
“gateway controlling the interaction of the container with other containers,
systems or processes.” Id. at 18. Patent Owner also argues that this
definition is consistent with the ’536 patent specification, where the
specification describes that a “gateway” is a server, is structurally integrated
into containers, and includes software to process network data. Id. at 18-19
(citing Ex. 1001, Fig. 2B, claim 1, claim 13, 4:54-55). Accordingly, Patent
Owner proposes that “gateway” should be construed as “a hardware device
that facilitates the transfer of information between containers, systems
and/or processes on two different networks or devices, or software that
processes network data.” Id. at 19.
We are not persuaded by Patent Owner that “gateway” requires these
additional limitations. The ’536 patent describes “gateways,” stating that
[g]ateways gather and store container register information
according to system-defined, system-generated, or user
determined rules as containers exit and enter one another,
governing how containers system processes or system
components interact within the domain of that container, or
after exiting and entering that container, and governing how
containers, system components and system processes interact
with that unique gateway, including how data collection and
reporting is managed at that gateway.
Ex. 1001, 4:58-66. The ’536 patent further describes that gateways are
“nestable in a hierarchical or set and class network scheme.” Id. at 4:54-57.
Thus, we do not agree with the Patent Owner that a “gateway,” as used in
the ʼ536 patent, is limited to a hardware device. We further do not agree
Case IPR2014-00092
Patent 7,010,536 B1

15
with Patent Owner that a “gateway” facilitates only the transfer of
information on two different networks or devices, because the ’536 patent
provides an example of a gateway governing the interaction of two
containers regardless of whether the containers are on two different
networks of devices.
Accordingly, we agree with Petitioner and construe “gateway” to
mean “hardware or software unit that facilitates the transfer of information
between containers, systems, and/or processes.”

B. Claims 1-16 – Anticipated by Theimer
Petitioner contends that claims 1-16 are unpatentable under 35 U.S.C.
§ 102(b) as anticipated by Theimer. Pet. 16-58. Petitioner relies on a
Declaration of Don Turnbull, Ph.D. (Ex. 1007) in its contentions.
1. Theimer (Ex. 1002)
Theimer discloses techniques for selectively delivering electronic
messages to an identified user via particular computer devices based on
context and environment in proximity to the user. Ex. 1002, 1:35-38. An
electronic message, intended for an identified user, is obtained, and a level
of privacy and a level of priority for the electronic message are determined.
Id. at 4:33-36. The profile properties for the identified user also are
obtained. Id. at 4:36-37. The system perceives contextual attributes for the
identified user, including display devices in close proximity to the identified
user, and determines a display property for the electronic message based on
Case IPR2014-00092
Patent 7,010,536 B1

16
the contextual attributes, the user profile properties, and the level of privacy
and level of priority of the electronic message. Id. at 4:37-42.
Physical objects, such as users, devices, or groups of devices, are
represented in the system by a unique “agent.” Id. at 7:61-64. Agents
consist of several modules, which are responsible for implementing the
agent’s responsibilities for specific applications or performing specific
operations. Id. at 8:32-35. The system, using physical objects, is illustrated
in Figure 2 as follows:

Figure 2 illustrates that User 60 is represented by UserAgentA 70 and
User 62 is represented by UserAgentB 72. Id. at 8:27-29. A “UserAgent”
manages information about a particular user, and acts as the primary agent of
customization of a user’s applications with respect to the user’s
“environment,” i.e., the surroundings that affect or may be affected by the
Case IPR2014-00092
Patent 7,010,536 B1

17
user, including other users and devices and their states. Id. at 9:42-47.
UserAgent gathers and manages person specific information, such as office
number and affiliations, and personal policies and preferences of the user
from User Profile. Id. at 9:60-63. A “DeviceAgent” includes a device
profile, which describes relevant information about a particular device,
policies that describe allowable operations for the device, and the current
state of the device. Id. at 13:60-64.
UserAgent waits for an event to occur and then performs the
appropriate action in response to the event. Id. at 10:55-57. When receiving
a request, UserAgent checks the settings of the user’s policy to decide
whether to honor the request. Id. at 10:66 – 11:3. User policies include
meeting reminder messages or meeting reminder messages when other
specified users are in proximity to the user. Id. at 24:8-31.
2. Analysis
The evidence set forth by Petitioner indicates there is not a reasonable
likelihood that Petitioner will prevail in showing that claims 1-16 are
unpatentable under 35 U.S.C. § 102(b) as anticipated by Theimer. Pet. 16-
59. Specifically, we are not persuaded by Petitioner that Theimer describes
each and every limitation of independent claims 1, 2, 15, and 16.
a. Claims 1-14
Petitioner argues that Theimer anticipates independent claim 1. Id. at
16-33. Petitioner contends, inter alia, that Theimer discloses “a plurality of
containers” and “a plurality of registers, the plurality of registers forming
part of the container.” Id. at 17-19, 21-22. Petitioner specifically points to
Case IPR2014-00092
Patent 7,010,536 B1

18
several features of Theimer as describing “a plurality of containers,”
including (1) UserAgents, (2) DeviceAgents, (3) TerminalAgents, (4) Name
Services, and (5) Location Services. Id. at 17-19 (citing Ex. 1002, 7:61–8:2,
8:18-20, Figs. 3, 5-6, 8-9; Ex. 1007 ¶ 40). Petitioner further points to
Theimer’s (1) calendar information stored by user agents, (2) callback
registers of name and location services, and (3) policy registers, generally
included with a container, that include a set of rules that govern a container’s
interaction with other containers, as describing a “plurality of registers.” Id.
at 21-22 (citing Ex. 1002, 8:6-11, 9:60–10:2, 10:15-21, 10:66–11:8, 13:5-18,
17:13-25, 19:14-23; Ex. 1007 ¶ 43).
Claim 1 further recites three specific “registers” (active, passive, and
neutral) that identify times at which the container will act, be acted upon, or
intersect with other containers, processes, systems, or gateways. Petitioner
limits its discussion to the UserAgent as the claimed “container” and argues
that Theimer’s representation of a calendar discloses a claimed “register.”
Id. at 23-26 (citing Ex. 1002, 10:32-38, 24:8-48). Petitioner specifically
argues that the calendar governs interactions with other containers by
“controlling when messages are sent to and received from other agent
containers.” Id. at 25.
Petitioner further contends that Theimer’s calendar designates “free
time” and a person with ordinary skill in the art would have understood that
“free time” indicates times that other agent containers could schedule
meetings and seminars for the calendar in a user’s agent container. Id. at 28
(citing Ex. 1007 ¶ 47). Accordingly, Petitioner argues this “free time”
Case IPR2014-00092
Patent 7,010,536 B1

19
describes the claimed “passive time register,” because the “free time”
identifies times that the UserAgent “container” can be acted upon by other
containers. Id. at 28-29. Patent Owner, however, argues that Theimer’s
“free time” does not describe the claimed “passive time register,” because
Theimer is silent as to “setting meetings for one UserAgent by another
UserAgent.” Prelim. Resp. 25.
We are not persuaded by Petitioner that Theimer’s calendar,
indicating a “free time,” describes the claimed “passive time register for
identifying times at which the container can be acted upon by other
containers, processes, systems or gateways.” Although Theimer discloses a
status for a user’s calendar, indicating when a user is available, Theimer
does not disclose that another user or “container” can act upon a user’s
calendar based on this status. Theimer is silent as to the functionality of one
user scheduling a meeting or seminar for another user. On the contrary,
Theimer discloses that a user’s calendar is managed by the calendar
associated to that UserAgent. Ex. 1002, 10:9-11, Fig. 3. Furthermore,
nothing in Theimer describes the “free time” as a time that the UserAgent
“container” can be acted upon. In other words, Theimer does not discuss
whether the “free time” is a time that meetings can be scheduled on a user’s
calendar. As such, although a person with ordinary skill in the art would
have understood that the calendar identifies a user’s “free time,” such a
person would not have understood Theimer to disclose that the “free time”
identifies a time that the container can be acted upon by other containers, as
recited in claim 1.
Case IPR2014-00092
Patent 7,010,536 B1

20
Petitioner contends alternatively that Theimer discloses policy rules
for receiving messages and meeting requests that describe the claimed
“passive time register.” Id. at 29 (citing Ex. 1002, 10:66–11:17, 13:5-21,
15:30-33, 24:8-31; Ex. 1007 ¶ 47). Petitioner argues that Theimer discloses
rules that specify that a message can be received only “a few minutes before
the scheduled meeting” or only if others are not in proximity. Id. Patent
Owner, however, argues that the UserAgent is not “acted upon,” as recited in
claim 1, because the policy rules, not the UserAgent, set forth whether the
messages are delivered to the user. Prelim. Resp. 26. Patent Owner further
argues that receiving an email is not the same as the claimed “acted upon,”
because the receipt of such a message or meeting request does not affect any
of the values of the calendar or user policies. Id. at 26-27.
We are not persuaded by Petitioner’s argument, because it fails to set
forth clearly how this disclosure from Theimer describes the claimed
“passive time register.” Petitioner’s argument focuses on the UserAgent as
the “container” and the policy rules as the “passive time register.”
Petitioner’s analysis, however, fails to demonstrate how the policy rules
identify a time at which UserAgent can be acted upon by other containers,
processes, systems, or gateways. Petitioner’s analysis fails to identify
specifically how a policy specifying a time to send a reminder message is
acting upon the UserAgent “container.” Petitioner also fails to identify
which container, process, system, or gateway is acting upon the UserAgent
“container.” Consequently, we are not persuaded by Petitioner that Theimer
anticipates claim 1.
Case IPR2014-00092
Patent 7,010,536 B1

21
Claim 2 recites the “passive register” which is similar to claim 1, but
recites “identifying space” instead of “identifying times.” We are also not
persuaded that Theimer describes the claimed “passive register” of claim 2
for the same reasons discussed above in our analysis of the limitation
“passive time register” of claim 1. Specifically, Petitioner argues that the
policy rules of Theimer describe the “passive register.” Pet. 37-38.
Petitioner’s analysis, however, fails to demonstrate how the policy rules
identify a space at which UserAgent can be acted upon by other containers,
processes, systems, or gateways. Petitioner’s analysis fails to identify
specifically how a policy specifying a space to send a reminder message is
acting upon the UserAgent “container.” Petitioner also fails to identify
which container, process, system, or gateway is acting upon the UserAgent
“container.”
Claims 3-14 depend from either claim 1 or claim 2. Therefore, we are
not persuaded that Theimer anticipates claims 2-14 for the same reasons
discussed above with respect to claim 1. Accordingly, we determine that
there is not a reasonable likelihood that Petitioner would prevail in showing
the unpatentability of claims 1-14.
b. Claims 15-16
Petitioner contends that Theimer anticipates independent claims 15
and 16. Pet. 57-58. Petitioner argues that claims 15 and 16 are substantially
the same as claims 1 and 2, and further recite an “acquire register” that is the
same as that recited in claim 8. Id. at 57-58. Specifically, claims 8, 15, and
16 recite an “acquire register for controlling whether the container adds a
Case IPR2014-00092
Patent 7,010,536 B1

22
register from other containers or adds a container from other containers
when interacting with them.”
As discussed above in the analysis of claim 1, Petitioner contends,
inter alia, that Theimer discloses “a plurality of containers” and “a plurality
of registers, the plurality of registers forming part of the container,” where
Theimer describes a UserAgent object as the claimed “container” and policy
rules that describe the claimed “registers.” Id. at 17-19 (citing Ex. 1002,
7:61–8:20, 10:66–11:8, 13:5-18, 17:13-25, 19:14-23, Fig. 3; Ex. 1007 ¶¶ 40,
43). Specifically, with respect to claims 15 and 16, Petitioner argues that the
policy rules describe the claimed “acquire register,” because the policy rules
control when information sent from another container can be received and
stored. Id. at 47-48, 57-58 (citing Ex. 1002, 13:5-21; Ex. 1007 ¶ 64).
Petitioner argues that a policy rule, for example, “restricts message
transmissions when a device owner is in a meeting,” “prevents a private
message from being received when a user is not alone,” or “protects access
to personal information requested by other containers” and, therefore, the
policy rules “control whether information from another container’s message
register can be acquired by a container and added.” Id. at 47-48. Patent
Owner responds that Petitioner “cites only the addition of containers or
registers to containers other than the UserAgent.” Prelim. Resp. 27-28.
We are unpersuaded by Petitioner that Theimer discloses the claimed
“acquire register.” Although we agree with Petitioner that Theimer discloses
policy rules that control the receipt of messages, we are not persuaded that
the policy rule controls “whether the container adds a register from other
Case IPR2014-00092
Patent 7,010,536 B1

23
containers or adds a container from other containers when interacting with
them.” Specifically, Petitioner does not provide sufficient evidence or
analysis to establish that the UserAgent “container” is receiving the message
from another container, the message from another container is a “register” or
“container,” the UserAgent “container” is adding the message as a “register”
or “container,” or the message is coming from another container. Although
Petitioner argues that messages from other containers are from a
“container’s message register” (Pet. 48), Theimer is silent in describing
messages as “registers” that are added to a “container.” Absent persuasive
evidence that Theimer describes an “acquire register,” we determine that
there is not a reasonable likelihood that Petitioner would prevail with respect
to claims 15 and 16.
3. Conclusion
Petitioner has not shown a reasonable likelihood that Petitioner will
prevail in showing that claims 1-16 of the ’536 patent are anticipated by
Theimer.
III. CONCLUSION
For the foregoing reasons, we determine that the information
presented in the Petition does not establish that there is a reasonable
likelihood that Petitioner would prevail in establishing the unpatentability of
claims 1-16 of the ’536 patent. Accordingly, we decline to institute an inter
partes review of the ’536 patent.
Case IPR2014-00092
Patent 7,010,536 B1

24
IV. ORDER
Accordingly, it is
ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
hereby denied as to all grounds raised in the Petition for the reasons stated
above.
Case IPR2014-00092
Patent 7,010,536 B1

25
For PETITIONER:
Vaibhav P. Kadaba
wkadaba@kilpatricktownsend.com

Robert D. Tadlock
rtadlock@kilpatricktownsend.com

For PATENT OWNER:

Anthony J. Patek
Anthony@gutridesafier.com
pto@gutridesafier.com

Seth Safer
seth@gutridesafier.com