Google Inc.v.WhitServe LLC

Patent Trial and Appeal Board

Sep 9, 2014

09706651 (P.T.A.B. Sep. 9, 2014)

Trials@uspto.gov Paper 32
571-272-7822 Date: September 9, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE, INC.,
Petitioner,

v.

WHITSERVE LLC,
Patent Owner.
____________

Case IPR2013-00249
Patent No. 6,981,007
____________

Before THOMAS L. GIANNETTI, MICHAEL J. FITZPATRICK, and
CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.

CRUMBLEY, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318 and 37 C.F.R. § 42.73

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I. BACKGROUND
On April 15, 2013, Google, Inc., filed a Petition (Paper 2, “Pet.”) requesting
inter partes review of claims 1-9 and 11-15 of U.S. Patent No. 6,981,007 (Ex.
1001, “the ’007 patent”). Whitserve, LLC, the owner of the ’007 patent, filed a
Patent Owner’s Preliminary Response on July 18, 2013. Paper 10, “Prelim. Resp.”
With its Preliminary Response, Whitserve provided evidence it had filed a
statutory disclaimer of claims 11-15 pursuant to 37 C.F.R. § 1.321(a). Id. at 1; Ex.
2001. In a September 10, 2013, Decision to Institute (Paper 11, “Dec.”), we
instituted trial of remaining claims 1-9 on the following grounds:
1. Whether claims 1-9 are unpatentable under 35 U.S.C. § 103 as obvious
over the combined disclosures of WF Site,
1
Seybold,
2
and Guck;
3
and

2. Whether claims 1-9 are unpatentable under 35 U.S.C. § 103 as obvious
over the combined disclosures of Schrader
4
and Guck.
Dec. 13.
Following institution, Whitserve filed a Patent Owner Response to the
Petition (Paper 18, “PO Resp.”), and Google filed a Reply (Paper 21, “Pet.

1
Ex. 1003, Wells Fargo website, wellsfargo.com, Internet Archive Wayback
Machine (Jan. 19, 1998). Whitserve has not argued that WF Site—or any other
reference cited in our Decision to Institute—is not prior art to the ’007 patent.
2
Ex. 1004, Patricia B. Seybold, CUSTOMERS.COM: HOW TO CREATE A
PROFITABLE BUSINESS STRATEGY FOR THE INTERNET AND BEYOND (Oct. 30,
1998).
3
Ex. 1006, U.S. Patent No. 5,848,415 (Dec. 8, 1998).
4
Ex. 1007, U.S. Patent No. 5,903,881 (May 11, 1999).
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Reply”). Oral hearing was requested by both parties and was held on April 1,
2014. A transcript of the oral hearing is included in the record. Paper 31, “Tr.”
Both parties presented witness testimony via declaration. With its Petition,
Google provided a Declaration from William S. Finkelstein. Ex. 1009. With its
Patent Owner Response, Whitserve presented a Declaration from Frederick G.
Sayward. Ex. 2003.
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision,
issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, addresses issues and
arguments raised during trial. For the reasons discussed below, we determine that
Google has met its burden to prove, by a preponderance of the evidence, that
claims 1-9 of the ’007 patent are unpatentable.
A. The ’007 Patent
The ’007 patent is directed to a system for backing up data stored on a
central computer, over the Internet, to a local client computer. Ex. 1001, Abstract.
In particular, the ’007 patent “relates to outsourced, Internet-based data processing
and more particularly to safeguarding customer/client data when a business
outsources data processing to third party Internet-based systems.” Id. at 1:14-17.
According to the patent, there is an increase in companies moving data processing
systems online, while providing the ability for customers to access and manipulate
the data via web interfaces. Id. at 1:21-24. A related patent is provided as an
example of such an outsourced data processing system, but the ’007 patent notes
that “[m]any other Internet based order entry and payment billing systems exist.”
Id. at 1:25-27.
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The system disclosed in the ’007 patent comprises a client computer and a
central data processing system, connected by an Internet communications link. Id.
at 2:45-47. Using the Internet link, the client computer can execute software on
the central computer for storing, displaying, updating, and deleting data. Id. at
2:50-54. Significantly, the system also has the ability to transmit a copy of the data
on the central computer to the local computer for backup, and can later restore any
lost data from the local computer back to the central computer. Id. at 2:53-56.
This is essentially the converse of what the ’007 patent describes as known prior
art systems, which provide offsite backup of locally stored data. Id. at 1:49-56;
Fig. 2. The system of the ’007 patent permits the customer to safeguard its data by
maintaining a local backup, in the event the central computer loses the data or the
third party hosting company goes out of business. Id. at 1:40-48.
B. The Challenged Claims
Of the challenged claims remaining in this proceeding, claims 1, 4, and 7 are
independent, while claims 2 and 3 depend from claim 1, claims 5 and 6 depend
from claim 4, and claims 8 and 9 depend from claim 7. Claim 1 is illustrative of
the claimed subject matter of the ’007 patent and is reproduced as follows:
1. A system for onsite backup of internet-based data comprising:
a central computer;
a client computer;
a communications link between said central computer and the
Internet;
a communications link between said client computer and the
Internet;
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at least one database containing a plurality of data records
accessible by said central computer, each data record containing a
client identification number;
software executing on said central computer for receiving a data
backup request from said client computer;
software executing on said central computer for transmitting said data
backup to said client computer for onsite backup of internet-based data on
said client computer.

Ex. 1001, 3:30-44.
II. DISCUSSION
A. Claim Construction
In an inter partes review, “[a] claim in an unexpired patent shall be given its
broadest reasonable construction in light of the specification of the patent in which
it appears.” 37 C.F.R. § 42.100(b). Under this standard, we construe claim terms
using “the broadest reasonable meaning of the words in their ordinary usage as
they would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be afforded
by the written description contained in the applicant’s specification.” In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). We presume that claim terms have their
ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that
the term would have to a person of ordinary skill in the art in question.”) (internal
quotation marks omitted). However, a patentee may rebut this presumption by
acting as his own lexicographer, providing a definition of the term in the
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specification with “reasonable clarity, deliberateness, and precision.” In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
For purposes of our Decision to Institute, we gave each claim term its
broadest reasonable interpretation, as understood by one of ordinary skill in the art
and as consistent with the specification of the ’007 patent. We expressly construed
the claim term Internet-based data as “data that is capable of being modified via
the Internet.” Dec. 8. During trial and at oral hearing, the parties continued to
disagree regarding the proper construction of Internet-based data and, in addition,
disputed the meaning of the claim limitations data backup and software executing
on said central computer for retrieving said data backup. We address each of
these limitations below.
Internet-based data
Independent claims 1, 4, and 7 each recite “[a] system for onsite backup of
Internet-based data.” (emphasis added). In its Petition, Google argued that the
broadest reasonable interpretation of Internet-based data is “data that is accessible,
stored, modified, or processed via the Internet.” Pet. 9. Whitserve disagreed,
noting the Federal Circuit’s decision in Whitserve LLC v. Computer Packages,
Inc., 694 F.3d 10 (Fed. Cir. 2012), an appeal of a District Court litigation asserting
infringement of the ’007 patent. In that decision, the Federal Circuit stated that
Internet-based data, as used in the ’007 patent, “requires the ability to modify
centrally stored data from across the Internet, rather than simply sending it across
the Internet.” 694 F.3d at 25. Whitserve emphasized that “[m]odifying data over
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the Internet is a distinction between the claimed invention and the prior art as
described in the specification.” Prelim. Resp. 7.
In our Decision to Institute, we determined that, based on the specification
of the ’007 patent, Internet-based data is data that has undergone “Internet-based
data processing,” i.e., modification while stored on a central server accessible over
the Internet. Dec. 7 (citing Ex. 1001, 1:14-5, 1:65-66, 2:7-8). We also noted that
the specification “emphasize[s] that the backup function of the invention is to
protect data that is being stored on a central server for processing.” Id. (citing Ex.
1001, 1:65-67, 1:39-41). We, therefore, agreed with Whitserve’s argument that
Google’s proffered construction was too broad, as it would encompass data that
merely is accessed—but not processed—via the Internet. Id. at 7-8. As such, we
construed Internet-based data to mean “data that is capable of being modified via
the Internet.”
Although, in our Decision to Institute, we agreed with both Whitserve and
the Federal Circuit’s Computer Packages decision, Whitserve argued during trial
that our interpretation of Internet-based data is “contrary to the Federal Circuit’s
analysis and construction in view of the specification of the ’007 patent.” PO Resp.
11 n.3. Upon questioning at oral argument, Whitserve’s counsel explained that,
although both constructions use the same word “modify,” it is the application of
that word by the Board with which Whitserve now disagrees. Tr. 37-39.
According to Whitserve, the Federal Circuit’s construction—and the broadest
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reasonable interpretation—of Internet-based data requires that “modify” include
“updating and deleting.” PO Resp. 6-7.
5

To support its argument, Whitserve relies on a statement in the Federal
Circuit’s Computer Packages decision that “Internet-based data . . . appears to be
data resulting from outsourced data-processing that is stored on a central computer
separated from the client’s network by the Internet.” PO Resp. 10 (citing 694 F.3d
at 21) (Whitserve’s emphasis omitted). This outsourced data processing,
Whitserve argues, must necessarily include updating and deleting of the data. Tr.
32 (“Without update and delete, we no longer have a data processing system,
which the patent is clearly disclosing.”). Whitserve points to the ’007
specification, which describes software residing on the data processing system “for
displaying, updating, and deleting data stored on the central data processing
system.” Ex. 1001, 2:50-53.
We are not persuaded by Whitserve’s attempt to narrow the scope of the
term Internet-based data further than our prior construction. Whitserve has not
explained adequately why the “updating and deleting data” functions stated in the
specification are requirements, as opposed to merely an exemplary set of functions
that a data processing system may perform. Indeed, Whitserve’s position is
undercut by the fact that the sentence in the specification describes software for

5
Whitserve’s proffered construction for Internet-based data is stated in whole as
“data centrally stored on a central computer via an internet-based data processing
system which can further be modified on the central computer, including updating
and deleting, via the internet-based data processing system.” PO Resp. 6-7.
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“displaying, updating, and deleting data,” yet Whitserve’s construction would
require only two of these functions. By omitting the “displaying” function,
Whitserve treats the specification’s description as an exemplary list from which
functions may be chosen, but asks us to interpret the claims to require the
particular functions that it has chosen.
Dictionary definitions of the term “data processing” do not require a
particular set of functions that must be performed. See MCGRAW-HILL
DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS (5th ed. 1994) (data processing:
“any operation or combination of operations on data, including everything that
happens to data from the time they are observed or collected to the time they are
destroyed”) (emphasis added) (Ex. 3001); COLLINS ENGLISH DICTIONARY (2000)
(data processing: “a sequence of operations performed on data, especially by a
computer, to extract information, reorder files, etc.”) (Ex. 3002); OXFORD
DICTIONARY OF ENGLISH (3d ed. 2010) (data processing: “the carrying out of
operations on data, especially by a computer, to retrieve, transform, or classify
information”) (emphasis added) (Ex. 3003).
We, therefore, conclude that the ordinary and customary meaning of “data
processing,” as understood by those of ordinary skill in the art, does not require
any particular set of functions.
6
Nor do we consider the list of “displaying,
updating, and deleting data” provided in the specification to evidence an attempt

6
We also note that none of the cited dictionary definitions include “deleting”
among the functions listed, contrary to Whitserve’s assertion that deleting is an
essential function of data processing.
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by the patentee to act as his own lexicographer. As noted above, the list is
exemplary, and therefore not a definition of the term with sufficient “reasonable
clarity, deliberateness, and precision.” See In re Paulsen, 30 F.3d at 1480.
Whitserve’s construction of Internet-based data proffered during trial invites
us to import limitations from the ’007 specification into the claims, which we may
not do. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Nor would
such a construction be the broadest reasonable interpretation of the claims in light
of the specification, because the specification expressly contemplates other
functions such as “displaying.” For these reasons, we do not adopt Whitserve’s
narrowing construction, and instead construe Internet-based data as we did in our
Decision to Institute: “data that is capable of being modified via the Internet.”
data backup
Claims 1, 4, and 7 each require software on the central computer for
transmitting a data backup to the client computer, “for onsite backup of internet-
based data on said client computer.” Google contends that the broadest reasonable
interpretation of data backup is “a copy of stored data.” Pet. 9. To support its
contention, Google relies on the declaration of Mr. Finkelstein, who notes that the
specification of the ’007 patent recites that the data processing system transmits “a
copy of stored data” to the client computer. Ex. 1009, ¶ 25 (citing Ex. 1001, 2:54).
Whitserve proffers a narrower construction, asserting that data backup
means “a copy of one or more data records in a format capable of being retrieved
by and stored on the central computer.” PO Resp. 11. According to Whitserve, the
requirement of “a format capable of being retrieved by and stored on the central
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computer” arises from the stated purpose of the invention. Whitserve notes that
the ’007 patent is concerned with the difficulties of outsourcing data processing to
third parties, including “continuity of service if, for example, the third party were
to go out of business.” PO Resp. 12 (citing Ex. 1001, 1:46-48).
Whitserve also directs our attention to the embodiment of Figure 1 of the
’007 patent, which is reproduced below.

Figure 1 depicts client computer 20 which stores data 12 and issues commands to
central data processing system 15, which returns reports 22 and data backup 14 to
the client computer.

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Figure 1 of the ’007 patent shows “data processing system 15 transmit[ting]
14 a copy of stored data to the client computer 20,” after which “[t]he client
computer 20 issues commands 18 for transmitting (restoring) data 16 back to the
data processing system 15.” PO Resp. 12 (citing Ex. 1001, 2:53-56). By
Whitserve’s argument, the specification’s description that the backup can be later
restored to the central computer implies that the data backup must be in a format
capable of being retrieved by and stored on the central computer.
The error in Whitserve’s argument is that it ignores Figure 4 of the ’007
patent, which shows an alternative embodiment of the invention that “illustrat[es]
additional format conversion and encryption features.” Ex. 1001, 3:15-16. In this
embodiment, after receiving the data backup request from the client computer, the
central computer (called a “data backup system” in this embodiment) “accesses
data[], reformats the data, encrypts the data, and transmits the data” to the client
computer. Id. at 3:19-22. No mention is made of any ability of the data to be
restored to the central computer. The fact that the data is reformatted and
encrypted leaves open the possibility that the data backup may not be in a format
capable of being subsequently stored on the central computer.
Absent a clear disclaimer in the specification, the broadest reasonable
interpretation of a claim should not be limited to any particular embodiment
described in the specification, even when it is the sole embodiment described.
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). By
extension, where there are two or more embodiments disclosed in the specification,
each of which would reasonably fall within the claim, the broadest reasonable
interpretation should cover these embodiments. See In re Morris, 127 F.3d at 1056
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(under broadest reasonable interpretation standard, “the fact that appellants can
point to definitions or usages that conform to their interpretation does not make the
PTO’s definition unreasonable when the PTO can point to other sources that
support its interpretation”).
As noted above, only the embodiment of the invention shown in Figure 1,
and the corresponding portions of the specification, disclose the ability to restore
the backup to the central computer. Construing data backup to require “a format
capable of being retrieved by and stored on the central computer,” as Whitserve
suggests, would read into the claims a function that is disclosed as part of the
embodiment of Figure 1, to the exclusion of certain embodiments disclosed in
Figure 4. “It is improper to read limitations from a preferred embodiment
described in the specification—even if it is the only embodiment—into the claims
absent a clear indication in the intrinsic record that the patentee intended the claims
to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed.
Cir. 2004). The broadest reasonable interpretation of data backup consistent with
the specification is, as Google asserts, “a copy of stored data.”
software executing on said central computer
for retrieving said data backup
The final claim interpretation issue disputed by the parties relates to
dependent claims 3, 6, and 9, which further require that the claimed system
comprise software executing on said central computer for retrieving said data
backup. Central to the parties’ dispute is the meaning of the verb “retrieving,” and,
in particular, the location from which the data backup is being retrieved.
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According to Google, the broadest reasonable interpretation of the claim
phrase retrieving said data backup is “retrieving a copy of stored data.” Pet. 9.
Mr. Finkelstein testifies that this is consistent with the understanding of the person
of ordinary skill in the art, who would recognize that the specification only
describes retrieving data from “the data backup system.” Ex. 1009 ¶¶ 32-33 (citing
Ex. 1001, 3:19-22). Google concedes that Figure 1 of the ’007 patent depicts data
being restored from the client computer to the central computer, whereas Figure 4
shows data being retrieved from a central database by the data backup processing
system. Pet. Reply 12. Google’s proffered construction, therefore, is silent as to
the source of the data backup that is being retrieved by the central computer.
By contrast, Whitserve’s construction specifies a source from which the
central computer must retrieve the data backup. Whitserve argues that software
executing on said central computer for retrieving said data backup refers to “the
central computer retrieving the data backup from the client computer.” PO Resp.
13-14. According to Whitserve, this construction is implied by the structure and
language of the claims themselves.
For example, Whitserve notes that claim 3, in which the term software
executing on said central computer for retrieving said data backup appears,
depends from claim 2, which in turn depends from claim 1. Id. at 14. Claim 1
recites, inter alia, “software executing on said central computer for transmitting
said data backup,” while claim 2 adds the limitation of “software executing on said
client computer for storing said data backup.” Id. Reading claim 3’s limitation of
“software executing on said central computer for retrieving said data backup” in
the context of these preceding claims, Whitserve argues, leads to the conclusion
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that claim 3 is referring to retrieving the data backup from the client computer. In
other words, because claim 1 includes software to transmit the data backup to the
client computer, and claim 2 includes software to store the data backup on the
client computer, it logically follows that claim 3 would require software to retrieve
the data backup from the client computer. Similar arguments are made with
respect to claims 6 and 9 in the context of their claim dependencies. PO Resp. 15-
17.
Google argues that this interpretation of the claims, based on claim
dependencies, improperly imports a temporal requirement into a system claim,
such that the function of claim 3 is performed after the function of claim 2. Pet.
Reply 13. At oral argument, counsel for Whitserve denied that this was the case,
arguing that the claim dependencies were “more of a context” in which the proper
interpretation must be made. Tr. 62-63.
Regardless of whether the argument is framed as “temporal” or merely one
of “context,” we consider it improper to base our claim construction on the order of
claim dependencies, especially in the case of the system claims at issue here. The
system of claim 1, for example, describes a system that comprises, inter alia, two
software modules for performing particular functions. Dependent claims 2 and 3
add additional software modules for performing other functions. Nothing in the
claims requires that the software of claims 2 or 3 execute after the “transmitting”
software of claim 1; nor do those claims rely on it for antecedent basis.
Our conclusion is further supported by the language of claims 3, 6, and 9.
None of those claims recites a source from which the data backup is retrieved by
the software. Therefore, in the absence of an express statement to the contrary in
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the specification, the claims merely require retrieval of a data backup, regardless of
source.
The specification of the ’007 patent uses the word “retrieve” in two contexts.
First, in the portion of the specification describing Figure 2—which depicts a prior
art system—the patent states that “[t]he client computer executes software for
retrieving data 54 stored on the data backup system 55.” In Figure 2, reproduced
below, this function is depicted as “Restore.”

Figure 2 depicts a prior art system in which client computer 50 transmits a copy of
data 52 to backup system 55 which transmits restore data 54.

The embodiment of Figure 1 also depicts a function labeled “Restore 16,”
which is described in the specification as “transmitting (restoring) data 16 back to
the data processing system 15.” Ex. 1001, 2:55-56. It is this restoring/transmitting
function that Whitserve claims is the function recited in claims 3, 6, and 9.
The second instance of “retrieving” in the ’007 patent is in Figure 4, which
is reproduced below.
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Figure 4 depicts a system in which client computer 20 transmits request 32
to data backup system 15', which retrieves, reformats, encrypts and transmits
backup 40, 14.

As seen above, in the system of Figure 4, the data backup system (central
computer) receives a request, retrieves data from the database, and then reformats,
encrypts, and transmits the data. The portion of the specification describing Figure
4 does not use the word “retrieve,” but rather states that the “data backup system
15' accesses data (stored on the data backup system 34).” Ex. 1001, 3:19-21.
The ’007 patent, therefore, uses the term retrieving interchangeably with two
other verbs: accessing (as in Figure 4, retrieving data from a database to create a
backup) and restoring (as in Figures 1 and 2, retrieving a backup from another
computer). Under the broadest reasonable interpretation standard, we must read
the claims in light of the specification and these teachings. In re Suitco Surface,
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Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). In order to be consistent with the
specification, the broadest reasonable interpretation of claims 3, 6, and 9 must
encompass both usages of “retrieve.” As a result, we do not construe software
executing on said central computer for retrieving said data backup as Whitserve
suggests, as it would exclude software that retrieves a data backup from a central
database, as depicted in Figure 4.
The claim language of claims 3, 6, and 9 does not specify a source from
which the data backup is to be retrieved, and the specification of the ’007 patent
describes at least two potential sources. We, therefore, conclude that the broadest
reasonable interpretation of software executing on said central computer for
retrieving said data backup does not require retrieval from a particular source.
B. Effect of Federal Circuit’s Decision in Whitserve v. Computer Packages
As discussed above, the Federal Circuit in the Whitserve LLC v. Computer
Packages, Inc. decision expressly addressed the construction of the term Internet-
based data. Our construction above is consistent with the Federal Circuit’s.
Whitserve contends that, in its decision, the Federal Circuit also
“specifically recognized that dependent claims 3, 6 and 9 require the central
computer retrieving the data backup from the client computer.” PO Resp. 17. At
oral argument, Whitserve’s counsel asserted that the Federal Circuit “ruled as a
matter of law that depend[ent] Claims 3, 6 and 9 do mean what we now . . . submit
they mean.” Tr. 64. Whitserve cites the following passage from the Federal
Circuit’s decision:
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In addition to saving a copy of the Internet-based data, dependent
claims 3, 6, and 9 go on to claim “software executing on said central
computer for retrieving said data backup.” Essentially, those claims
recite the central computer’s ability to restore any lost data by
retrieving it from the client’s personal computer.

694 F.3d at 21 (emphasis added).
Whitserve argues that this statement by the Federal Circuit controls our
construction of claims 3, 6, and 9, and requires us to adopt Whitserve’s proffered
construction instead of the broadest reasonable interpretation discussed above. We
disagree.
First, we do not consider the Federal Circuit’s statement to be contrary to
our construction of the claims. The ability referenced by the Court—that the
central computer can retrieve data from the client computer—is one of the two
usages of “retrieving” in the ’007 patent we discussed above, and thus falls within
our adopted construction of the term. The Federal Circuit’s statement does not
exclude other usages, such as retrieving data from a central database to create the
data backup.
Second, we note that in the Computer Packages appeal, the only issue
pertaining to the ’007 patent that was appealed from the District Court decision
was anticipation of claims 1-15 by Schrader; CPI had conceded that it infringed the
’007 patent, if valid. 694 F.3d at 21. The Federal Circuit noted that CPI had
focused its anticipation case on claim 10, and proceeded to analyze claim
construction and the disclosure of Schrader in the context of that claim. Id. at 22-
24. Ultimately, the Federal Circuit concluded that no reasonable juror could have
found claim 10 not anticipated by Schrader, and reversed the denial of CPI’s
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motion for JMOL. Id. Notably, the retrieving said data backup limitation of
claims 3, 6, and 9 was not analyzed by the panel, because the limitation did not
appear in claim 10.
With respect to the remaining claims, however, the Federal Circuit did not
find the evidence sufficient to overturn the jury verdict. Id. at 24. At trial, CPI’s
expert had testified specifically regarding the elements of claim 10, but only
provided generalized and conclusory testimony on the remaining claims. Id. The
Federal Circuit concluded that “[w]e find this generalized exchange, which failed
to articulate how the Schrader Patent anticipated the other claims’ specific
elements, to be a far cry from the ‘overwhelming amount of evidence’ needed to
require us to overturn the jury’s verdict.” Id. A construction of claims 3, 6, and 9,
therefore, was not required to reach the Court’s decision on appeal.
7

The Federal Circuit declines to resolve claim construction issues “that do not
actually affect the . . . controversy between the parties.” Jang v. Boston Scientific
Corp., 532 F.3d 1330, 1336 (Fed. Cir. 2008) (citing Coffman v. Breeze, 323 U.S.
316, 322–24 (1945) (“The Supreme Court has explicitly held that Article III does
not permit the courts to resolve issues when it is not clear that the resolution of the
question will resolve a concrete controversy between interested parties.”); see
Superior Indus., Inc. v. Masaba, Inc., 553 F. App’x 986, 989 (Fed. Cir. 2014).

7
Claims 3, 6, and 9 were subsequently discussed in the context of what elements a
reasonable juror could have found absent from Schrader, but the panel did not
make this the basis of its decision that there was insufficient evidence to overturn
the jury’s verdict. 694 F.3d at 25.
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Having found that the expert witness’s generalized testimony was insufficient to
overturn the jury’s verdict, a construction of claims 3, 6, or 9 would not “actually
affect” the controversy between the parties. Consequently, we do not consider the
Federal Circuit’s statement regarding the retrieving said data backup limitation of
these claims to be a construction.
Finally, even if the Federal Circuit had set forth a construction of claims 3,
6, and 9 that differs from ours, we note that the Computer Packages appeal was
from a district court infringement suit, and therefore applied the claim construction
standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). By
contrast, in inter partes review proceedings the Board applies the broadest
reasonable interpretation consistent with the specification. 37 C.F.R. § 42.100(b);
see also SAP America, Inc. v. Versata Development Group, Inc., CBM2012-00001,
Paper 70, slip op. 7-18 (PTAB June 11, 2013) (discussing adoption of the broadest
reasonable interpretation standard). The Federal Circuit has affirmed prior Board
decisions adopting claim constructions that differ from those reached under the
standard discussed in Phillips. See In re Trans Texas Holdings Corp., 498 F.3d
1290, 1298 (Fed. Cir. 2007); In re Translogic Tech., Inc., 504 F.3d at 1257.
Furthermore, the Court has recognized that “different results” in the outcome of
validity challenges “in the two forums may be entirely reasonable.” Ethicon, Inc.
v. Quigg, 849 F.2d 1422, 1428 (Fed. Cir. 1988).
“It would be inconsistent with the role assigned to the PTO in issuing a
patent to require it to interpret claims in the same manner as judges who, post-
issuance, operate under the assumption the patent is valid.” In re Morris, 127 F.3d
at 1054. If the different claim construction standards are to lead to differing
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constructions, it is in cases such as the one at hand. The specification of the ’007
patent uses the term “retrieve” in two equally reasonable contexts: retrieving a data
backup from the central database, and retrieving a data backup from the client
computer. In such a situation, the broadest reasonable interpretation consistent
with the specification is the one that encompasses both usages of “retrieve.” Under
the district court standard, however, considerations such as preservation of validity
or the notice function of claims may lead to the adoption of the narrower of two
equally plausible constructions. See Liebel-Flarsheim Co. v. Medrad, Inc., 358
F.3d 898, 911 (Fed. Cir. 2004); Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73
F.3d 1573, 1581 (Fed. Cir. 1996). It is not for us to speculate whether such
considerations entered into the jury’s deliberations, or the Federal Circuit’s
reasoning. Our claim construction standard, however, does not take factors such as
the preservation of validity into account.
For these reasons, we do not consider the Federal Circuit’s decision in
Whitserve LLC v. Computer Packages, Inc. to mandate that we disregard the
broadest reasonable interpretation of claims 3, 6, and 9.
C. Obviousness Over WF Site, Seybold, and Guck
There is no material dispute between the parties regarding whether most of
the limitations of claims 1-9 are disclosed by the combination of WF Site, Seybold,
and Guck. For example, Whitserve does not contend that the references fail to
disclose a central computer, a client computer, or at least one database containing a
plurality of data records accessible by the central computer, each data record
containing a client identification number. Given the evidence before us that the
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references disclose these elements, and the lack of dispute over these elements, we
conclude that Google has shown by a preponderance of the evidence that these
undisputed elements are present in the combined disclosures of WF Site, Seybold,
and Guck.
The parties’ dispute centers on whether WF Site, Seybold, and Guck teach
the three elements construed above: Internet-based data, data backup, and
software executing on said central computer for retrieving said data backup.
Whitserve also argues that a person of ordinary skill would not have combined
Guck with WF Site and Seybold. We address these issues in turn below.
1. Internet-based data
According to Google, WF Site discloses an online banking system which
processes transaction data and downloads a copy of that data to a client computer.
Pet. 10. Using the WF site system, a user “may access and control their account
data by transferring funds between accounts and paying bills over the Internet.”
Pet. Reply 5-6 (citing Ex. 1003, 9, 15). As stated in our Decision to Institute, the
transactions disclosed by WF Site would necessarily result in data—such as the
account balance—being modified on the central computer. Because these
transactions are being performed at the request of the client computer, the
modifications are made via the Internet.
Whitserve argues that WF Site does not disclose Internet-based data,
because “[n]owhere in WF Site is an Internet-based data processing system that
provides a user with ‘access to and control over their own data’ and ‘the ability to
obtain a copy of their data’ disclosed.” PO Resp. 34-35. Neither of these features
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is required by our construction of Internet-based data, or for that matter, even
Whitserve’s proffered construction of the term that we have declined to adopt.
Rather, Whitserve apparently gleans these requirements from the specification of
the ’007 patent, such as the background description and the objects of the
invention. Id. at 34. To the extent that Whitserve contends that the prior art must
be compared to the specification, as opposed to the construed claims, its contention
is inapposite.
Also inapposite are Whitserve’s arguments premised on the narrow
construction of Internet-based data we declined to adopt. See id. at 35 (arguing
that WF Site “does not allow a user to centrally store data on a central computer
via an internet-based data processing system and then further modify the data on
the central computer, including updating and deleting, via the internet based data
processing system.”). Similarly unpersuasive is the argument that “[w]hile a user
can enter a new transaction,” on the WF Site, “once it is entered the transaction is a
permanent record that cannot be edited by the user.” Id. The claims of the ’007
patent do not require that all data stored on the central computer be Internet-based
data that is capable of being modified via the Internet. It is sufficient that some of
the data—such as the account balance—be capable of being modified via the
Internet, and WF Site discloses such a capability. Nor do the claims require the
capability to delete a transaction after it has been entered, as Whitserve argues. Id.
at 38.
We do not find persuasive Whitserve’s arguments regarding the deposition
testimony of Mr. Finkelstein, such as the fact that “Mr. Finkelstein admitted that a
user cannot store or edit their beginning balance or available balance.” Id. at 36-
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39. Whitserve’s criticism appears to be based on an interpretation that all data on
the central computer must be capable of being modified, a construction that was
never advocated and which we do not adopt. In fact, Mr. Finkelstein’s deposition
testimony establishes that, as described in WF Site, users can enter a new
transaction via the Internet to modify a previous balance. Ex. 2005, 72-75.
Whitserve’s declarant, Mr. Sayward, also testified that WF Site discloses the
ability to transfer funds and pay bills over the Internet, which would modify
account data. Ex. 1011, 186-87. The ’007 patent requires nothing more in this
regard; in fact, the patent expressly names “Internet based order entry and payment
billing systems” as examples of data processing systems on the Internet. Ex. 1001,
1:26-27 (emphasis added).
2. data backup
Google contends that WF site discloses downloading a copy of account
history data to a local computer via the Internet, and therefore teaches a data
backup, which we have construed as “a copy of stored data.” Pet. 16; Pet. Reply 9.
Whitserve disputes this, for two reasons. First, Whitserve argues that WF Site
does not provide “a copy of one or more data records,” but rather “a subset of a
user’s account information,” such as the last 60 days of account history. PO Resp.
45. Whitserve characterizes this as a “report,” not a data backup, and contends
that the ’007 patent distinguishes between the two.
While the ’007 patent does state that the client computer can request
“reports” from the data processing system (Ex. 1001, 2:57-59), it does not define
what constitutes such a report, or how a report differs from “a copy of stored data.”
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Whitserve’s declarant, Mr. Sayward, testified that a person of ordinary skill in the
art would recognize a “subset of data” to be a report. Ex. 2003 ¶ 84. The basis for
such a conclusion, however, is unclear. Furthermore, as Google notes, Mr.
Sayward contradicted himself at his deposition, agreeing that the data backup of
the claims could be a subset of the overall data package. Ex. 1011, 32.
Based on the evidence before us, we find that WF Site discloses a data
backup, in that it permits downloads of account history to a local computer.
Whitserve has not explained convincingly how a “report” in the context of the ’007
patent differs from a data backup, or why a subset of a user’s account data is a
report and not a backup. In any event, we do not consider the data to be merely a
“report,” because the WF Site discloses that the data may be entered into client-
side applications, such as Quicken or Microsoft Money, for further processing. Ex.
1003, 5, 12, 13.
Whitserve also argues that the WF Site download is not a data backup
because it is not in a format capable of being retrieved by and stored on the central
computer. We reject this argument, as it is based on Whitserve’s overly narrow
claim construction, which we do not adopt.
Google has proved sufficiently that WF Site discloses downloading a copy
of stored data, and thus a data backup.
3. software executing on said central computer for retrieving said
data backup
According to Google, WF Site teaches software executing on said central
computer for retrieving said data backup, because it discloses that, upon receiving
a request from a user to download account history data, the central computer
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retrieves a copy of the data, which is then transmitted to the user’s computer. Pet.
Reply 14 (citing Ex. 1003, 5, 12). Google notes that Mr. Sayward agreed that the
WF Site central computer retrieves account history data prior to sending it to a
user. Id. at 14-15 (citing Ex. 1011, 242). Whitserve’s argument to the contrary
relies on its assertion that WF Site does not disclose “a system capable of
retrieving a report of a user’s account history downloaded by a user and storing it
on Wells Fargo’s system.” PO Resp. 49-50. Whitserve’s argument is unavailing,
as Whitserve again relies on an overly narrow claim construction we do not adopt.
Claims 3, 6, and 9 do not require that the central computer retrieve data from the
client computer.
4. Reason to Combine
Google argues that a person of ordinary skill in the art would have had
reason to combine the teachings of WF Site, Seybold, and Guck. Both WF Site
and Seybold, Google contends, discuss the features and implementation of the
wellsfargo.com website, and it would have been obvious to combine these
references discussing the same system. Pet. 11. Further, Google contends that it
would have been obvious to combine WF Site with Guck, as WF Site teaches
transformation of data according to user requests, and Guck discloses techniques
for transformation of stored data into desired formats. Id.
A person of ordinary skill in the art would not have combined Guck with
WF Site and Seybold, Whitserve argues, because Guck discloses allowing a user to
store a document created local on a server. PO Resp. 50. For security reasons,
banks do not permit users to re-upload their data back to the system. Id. Because
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of these security rules, Whitserve contends that a person of ordinary skill in the art
would not have thought to combine the uploading tool of Guck with the banking
systems of WF Site and Seybold. Id.
We find Google’s reasoning persuasive, and not sufficiently rebutted by
Whitserve. Although Guck may disclose uploading a document to a central server,
this is not the aspect of the reference on which Google relies in its proposed
combination. Rather, it is Guck’s disclosure of a system that transforms stored
data prior to transmittal that Google advocates would be combined with WF Site
and Seybold. See, e.g., Pet. 25-26. We do not discern any reason why the source
of the data to be transformed—whether previously uploaded by the user or
produced via offsite data processing—is relevant. Google has articulated a
sufficient reason why a person of ordinary skill in the art would have combined the
data transformation and reformatting elements of Guck with WF Site and Seybold.
D. Obviousness Over Schrader and Guck
As with the combination discussed above, the parties’ dispute regarding the
combination of Schrader and Guck focuses on just a few issues. There is no
material dispute that the combined disclosures teach most of the limitations of the
claims, such as a central computer, a client computer, or at least one database
containing a plurality of data records accessible by the central computer, each data
record containing a client identification number. We find that Google has met its
burden of demonstrating by a preponderance of the evidence that these claim
elements are disclosed by the combination of Schrader and Guck.
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Turning to the disputed elements, Whitserve again argues that the combined
disclosures do not teach Internet-based data, data backup, and software executing
on said central computer for retrieving said data backup. Whitserve also argues
that it would not have been obvious to combine Schrader with Guck.
1. Internet-based data
The online banking system of Schrader teaches Internet-based data,
according to Google. Pet. 37-39; Pet. Reply 4-5. The disclosed system permits
users to send transaction instructions to a bank via the Internet, after which the
bank’s central computer executes the transaction instructions and updates the
user’s account data. Pet. Reply 5 (citing Ex. 1007, 18:55-63). In our Decision to
Institute, we concluded that Schrader discloses Internet-based data because it
permits users to instruct the bank to make payments out of a user’s funds, thereby
modifying their stored data such as an account balance. Dec. 12.
Whitserve again premises its arguments on the construction of Internet-
based data not adopted herein, stating “Schrader does not allow a user to centrally
store data on a central computer via an internet-based data processing system and
then further modify the data on the central computer, including updating and
deleting, via the internet based data processing system.” PO Resp. 20. We reject
this argument, and Whitserve’s arguments regarding the inability of users to delete
transactions, for the same reasons discussed above with respect to WF Site,
Seybold, and Guck.
Whitserve makes one additional argument with respect to Schrader not
discussed above, that the Federal Circuit’s decision in Whitserve LLC v. Computer
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Packages, Inc. agreed with its analysis of Internet-based data. PO Resp. 21.
According to Whitserve, the Federal Circuit further found that “claims 1-9 require
Internet-based data, which is not clearly disclosed by the Schrader Patent . . .
because, as disclosed in the ’007 Patent, that element requires the ability to modify
centrally stored data from across the Internet, rather than simply sending it across
the Internet.” PO Resp. 21 (citing 694 F.3d at 25) (Whitserve’s emphasis).
Contrary to Whitserve’s argument, however, the Federal Circuit did not
decide that Schrader does not disclose Internet-based data. Rather, as noted
previously, it held that the defendant had failed to provide evidence sufficient to
overturn the jury’s verdict with respect to claims 1-9 and 11-15 of the ’007 patent.
The passage quoted by Whitserve discusses elements which “a reasonable jury
could find absent from the Schrader patent,” but this is far from holding that the
elements are necessarily missing from the disclosure of the reference.
Furthermore, in district court litigation, defendants must prove invalidity by
clear and convincing evidence (Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. ___,
131 S. Ct. 2238, 2245 (2011)), whereas the standard in inter partes review
proceeding is the lower preponderance of the evidence standard. 35 U.S.C.
§ 316(e). Given these differing evidentiary standards, the same evidence that the
jury found insufficient could meet the burden of proof in an inter partes review.
Thus, even if the Federal Circuit had definitively concluded Schrader does not
teach Internet-based data under the clear and convincing standard, it would not
foreclose our determination that Schrader meets the preponderance standard. See
Ethicon, 849 F.2d at 1428-29 (“if the district court determines a patent is not
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invalid, the PTO should continue its reexamination because, of course, the two
forums have different standards of proof for determining invalidity.”)
We find that Schrader discloses Internet-based data, in that it permits users
to submit transactions via the Internet, thereby modifying data residing on a central
computer.
2. data backup
Whitserve’s arguments that Schrader does not disclose a data backup mirror
those addressed for WF Site above. First, Whitserve argues that Schrader only
downloads a subset of data from the central computer, which is a “report,” not a
data backup. We find this argument unpersuasive for the same reasons discussed
above with respect to WF Site. Similarly, we reject Whitserve’s second argument
that the backup of Schrader is not in a format capable of being retrieved by and
stored on the central computer, as it is based on a claim construction we declined
to adopt.
Schrader discloses downloading a copy of stored data to a client computer in
the form of a response file containing a set of cleared transactions. Ex. 1007, 17-
18. This a data backup, as it is “a copy of stored data.”
3. software executing on said central computer for retrieving said
data backup
Whitserve argues that Schrader does not disclose software executing on said
central computer for retrieving said data backup because it does not disclose that
the central computer is capable of retrieving the data backup from the client
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computer. PO Resp. 32. As we have construed claims 3, 6, and 9, this is not
required. Therefore, Whitserve’s argument is unpersuasive.
Google asserts that Schrader discloses “a software-driven system for
retrieving a copy of stored data,” specifically a computer system that retrieves
requested data and creates a response file that is sent to the client. Pet. Reply 14
(citing Ex. 1007, 17:6-30). Again, Google notes that Whitserve’s witness agreed
that the central computer retrieves the data before transmitting it. Id. (citing Ex.
1001, 242). We find that Schrader’s disclosure of such a function meets the
limitations of dependent claims 3, 6, and 9.
4. Reason to Combine References
Google contends that a person of ordinary skill in the art would have
combined Schrader and Guck for three reasons: 1) Schrader teaches an online
financial system that stores records and information on a server; 2) Guck teaches a
server/database system that is capable of converting data into different formats;
and 3) it was well-known that databases could be combined with financial systems
to provide enhanced functionality. Pet. 38. To support this final reason, Google
cites to the testimony of Mr. Finkelstein, who has 38 years of experience in
computer, network, database, and systems engineering, including heading the
development of the wellsfargo.com banking website. Ex. 1009 ¶¶ 7, 63.
Whitserve does not challenge Mr. Finkelstein’s testimony on this point. Rather,
Whitserve repeats the same arguments regarding a reason to combine Schrader and
Guck that it made for the combination of WF Site, Seybold, and Guck. PO Resp.
32-33. We find these arguments unavailing for the same reasons discussed above.
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Google has provided articulated reasoning with rational underpinning to support its
contention that a person of ordinary skill in the art would have combined Schrader
and Guck. See KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398 (2007) (citing In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
III. CONCLUSION
We have considered the scope and content of the prior art; the differences
between the prior art and the challenged claims; and the level of ordinary skill in
the art.
8
See Graham v. John Deere Co., 383 U.S. 1, 18-19 (1966). We conclude
that Google has demonstrated by a preponderance of the evidence that claims 1-9
of the ’007 patent are unpatentable under 35 U.S.C. § 103, as they would have
been obvious over the combined disclosures of WF Site, Seybold, and Guck, as
well as the combined disclosures of Schrader and Guck.
IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1-9 of U.S. Patent No. 6,981,007 are unpatentable;
and
FURTHER ORDERED that, because 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.

8
No objective evidence of nonobviousness was presented.
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For PETITIONER:

Andrew S. Ehmke
Phillip Philbin
Andy.Ehmke.ipr@haynesboone.com
Phillip.Philbin.ipr@haynesboone.com
HAYNES AND BOONE, LLP
2323 Victory Ave., Suite 700
Dallas, TX 75219

For PATENT OWNER:

Gene S. Winter
Michael J. Kosma
Stephen F.W. Ball, Jr.
gwinter@ssjr.com
mkosma@ssjr.com
sball@ssjr.com
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 Bedford Street
Stamford, CT 06905