Citrix Systems, Inc.

Patent Trials and Appeals Board

Nov 17, 2020

IPR2019-01002 (P.T.A.B. Nov. 17, 2020)

Trials@uspto.gov Paper 39
571-272-7822 Date: November 17, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

WORKSPOT, INC.,
Petitioner,
v.
CITRIX SYSTEMS, INC.,
Patent Owner.

IPR2019-01002
Patent 8,135,843 B2

Before JUSTIN T. ARBES, MIRIAM L. QUINN, and
FREDERICK C. LANEY, Administrative Patent Judges.
ARBES, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)
I. INTRODUCTION
A. Background and Summary
Petitioner Workspot, Inc. filed a Petition (Paper 1, “Pet.”) requesting
inter partes review of claims 1, 5, 7–9, 12, 16, 18, 19, 23, 24, 29, and 30
of U.S. Patent No. 8,135,843 B2 (Ex. 1001, “the ’843 patent”) pursuant to
IPR2019-01002
Patent 8,135,843 B2
2
35 U.S.C. § 311(a). On November 20, 2019, we instituted an inter partes
review as to all challenged claims on all grounds of unpatentability asserted
in the Petition. Paper 12 (“Decision on Institution” or “Dec. on Inst.”).
Patent Owner Citrix Systems, Inc. subsequently filed a Patent Owner
Response (Paper 20, “PO Resp.”), Petitioner filed a Reply (Paper 23,
“Reply”), and Patent Owner filed a Sur-Reply (Paper 29, “Sur-Reply”).
An oral hearing was held on August 25, 2020, and a transcript of the hearing
is included in the record (Paper 37, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
follow, we determine that Petitioner has not shown by a preponderance of
the evidence that claims 1, 5, 7–9, 12, 16, 18, 19, 23, 24, 29, and 30 are
unpatentable.1

B. Related Matters
The parties indicate that the ’843 patent is the subject of the following
district court case: Citrix Systems, Inc. v. Workspot, Inc.,
Case No. 18-588-GMS (D. Del.). See Pet. 1; Paper 4, 2. Petitioner filed a
petition challenging another patent also asserted in the district court case,
which was denied. See Workspot, Inc. v. Citrix Sys., Inc., IPR2019-01001,
Paper 15 (PTAB Nov. 19, 2019).

1 We previously granted Petitioner’s motion to seal portions of
Exhibits 1011 and 1012 in this proceeding. Paper 14. We do not refer to
any sealed material in this Decision.
IPR2019-01002
Patent 8,135,843 B2
3
C. The ’843 Patent
The ’843 patent discloses methods and systems for “providing access
to a graphical user interface (GUI) application using web services.”
Ex. 1001, col. 2, ll. 26–28. “[A] web portal can integrate numerous services
from other web sites, such as travel information and search capabilities,”
called “web services,” which “enables the web portal to offer more services
to its users.” Id. at col. 1, ll. 12–21. The ’843 patent describes a prior art
arrangement where a company publishes its web services using a web
service directory on a content server and a client can access one of the web
services through a programming interface. Id. at col. 1, ll. 42–49, 63–66.
The prior art arrangement had various disadvantages, such as the need for
“client-side applications (having client-side application logic) to be
developed by the supplier of the web service to ensure that the client . . . can
properly execute the web service through its interface.” Id. at col. 2, ll. 4–9.
According to the ’843 patent, there was “a need to access web services in a
more user-friendly manner, such as by providing greater interactivity
between the client . . . and the web service and less dependence on suppliers
of web services for applications to correctly execute with the web service.”
Id. at col. 2, ll. 18–22.

IPR2019-01002
Patent 8,135,843 B2
4
Figure 2 of the ’843 patent, depicting an embodiment of the invention,
is reproduced below.

Figure 2 depicts computer system 200 comprising client 105, content server
110, web server 115, and application server 205. Id. at col. 3, ll. 59–67.
Client 105 includes web browser 140 and application client 215, which may
be a GUI application, such as “an Independent Computing Architecture
(ICA) client, developed by Citrix Systems, Inc.” Id. at col. 4, ll. 33–39. The
’843 patent notes that “[a]lthough illustrated with three servers 110, 115, 205
[in Figure 2 above], any number of servers can be used to implement the
functions described . . . . In one embodiment, two or more of the servers 110,
115, 205 are aggregated together and provided as a single physical
machine.” Id. at col. 4, ll. 1–5.
The ’843 patent describes the steps involved in first publishing a web
service using web publishing tool 223 and web service directory 145 on
content server 110, including storing an entry for a “service access point”
(SAP), which is “a unique address for an application” (e.g., a Uniform
IPR2019-01002
Patent 8,135,843 B2
5
Resource Locator (URL)). Id. at col. 5, ll. 11–21, col. 6, l. 46–col. 7, l. 42,
Fig. 3 (steps 300–320). Client 105 subsequently searches web service
directory 145 for a particular web service. Id. at col. 4, ll. 49–50, col. 7,
ll. 43–53, Fig. 3 (steps 322 and 325). Content server 110 responds by
transmitting the SAP for the requested web service, and client 105, using the
received SAP, transmits a request for the GUI application to web server 115.
Id. at col. 7, l. 54–col. 8, l. 3, Fig. 3 (steps 330–345).
Publishing server plug-in 220 on web server 115 determines the SAP
entry for the request and transmits a document containing information for
the GUI application (e.g., the Hypertext Transfer Protocol (HTTP) address
of application server 205) to client 105. Id. at col. 8, ll. 4–27, Fig. 3 (steps
350–355). If application client 215 is already installed on client 105, client
105 launches application client 215 to view the document received from web
server 115. Id. at col. 8, ll. 32–36, Fig. 3 (step 360). Otherwise, client 105
first “communicates with the application server 205 to download and install
the application client 215.” Id. at col. 8, ll. 29–32. “Once the application
client 215 is installed and executing on the client 105, the application server
[205] then executes the application and displays the application on the
application client 215 (step 365).” Id. at col. 8, ll. 37–40. Application client
215 provides “service-based access to published applications, desktops,
desktop documents, and any other application that is supported” (e.g., word
processing applications like Microsoft Word). Id. at col. 8, l. 63–col. 9, l. 7.
According to the ’843 patent, providing access to a remote application
in this manner is advantageous because it allows for “a more power interface
than a web [user interface (UI)] and a more user-friendly environment” and
avoids the need for “client-side application logic to properly execute on the
client.” Id. at col. 2, ll. 26–36.
IPR2019-01002
Patent 8,135,843 B2
6
D. Illustrative Claims
Claims 1, 9, 12, and 19 of the ’843 patent are independent. Claims 1
and 19 recite:
1. A method of providing access to a remote application to
an application client or end user application comprising:
(a) receiving, by a client, from a web service directory on
a content server, a service access point associated with a first
application, the service access point identifying a web server;
(b) receiving, by the client, from the web server identified
by the service access point, address information associated with
the first application;
(c) launching, by the client, a second application, the
second application communicating via a presentation layer
protocol with an application server identified by the received
address information; and
(d) launching, by the application server, the first
application and returning information to the second application
via the presentation layer protocol.
19. A method of providing access to a remote application
to an application client or end user application comprising:
a) receiving, by a content server, from a client, a request
to access a service access point associated with a first
application;
b) identifying, by the content server, that the requested
service access point can be used with an application client;
c) requesting, by the client, from a web server, address
information associated with the first application identified by the
service access point;
d) converting, by the web server, the requested address
information into a file, the format of the file associated with the
application client;
e) transmitting, by the web server, the file including the
converted address information to the client;
IPR2019-01002
Patent 8,135,843 B2
7
(f) launching by the client a second application, the second
application communicating via a presentation layer protocol with
an application server identified by the converted address
information; and
(g) launching by the application server the first application
and returning information to the second application via the
presentation layer protocol.

E. Evidence
The pending grounds of unpatentability in the instant inter partes
review are based on the following prior art:
U.S. Patent No. 6,836,786 B1, filed Apr. 30, 2001, issued
Dec. 28, 2004 (Ex. 1005, “Zoller”);
International Patent Application Publication
No. WO 00/39678, published July 6, 2000 (Ex. 1004,
“Duursma”); and
Paul Stansel et al., Configuring Citrix MetaFrame for
Windows 2000 Terminal Services (Melissa Craft ed., 2000)
(Ex. 1003, “Craft”).2
Petitioner filed declarations from D. Ethan Trooskin-Zoller3 (Ex. 1016) and
Laura A. Whitbeck (Ex. 1014) with its Petition and a second declaration
from Ms. Whitbeck (Ex. 1029) with its Reply. Patent Owner filed a
declaration from Edwin A. Hernandez-Mondragon, Ph.D. (Ex. 2002), with
its Preliminary Response and a second declaration from Dr. Hernandez
(Ex. 2004) with its Response.

2 When citing Craft, we refer to the original page numbers of the reference,
consistent with Petitioner’s usage in the Petition.
3 Mr. Zoller is the first named inventor of the Zoller reference. See
Ex. 1005, code (75); Ex. 1016 ¶ 88.
IPR2019-01002
Patent 8,135,843 B2
8
F. Asserted Grounds
The instant inter partes review involves the following grounds of
unpatentability:
Claims Challenged 35 U.S.C. § References/Basis
1, 5, 7–9, 12, 16, 18,
19, 23, 24, 29, 30
103(a)4 Craft, Duursma
1, 5, 7–9, 12, 16, 18,
19, 23, 24, 29, 30
103(a) Zoller, Craft, Duursma

II. ANALYSIS
A. Level of Ordinary Skill in the Art
In determining the level of ordinary skill in the art for a challenged
patent, we look to “1) the types of problems encountered in the art; 2) the
prior art solutions to those problems; 3) the rapidity with which innovations
are made; 4) the sophistication of the technology; and 5) the educational
level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654,
666–667 (Fed. Cir. 2000). “Not all such factors may be present in every
case, and one or more of them may predominate.” Id.
In the Decision on Institution, based on the parties’ arguments and
record at the time, we preliminarily found that a person of ordinary skill in
the art at the time of the ’843 patent (March 2002) would have had
“a bachelor’s degree in computer science (or equivalent education) and

4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
challenged claims of the ’843 patent have an effective filing date before the
effective date of the applicable AIA amendments, we refer to the pre-AIA
versions of 35 U.S.C. §§ 102 and 103.
IPR2019-01002
Patent 8,135,843 B2
9
3–4 years of experience working with remote-accessed computer systems
(or equivalent work experience).” Dec. on Inst. 8–9; see Pet. 12; Paper 10,
22–23; Ex. 1016 ¶ 63; Ex. 2002 ¶¶ 34–37. Patent Owner agrees with that
assessment. PO Resp. 24–25. Petitioner disagrees “to the extent that [the]
definition requires a formal computer science-related degree and excludes
equivalent education or experience.” Reply 5. Petitioner instead proposes
that a person of ordinary skill in the art would have had “at least a bachelor’s
degree in computer science and 3–4 years of experience working in the field
of remote-accessed computer systems, or an equivalent combination of
education and/or experience in related fields.” Pet. 12 (emphasis added).
Patent Owner responds that an ordinarily skilled artisan would have had a
“formal” education “to understand the theory required to design and build a
remote-accessed computer system” in addition to the required work
experience. Sur-Reply 6–7; see PO Resp. 25–27.
Based on the full record developed during trial, including our review
of the ’843 patent and the types of problems and prior art solutions described
in the ’843 patent, we adopt the preliminary definition of the level of
ordinary skill in the art, with one clarification. The definition includes both
an education and a work experience component. The education component
is satisfied by a bachelor’s degree in computer science or equivalent
education. We see no reason why such an education must have been
acquired in a “formal” setting as Patent Owner suggests—as opposed to, for
example, via on-the-job training or work experiences that would be the
equivalent of the education one would receive by obtaining a bachelor’s
degree in computer science. We find that a person of ordinary skill in the art
would have had a bachelor’s degree in computer science (or equivalent
education) and 3–4 years of experience working with remote-accessed
IPR2019-01002
Patent 8,135,843 B2
10
computer systems (or equivalent work experience), and apply that level of
skill for purposes of this Decision.5

B. Claim Interpretation
We interpret the claims of the ’843 patent
using the same claim construction standard that would be used to
construe the [claims] in a civil action under 35 U.S.C. 282(b),
including construing the [claims] in accordance with the ordinary
and customary meaning of such [claims] as understood by one of
ordinary skill in the art and the prosecution history pertaining to
the patent.
See Changes to the Claim Construction Standard for Interpreting Claims in
Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).
“In determining the meaning of [a] disputed claim limitation, we look
principally to the intrinsic evidence of record, examining the claim language
itself, the written description, and the prosecution history, if in evidence.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014

5 We note that the parties disagree as to whether their respective declarants,
Mr. Zoller and Dr. Hernandez, qualified as persons of ordinary skill in the
art at the time of the ’843 patent. See PO Resp. 25–27; Reply 5–7;
Sur-Reply 6–8. We have reviewed the witnesses’ respective backgrounds
and are persuaded that they were persons of at least ordinary skill in the art
at the relevant time. See Ex. 1016 ¶¶ 5–24, pp. 76–79; Ex. 2004 ¶¶ 6–16,
App’x A. Also, the difference in their levels of experience with respect to
coding and software development is not so great as to require discounting
Mr. Zoller’s testimony as Patent Owner contends. See PO Resp. 25–27.
Nevertheless, we credit Dr. Hernandez’s testimony over that of Mr. Zoller
on various points, based on the explanations he provides and the support he
cites regarding the asserted prior art, for the reasons explained herein. See
infra Sections II.D, II.E.
IPR2019-01002
Patent 8,135,843 B2
11
(Fed. Cir. 2006). Claim terms are given their plain and ordinary meaning as
would be understood by a person of ordinary skill in the art at the time of the
invention and in the context of the entire patent disclosure. Phillips v. AWH
Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two
exceptions to this general rule: 1) when a patentee sets out a definition and
acts as his own lexicographer, or 2) when the patentee disavows the full
scope of a claim term either in the specification or during prosecution.”
Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012).

1. “Service Access Point”
In the Decision on Institution, based on the parties’ arguments and
record at the time, we preliminarily interpreted the claim term “service
access point” to mean “a unique address for an application.” Dec. on Inst.
10–11 (citing Pet. 13–14; Paper 10, 24–27). The parties agree with that
interpretation. See PO Resp. 12; Reply 1. Based on the full record
developed during trial, we do not perceive any reason or evidence that
compels deviation from the preliminary interpretation, and adopt the
previous analysis for purposes of this Decision.

2. “Web Service Directory”
We also preliminarily interpreted the term “web service directory”
in the Decision on Institution to mean “a directory of information for web
services.” Dec. on Inst. 11–13. Patent Owner argues that the term should be
given its plain and ordinary meaning or, alternatively, interpreted to mean a
“searchable directory of information for web services,” citing as support
various portions of the Specification. PO Resp. 12–14 (citing Ex. 1001,
IPR2019-01002
Patent 8,135,843 B2
12
col. 1, ll. 46–62, col. 2, ll. 47–49, col. 4, l. 66–col. 5, l. 2, col. 7, ll. 43–53;
Ex. 2004 ¶¶ 52–57); Sur-Reply 5–6. Petitioner disagrees that the “web
service directory” of the claims must be “searchable.” Reply 1–4. We agree
with Petitioner.
“Web service directory” is recited in independent claims 1, 9, and 12,
and dependent claims 2, 20, 22, and 23. Claim 1, for example, recites
“receiving, by a client, from a web service directory on a content server,
a service access point associated with a first application, the service access
point identifying a web server.” There is no reference in the challenged
claims themselves to the “web service directory” being searchable. Indeed,
the only reference to searching in any of the claims of the ’843 patent is in
claim 2, which recites “transmitting a query to the web service directory to
search for the first application prior to step (a).”6 Claim 2, however,
depends from claim 1 and thus does not provide a basis to limit the parent
claim to a “searchable” web service directory.
The Specification does not define the term “web service directory” as,
or state that a “web service directory” must be, capable of being searched.
Rather, it describes searching a web service directory only in the context of
exemplary embodiments. The computer system shown in Figure 2 is “an
embodiment” of the invention in which “client 105 searches the web service
directory 145 for a web service.” Ex. 1001, col. 3, ll. 52–53, 59–62, col. 4,
ll. 49–50. “In one embodiment, the search is a manual search.
Alternatively, the search is an automatic search. The web service directory
145 may also provide a service based view, such as white and yellow pages,

6 Claims 12 and 22 also recite a client sending a “query” to a web service
directory, but do not recite that the query is to “search” for a first
application.
IPR2019-01002
Patent 8,135,843 B2
13
to search for web services in the web service directory.” Id. at col. 4,
ll. 50–54. Figure 3 likewise shows the sequence of steps for “an
embodiment” of the invention where client 105 “queries a service name
from the web service directory 145” in step 322 (similar to the step recited in
dependent claim 2) and “content server 110 receives the query . . . and finds
the requested service name in the web service directory 145” in step 325.
Id. at col. 3, ll. 54–55, col. 7, ll. 43–46. These are only exemplary
embodiments and do not support Patent Owner’s argument that a “web
service directory” must be “searchable” in all cases. See id. at col. 10,
ll. 17–19 (“the invention should not be limited to certain embodiments”);
Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 735 (Fed. Cir. 2014)
(concluding that descriptions in the specification of “preferred” and
“example” embodiments were “not sufficient to redefine [a] term . . . to have
anything other than its plain and ordinary meaning” (citation omitted)).
Indeed, Patent Owner’s arguments themselves confirm that the cited
embodiments of a web service directory are non-definitional and merely
point out permissible examples. See PO Resp. 13 (“[w]eb service directories
may include a table listing supported web services and documentation” and
“a web service directory can allow a device or user to search for a published
web service” (emphases added)).
The Specification also discloses embodiments of a web service
directory in which service access points may be accessed by “browsing” or
“navigating” rather than submitting a search query. See, e.g., Ex. 1001,
col. 4, ll. 54–57 (“In another embodiment, the web service directory 145
supports a hierarchical browsing based on a structured service name and
service kind for GUI applications.”), col. 7, ll. 46–49 (“In another
embodiment, the user of the client 105 navigates the web service directory
IPR2019-01002
Patent 8,135,843 B2
14
145 until locating a particular service name that the user of the client 105
was attempting to find.”), 50–53 (a client “can query or navigate the web
service directory 145 to discover published web services” (emphasis
added)). This further supports Petitioner’s position that a person of ordinary
skill in the art would have understood the term “web service directory” to
not require search capability.
Finally, we note that our interpretation is consistent with that of the
district court in the related district court case.7 See Ex. 2013, 4–5.
Based on the full record developed during trial, we do not perceive
any reason or evidence that compels deviation from our preliminary
interpretation, adopt the previous analysis for purposes of this Decision, and
interpret “web service directory” to mean “a directory of information for
web services.”

3. “Content Server” and “Web Server”
We did not preliminarily interpret the terms “content server” and
“web server” in independent claims 1, 9, 12, and 19 in the Decision on
Institution. We noted, though, the parties’ agreement that “the content
server and the web server may reside on the same physical machine.”
Dec. on Inst. 36 (quoting Paper 10, 30). That reading of the claims is based
on one paragraph of the Specification, relied upon by Petitioner, stating that

7 The district court also construed claim 1 of the ’843 patent to not require
that steps (c) and (d) be performed in order, and noted Patent Owner’s
acknowledgement that steps (a) and (b) must be performed in order.
Ex. 2013, 28–30 & n.5. We need not resolve these issues, given our
determination that Petitioner has not met its burden to show that certain
limitations of claim 1 are taught by the prior art. See infra Sections II.D.3,
II.E.2.
IPR2019-01002
Patent 8,135,843 B2
15
“[a]lthough illustrated with three servers 110, 115, 205 [in Figure 2], any
number of servers can be used to implement the functions described [in the
Specification]. In one embodiment, two or more of the servers 110, 115,
205 are aggregated together and provided as a single physical machine.”
Ex. 1001, col. 4, ll. 1–5; see Pet. 15–16.
In their papers filed during trial, the parties reiterate their agreement
that the “content server” and “web server” may reside on the same physical
machine, and also agree that the recited servers “must still be two distinct
components, even if residing on the same physical machine,” because they
can be implemented in software. See PO Resp. 14–15; Reply 4; see also
Ex. 2007, 8 (Petitioner arguing to the district court that “critically, the
context of claim 1 and the patent specification confirm that the same
component cannot meet both ‘web service directory on a content server’ and
the ‘web server’ limitations”); Ex. 2008, 9 (Petitioner’s proposed
interpretation to the district court that the recited servers be “distinct”);
Tr. 27:13–22 (Petitioner noting that “in the district court, the parties are in
agreement that the web server and the content server need to be distinct”).
We agree that the “content server” and “web server” must be distinct
components.
“Where a claim lists elements separately, the clear implication of the
claim language is that those elements are distinct component[s] of the
patented invention.” Becton, Dickinson & Co. v. Tyco Healthcare Group,
LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (citation and quotation marks
omitted). Independent claims 1, 9, 12, and 19 each recite a “content server”
and “web server” performing various functions. Claim 1, for example,
recites “receiving, by a client, from a web service directory on a content
server, a service access point associated with a first application, the service
IPR2019-01002
Patent 8,135,843 B2
16
access point identifying a web server,” and “receiving, by the client, from
the web server identified by the service access point, address information
associated with the first application.” The client thus communicates with
both servers, receiving certain information from a web service directory on a
content server and other information from a web server. Moreover, the
service access point transmitted to the client in the first step is what
identifies the web server to the client, allowing the client to communicate
with the web server in the second step.8 See Tr. 12:12–17 (Petitioner
acknowledging that “the function of the service access point is to identify
the web server, so that the web server can then create the connection, the
application, to the client”). Claims 9, 12, and 19 recite similar limitations
pertaining to information transmitted “to” and “from” the client, content
server, and web server, with the service access point “identifying” the web
server in claims 9 and 12.
The Specification and prosecution history demonstrate further that the
terms “content server” and “web server” are used to identify distinct
components. The Specification describes exemplary content server 110 and
web server 115 as having different roles communicating information to and
from client 105. See Ex. 1001, col. 7, l. 26–col. 8, l. 29, Fig. 3. The
Specification also defines a service access point as “a unique address for an
application.” Id. at col. 5, ll. 11–12 (emphasis added). The service access
point uniquely identifies the web server—as opposed to a different

8 Petitioner acknowledged this purpose behind the recited identification in
the related district court case. See Ex. 2007, 8 (arguing that the first step
“would have no purpose if ‘web service directory on a content server’ and
the ‘web server’ were the same thing—the ‘web service directory on a
content server’ would merely be identifying itself”).
IPR2019-01002
Patent 8,135,843 B2
17
component, such as the content server that provided it—so that the client
may communicate with the web server and obtain the necessary information
from it (i.e., address information identifying an application server) after
receiving the service access point. See, e.g., id. at col. 2, l. 37–col. 3, l. 10,
col. 5, ll. 16–26.
During prosecution of the ’843 patent, the applicant attempted to
distinguish certain prior art by arguing that the claimed arrangement
provides “a level of indirection” with the “the client first contacting a
content server providing a web service directory and then . . . contacting a
web server from which the client retrieves address information of an
application server which the client then contacts,” unlike the prior art where
the client “receives a response without having to contact each of the different
web servers.” Ex. 1002, 124–127; see also id. at 123–124 (applicant arguing
that “[t]he service access point directs a client from a web service directory
to a web server, which then directs the client to an application server”
(emphasis added)); Tr. 6:19–24 (Petitioner acknowledging that “the
indirection that occurs between the client and the content server, web server,
and application server” is “[a] key aspect of the invention”). An
understanding of “content server” and “web server” as encompassing the
same component would be contrary to this allegedly important point of
distinction for the claimed invention because the client’s communications
would be directed to the same component and, thus, would eliminate the
need for any “level of indirection.”
Based on the full record developed during trial, we interpret the terms
“content server” and “web server” in independent claims 1, 9, 12, and 19 to
be distinct components (even if provided on a single physical machine).
Accordingly, to prove that the challenged claims are unpatentable, Petitioner
IPR2019-01002
Patent 8,135,843 B2
18
must establish that the relied upon prior art teaches or suggests a “content
server” and “web server” as distinct components, regardless of whether
those servers are on a single or multiple physical machines. No further
interpretation of “content server” and “web server,” or any other term,
is necessary to resolve the parties’ disputes over the asserted grounds of
unpatentability in this proceeding. See Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because
we need only construe terms ‘that are in controversy, and only to the extent
necessary to resolve the controversy,’ we need not construe [a particular
claim limitation] where the construction is not ‘material to the . . . dispute.’”
(citations omitted)).

C. Legal Standards
A claim is unpatentable for obviousness if, to one of ordinary skill in
the pertinent art, “the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)).
The question of obviousness is resolved on the basis of underlying factual
determinations, including “the scope and content of the prior art”;
“differences between the prior art and the claims at issue”; and “the level of
ordinary skill in the pertinent art.”9 Graham v. John Deere Co., 383 U.S. 1,

9 Additionally, secondary considerations, such as “commercial success, long
felt but unsolved needs, failure of others, etc., might be utilized to give light
to the circumstances surrounding the origin of the subject matter sought to
be patented. As indicia of obviousness or nonobviousness, these inquiries
may have relevancy.” Graham, 383 U.S. at 17–18. Patent Owner has not
IPR2019-01002
Patent 8,135,843 B2
19
17–18 (1966). When conducting an obviousness analysis, we consider a
prior art reference “not only for what it expressly teaches, but also for what
it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed.
Cir. 2019) (citation omitted).
A patent claim “is not proved obvious merely by demonstrating that
each of its elements was, independently, known in the prior art.” KSR,
550 U.S. at 418. An obviousness determination requires finding “both ‘that
a skilled artisan would have been motivated to combine the teachings of the
prior art references to achieve the claimed invention, and that the skilled
artisan would have had a reasonable expectation of success in doing so.’”
Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
(for an obviousness analysis, “it can be important to identify a reason that
would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention does”).
“Although the KSR test is flexible, the Board ‘must still be careful not to
allow hindsight reconstruction of references . . . without any explanation as
to how or why the references would be combined to produce the claimed
invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
2016) (citation omitted). Further, an assertion of obviousness “cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d

presented any evidence of secondary considerations of nonobviousness in
this proceeding.
IPR2019-01002
Patent 8,135,843 B2
20
1376, 1383 (Fed. Cir. 2016) (stating that “‘conclusory statements’” amount
to an “insufficient articulation[] of motivation to combine”; “instead, the
finding must be supported by a ‘reasoned explanation’” (citation omitted));
In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016)
(“To satisfy its burden of proving obviousness, a petitioner cannot employ
mere conclusory statements. The petitioner must instead articulate specific
reasoning, based on evidence of record, to support the legal conclusion of
obviousness.”).

D. Obviousness Ground Based on Craft and Duursma
1. Craft
Craft is a book describing Windows 2000 Terminal Services, which
allows administrators to “distribute a multiuser environment to fat- and
thin-client machines,” and Citrix MetaFrame, an extension of Terminal
Services. Ex. 1003, 21, 37. “[T]he two packages allow remote users to
connect to a server, open a virtual desktop, and perform remote control
computing without the necessity of a local PC. The server handles all
applications processing and sends only screen updates to the client.” Id. at
17. Craft also describes NFuse, an add-on to Citrix MetaFrame that “allows
organizations to integrate and publish interactive applications into any
standard Web browser.” Id. at 303, 442. “NFuse includes both a Citrix
Server component and a Web server component, as well as a Citrix ICA
client component to deliver applications in thin-client fashion through Web
browsers.” Id. at 442. Specifically, NFuse is “installed on one of the Citrix
servers in the farm that houses the applications being served, and the NFuse
extensions must be installed on the Web server that will present the
applications.” Id. at 443. Publishing an application using Citrix MetaFrame
IPR2019-01002
Patent 8,135,843 B2
21
causes two files to be created and stored on the Web server:
(1) a “[HyperText Markup Language (HTML)] Web page file that links to
the application,” and (2) an ICA file that “contains information about the
application server.” Id. at 433, 435.
Figure 12.3 of Craft is reproduced below.

Figure 12.3 depicts “[t]he flow of access to applications in the Citrix Server
Farm through NFuse.” Id. at 433. The Remote Client sends authentication
information entered by the user to the NFuse Server (i.e., a web server),
which passes the information to the Server with NFuse for authentication.
Id. at 454. After authentication, the Server with NFuse collects and sends
“information about the applications for that specific user” to the NFuse
Server. Id. at 454–55. Craft states that NFuse includes “[a] Web interface to
IPR2019-01002
Patent 8,135,843 B2
22
Program Neighborhood for simplified application access.” Id. at 443–44.
“Program Neighborhood provides a single sign-on for all published
applications a user has rights to in [the] Citrix Server Farm.” Id. at 45. The
NFuse Server “pastes [the] application information into a template .ICA file,
thereby creating links in the Web interface of the client to an array of .ICA
files” stored on the NFuse Server, and provides the links to the Remote
Client. Id. at 455. The links may appear as icons. Id. at 450, 455.
“By clicking on an icon in the Web browser, the client downloads the
corresponding .ICA file and starts the local ICA Client.” Id. at 455. Then,
“[t]he ICA Client uses the given information to open a connection to the
Citrix Server serving up that particular application.” Id. “Once the user gets
the .ICA file, the [NFuse Server] has done its job and is no longer needed to
make a connection.” Id.

2. Duursma
Duursma discloses “a method for informing a client system of
application programs installed at server systems that are available to the
client system for execution.” Ex. 1004, p. 1, ll. 6–8. As described in
Duursma, “[t]hese available application programs comprise the ‘program
neighborhood’ of the user. A system for determining a program
neighborhood for a client node includes an application program . . . (referred
to as the ‘Program Neighborhood’ application), memory for storing
components of the application program, and a processor for executing the
application program.” Id. at p. 10, ll. 11–18. Duursma describes a server
providing information about available application programs to the client
after it is authenticated. Id. at p. 12, l. 1–2, p. 19, ll. 3–18. A user can click
on an icon “displayed in the Program Neighborhood web page,” which may
IPR2019-01002
Patent 8,135,843 B2
23
be “an encoded URL that specifies . . . the location of the application (i.e.,
on which servers it is hosted or, alternatively, the address of a master
server).” Id. at p. 21, ll. 19–24. The client then “establishes a connection
. . . with the server identified as hosting the requested application,” which
may be via the ICA protocol. Id. at p. 22, ll. 3–7.

3. Claim 1
Petitioner argues that claim 1 is unpatentable over Craft and Duursma
under 35 U.S.C. § 103(a), relying on the testimony of Mr. Zoller as
support.10 Pet. 21–32 (citing Ex. 1016); Reply 21–27. Patent Owner makes
various arguments in response, relying on the testimony of Dr. Hernandez.
PO Resp. 57–62, 65–66 (citing Ex. 2004); Sur-Reply 25–28.
Petitioner asserts that “Craft, either alone or in combination with
Durrsma,” teaches step (a) of claim 1, and Craft teaches steps (b) through
(d). Pet. 21–32. Petitioner contends that Craft teaches a “client”
(i.e., Remote Client shown in Figure 12.3), “web server” (i.e., NFuse
Server), “content server” (i.e., Server with NFuse), and “application server”
(i.e., a Citrix Server in the Citrix Server Farm). Id. at 21–23.

10 In the Decision on Institution, we determined that Petitioner had not
established a reasonable likelihood of prevailing on its asserted ground
based on Craft and Duursma. Dec. on Inst. 13–26. We now assess
Petitioner’s asserted ground based on a full trial record.
IPR2019-01002
Patent 8,135,843 B2
24
Petitioner provides an annotated version of Figure 12.3 of Craft
reproduced below (id. at 22).

The annotated version of Figure 12.3 depicts the alleged “client,” “web
server,” “content server,” and “application server” in Craft. Petitioner
argues that (a) the Remote Client receives a “service access point” (i.e.,
application icon, which is a hyperlink according to Petitioner) associated
with a “first application” (i.e., application running on the Citrix Server) and
identifying the “web server” (i.e., NFuse Server); (b) the Remote Client
receives “address information” (i.e., information in the ICA file) associated
with the first application; (c) the Remote Client launches a “second
application” (i.e., ICA Client), which communicates via a “presentation
layer protocol” (i.e., ICA protocol) with the “application server” (i.e., Citrix
Server) identified by the address information; and (d) the Citrix Server then
IPR2019-01002
Patent 8,135,843 B2
25
launches the first application and returns information to the second
application via the presentation layer protocol. Id. at 23–32.
We focus on step (a) of claim 1, as it is dispositive. Step (a) recites
“receiving, by a client, from a web service directory on a content server,
a service access point associated with a first application, the service access
point identifying a web server.” Petitioner asserts that Craft teaches a
content server that has a web service directory, citing Craft’s discussion of
sending a set of icons to the user and Craft’s description of Program
Neighborhood. Id. at 23–24 (citing Ex. 1003, 45, 52, 443–444, 455,
Fig. 12.20; Ex. 1016). Petitioner argues that “Program Neighborhood is a
web service directory because it provides service access points.” Id. at 24.
According to Petitioner, “[t]his is confirmed by Duursma, which describes
Citrix’s ‘Program Neighborhood’ in detail,” and a person of ordinary skill in
the art would have been motivated to combine the references’ teachings.
Id. at 25–26 (citing Ex. 1004, p. 10, ll. 20–23, p. 23, ll. 22–23, p. 24, ll. 3–6;
Ex. 1016). Petitioner further argues that “each application icon” in Craft
constitutes a service access point because each is “a hyperlink that identifies
the web server.” Id. at 26.
Patent Owner responds that Craft and Duursma do not teach step (a)
because the alleged “service access point” (i.e., application icon, which is a
hyperlink) in Craft is received from the alleged “web server” (i.e., NFuse
Server), not from the alleged “content server” (i.e., Server with NFuse) as
required by the claim. PO Resp. 59. Further, the alleged “web service
directory” (i.e., Program Neighborhood) only provides to the NFuse Server
information identifying applications accessible to the user, not a “service
IPR2019-01002
Patent 8,135,843 B2
26
access point” to a client as required by the claim.11 Id. at 59–60. We agree
with Patent Owner.
As described in Craft and shown in Figure 12.3 above, Program
Neighborhood identifies the applications that the user is permitted to access,
the Server with NFuse sends information about those applications to the
NFuse Server, and the NFuse Server uses the information to create the ICA
files. Ex. 1003, 454–455. The NFuse Server also creates links, presented as
icons, and provides them to the Remote Client so that the Remote Client
may select one to download the appropriate ICA file and connect to the
appropriate Citrix Server. Id. at 450, 455. Petitioner identifies an icon in
Craft as a “service access point” and Program Neighborhood as a “web
service directory.” Pet. 24, 26. Claim 1, however, requires that a service
access point be received by the client from a web service directory on a
content server. The icon in Craft is created and provided to the client by the
NFuse Server (i.e., what Petitioner identifies as the alleged “web server”),
not by Program Neighborhood (i.e., what Petitioner identifies as the alleged
“web service directory” on a “content server”). See id. at 22–26 (Petitioner
acknowledging that “the Program Neighborhood service [is] on the Citrix
Server” rather than the NFuse Server (quoting Ex. 1003, 444)); Ex. 1003,
454–455. Vice versa, the information that Program Neighborhood provides
merely identifies the applications that the user can access; it is not a “service
access point” (i.e., a unique address for an application). See Ex. 1003,

11 Patent Owner argues that Petitioner has not met its burden to prove
unpatentability for other reasons as well, including that Petitioner has not
provided sufficient evidence that Craft is a prior art printed publication
under 35 U.S.C. § 102. PO Resp. 50–56, 65–66; Sur-Reply 20–25, 27–28.
We need not resolve these issues, given our determination herein regarding
step (a) of claim 1.
IPR2019-01002
Patent 8,135,843 B2
27
454–455 (disclosing that the Citrix Server returns to the IIS Server12
“information about the applications for that specific user”).
Nor do Petitioner’s arguments regarding Duursma cure the
inconsistency. The portions of Duursma cited by Petitioner disclose
maintaining a database of information about what applications a user may
access and sending links (as icons) to the user. See Pet. 25, 27 (citing
Ex. 1004, p. 21, l. 19–p. 22, l. 2 (disclosing icons 57, 57', each with “an
encoded URL that specifies . . . the location of the application,” transmitted
by web server 30 to client node 20 as shown in Figure 3D), p. 23, ll. 22–23
(disclosing application database 48 storing “authorized user and group
information for all the public (i.e., published) applications in a server farm or
in a group of trusted domains”)). Similar to Craft, though, in the cited
portions of Duursma, the icons are provided to the client by a web server,
not by the database, and vice versa, the information that the database
provides is not a “service access point” (i.e., a unique address for an
application).
Petitioner argues in its Reply that Craft teaches step (a) because “Craft
is clear that the icons (SAPs) come from the content server” (i.e., Server
with NFuse) and are “passed to the client via the web server” (i.e., NFuse
Server). Reply 21–22 (citing Ex. 1016 ¶¶ 101–105). This arrangement
teaches step (a) according to Petitioner because nothing in the claim requires
the client to “directly receive the SAPs from the content server, i.e., without
any involvement of the web server,” and a person of ordinary skill in the art

12 The IIS Server corresponds to the NFuse Server shown in Figure 12.3.
See Ex. 1003, 433 (“Microsoft’s Internet Information Server (IIS) . . . acts as
the Web server”), 454–455.
IPR2019-01002
Patent 8,135,843 B2
28
“would recognize that intermediaries are the norm for communications over
the Internet.” Id. (citing Ex. 1016 ¶¶ 28–30, 46–47).
We are not persuaded. First, we do not agree that the application
icons in Craft are created by the Server with NFuse. The portions of Craft
cited by Petitioner and Mr. Zoller merely indicate that information about
available applications is “passe[d]” to and “displayed” by the Remote Client.
See Ex. 1003, 444, 455; Reply 21–22; Ex. 1016 ¶ 101. What is actually sent
to the Remote Client, however—and what Petitioner relies on as a “service
access point”—is the set of application icons, which is created by the NFuse
Server. Specifically, the Server with NFuse sends information about the
accessible applications to the NFuse Server. Ex. 1003, 454 (“The Citrix
Server (Farm) returns from the master ICA browser all information about the
applications for that specific user.”), Fig. 12.3 (“the Citrix server sends the
application list to the NFuse Server”). The NFuse Server does not merely
provide the information received from the Server with NFuse to the Remote
Client. Id. at 439, 455. Rather, the NFuse Server creates the application
icons, which are hyperlinks that the user can select. Id. at 455 (“The IIS
Server pastes this application information into a template .ICA file, thereby
creating links in the Web interface of the client to an array of .ICA files.
. . . By clicking on an icon in the Web browser, the client downloads that
corresponding .ICA file and starts the local ICA Client.” (emphasis added));
see Pet. 26–27 (expressly relying on Craft’s connection sequence involving
the IIS Server); Ex. 1016 ¶ 105 (same). Petitioner does not point to, and we
do not find, any specific disclosure in Craft that the application icons, acting
as hyperlinks, are created by the Server with NFuse (as opposed to the
NFuse Server), or even that they exist until the application information is
received and the NFuse Server creates them.
IPR2019-01002
Patent 8,135,843 B2
29
Petitioner also argued during the hearing that “the hyperlink behind
the icon is really what the service access point is,” and that the hyperlink
comes from the Server with NFuse and “just pass[es] through the web server
on its way to the client.” Tr. 30:25–32:10. In its Petition, however,
Petitioner stated that “Craft teaches that each application icon is a service
access point.” Pet. 26. To the extent Petitioner is attempting to disavow any
reliance on the application icons in asserting that Craft teaches a “service
access point,” that is a new argument that cannot be considered. See Dell
Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (holding that
the Board was not obligated to consider an “untimely argument . . . raised
for the first time during oral argument”); Patent Trial and Appeal Board
Consolidated Trial Practice Guide (Nov. 2019), 85–86, available at
https://www.uspto.gov/TrialPracticeGuideConsolidated (“Practice Guide”)
(“During an oral hearing, a party . . . may only present arguments relied
upon in the papers previously submitted.”). It is not merely a clarification of
Petitioner’s position, given Petitioner’s clear identification of an application
icon as a “service access point” in its Petition. See Chamberlain Group, Inc.
v. One World Techs., Inc., 944 F.3d 919, 924–25 (Fed. Cir. 2019) (“Parties
are not barred from elaborating on their arguments on issues previously
raised.”).
Second, even if the application icons did originate at the Server with
NFuse and were passed through the NFuse Server to the Remote Client,
we are not persuaded that that process would teach step (a). Claim 1 clearly
delineates between what is received “from” the “web service directory on a
content server” (i.e., a “service access point identifying a web server”) and
what is received “from” the “web server” (i.e., “address information
associated with the first application”). Petitioner’s reading is that the
IPR2019-01002
Patent 8,135,843 B2
30
“service access point” can instead be sent to the client from the “web server”
(as long as it originated at the “content server” at some earlier time),
rendering the distinction between the “content server” and “web server”
meaningless. To be clear, we do not read claim 1 as requiring direct
communication between the client and the two servers, given that some
intermediary would always exist for information communicated over the
Internet. See Reply 21–22; Ex. 1003, 52–53, Fig. 1.16 (Craft depicting
“Internet” between a “Remote User” and a “Web Server”). But when the
plain language of the claim recites that certain information is received from
a “content server” and other information is received from a “web server,”
we do not see how communication from the “web server” satisfies a
limitation that expressly requires communication from the “content server.”
In other words, we are not persuaded that information can be sent through a
“web server” intermediary when the claim requires that it be sent from the
“content server,” and vice versa.
We credit the testimony of Dr. Hernandez on step (a), as it explains in
detail the deficiencies in Petitioner’s position and is consistent with the
references’ disclosures discussed above. See Ex. 2004 ¶¶ 90–92, 95.
Based on the full record developed during trial and for the reasons
explained above, we are not persuaded by Petitioner’s arguments that Craft
and Duursma teach step (a) of claim 1. Petitioner has not proven, by a
preponderance of the evidence, that claim 1 would have been obvious based
on Craft and Duursma under 35 U.S.C. § 103(a).

4. Claims 5, 7–9, 12, 16, and 18
Similar to claim 1, independent claim 9 recites a client browser
“(a) receiving, from a web service directory on a content server, a service
IPR2019-01002
Patent 8,135,843 B2
31
access point associated with the first application, the service access point
identifying a web server.” Independent claim 12 recites “b) transmitting, to
the client, from the web service directory, a service access point associated
with the first application, the service access point identifying a web server.”
Petitioner relies on its previous arguments regarding step (a) of claim 1.
Pet. 36–37, 40. Based on the full record developed during trial and for the
reasons explained above, we are not persuaded that Craft and Duursma teach
the recited transmitting of a service access point from a web service
directory on a content server to a client. See supra Section II.D.3.
We also note an additional deficiency with respect to claim 12.
Step (a) of claim 12 recites “sending, by a client, a query to a web service
directory on a content server for information associated with a first
application.” Petitioner argues that in Craft, the user logs in to the NFuse
Server by providing a username and password, and information is then
retrieved about the applications available to that user. Pet. 39–40 (citing
Ex. 1003, 454; Ex. 1016 ¶ 108). According to Petitioner, “[b]ecause the
application information is for ‘that specific user,’ . . . a [person of ordinary
skill in the art] would understand login information is sent from the client to
the web service directory to determine which applications are authorized.”
Id. at 43 (quoting Ex. 1003, 454; citing Ex. 1016 ¶ 109); see Reply 25–26.
We are not persuaded. First, Petitioner does not explain sufficiently
why the Remote Client logging in to the NFuse Server (i.e., what Petitioner
identifies as the alleged “web server”) constitutes a query being sent to
Program Neighborhood on the Server with NFuse (i.e., what Petitioner
identifies as the “web service directory on a content server”). See Pet.
21–23, 39–40. Further, it is the NFuse Server that queries the Server with
NFuse for application information, not the Remote Client. See Ex. 1003,
IPR2019-01002
Patent 8,135,843 B2
32
Fig. 12.3 (“The NFuse Server requests user validation from the Citrix Server
that has the NFuse components installed.”). Second, even if logging in to
the NFuse Server could qualify, Petitioner does not point to sufficient
support to equate logging in with “a query . . . for information associated
with a first application,” as recited in claim 12. See Pet. 39–40. The cited
portion of Craft only states: “Your client Web browser connects to the IIS
server at port 80, where it asks for username and password if needed.”
Ex. 1003, 454. Thus, Craft discloses a user entering a username and
password as a request to log in to the system and be authenticated, rather
than “a query . . . for information associated with a first application.” We
agree with Dr. Hernandez that “[a]uthentication credentials alone are not a
query for anything other than authentication and permission to access a
system.” Ex. 2004 ¶ 96; see PO Resp. 62–63.
Claims 5, 7, and 8 depend from claim 1, and claims 16 and 18 depend
from claim 12. Accordingly, Petitioner has not proven, by a preponderance
of the evidence, that claims 5, 7–9, 12, 16, and 18 would have been obvious
based on Craft and Duursma under 35 U.S.C. § 103(a).

5. Claims 19, 23, 24, 29, and 30
Petitioner relies on Craft and Duursma as allegedly teaching steps (a)
and (b) of independent claim 19, and relies on Craft alone for steps (c)
through (g), referring to many of its arguments with respect to claim 1.
Pet. 41–48. We focus on steps (a) and (b), each of which is dispositive.
Similar to step (a) of claim 12, step (a) of claim 19 recites “receiving,
by a content server, from a client, a request to access a service access point
associated with a first application.” Whereas step (a) of claim 12 involves a
query to a “web service directory on a content server” for “information
IPR2019-01002
Patent 8,135,843 B2
33
associated with a first application,” step (a) of claim 19 recites a request to a
“content server” to “access a service access point associated with a first
application.” Petitioner’s arguments for the two limitations are nearly
identical. Compare Pet. 39–40, with id. at 42–43.
We are not persuaded for the same reasons explained above for
claim 12. See supra Section II.D.4. Petitioner does not explain sufficiently
why the Remote Client logging in to the NFuse Server (i.e., what Petitioner
identifies as the alleged “web server”) constitutes a request being received
from the Remote Client by the Server with NFuse (i.e., what Petitioner
identifies as the alleged “content server”), and even if it could, Petitioner
does not point to sufficient support to equate logging in with “a request to
access a service access point associated with a first application,” as recited in
claim 19. See Pet. 21–23, 42–43.
Step (b) of claim 19 recites “identifying, by the content server, that the
requested service access point can be used with an application client.”
Petitioner argues that Craft teaches the limitation in two ways. Pet. 43–46.
First, Petitioner contends that the Server with NFuse “identifies which
applications the user is authorized to use (and thus, which associated service
access points to provide)” because it returns to the NFuse Server information
about applications “for that specific user.” Id. at 43–44 (quoting Ex. 1003,
454; citing Ex. 1016 ¶ 109). This is “confirmed by Duursma,” according to
Petitioner, because Duursma teaches Program Neighborhood using user
credentials to determine application programs authorized for the user. Id. at
44–45. Second, Petitioner relies on Craft’s “Client Auto Update” feature,
arguing that when it is enabled, the Server with NFuse “identifies whether
the requested service access point can be used with the local ICA Client
IPR2019-01002
Patent 8,135,843 B2
34
(i.e., whether it is up to date).” Id. at 45–46 (citing Ex. 1003, 229–232;
Ex. 1016 ¶¶ 110–111).
We are not persuaded. With respect to Petitioner’s first argument,
Petitioner does not explain sufficiently why determining which applications
a user may access (based on the user’s login information) equates with
identifying that a requested “service access point” (i.e., application icon,
which is a hyperlink) can be “used” with the user’s application client. See
Reply 26 (arguing, without further explanation, that identifying authorized
applications “mean[s] that the corresponding SAPs can be used with an
application client”). The Server with NFuse’s determination is based on the
login information provided by the user, not any particular capability of an
application icon to be used with an application client. Craft lists the
following sequence of steps:
The user connects to the NFuse server, provides the
correct account credentials, and logs in.
The NFuse Server requests user validation from the Citrix
Server that has the NFuse components installed.
The Citrix servers request authorization from a domain
controller. When access is granted, the Citrix server sends the
application list to the NFuse Server.
Ex. 1003, Fig. 12.3, 444 (“The access attributes assigned to the applications
in the Citrix Published Application Manager determine what applications
will be displayed to which users/groups.”). We see no indication in Craft,
for example, that the list of applications authorized for a particular user is
any different depending on what type of application client is being used at
the Remote Client. See, e.g., id. at 454–455 (disclosing use of only one type
of application client, the “local ICA Client”). Moreover, as explained above,
the application icons, operating as hyperlinks, are not even created at the
IPR2019-01002
Patent 8,135,843 B2
35
time the Server with NFuse determines which applications a user is
permitted to access; they are created by the NFuse Server after receiving the
application information from the Server with NFuse. See supra Section
II.D.3. The alleged “content server” (i.e., Server with NFuse) cannot make a
determination about a “service access point” that does not yet exist.
Duursma operates similarly to Craft, with the user’s credentials being
used to determine a list of authorized applications. See Ex. 1004, p. 29,
ll. 20–22. Petitioner does not explain sufficiently the connection between
that determination and identifying that a requested “service access point”
can be “used” with the user’s application client.
With respect to Petitioner’s second argument, Petitioner likewise fails
to explain sufficiently why determining whether the user has the latest
version of the ICA Client equates with identifying that a requested “service
access point” (i.e., application icon, which is a hyperlink) can be “used” with
the user’s application client. Craft discloses that “new versions of the
MetaFrame client software” are stored “in a central database on the Citrix
server (or a network share)” and “[w]hen clients connect to your server,
it compares the client version with the version in your database and then
automatically downloads the new version to the client if needed and
upgrades their installation.” Ex. 1003, 230. Craft does not mention the
application icons in connection with the “Client Auto Update” feature, and
we see no connection between them. Petitioner and Mr. Zoller state that
“if the client does not have the latest ICA Client installed, the older version
might not be useable with a service access point,” but point to no specific
language in Craft supporting that inference. See Pet. 46; Ex. 1016 ¶ 111.
Again, Petitioner has not provided sufficient explanation or factual support
for why the limited disclosure in Craft teaches the specific identification
IPR2019-01002
Patent 8,135,843 B2
36
recited in step (b). We instead credit the testimony of Dr. Hernandez on
these points, as it is consistent with the language of Craft and Duursma. See
Ex. 2004 ¶¶ 97–101.
Based on the full record developed during trial and for the reasons
explained above, we are not persuaded by Petitioner’s arguments that Craft
and Duursma teach steps (a) and (b) of claim 19. Petitioner has not proven,
by a preponderance of the evidence, that claim 19, or claims 23, 24, 29, and
30, which depend from claim 19, would have been obvious based on Craft
and Duursma under 35 U.S.C. § 103(a).

E. Obviousness Ground Based on Zoller, Craft, and Duursma
1. Zoller
Zoller describes a method for establishing a terminal server
connection using a web browser where “a user at a client may specify a URL
including certain parameters necessary to establish a corresponding terminal
server connection.” Ex. 1005, col. 2, ll. 23–25. Zoller discloses:
The standard http request generated by the URL is sent to the
web server, which in response generates the complete set of
parameters required for the terminal server connection using a
script or other program logic. The full set of parameters may
include: name of server, screen resolution or aspect ratio, name
of application to execute (e.g., Word, SAP), audio (yes/no), login
name, password, disk space for temporary storage, etc. The
parameters are returned within the structure of a URL address
corresponding to a web page having functionality used to
facilitate the desired terminal server connection. Thus, the
terminal server client software on the client can then use the
information and parameters returned to create the selected
terminal server connection.
Id. at col. 2, ll. 25–38.

IPR2019-01002
Patent 8,135,843 B2
37
Figure 7 of Zoller is reproduced below.

Figure 7 depicts client 20 in communication with web server 49a13 and
terminal server 49b, at different locations, via communications network 82.
Id. at col. 7, ll. 7–13. Client 20 first generates a request to web server 49a
and web server 49a returns a “web page query form” that is the “initial page
in a series of forms allowing a user to specify the parameters necessary to
establish a particular terminal server connection.” Id. at col. 5, ll. 12–37.
Specifically, the first web page allows the user to enter a screen size and
parameter “identif[ying] the terminal server having the desired application
for which an execution is desired.” Id. at col. 5, ll. 43–53, Fig. 3. Upon
receiving that information, web server 49a returns a second web page

13 When referencing component 49a, we use the nomenclature of Zoller,
which refers to the component only as “web server 49a.” See Ex. 1005,
col. 7, ll. 7–44.
IPR2019-01002
Patent 8,135,843 B2
38
requesting a username and password from the user. Id. at col. 5,
l. 54–col. 6, l. 16, Fig. 4.
Upon receiving the username and password, web server 49a returns a
third web page “allowing specification of a parameter indicating the
application to be executed on the earlier selected terminal server.” Id. at
col. 6, ll. 17–24. Figure 5 of Zoller is reproduced below.

Figure 5 depicts an exemplary “Application Launching query form page
allowing a user to specify a particular Microsoft® Corporation software
application for execution,” and shows various icons, such as an icon labeled
“Microsoft Word.” Id. at col. 6, ll. 24–30 (the web page permits “selection
of an application button depicted . . . at the client 20”). The user selects a
particular application shown on the page, causing “an http request and the
application identifier parameter” to be sent to web server 49a. Id. at col. 6,
IPR2019-01002
Patent 8,135,843 B2
39
ll. 27–30. Web server 49a uses an Active Server Page (ASP) script to
generate additional parameters, including “the directory location on the
terminal server having the application selected,” and provides to client 20,
via “a web page and associated ActiveX® controls or other embedded
program having functionality beyond that of traditional HTML,” a URL
having all of the necessary parameters. Id. at col. 6, ll. 31–65, col. 7,
ll. 28–31.
Client 20 then “initiates the terminal serv[er] connection with the
terminal server via execution of ActiveX® controls, using whatever
proprietary protocols are necessary to do so.” Id. at col. 6, l. 66–col. 7, l. 2.
“Upon completion of the connection with the terminal server 49b using
required parameters, the terminal server executes the selected application”
and “returns to the client 20 a display showing execution of the application
on the terminal server 49b,” in “a screen window sized according to the
user’s earlier specified parameters.” Id. at col. 7, ll. 13–33, Fig. 6. Because
the URL provided to the user includes all of the parameters necessary to
make the terminal server connection, it can be used again later to re-establish
a connection. Id. at col. 7, ll. 34–47.

2. Claim 1
Petitioner argues that claim 1 is unpatentable over Zoller, Craft, and
Duursma under 35 U.S.C. § 103(a), relying on the testimony of Mr. Zoller as
support. Pet. 50–63 (citing Ex. 1016); Reply 8–19. Patent Owner makes
various arguments in response, relying on the testimony of Dr. Hernandez.
PO Resp. 29–49 (citing Ex. 2004); Sur-Reply 9–19.
Petitioner relies on Zoller for the majority of the limitations of
claim 1. Pet. 50–63. Petitioner argues that Zoller teaches a “client”
IPR2019-01002
Patent 8,135,843 B2
40
(i.e., client 20 shown in Figure 7), “web server” (i.e., web server 49a),
“content server” (i.e., web server 49a), and “application server”
(i.e., terminal server 49b). Id. at 50–51, 60–63. Petitioner provides an
annotated version of Figure 7 of Zoller reproduced below (id. at 51).

The annotated version of Figure 7 depicts the alleged “client device,”
“content/web server,” and “application server” in Zoller. Petitioner argues
that (a) client 20 receives a “service access point” (i.e., icon shown in
Figure 5 reproduced in Section II.E.1 above, which is a hyperlink according
to Petitioner) associated with a “first application” (i.e., Microsoft Word) and
identifying the “web server” (i.e., web server 49a); (b) client 20 receives
“address information” (i.e., a directory location on terminal server 49b
generated by the ASP script on web server 49a) associated with the first
application; (c) client 20 launches a “second application” (i.e., ActiveX
controls or another embedded program) that communicates via a
“presentation layer protocol” (i.e., the “proprietary protocols” disclosed in
Zoller) with the “application server” (i.e., terminal server 49b) identified by
IPR2019-01002
Patent 8,135,843 B2
41
the address information; and (d) terminal server 49b then launches the first
application and returns information to the second application via the
presentation layer protocol. Id. at 50–63.
With respect to the “service access point” recited in claim 1, Petitioner
argues that each icon shown in Figure 5, such as the icon labeled “Microsoft
Word,” is a hyperlink because when the user clicks on the icon, client 20
sends a corresponding HTTP request to web server 49a. Id. at
53–54 (citing Ex. 1005, col. 4, ll. 59–63, col. 6, ll. 27–30, Fig. 5).
According to Petitioner and Mr. Zoller, a person of ordinary skill in the art
“would understand each icon is a hyperlink pointing to (i.e., identifying) the
content/web server 49a, and thus a service access point.” Id. at 54; see
Ex. 1016 ¶ 126. As further support, Petitioner cites the URL shown in the
address bar in Figure 5, which identifies web server 49a (“unisys4w2k”) to
which the hyperlinks in the web page point. Id.
In addition, Petitioner contends that Craft and Duursma both “further
confirm[]” that Zoller’s icons are hyperlinks. Id. at 54–56. With respect to
Craft, Petitioner cites Craft’s description of Terminal Services remote
application access via a hyperlink to a specific server. Id. at 54–55 (citing
Ex. 1003, 287). According to Petitioner, a person of ordinary skill in the art
would have had reason to combine the teachings of Zoller and Craft because
(1) Zoller refers to Terminal Services and Craft “provides further details”
about Terminal Services, (2) “Craft discloses the well-known understanding
that web pages include hyperlinks pointing to a specific server,” and (3) “the
combination would yield predictable and successful results (i.e., Zoller’s
icons are hyperlinks pointing to the content/web server 49a).” Id. at 55.
With respect to Duursma, Petitioner cites Duursma’s teaching of icons in a
web page each with an encoded URL specifying the location of the
IPR2019-01002
Patent 8,135,843 B2
42
corresponding application. Id. at 55–56; see Ex. 1004, col. 15, ll. 14–18,
col. 21, ll. 19–24. According to Petitioner, a person of ordinary skill in the
art would have had reason to combine the teachings of Zoller and Duursma
because (1) “both references describe providing icons through a web
interface,” (2) “Duursma discloses that icons in a web interface are
hyperlinks referencing the location of a server,” and (3) “the combination
would yield predictable and successful results (i.e., available applications are
displayed as icons that are hyperlinks pointing to content/web server 49a,
which completes the connection parameters).” Pet. 56.
With respect to the “web service directory” recited in claim 1,
Petitioner argues that the “service access point” (i.e., icon) in Zoller is
provided to client 20 from a “web service directory” on a “content server”
(i.e., web server 49a). Id. at 56–57. According to Petitioner, a person of
ordinary skill in the art would “understand that Zoller’s web/content server
49a includes a directory for providing the icons (service access points)
shown in [Figure 5] because the field ‘ts-web’ refers to a directory on the
content/web server 49a.” Id. Mr. Zoller testifies that the URL shown in the
address bar of Figure 5 (“http://unisys4w2k/tsweb/applaunch”) identifies
web server 49a (“unisys42k”) and a directory (“tsweb”) on web server 49a
that provides the web page with icons. Ex. 1016 ¶¶ 122–24. Petitioner also
points to “data store 70” in Figure 7, arguing that an ordinarily skilled
artisan “would understand that data store 70 is ‘on’ web/content server 49a.”
Pet. 57 & n.7. Mr. Zoller testifies that “data store 70 stores the content for
the ‘tsweb,’ which contains the ‘applaunch page.’” Ex. 1016 ¶ 124.
We now turn to Petitioner’s specific assertions regarding the “content
server” and “web server” recited in step (a) of claim 1, which are dispositive.

IPR2019-01002
Patent 8,135,843 B2
43
a) Petitioner’s Arguments in the Petition
In its Petition, Petitioner clearly maps web server 49a in Figure 7 of
Zoller to both the “content server” and “web server” recited in claim 1.
On page 51 of the Petition, Petitioner states that “[s]erver 49a corresponds to
the claimed content and web servers.” Pet. 51. Petitioner argues that web
server 49a meets the various limitations of steps (a) and (b), such as a “web
service directory on a content server” providing a “service access point
identifying a web server” to the client, id. at 52–54 (“the client 20 receives
a web page from the content/web server 49a” (emphasis added)), 56–57, and
a “web server” providing “address information associated with the first
application,” id. at 59–60 (“the client 20 receives, from the content/web
server 49a, address information (the directory location on the terminal
server) associated with the first application” (emphasis added)).
Petitioner now acknowledges, and we interpret claim 1 to require, that
the “content server” and “web server” be distinct components (even if
provided on a single physical machine). See supra Section II.B.3. Petitioner
in its Petition does not point to any distinct components in web server 49a
that act independently as a “content server” and “web server.” Rather,
Petitioner refers throughout its Petition to web server 49a as a single
physical machine that Petitioner calls “content/web server 49a,”
“web/content server 49a,” or “[s]erver 49a.” Pet. 50–63. Mr. Zoller does
the same, referencing “content/web server 49a” or “web server 49a.”
Ex. 1016 ¶¶ 119–163, pp. 106–123. Thus, based on the position Petitioner
took in its Petition, Petitioner has not shown that Zoller teaches a “content
server” that is a distinct component from a “web server.” Also, Petitioner in
its asserted ground does not rely on Craft or Duursma as teaching a “content
server.” Pet. 51–59. Accordingly, Petitioner has not met its burden to show
IPR2019-01002
Patent 8,135,843 B2
44
that the cited references teach or suggest “(a) receiving, by a client, from a
web service directory on a content server, a service access point associated
with a first application, the service access point identifying a web server,”
as recited in claim 1.

b) Petitioner’s Arguments in the Reply
Petitioner takes a different position in its Reply, arguing for the first
time that Zoller teaches separate “software [on web server 49a] for
performing the claimed content server functions” as a “content server” and
“software [on web server 49a] for performing the claimed functionalities of
the web server” as a “web server.” See Reply 14–15. Petitioner
acknowledged during the hearing that its position is not that the alleged
“content server” and “web server” are both web server 49a (as argued in the
Petition), but rather that they are specific “software” or “portion[s]” of web
server 49a:
JUDGE ARBES: Counsel, can I ask a few questions about the
content/web server issue? Again, if we can go to pages 14 and
15 of the reply, I’d like to be clear about what the Petitioner’s
position is of what is the alleged content server and web server
in Zoller. It looks like, on page 15, you say that a person of
ordinary skill in the art would understand that server 49a also
contains software for performing the claim functionalities of the
web server.
So is it your position that the web server in Zoller is that software,
it is not server 49a overall; it’s that particular software, right?
[PETITIONER’S COUNSEL]: I think that’s a fair
characterization. It’s the portion of the server 49a that’s
performing the web server function, and it’s software on the web
server that performs those functions. . . .
IPR2019-01002
Patent 8,135,843 B2
45
JUDGE ARBES: Okay. And there is some other portion of
server 49a, some other software that operates as a content server
then, right?
[PETITIONER’S COUNSEL]: Right. So the portion of the
server 49a that’s hosting the web service 13 directory is the
software that is the content server. And the web service directory
is on that content server.
Tr. 21:10–22:15 (emphases added), 92:5–11.
We agree with Patent Owner that presentation of this theory in the
Reply is improper because it was not raised adequately in the Petition. See
Sur-Reply 9–11. Pursuant to 37 C.F.R. § 42.23(b), “[a] reply may only
respond to arguments raised in the corresponding . . . patent owner
response.” “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not
mean proceed in a new direction with a new approach as compared to the
positions taken in a prior filing.” Practice Guide at 74; see also Acceleration
Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018)
(concluding that the Board did not err in refusing to consider portions of a
reply declaration “rais[ing] a new obviousness argument for [a claim]
limitation that could have been made in the petition” but was not);
Intelligent Bio-Sys., 821 F.3d at 1369–70 (concluding that the Board did not
err in refusing to consider reply brief arguments advocating a “new theory”
of unpatentability under 37 C.F.R. § 42.23(b)).
Petitioner in its Petition never referenced any specific “software”
executed by web server 49a or “portion” of web server 49a, instead referring
to the device throughout as a singular entity. See Pet. 50–63. The word
“software” appears only four times in the Petition, and never in reference to
web server 49a of Zoller. See id. at 52, 61, 66, 77. Mr. Zoller in his
declaration likewise does not refer to any particular software or portion of
web server 49a. See Ex. 1016 ¶¶ 119–163, pp. 106–123. Mr. Zoller’s
IPR2019-01002
Patent 8,135,843 B2
46
analysis is premised entirely on his opinion that “Zoller’s web server 49a
(FIG. 7) corresponds to both the claimed ‘content server’ and the claimed
‘web server.’” See id. ¶ 120, pp. 106, 113.
Petitioner’s position expressed in the Reply—that the alleged “content
server” and “web server” in Zoller are not web server 49a as a whole, but
rather specific software executing on that device—amounts to an improper
new theory as to how the claim is unpatentable. Although both the Petition
and Reply cite portions of Zoller describing web server 49a, the Reply
cannot be considered mere elaboration on the Petition arguments because
it changes the thrust of Petitioner’s theory of obviousness by significantly
altering the mapping to the “content server” and “web server” limitations.
For that reason alone, and considering only Petitioner’s arguments in the
Petition, Petitioner has not met its burden to show that Zoller, Craft, and
Duursma teach step (a) of claim 1, which requires a “content server” distinct
from a “web server.” See supra Section II.E.2.a.
Nevertheless, even considering Petitioner’s new reply arguments and
evidence, we are not persuaded that Petitioner has made a sufficient showing
that Zoller teaches receiving, from a “content server” distinct from a
“web server,” a service access point identifying the web server, as recited in
step (a). Petitioner never identifies any specific element in Zoller that it
contends is “software for performing the claimed content server functions”
and does not point to any specific disclosure in Zoller (e.g., text description,
code) differentiating allegedly different “software” components that
communicate with client 20. See Pet. 50–60; Reply 14–15. Mr. Zoller
likewise makes no distinction between different parts of web server 49a.
See Ex. 2009, 116:15–25 (“Q: What part of the web server 49a performs the
functionality of the content server of the ’843 patent? A: The—that
IPR2019-01002
Patent 8,135,843 B2
47
computer is in both the role of providing the web pages as well as the
content from an ’843 [patent] standpoint . . . .”). He simply assumes, “for
purposes of [his] analysis, [that] a single server machine that performs all of
the claimed functionality satisfies the claim limitations of the content server
and the web server.” Ex. 1016 ¶ 81. That is incorrect, given the claim
interpretation above. See supra Section II.B.3.
Zoller does not appear to ever differentiate between different
components of web server 49a communicating with client 20, instead
describing repeated requests to and responses from the same “web server”
device. See, e.g., Ex. 1005, col. 5, ll. 12–14 (“client station 20 generates a
request to the server 49”), col. 6, ll. 1–4 (“the request is routed to the web
server 49,” which “routes the page back to the client 20”), 17–20 (“the web
server receives the user request”), 27–30 (“an http request and the
application identifier parameter is sent to the web server 49”), 31–49
(“a web page is returned to the client” by “the web server”). We agree with
Dr. Hernandez that “Zoller never describes [web server 49a] as anything but
a web server that provides web pages.” Ex. 2004 ¶ 129; see also Ex. 1016,
pp. 107 (Mr. Zoller acknowledging that client 20 receives the Figure 5
web page “from the web server”), 112 (Mr. Zoller acknowledging that
“Zoller and Duursma both teach that the list of icons can be provided to a
client by a web server”).
In its arguments regarding step (a), Petitioner maps the icons
displayed on Zoller’s “Application Launching query form page” (Figure 5)
to the recited “service access point,” and maps the “tsweb” directory to the
recited “web service directory” from which they are provided. Pet. 53–57;
Reply 14. To the extent those contentions can be considered an argument
regarding the recited “content server,” we are not persuaded. The icons and
IPR2019-01002
Patent 8,135,843 B2
48
web page are not “software.” See Ex. 1005, col. 6, ll. 21–30. The “tsweb”
directory is simply a directory on web server 49a (whether or not part of data
store 70, which is never mentioned in the written description of Zoller) that
stores the icons and web page. See id.; Ex. 1016 ¶ 124; Ex. 2009,
101:13–23, 125:11–21. It is not “software” either. And it cannot be a
“content server” because Petitioner maps it to the recited “web service
directory on a content server” (emphasis added). See Pet. 56–57.
The deficiency in Petitioner’s analysis is further exemplified by how it
contends Zoller teaches a content server providing a service access point
“identifying a web server.” First, Petitioner takes inconsistent positions.
When addressing the “identifying a web server” portion of step (a),
Petitioner states that each icon identifies web server 49a. See id. at 54
(“each icon is a hyperlink pointing to (i.e., identifying) the content/web
server 49a,” where “the field following ‘http://’ (‘unisys4w2k’) identifies
the content/web server 49a” (emphases added)); Reply 14 (“each application
icon is a hyperlink pointing back to and identifying server 49a (i.e., a SAP)”
(emphasis added)); Tr. 14:14–16:3 (Petitioner arguing that the “unisys4w2k”
field identifies web server 49a “because it’s identifying the physical machine
on which the web server is located,” where the “unisys4w2k” field “is what
it needs to communicate between the client and the web server”); see also
Ex. 1016 ¶¶ 124, 126, 127, 143, 144, pp. 109, 110, 112 (repeating numerous
times that the icon in Zoller is a hyperlink that “points to (i.e., identifies)”
web server 49a, where the “hyperlinks referenc[e] the location of a server”).
At the same time, however, Petitioner argues that the “web server” in Zoller
is “software for performing the claimed functionalities of the web server,”
not web server 49a as a whole. Reply 15.
IPR2019-01002
Patent 8,135,843 B2
49
Second, even assuming that the “unisys4w2k” field in the Figure 5
web page URL identifies the “web server,” as Petitioner contends, because it
points to web server 49a, the field also would identify the “content server”
for the same reason. Petitioner acknowledges that client 20 simply “contacts
the server 49a” (via an HTTP request) in both cases—to receive the alleged
“service access point” (i.e., icon) from a “content server” and the alleged
“address information” from a “web server.” Id. at 18. Accordingly, if we
assume that the “unisys4w2k” field identifies the “web server,” it would
likewise identify the “content server.” But again, the claim clearly
delineates between communication with the “content server” and
communication with the “web server.”14 Petitioner’s position would
eliminate any distinction between them.
We note that Zoller’s arrangement is no different in that respect from
the primary reference applied during prosecution of the ’843 patent,
U.S. Patent No. 6,088,515 (Ex. 2006, “Muir”). See PO Resp. 38; Ex. 2004
¶¶ 130–133. Zoller teaches client 20 receiving a web page with icons from
web server 49a, selecting an icon to generate a request to web server 49a,
receiving a file with configuration information from web server 49a, and
using that file to connect to terminal server 49b. Ex. 1005, col. 6,
l. 17–col. 7, l. 33, Fig. 7. Muir similarly teaches client node 10 receiving
a web page with hyperlinks from network server node 18, selecting a
hyperlink to generate a request to network server node 18, receiving a
configuration file from network server node 18, and using that file to

14 Again, Petitioner recognizes the importance of the service access point
“identifying a web server”—step (a) would serve no purpose if the “content
server” and “web server” were the same because the content server “would
merely be identifying itself.” See Ex. 2007, 8; supra Section II.D.3.
IPR2019-01002
Patent 8,135,843 B2
50
connect to application execution server 24. Ex. 2006, col. 2, l. 41–col. 5,
l. 6, Fig. 1. Like web server 49a in Zoller, Muir does not differentiate
between components of network server node 18 from which the client
receives information. See id. By contrast, the indirection recited in claim 1
is the client receiving from a “content server” a service access point
“identifying a web server,” using the service access point to contact the
identified “web server” and receive address information “identif[ying]” an
“application server,” and using the address information to launch an
application communicating with the identified “application server.” See
supra Section II.B.3; Ex. 1002, 71 (Board decision finding that the prior art
cited by the examiner did not teach “a client directly communicating with a
web service[] directory for a SAP, then with a web server identified by the
SAP, and finally with an application server to retrieve an application
associated with the SAP”).
Ultimately, it is Petitioner’s burden to prove unpatentability by a
preponderance of the evidence, which includes in this instance proving that
the cited references teach or suggest a “content server” distinct from a “web
server” (even if provided on a single physical machine). See 35 U.S.C.
§ 316(e); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir.
2016) (“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.”). That burden never shifts to Patent Owner. Dynamic
Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
2015); see also Magnum Oil, 829 F.3d at 1376 (“Where, as here, the only
question presented is whether [claims would have been obvious], no burden
shifts from the patent challenger to the patentee,” and “[t]his is especially
true” when the issue is “what the prior art discloses . . . .”). Based on the
IPR2019-01002
Patent 8,135,843 B2
51
record presented, we are not persuaded that there is sufficient evidence to
establish that Zoller teaches a “content server” distinct from a “web server,”
as required by step (a) of claim 1.15 We credit Dr. Hernandez’s testimony on
that issue and find it more persuasive than the testimony of Mr. Zoller, for
all of the reasons explained above. See Ex. 2004 ¶¶ 121, 129–133.
Based on the full record developed during trial and for the reasons
explained above, we are not persuaded by Petitioner’s arguments that Zoller
teaches a “content server” that is a distinct component from a “web server,”
and Petitioner does not rely on Craft or Duursma as teaching a “content
server” in its asserted ground.16 See Pet. 51–59; Reply 12–19. Petitioner
thus has not shown that the cited references teach or suggest “(a) receiving,
by a client, from a web service directory on a content server, a service access
point associated with a first application, the service access point identifying
a web server,” as recited in claim 1. Petitioner has not proven, by a

15 In the Decision on Institution, based on the limited record at the time,
we found Petitioner’s arguments in the Petition sufficient to establish a
reasonable likelihood of prevailing, based primarily on the statement in the
Specification that servers 110 and 115 may be “provided as a single physical
machine.” Dec. on Inst. 26–39 (quoting Ex. 1001, col. 4, ll. 3–5). After
receiving further briefing and evidence during trial, including the parties’
agreement that the “content server” and “web server” must be distinct
components, we agree with Patent Owner that Petitioner has not made a
sufficient showing. See PO Resp. 30–34; TriVascular, 812 F.3d at 1068
(“[At the institution stage], the Board is considering the matter preliminarily
without the benefit of a full record. The Board is free to change its view of
the merits after further development of the record, and should do so if
convinced its initial inclinations were wrong.”).
16 Even if Petitioner had relied on the additional references, we are not
persuaded that they teach step (a) either, for the reasons explained above.
See supra Section II.D.3.
IPR2019-01002
Patent 8,135,843 B2
52
preponderance of the evidence, that claim 1 would have been obvious based
on Zoller, Craft, and Duursma under 35 U.S.C. § 103(a).

3. Claims 5, 7–9, 12, 16, 18, 19, 23, 24, 29, and 30
Independent claims 9, 12, and 19 recite “content server” and “web
server” limitations similar to steps (a) and (b) of claim 1. Claim 9 recites a
client browser “(a) receiving, from a web service directory on a content
server, a service access point associated with the first application, the service
access point identifying a web server,” and “(b) receiving address
information associated with the first application from the web server
identified by the service access point” (emphases added). Whereas claims
1 and 9 recite information being received by a client, claim 12 recites
information being transmitted to and received by the client. Claim 12 recites
“a) sending, by a client, a query to a web service directory on a content
server for information associated with a first application,” “b) transmitting,
to the client, from the web service directory, a service access point
associated with the first application, the service access point identifying a
web server,” and “c) receiving, by the client, address information associated
with the first application from the web server identified by the service access
point” (emphases added). Petitioner refers to its previous arguments
regarding steps (a) and (b) of claim 1, again relying on web server 49a of
Zoller as both a “content server” and “web server” in its Petition and
allegedly separate “software” of web server 49a in its Reply. See
Pet. 66–67, 69–71; Reply 14–15; Ex. 1016, pp. 124–132.

IPR2019-01002
Patent 8,135,843 B2
53
Similarly, claim 19 recites (emphases added):
a) receiving, by a content server, from a client, a request
to access a service access point associated with a first
application;
b) identifying, by the content server, that the requested
service access point can be used with an application client;
c) requesting, by the client, from a web server, address
information associated with the first application identified by the
service access point;
d) converting, by the web server, the requested address
information into a file, the format of the file associated with the
application client; [and]
e) transmitting, by the web server, the file including the
converted address information to the client.
Although claim 19 does not recite a “web service directory” on the “content
server” as in the other independent claims, it does recite a “content server”
and “web server,” which must be distinct components (even if provided on a
single physical machine). See supra Section II.B.3. Also, like the other
independent claims, claim 19 recites separate functionality performed by the
“content server” (i.e., receiving a request to access a service access point,
identifying that the requested service access point can be used with an
application client) and “web server” (i.e., receiving a request for address
information, converting the requested address information into a file,
transmitting the file to the client). Petitioner again relies solely on web
server 49a in its Petition and allegedly distinct “software” of web server 49a
in its Reply. See Pet. 72–79; Reply 14–15; Ex. 1016, pp. 132–146.
The parties argue all of the independent claims together with respect
to the “content server”/“web server” distinction. See PO Resp. 29–34,
38–40; Reply 14–15; Sur-Reply 9–13. Based on the full record developed
during trial and for the reasons explained above, we are not persuaded by
IPR2019-01002
Patent 8,135,843 B2
54
Petitioner’s arguments that Zoller teaches a “content server” that is a distinct
component from a “web server,” as recited in at least client browser clause
(a) of claim 9 and steps (a) and (b) of claims 12 and 19. See supra Section
II.E.2.
We also note an additional deficiency with respect to claim 19.
Step (b) of claim 19 recites “identifying, by the content server, that the
requested service access point can be used with an application client”
(emphasis added). Petitioner argues that web server 49a in Zoller provides
the “Application Launching query form page” with icons to client 20, but
that page is “static across groups of users.” Pet. 73. Petitioner contends that
it would have been obvious, based on Duursma’s teaching of Program
Neighborhood filtering out application programs that a client is authorized to
use, to modify web server 49a to determine which applications are
authorized and indicate as such in the “Application Launching query form
page.” Id. at 73–76. According to Petitioner, “[i]f a first application is
authorized, the associated service access point can be used with an
application client. . . . Conversely, if a first application is not authorized, the
associated service access point cannot be used with an application client.”
Id. at 76. Thus, it appears that Petitioner is arguing that the client device
itself (with a browser rendering the web page) is the “application client” for
purposes of step (b).
Step (d) of claim 19 recites “converting, by the web server, the
requested address information into a file, the format of the file associated
with the application client” (emphasis added). Petitioner argues that when
the user selects an icon, web server 49a returns a web page with the
determined URL and “associated ActiveX® controls or other embedded
program.” Id. at 77–78 (quoting Ex. 1005, col. 6, ll. 50–53). Petitioner
IPR2019-01002
Patent 8,135,843 B2
55
expressly states that “Zoller’s ActiveX controls are an application client.”
Id. at 79. Petitioner’s arguments for claim 19 fail because they rely on
different things as the recited “application client.” Petitioner clearly relies
on the ActiveX controls for purposes of step (d), but never mentions the
ActiveX controls in its analysis of step (b).17 Indeed, it is not clear how
Petitioner could rely on the ActiveX controls for step (b) because Zoller
teaches that the ActiveX controls do not exist until after the user selects an
icon and the ASP script generates the directory location for the URL
pointing to terminal server 49b. See Ex. 1005, col. 6, ll. 21–65.
Claims 5, 7, and 8 depend from claim 1, claims 16 and 18 depend
from claim 12, and claims 23, 24, 29, and 30 depend from claim 19.
Petitioner has not proven, by a preponderance of the evidence, that claims 5,
7–9, 12, 16, 18, 19, 23, 24, 29, and 30 would have been obvious based on
Zoller, Craft, and Duursma under 35 U.S.C. § 103(a).

17 Mr. Zoller discusses ActiveX controls in his testimony regarding step (b).
Ex. 1016, pp. 132–134. That analysis is not part of the Petition itself,
however, and cannot be incorporated by reference. See 37 C.F.R.
§§ 42.6(a)(3) (“Arguments must not be incorporated by reference from one
document into another document.”), 42.22(a)(2) (a petition must include
“[a] full statement of the reasons for the relief requested, including a detailed
explanation of the significance of the evidence”); Cisco Sys., Inc. v.
C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 10 (PTAB Aug. 29,
2014) (informative) (“Incorporation ‘by reference amounts to a self-help
increase in the length of the [] brief[,]’ and ‘is a pointless imposition on the
court’s time. A brief must make all arguments accessible to the judges,
rather than ask them to play archeologist with the record.’”) (citations
omitted)).
IPR2019-01002
Patent 8,135,843 B2
56
III. CONCLUSION18
Petitioner has not demonstrated, by a preponderance of the evidence,
that claims 1, 5, 7–9, 12, 16, 18, 19, 23, 24, 29, and 30 of the ’843 patent are
unpatentable. In summary:

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 5, 7–9, 12, 16, 18, 19, 23, 24, 29, and 30
of the ’843 patent have not been shown to be unpatentable.

18 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
Decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. §§ 42.8(a)(3),
42.8(b)(2).
Claims

35 U.S.C. § References/
Basis
Claims
Shown
Unpatentable

Claims
Not shown
Unpatentable
1, 5, 7–9, 12,
16, 18, 19,
23, 24, 29, 30
103(a) Craft,
Duursma
1, 5, 7–9, 12,
16, 18, 19, 23,
24, 29, 30
1, 5, 7–9, 12,
16, 18, 19,
23, 24, 29, 30
103(a) Zoller,
Craft,
Duursma
1, 5, 7–9, 12,
16, 18, 19, 23,
24, 29, 30
Overall
Outcome
1, 5, 7–9, 12,
16, 18, 19, 23,
24, 29, 30
IPR2019-01002
Patent 8,135,843 B2
57
This is a final decision. Parties to the proceeding seeking judicial
review of the decision must comply with the notice and service requirements
of 37 C.F.R. § 90.2.

IPR2019-01002
Patent 8,135,843 B2
58
FOR PETITIONER:
Jennifer Hayes
NIXON PEABODY LLP
jenhayes@nixonpeabody.com

FOR PATENT OWNER:
Larissa S. Bifano
Kristoffer Lange
DLA PIPER LLP
larissa.bifano@dlapiper.com
kris.lange@dlapiper.com