E*Trade Financial Corporationv.Droplets, Inc.

Patent Trial and Appeal Board

Jul 6, 2015

12359403 (P.T.A.B. Jul. 6, 2015)

Trials@uspto.gov Paper 18
Tel: 571-272-7822 Entered: July 6, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

E*TRADE FINANCIAL CORPORATION,
E*TRADE SECURITIES, LLC, E*TRADE BANK,
SCOTTRADE, INC., SCOTTRADE FINANCIAL SERVICES, INC.,
TD AMERITRADE HOLDING CORPORATION, and
TD AMERITRADE, INC.,
Petitioner,
v.
DROPLETS, INC.,
Patent Owner.
_______________

Case IPR2015-00471
Patent 8,402,115 B2
_______________

Before LINDA M. GAUDETTE, MICHAEL R. ZECHER, and
SCOTT A. DANIELS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

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

II. INTRODUCTION
E*TRADE Financial Corporation, E*TRADE Securities, LLC,
E*TRADE Bank, Scottrade, Inc., Scottrade Financial Services, Inc., TD
Ameritrade Holding Corporation, and TD Ameritrade, Inc. (collectively,
“Petitioner”) filed a Petition (Paper 9, “Pet.”) requesting an inter partes
IPR2015-00471
Patent 8,402,115 B2

2
review of claims 1–25 (“the challenged claims”) of U.S. Patent No.
8,402,115 B2 (Ex. 1001, “the ’115 patent”). Droplets, Inc. (“Patent Owner”)
timely filed a Preliminary Response (Paper 16, “Prelim. Resp.”). We have
jurisdiction under 35 U.S.C. § 314, which provides that an inter
partes review may not be instituted “unless . . . there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.” Upon consideration of the Petition and
Patent Owner’s Preliminary Response, we deny the Petition for the reasons
that follow.
III. BACKGROUND
B. Related Matters
Contemporaneous with the instant Petition, Petitioner also filed a first
Petition for inter partes review of the ’115 patent wherein it challenges the
patentability of claims 1–25 based on additional prior art. E*TRADE
Financial Corp. v. Droplets, Inc., Case IPR2015-00470 (PTAB Dec. 17,
2014) (Paper 9). Petitioner indicates that it previously filed two petitions for
covered business method review of the ’115 patent which were denied:
E*TRADE Financial Corp. v. Droplets, Inc., Cases CBM 2014-00123 and
CBM2014-00124 (PTAB Oct. 30, 2014) (Paper 15). Pet. 2–3. Patent
Owner filed suit against Petitioner alleging infringement of the ’115 patent
in Droplets, Inc. v. E*TRADE Financial Corp., No. 1:12-cv-02326-CM
(S.D.N.Y. April 7, 2014). Id. at 8; Paper 14, 2.
C. The ’115 patent (Ex. 1001)
The ’115 patent relates to a method and system “for delivering
interactive links for presenting applications and second information at a
IPR2015-00471
Patent 8,402,115 B2

3
client computer from remote sources in a network-configured computer
processing system.” Ex. 1001, Abstract. A block diagram of one
embodiment of the ’115 patent system is shown in Figure 1, reproduced
below. Id. at 7:11–13.

Figure 1, above, shows the general architecture of client/server
configured computer processing system 10 wherein single client computer
20 is coupled operatively over a network 50 to a content provider 30 and an
application server 40. Id. at 7:45–50. In use, client computer 20 requests
from content provider 30 informational content 36 shared by users over
network 50, e.g., the Internet. Id. at 7:59–60, 7:65–8:1. In response,
content provider 30, containing Droplets™ 64 and links 62, delivers
document 60 containing, e.g., one link 68 and one droplet™ 70, over
communication connection 52. Id. at 8:1–6.
IPR2015-00471
Patent 8,402,115 B2

4
“Droplets™ are generic or universal applications that can be
implemented on a variety of computer hardware and software platforms,” id.
at 10:47-49, including computer workstations, and portable devices such as
laptop and notebook computers and internet-enabled telephones, id. at 9:3–5,
that typically have different user interfaces and graphic capabilities, id. at
9:5–8. For example, a user, via a web browser application (e.g.,
MICROSOFT® Internet Explorer™) on client computer 20, may navigate to
a web page having embedded therein one or more Droplets™, such as a
downloadable Java applet, ActiveX controls, a browser plug-in written in
Java, C++ or other suitable programming language, or other multimedia
objects, that are invoked as a web page is loaded. Id. at 10:6–10, 18–20, 51–
56. Droplet™ 70, once loaded, notifies client computer 20 and then
cooperates with presentation client 25 and operating system software 80 of
client computer 20 to establish the communication connection 54 to
application server 40. Id. at 8:41–47. Droplet™ 70 provides application
server 40 with information regarding the operating environment, e.g.,
operating system, user interface, and hardware capabilities, of client
computer 20. Id. at 8:59–67, 11:34–36. Based on the operating
environment, application server 40 provides information 43 to present a
requested application 41, such as a Stock Watcher application 100, on client
computer 20. Id. at 9:8–12, 10:4–6. “[I]nformation 43 includes, for
example, instructions 42 for rendering graphical objects within the presented
application[] 41, default parameters or data values 44 displayed within the
application[] 41 and application-specific business logic 46 for processing
inputs to the application[] 41.” Id. at 9:12–17.
Link 68
IPR2015-00471
Patent 8,402,115 B2

5
may be stored locally on the client computer 20 as interactive
link[] 72 that, when selected, retrieve[s] the information 43 and
invoke[s] the application[] 41 to present the functionality of the
application[] 41 at the client computer. In particular, when
performing a subsequent retrieval of the functionality presented
by the application[] 41, the applications 32 and/or information
34 that originally provided the link 68 (now locally stored as
the interactive link 72) to the application[] 41 need not be
retrieved. Rather, the interactive link 72 can be employed to
directly invoke and execute the application[] 41 on the
application server 40 to provide the requested functionality at
the client computer 20.
Id. at 8:23–35.
When actively operating, properties of and events pertaining to
components of application 41 are transmitted between client computer 20
and application server 40 by a network communication protocol. Id. at
11:56–63. The protocol includes message formats that provide a real-time
push/pull messaging scheme between the user interface of application 41
presented on client computer 20 and application drivers supporting the user
interface from application server 40. Id. at 12:42–47. Message formats
include “Event Notifications––messages transmitted from a client computer
20 to the application server 40 reporting that a value or attribute of a
component of the GUI [(graphical user interface)] has been altered,” and
“Update Commands––messages transmitted from application drivers, e.g.,
the application specific logic 46 supporting a droplet-enabled application, on
the application server 40 to the client computer 20 requesting action within
screen components of the system 10.” Id. at 11:64–12:1, 12:9–13.
C. Representative Claims
Petitioner challenges the patentability of all claims in the ’115 patent,
claims 1, 12, and 25 of which are independent. Claims 1 and 12 are directed
IPR2015-00471
Patent 8,402,115 B2

6
to computerized methods, and claim 25 is directed to a system. Claims 1
and 25 are representative of the challenged claims and are reproduced
below:
1. A computerized method for delivering interactivity
over the web to a client device from a remotely stored
application residing on a server, the method comprising:
in response to receiving a request for a web page from
the client device, serving a web page to the client device, the
web page having executable code embedded therein which,
when executed in a web browser running on the client device,
communicates messages with the remotely stored application
on the server, the web page further having user interface
information for presenting within the web browser a user
interface for the remotely stored application;
receiving an event message from the executable code on
the client device, the event message reporting an action taken
within one or more screen components in the user interface
through the client device;
executing application logic within the remotely stored
application on the server to generate data values based on the
action reported in the event message and client device
information; and
sending to the client device an update message with at
least some of the generated data values and instructions for use
by the executable code to present the data values within the user
interface of the web page at the client device.
Ex. 1001, 29:37–61.
25. A system for delivering interactivity over the web
to a client device from a remotely stored application residing on
a server, the system comprising:
one or more web pages stored at the server, the web
pages each having executable code embedded therein which are
programmed to, when executed in a web browser running on
the client device, communicate messages with the remotely
stored application on the server, the web pages each further
IPR2015-00471
Patent 8,402,115 B2

7
having user interface information for presenting within the web
browser a user interface for the remotely stored application, the
messages communicated by the executable code including an
event message communicated from the executable code to the
server reporting an action taken within one or more screen
components in the user interface and an update message sent
from the server to the client
device with data values and instructions for use by the
executable code to present the data values within the user
interface of the web page at the client device
the remotely stored application residing on the server and
containing application logic executing within the remotely
stored application to generate the data values based on the
action reported in the event message and client device
information.
Id. at 32:1–24.

IPR2015-00471
Patent 8,402,115 B2

8
D. Evidence Relied Upon
Petitioner’s patentability challenges are based on the following
references:
Reference Patent/Printed Publication Exhibit
Frese US 5,909,545 1005
Gish US 5,768,510 1006
Shaw ’836 US 6,362,836 B1 1008
Riggins US 6,131,116 1009
Ferris WO 98/44695 A1 1010
Outlook 98 Alan Neibauer, Running
Microsoft Outlook 98, Microsoft Press,
United States (1998)
1013

In addition to these references, Petitioner relies on the Declaration of
Ron Burback, Ph. D. (Ex. 1002). See Pet. 7.
E. Asserted Grounds of Unpatentability
Petitioner challenges the patentability of the ’115 patent claims based
on the following grounds:
Grounds Reference(s) Basis Claims Challenged
1 Riggins and Frese § 103(a) 1, 9, 10, 12, 20, 21, and
25
2 Riggins, Frese, and
Ferris
§ 103(a) 2, 3, 6, 13, 14, 17, and
24

3 Riggins, Frese, and
Outlook 98
§ 103(a) 4, 5, 15, and 16
4 Riggins, Frese, and
Gish
§ 103(a) 7, 8, 18, and 19
IPR2015-00471
Patent 8,402,115 B2

9
Grounds Reference(s) Basis Claims Challenged
5 Riggins, Frese, and
Shaw
§ 103(a) 11, 22, and 23
6 Gish and Shaw ’836 § 103(a) 1, 2, 6–13, 17–23, and
25
7 Gish, Shaw ’836 , and
Ferris
§ 103(a) 3, 14, and 24
8 Gish, Shaw ’836, and
Outlook 98
§ 103(a) 4, 5, 15, and 16

IV. CLAIM CONSTRUCTION
We interpret the claims of an unexpired patent using the broadest
reasonable interpretation in light of the specification of the patent. 37 C.F.R.
§ 42.100(b); In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1281–82 (Fed.
Cir. 2015). Under the broadest reasonable interpretation standard, claim
terms are given their ordinary and customary meaning, as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007).
Petitioner and Patent Owner disagree on the scope and meaning of
various claim terms and phrases. Compare Pet. 10–13 with Prelim. Resp.
12–18. Patent Owner has requested that we “defer claim construction until
the institution of a trial and the Patent Owner has submitted expert testimony
for the board’s consideration.” Prelim. Resp. 11.
We determine no express construction of the claim language is needed
because this Decision does not depend on any particular claim construction
advanced by the parties.
IPR2015-00471
Patent 8,402,115 B2

10
V. ANALYSIS
Patent Owner requests that we deny the Petition based on redundancy
with the challenges in Case IPR2015-00470. Prelim. Resp. 6. In Case
IPR2015-00470, entered concurrently herewith, we instituted an inter partes
review of claims 1–25 of the ’115 patent based on a combination of Franco
PCT and Moshfeghi, and based on a combination of Ferris and Moshfeghi,
alone or in combination with Outlook 98, Gish or Shaw ’836. See Table
infra. We also instituted an inter partes review of claims 1, 7, 9, 10, 12, 18,
20, 21, and 25 based on anticipation by Frese. See id.
The Table below provides a comparison between Petitioner’s
challenges in Case IPR2015-00470 and in the present Petition.

Claims IPR2015-00470 IPR2015-00471
1, 9, 10,
12, 20,
21, and
25
Frese

Franco PCT and Moshfeghi

Ferris and Moshfeghi
Riggins and Frese

Gish and Shaw ’836
2, 6, 13,
and 17
Franco PCT and Moshfeghi

Ferris and Moshfeghi
Riggins, Frese, and Ferris

Gish and Shaw ’836
3, 14,
and 24
Franco PCT and Moshfeghi

Ferris and Moshfeghi
Riggins, Frese, and Ferris

Gish, Shaw ’836 and Ferris
4, 5, 15,
and 16
Franco PCT and Moshfeghi

Ferris, Moshfeghi, and Outlook
98
Riggins, Frese, and Outlook 98

Gish, Shaw ’836, and Outlook
98
IPR2015-00471
Patent 8,402,115 B2

11
Claims IPR2015-00470 IPR2015-00471
7 and 18 Frese

Franco PCT and Moshfeghi

Ferris, Moshfeghi, and Gish
Riggins, Frese, and Gish

Gish and Shaw ’836
8 and 19 Franco PCT and Moshfeghi

Ferris, Moshfeghi, and Gish
Riggins, Frese, and Gish

Gish and Shaw ’836
11, 22,
and 23
Franco PCT and Moshfeghi

Ferris, Moshfeghi, and Shaw
’836
Riggins, Frese, and Shaw ’836

Gish and Shaw ’836

From the above Table, we observe that Petitioner challenges claims 1,
9, 10, 12, 20, 21, and 25 in the present Petition based on Riggins and Frese
in combination, and challenges claims 7 and 18 based on Riggins, Frese, and
Gish in combination. In Case IPR2015-00470 Petitioner challenges these
claims based on Frese, alone. Petitioner has not explained how Riggins,
alone, or in combination with Gish, supplies a claimed feature which is
absent in Frese. See Pet. 14 (explaining why the grounds based on Riggins
and the grounds based on Gish are not redundant, but failing to discuss the
grounds in Case IPR2015-00470).
We also observe that, in the present Petition, Petitioner challenges all
of the claims based on the combination of Riggins and Frese and the
combination of Gish and Shaw ’836. In Case IPR2015-00470, Petitioner
challenges all of the claims based on the combination of Franco PCT and
Moshfeghi and the combination of Ferris and Moshfeghi. In each of these
four combinations, the secondary reference (i.e., Frese, Shaw ’836, and
Moshfeghi) is relied on primarily for the feature of creating and dynamically
serving web pages based on the capabilities of the users’ computers and
IPR2015-00471
Patent 8,402,115 B2

12
client device information. See Pet. 21, 46; Case IPR2015-00470, Paper 9,
19–21 and 44. Petitioner has not identified a meaningful distinction between
the combinations of references in the present Petition and in Case IPR2015-
00470. Petitioner has not explained, for example, how, the teachings from
Riggins and Frese and/or Gish and Shaw ’836 more closely satisfy the claim
limitations, than the teachings from Franco PCT and Moshfeghi and/or
Ferris and Moshfeghi.
In sum, Petitioner has not shown, and we are not convinced, that any
of the additional grounds asserted in this Petition, adds substantively to the
grounds on which we instituted inter partes review in Case IPR2015-00470.
Accordingly, we decline to institute trial on the grounds presented in this
Petition pursuant to our authority under 35 U.S.C. §§ 315(d), 325(d) to
manage inter partes proceedings and with the objective of “secur[ing] the
just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
§ 42.1.
VI. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied; and
FURTHER ORDERED that no inter partes review is instituted.

IPR2015-00471
Patent 8,402,115 B2

13
PETITIONER:
Michael T. Rosato
Wilson Sonsini Goodrich & Rosati
mrosato@wsgr.com
Brian D. Range
Wilson Sonsini Goodrich & Rosati
brange@wsgr.com

PATENT OWNER:
Timothy J. Beckhen
Bechen, PLLC
tim@bechenlaw.com
Charles Allen
Goodman, Allan & Filetti
callen@goodmanallen.com

Matthew Osenga
Goodman, Allan & Filetti
mosenga@goodmanallen.com