SAP Americav.Lakshmi Arunachalam Arunachalam

Patent Trial and Appeal Board

Sep 18, 2014

11980185 (P.T.A.B. Sep. 18, 2014)

Trials@uspto.gov Paper No. 10
571-272-7822
Paper No. 61
Filed: September 18, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAP AMERICA, INC.,
Petitioner,

v.

LAKSHMI ARUNACHALAM,
Patent Owner.
____________

Case CBM2013-00013
Patent 8,037,158 B2
____________

Before, KARL D. EASTHOM, WILLIAM V. SAINDON, and
BRIAN J. McNAMARA, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

FINAL WRITTEN DECISION

35 U.S.C. § 318(a) and
37C.F.R. § 42.73

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BACKGROUND
On September 19, 2013, we entered a Decision to Institute (“Dec. to
Inst.”) a trial in each of the following related proceedings: SAP America, Inc.
v. Pi-Net International, Inc., Case IPR2013-00195, which concerns U.S.
Patent No. 8,108, 492 B2 (“the ’492 Patent”), SAP America, Inc. v. Pi-Net
International, Inc., Case IPR2013-00195, which concerns U.S. Patent No.
5,987,500 (“the ’500 Patent”), and SAP America, Inc. v. Pi-Net
International, Inc., Case CBM2013-00013, which concerns U.S. Patent No.
8,037,158 B2 (“the ’158 Patent”). The ’492, ’500, and ’158 Patents have
since been assigned by Pi-Net International to the inventor Lakshmi
Arunachalam (“Patent Owner”).
1
On September 10, 2014, Patent Owner
filed a Mandatory Disclosure indicating that she is now acting pro se. Paper
62. The ’492, ’500, and ’158 Patents share substantially the same
specification.
In this proceeding, we instituted trial on the following grounds
asserted by Petitioner: Claims 1–3 and 11 as unpatentable under 35 U.S.C. §
101; claims 1–6 and 11 as unpatentable under 35 U.S.C. § 112(b);
2
claims
1–3 and 11 as unpatentable under 35 U.S.C. § 103 over the combination of
Computerworld
3
and Lawlor;
4
claims 1–3 and 11 as unpatentable under 35
U.S.C. § 103 over the combination of EB
5
and SFCU.
6

1
Assignment recorded at Reel/Frame 033684/0252 on September 9, 2014.
2
35 U.S.C. § 112(b) applies to any patent application filed on or after
September 16, 2012. We treat Petitioner’s challenge as one under 35 U.S.C.
§ 112, second paragraph, which is substantially the same as 35 U.S.C.
§112(b).
3
The Cyberbanks, Computerworld, 80 (June 26, 1995) ProQuest
Telecommunications, (“Computerworld”). Ex. 1007.
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In this Final Written Decision, we conclude that claims 1–3 and 11 do
not recite patentable subject matter under 35 U.S.C. § 101 and are
unpatentable under 35 U.S.C. § 103. We further conclude that claims 1–6
and 11 are unpatentable under 35 U.S.C. § 112 ¶2.
THE ’158 PATENT
The Specification of the ’158 Patent is the same as the ’492 Patent,
which we address in IPR2013-00194. Column and line references in this
section are to the ’492 Patent.
The ’492 Patent purports to provide “a method and apparatus for
providing real-time, two-way transactional capabilities on the Web.” Ex.
’492 Patent, Abstract. The ’492 Patent Specification states that “[a]
‘transaction’ for purposes of the present invention includes any type of
commercial or other type of interaction that a user may want to perform.”
Id. at col. 5, ll. 32–35. The ’492 Patent also states that Figure 4A illustrates
conceptually the user value chain, depicting the types of transactions and the
channels through which the transactions are performed “today,” i.e., at least
as early as the priority date of the application that led to the ’492 Patent. Id.
at col. 5, ll. 29–35. Thus, Figure 4A represents a prior art value chain, rather
than the invention.

4
Lawlor et al., U.S. Patent No. 5,220,501, issued Jun. 15, 1993 (“Lawlor”).
Ex. 1006.
5
Allen H. Lipis, et al., Electronic Banking, The Stock Market, 4th Edition,
1-220, (1985) John Wiley & Sons, New York (“EB”). Ex. 1004.
6
www.thefreelibrary.com/_/print/PrintArticle.aspx?id=17104850, (last
visited Mar. 15, 2013) Stanford Federal Credit Union Pioneers Online
Financial Services, (“SFCU”). Ex. 1005.
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Figure 4B illustrates an embodiment of the invention in which a Web
merchant provides real-time transactional capabilities to users who access a
merchant’s services through switching sites on Web servers or on non-Web
network computer sites and cellular provider sites. Id. at col. 5, l. 55–col. 6,
l. 1. The ’492 Patent Specification states that the embodiment shown in
Figure 4B includes a service network running on top of a facilities network,
namely the Internet, the Web, or e-mail networks. Id. at col. 5, ll. 59–60.
The Specification further states that the following five components interact
to provide the service network functionality: an exchange, an operator agent,
a management agent, a management manager, and a graphical user interface.
Id. at col. 6, ll. 1–5.
The difference between the prior art subject matter of Figure 4A and
embodiment of the invention in Figure 4B is shown in the “Service
Channels.” In addition to the service channels in Figure 4A, Figure 4B
illustrates a TransWeb
7
Exchange that includes a Web page and point-of-
service (POSvc) applications. The ’492 Patent states that “[a] POSvc
application is an application that can execute the type of transaction that the
user may be interested in performing.” Id. at col. 6, ll. 41–43. The type of
services offered by a POSvc application is determined by each Web
merchant. Id. at col. 7, ll. 10–11, 24–25.
The Exchange can reside on a web server or on a separate computer
system on the Internet with an Internet address. Id. at col. 6, ll. 25–28, ll.
58–64. The Exchange conceptually includes a switching component and an

7
The ’492 Patent refers to a TransWeb Exchange in Figure 4 and at column
7, lines 63-65, describes the TransWeb™ Exchange as a proprietary
protocol. Elsewhere the ’492 Patent uses the term Exchange.
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object routing component, id. at col. 6, ll. 20–21, and may also include an
operator agent that interacts with a management manager,id. at col. 6, ll. 28–
30. As previously noted, the switching site need not be a Web server but
may include non-Web network computer sites and cellular provider sites.
Id. at col. 5, l. 64–col. 6, l. 1.
When the Exchange receives a consumer's request for a transactional
application, a graphical user interface displays on a Web page, a list of
POSvc applications from which the user may select. Id. at col. 6, ll. 39–55.
The ’492 Patent discloses that the embodiment of the invention supports
hypertext markup language (HTML), Virtual Reality Markup Language,
Java™, and other graphical user interface standards. Id. at col. 6, ll. 45–50.
By selecting a POSvc to activate, the user can access services and
perform transactions offered by that POSvc application, which can access
back-office data repositories. Id. at col. 6, l. 65–col. 7, l. 4, ll. 10–50.
The ’492 Patent states that the connection between the user and the
services is managed by the Exchange, through an operator agent on a Web
server that ensures the availability of distributed functions and capabilities.
Id.at col. 7, ll. 4–9. However, as noted above, the ’492 Patent emphasizes
that the Exchange may reside on a Web server or on a separate computer
system with an Internet address. Id. at col. 6, ll. 25–28, 58–64. The ’492
Patent also states that a management manager, which may be on the
Exchange or on a separate computer system on the Internet, interacts with
the operator agent on the Exchange. Id. at col. 7, ll. 56–61.
The Exchange and a management agent may act in various roles,
including client-server, peer-to-peer, or master-slave roles and constitute a
value-added network (VAN) switch. Id. at col. 7, ll. 52–56. The VAN
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switch provides multiprotocol object routing, depending on the VAN
services chosen, using a proprietary protocol, the TransWeb™ Protocol
(TMP). Id. at col. 7, ll. 62–65. However, the ’492 Patent does not describe
TMP, except to state that it incorporates the same security features as the
traditional Simple Network Management Protocol (SNMP). Id. at col. 7, ll.
62–66. In addition, according to the ’492 Patent, TMP can incorporate s-
HTTP, Java™, the WinSock API, or ORB with distributed on-line service
information bases (DOLSIBs) to perform object routing. Id. at col. 8, ll. 4–
7. Thus, object routing in the ’492 Patent is not limited to a specific
implementation. The ’492 Patent, however, does not provide a description
of the proprietary TMP or how TMP incorporates these alternative
technologies.
In describing the DOLSIB, the ’492 Patent states that networked
object identities, each of which is assigned an Internet address based on the
IP address of the node at which the networked object resides, identify
information entries and attributes in the DOLSIB. Id. at col. 8, ll. 8–15. The
Internet address assigned to a networked object identity branches in a
hierarchical tree structure from a node, such as a Web server, and establishes
the object as IP reachable. Id. at col. 8, ll. 16–23. The proprietary TMP
utilizes this Internet address to uniquely identify and access the object from
the DOLSB, although the mechanism TMP uses to accomplish this task is
not described. Id. at col. 8, ll. 25–27. Each object has a name, a syntax that
defines the abstract data structure corresponding to that object and encoding
that defines how the object is represented by the object type syntax while
being transmitted over the network. Id. at col. 8, ll. 27–39. The ’492 Patent
does not describe the syntax or encoding of objects.
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The ’492 Patent also discusses a conceptually layered architecture of
the VAN switch in the context of “services.” Id. at col. 8, ll. 41–43. It is not
clear if the “services” in this conceptually layered architecture constitute the
“service network” previously discussed. However, the ’492 Patent provides
no physical description of such a network.
A “boundary service” interfaces the VAN switch, the Internet and the
Web and end user media devices, e.g., PCs, television, telephones, as well as
interfacing to an on-line service provider. Id. at col. 8, ll. 43–48. As an OSI
application layer switch, the “switching service” represents the core of the
VAN switch and facilitates connectivity with the Internet (a public switched
network) and private networks, including back office networks. Id.at col. 8,
ll. 52–60. The switching service routes user connections to remote VAN
switches, multiplexes, and prioritizes requests and provides flow control. Id.
at col. 8, ll. 54–59. Users use “management services” to manage network
resources and perform administrative and maintenance functions. Id. at col
8, l. 64–col. 9, l. 8.
The “application service” contains application programs that deliver
customer services, such as POSvc applications. Id. at col. 9, ll. 9–12. We
note that the terms “application service” and “VAN service” are referenced
in the ’492 Patent using reference designator 704. As mentioned above, the
’492 Patent describes “services” of the layered architecture of a VAN
switch. The description of the “VAN service” as providing functions
including communication services for both management and end users of the
network (id. at col. 9, ll. 20–23), indicates that the functions carried out by
the VAN switch may be carried out in a POSvc application. However, the
type of customer services offered by a POSvc application is determined by
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each Web merchant. Id. at col. 7, ll. 10–11, 24–25. Thus, as opposed to the
VAN service, we understand the “application service” is the service being
provided by the application, e.g., desired banking functions, rather than a
switching or communications functions.
ILLUSTRATIVE CLAIM Claim 1 of the ’158 Patent, reproduced
below, is illustrative.
1. A method for performing a real time Web transaction from a
Web application over a digital network atop the Web, the
method comprising:
providing a Web page for display on a computer system
coupled to an input device;
providing a point-of-service application as a selection
within the Web page, wherein the point-of-service
application provides access to both a checking and
savings account, the point-of-service application
operating in a service network atop the World Wide
Web;
accepting a first signal from the Web user input device to
select the point-of-service application;
accepting subsequent signals from the Web user input
device; and
transferring funds from the checking account to the
savings account in real-time utilizing a routed
transactional data structure that is both complete and
non-deferred, in addition to being specific to the
point-of-service application, the routing occurring in
response to the subsequent signals.
CLAIM CONSTRUCTION
We address claim constructions that are material to this Final Written
Decision as follows:
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Web application
We addressed the construction of this term in our Final Written
Decision in IPR2013–00194. See SAP Am., Inc. v. Arunachalam, Case
IPR2013-00194, slip op. at 11-14 (PTAB Sep. 18, 2014) (Paper 67). We
apply the same construction in this proceeding. For the reasons discussed in
IPR2013-00194, we construe “Web application” to mean a computer
program to perform a certain type of work using the Web.
Point-of-service (POSvc) application
We addressed the construction of this term in our Final Written
Decision in IPR2013–00194. See SAP Am., Inc. v. Arunachalam, Case
IPR2013-00194, slip op. at 14-16 (PTAB Sep. 18, 2014) (Paper 67). We
apply the same construction in this proceeding. Thus, we construe POSvc
application to mean a software program that facilitates execution of
transactions requested by a user.
Service network atop the Web
We addressed the construction of “service network (running on top of
a facilities network)” in our Final Written Decision in IPR2013-00194. See
SAP Am., Inc. vArunachalam, Case IPR2014-00194, slip op. at 16-18
(PTAB Sep. 18, 2014) (Paper 67). In that proceeding we construed that
“service network” to mean a network on which services, other than
underlying network communication services, are provided. We apply a
similar construction to this similar term in this proceeding. We construe
“service network running atop the World Wide Web” to mean a network on
which services other than underlying network communications services are
provided over the Web.
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Utilizing a routed transactional data structure that is both complete
and non-deferred
In our Decision to Institute, we construed this term to mean using a
data structure that facilitates switching a user who selects a transactional
application to a service provider program that provides immediate
processing. Dec. to Institute 15–16. We apply this broadest reasonable
construction for purposes of our analysis under 35 U.S.C. § 101 and 35
U.S.C. §103. However, as discussed further herein, we conclude that the
term is indefinite under 35 U.S.C. § 112, second paragraph.
Patent Owner proposes to construe this term to mean “Using a type of
transactional object that is routed and which contains the information
necessary for a complete, real-time transaction.” Paper 33 (“PO Resp.”) 28.
Patent Owner’s attempt to parse this term into individual elements is flawed
by its contention that the term “data structure” means a type of object. PO
Resp. 32–33. The Specification states that that the syntax of an object
defines the abstract data structure corresponding to that object type. Ex.
1001, col. 8, ll. 27-29. Thus, while an object has a data structure and that
object’s data structure depends upon the object’s type, the Specification does
not state that a data structure is an object. Instead, the Specification states
that different types of objects may have different data structures. Patent
Owner further argues that the terms “routed” and “transactional” do not
require further construction. PO Resp. 33-34. However, the Specification
does not explain what it means for a structure to be “routed” or
“transactional,” e.g., as opposed to non-routed or non-transactional.
Therefore, we decline to adopt Patent Owner’s proposed construction.
Patent Owner argues that “routed” does not mean switching a user,
but instead means routing an object and its corresponding data structure. Id.
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at 30. However, the claim does not recite routing an object, it recites a
routed transactional data structure. Thus, we are not persuaded by Patent
Owner’s arguments that “routing” means “the selective flow of data in the
application layer of the OSI model.” Id. at 33-34. Patent Owner argues that
a “complete” data structure is one that has all the information necessary for
the transaction. PO Resp. 35. There is no support in the Specification for
Patent Owner’s assertion. As discussed above, the syntax of an object type
defines the abstract data structure corresponding to that object type. Ex.
1001, col. 8, ll. 27-29. Thus, a data structure that is “complete” has the
elements corresponding to the syntax of an object type. In this way, a data
structure, which may vary among object types, facilitates the processing of
information. The Specification does not require that any particular object or
object type have all the information for a transaction. The example in the
Specification of an object type, i.e., a car, and an instantiation of that object,
a particular model car, does not contain all the information necessary for a
transaction, e.g., pricing, options, buyer, seller. Id. at col. 8, ll. 20-27.
As discussed further in this decision, based on Patent Owner’s
contentions and the language of the Specification, we conclude that the term
“routed transactional data structure” fails to inform a person of ordinary skill
in the art of the scope of the claim with reasonable certainty and is therefore
indefinite under 35 U.S.C. § 112 , second paragraph. See, Nautilus, Inc. v.
Biosig, Insts., Inc., 134 S. Ct. 2120, 2129–30 (2014) . However, to the
extent that the claim can be construed in order to analyze its relationship to
the prior art in this proceeding and whether the claim recites patent eligible
subject matter under 35 U.S.C. § 101, we have reconsidered our use of the
expression “switching a user” in the construction we applied in our Decision
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to Institute. Dec. to Inst. 15-16. Claim 1 recites that the “routed
transactional data structure” is specific to a POSvc application, which is a
software program that facilitates execution of transactions requested by a
user. Upon reconsideration, we conclude that “utilizing a routed transaction
data structure” encompasses using a data structure that facilitates switching
the processing of information associated with a user selected transactional
application that provides immediate processing.
Object routing
We construed “object routing” in claim 4 to mean the use of
individual network objects to route a user from a selected transactional
application to the processing provided by the service provider. Dec. to Inst.
17. Patent Owner contends that we should further limit the construction of
this term to routing of individual networked objects from a selected
transactional application on a Web page. PO Resp. 38. Object routing is
recited in claim 4. Independent claim 1, from which claim 4 depends,
already recites providing POSvc applications for selection on a Web page.
Patent Owner further contends that the claim is drawn to routing of objects,
not users, and that “routing” requires no construction. Id. at 3839.
However, claim 4 recites that “object routing” is used to complete the
transfer of funds in a Web application. The claim does not recite that
“objects” are routed. In addition, as we noted in our discussion of the term
“utilizing a routed transaction data structure that is both complete and non-
deferred,” networked objects are associated with IP addresses. The
Specification appears to disclose processing that transfers and retrieves
information from various IP addresses, but it is not clear that objects
themselves are routed from one IP address to another. In addition, the
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Specification discloses multi-protocol object routing that can incorporate
several technologies, Ex. 1001, col. 7, ll.55–63, and that the Exchange that
forms part of the VAN switch may be on the same or a different computer as
that of the Web merchants, id. at col. 6, ll. 49–55. Thus, we decline to adopt
Patent Owner’s construction and apply the above construction we adopted in
our Decision to Institute.
TECHNICAL INVENTION
A covered business method patent is “a patent that claims a method or
corresponding apparatus for performing data processing” or other operations
used in the practice, administration, or management of a financial product or
service. 37 C.F.R. § 42.301(a). A covered business method patent “does not
include patents for technological inventions.” Id. A technological invention
is determined by considering whether the subject matter of a particular claim
as a whole recites a technical feature that is novel and unobvious over the
prior art, and solves a technical problem using a technical solution. 37
C.F.R. § 42.301(b).
Patent Owner contends that claim limitations such as a Web
application, a point-of-service (“POSvc”) application operating in a service
network atop the World WideWeb, and a routed transactional data structure,
indicate that the claim is directed to a technological invention. Patent
Owner’s contentions are based on claim constructions that we have declined
to adopt.
Claim 1 is directed to performing a real-time Web transaction. The
fact that the claim recites the transaction is performed from a Web
application or over a particular network does not mean that the claim is
drawn to a technological invention. Claim 1 is not drawn to the Web
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application or the network. It is drawn to a method of performing the
transaction. We do not find that the recited limitations include technical
features that result in claim 1 being drawn to a technological invention.
The steps of the method recited in claim 1 include providing a
webpage for display, providing at least one application the user can select to
access checking and savings accounts, accepting signals from an input
device, and transferring funds. There is no technological invention in these
steps. Patent Owner argues, however, that certain elements of these steps
transform the claim into a technological invention. For example, Patent
Owner contends that, because claim 1 recites a “Web application” and a
“POSvc application” operating over “a service network atop the web,” claim
1 recites a network that does not involve underlying network communication
services and hence is a technological invention. PO Resp. 6. Patent Owner
further argues that claim 1 solves a technological problem because the ’158
Patent describes limitations in the prior art as lacking a mechanism for
performing a robust, real-time transaction with a bank. Id. Patent Owner’s
citations to the Specification, however, describe purported shortcomings,
e.g., disadvantages of CGI scripts, in performing transactions. The
discussion of such shortcomings in the prior art does not change the nature
of claim 1 as being drawn to a method of performing a transaction by
carrying out certain non-technical steps. As we have construed the claim,
the recited POSvc application is a software program that facilitates
execution of transactions requested by a user and the recited service network
is a network on which services other than underlying network
communications services are provided over the Web. Utilizing a routed
transactional data structure that is both complete and non-deferred means
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using a data structure that facilitates switching the processing of information
associated with a user selected transactional application that provides
immediate processing. A user’s selection of a transactional application
transfers processing to a service provider program which, in turn, provides
immediate processing. None of these features changes the non-
technological nature of claim 1. Thus, the subject matter of claim 1 is
directed to a non-technical invention, i.e., simply transferring funds.
CHALLENGES UNDER 35 U.S.C. § 101
Patent Owner disputes Petitioner’s asserted ground that claims 1–3
and 11 recite subject matter that cannot be patented under 35 U.S.C. § 101.
To determine whether a claim recites patent-ineligible subject matter,
the first step is to determine whether the subject claim is drawn to a law of
nature, a natural phenomenon, or an abstract idea. Alice Corp. Pty, Ltd. v.
CLS Bank Intern, 134 S. Ct. 2347, 2356 (2014) (citing Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289, 1296–97 (2012)).
If the claim is directed to patent-ineligible subject matter, the second step is
to consider the elements of each claim both individually and “as an ordered
combination” to determine whether the additional elements “transform the
nature of the claim” into a patent-eligible application. Id. This second step
of the analysis searches for an element or combination of elements that is
“sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.” Id. (internal quotations
omitted).
Applying the broadest reasonable construction, claim 1 recites a
method of carrying out a transaction from a Web application (a computer
program to perform a certain type of work on the Web) in which a user
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selects a POSvc application (a software program that facilitates execution of
transactions requested by a user). Thus, claim 1 recites an abstract method,
i.e., performing a real-time Web transaction by displaying and providing at
least one application a user selects to access checking and savings accounts,
and transferring funds (i.e., debiting or crediting) in response to user signals
from an input device. Noting our conclusion in the Decision to Institute that
claims limited to “object routing” recite statutory subject matter, Patent
Owner argues that claims 1–3 and 11 also recite statutory subject matter
because they recite a “routed transactional data structure.” PO Resp. 13–14.
Patent Owner’s arguments are based on a claim construction of
“routed transactional data structure” that we declined to adopt, and on a
misapprehension of our reasons for concluding claims reciting object routing
are not barred under 35 U.S.C. § 101. Patent Owner argues that the “data
structure” of claim 1 is a physical software structure. PO Resp. 14. The
only mention of “data structure” in the Specification is a statement that
“[t]he syntax of an object type defines the abstract data structure
corresponding to that object type.” Ex. 1001, col. 8, ll. 27–39 (emphasis
added). Thus, the Specification states that, even if an object is considered to
be physical, its data structure is abstract. In addition, although the syntax of
an object type may impose a data structure on objects of a particular type,
the Specification does not mention a transactional object type.
In our Decision to Institute, we noted that “object routing” requires
the use of individual networked objects to route a user from a selected
transactional application to the processing provided by the service provider.
In contrast, the limitation “routed transactional data structure,” does not
impose a meaningful limit on the scope of claims 1–3 and 11 because it does
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not play a significant part in permitting the claimed method to be performed.
See SiRF Tech. Inc. v. Int’l Trade Comm., 601 F.3d 1319, 1333 (Fed. Cir.
2010). For example, as explained below in our 35 U.S.C. § 112 , second
paragraph analysis, the Specification does not describe clearly how a data
structure is transactional, as opposed to non-transactional, or routed, as
opposed to non-routed. As discussed above, to the extent that “utilizing a
routed transactional data structure that is both complete and non-deferred,”
can be construed, we have interpreted it to mean using a data structure that
facilitates switching the processing of information associated with a user–
selected a transactional application that provides immediate processing.
Switching the processing of information from one resource to another, such
as from one program or data base to another, is a well-known abstract
concept that is not limited to any particular technical approach, such as
object routing, as recited in claim 4.
The remaining limitations in claim 1 do not contribute any patent–
eligible subject matter. The service network atop the Web, which we have
construed to mean a network on which services other than underlying
network communications services are provided over the Web, is an abstract
concept under which customers and service providers communicate over a
network so that the service provider can service the customer, in this case to
allow the user to transfer funds between checking and savings accounts.
This does not impose a meaningful limitation on the scope of the claim. See
SiRF Tech, 601 F.3d at 1333. Thus, we conclude that claim 1 does not recite
patent–eligible subject matter.
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Claims 2, 3, and 11 do not add limitations that contribute to patent
eligibility. Thus, we conclude that Petitioner has demonstrated that claims
1–3 and 11 do not recite patentable subject matter under 35 U.S.C. § 101.

CHALLENGES UNDER 35 U.S.C. § 112, SECOND PARAGRAPH
There is no dispute that the term “routed transactional data structure”
is not used or discussed in the Specification. In our Decision to Institute, we
instituted trial on the basis that the term “routed transactional data structure,”
which is used in all the challenged claims, is indefinite under 35 U.S.C. §
112 because we were persuaded that a potential competitor could not
determine whether or not he is infringing. Dec. to Institute 34 (citing
Morton Int’l. v. Cardinal Chem. Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993)).
Patent Owner argues that the constituent parts of the term are individually
easily construed, and as such, the phrase is easily construed as well PO
Resp. 66 However, Patent Owner acknowledges that the construction of this
term may be difficult and that reasonable minds may differ. Id. at 67-68.
Patent Owner argues that a claim is ambiguous only if it is “insolubly
ambiguous.” PO Resp. 67. That standard, however, has been rejected by
the Supreme Court. In Nautilus, the Court held that § 112, second paragraph
requires that a patent’s claims, viewed in light of the specification and
prosecution history, inform those skilled in the art about the scope of the
invention with reasonable certainty. Nautilus, 134 S. Ct. at 2129-30. The
court noted that the definiteness requirement, so understood, mandates
clarity, while recognizing that absolute precision is unattainable. Id.
The standard we adopt accords with opinions of this Court
stating that “the certainty which the law requires in patents is
not greater than is reasonable, having regard to their subject-
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matter.” Minerals Separation, Ltd. v. Hyde, 242 U.S. 261, 270,
37 S.Ct. 82, 61 L.Ed. 286 (1916). See also United Carbon, 317
U.S., at 236, 63 S.Ct. 165 (“claims must be reasonably clear-
cut”); Markman, 517 U.S., at 389, 116 S.Ct. 1384 (claim
construction calls for “the necessarily sophisticated analysis of
the whole document,” and may turn on evaluations of expert
testimony”)
Id.
Applying this standard, the claim term “a routed transactional data
structure” is indefinite. In its claim construction arguments, Patent Owner
contends that the Specification discloses two kinds of routing — user routing
through management and administration, as discussed at column 8 lines, 32–
67 of the Specification, and routing of a data structure as in object routing,
described in the Specification at column 7, line 42–column 8, line 31. PO
Resp. 30. However, the term used in the Specification is “object routing.”
There is no definition of a “routed transactional data structure,” nor any
discussion of any data structure being “routed.” The Specification expressly
states that the syntax of an object “defines the abstract data structure
corresponding to that object type.” Ex. 1001, col. 8, ll. 27–29. This is the
sole use of the term “data structure” in the Specification. The Specification
also states that the encoding of an object defines how the object is
represented by the object type syntax while being transmitted over the
network. Id. at col 8, ll. 27–31. There is no discussion of any particular
object type, such as a transactional object. It is also not clear how an object
is routed or transmitted over the network, as the Specification describes
“networked objects” associated with an Internet address as being IP
reachable (i.e., that they are at a fixed location). Id. at col. 8, ll. 1-18. In any
case, even if objects are transmitted, there is no discussion in the
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Specification of a “routed transactional data structure.” Although, for
purposes of our analysis under 35 U.S.C. § 101 and 35 U.S.C. § 103, we
have construed the term “utilizing a routed transactional data structure that is
both complete and non–deferred,” its incorporation into claim 1 renders the
claims indefinite because, for the reasons discussed above, one of ordinary
skill in the art is not informed of the scope of the invention with reasonable
certainty.
The Specification notes that object routing can be accomplished using
an undisclosed, proprietary protocol, TransWeb™ Management Protocol
(TMP) that can incorporate distributed on-line service information bases
(DOLSIBs), s-HTTP, Java, the WinSock APR, or ORB with DOLSIBs to
perform the object routing. Id. at col. 7, l. 54–65. The term “routed
transactional data structure” is indefinite because it fails to inform a person
skilled in the art of the scope of “data structure,” and also because the
“rout[ing]” uses an undisclosed proprietary protocol.
ANALYSIS OF PRIOR ART CHALLENGES
Introduction
Petitioner challenges claims 1–3 and 11 under 35 U.S.C. § 103 as
unpatentable over the combination of Electronic Banking and Stanford
Federal Credit Union and as unpatentable over the combination of Lawlor
and Computerworkd.
Electronic Banking (“EB”) generally discloses retail and wholesale
banking services and discusses future directions of the financial services
industry and electronic funds transfer at the time of its publication in 1985.
Ex. 1004, 10-11. Pages 123–146 of EB disclose home banking
developments from a telephone bill payment system to a video home
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banking system. EB identifies four categories of service (information
retrieval, transactions, electronic messaging and computation),id. at 124–5,
four major processing functions, (customer information preparation, network
control, session management and after-session transaction processing),id. at
128, and five major system elements (terminals, communications link,
operating center, database and standards),id. at 124–25.
EB discloses that when a customer accesses the system, that customer
is the network controller’s customer and can access many different services
the network controller offers, including a bank’s services, by selecting from
categories listed on an index menu. Id. at 129. When the customer selects
banking, the network controller sets up a direct connection between the
customer and the financial switch (“FS”) bank, at which point the FS bank
takes over the session management function and prompts the customer
through the transaction, thereby capturing the customer oriented transaction
and providing the bank complete control over the customer’s transaction. Id.
When the customer signs off, the customer is returned to the network
controller’s main menu from which the customer may select another service,
such as news or games. Id.
Stanford Federal Credit Union (“SFCU”) discloses that, following a
100 member trial in 1994, in 1995 Stanford Federal Credit Union became
the first bank to offer customers services beyond access to information over
the Internet, by providing its customers the ability to withdraw or transfer
funds from one account to another, and conduct day-to-day business online,
using its home page and World Wide Web server. Ex. 1005, 1–2.
Lawlor discloses a system for remote delivery of banking services.
Ex. 1006, Abstract. In Lawlor, contact is established between portable
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terminals and a central computer operated by a service provider over a
telephone or packet data network. Id. Users are connected to their banks by
linking the digital packet network, accessible through a dial-up gateway, to
an ATM network. Id. at Abstract; col. 7, ll. 30–36, 40–48. The central
computer acts as a Point of Sale (POS) or Automated Teller Machine
(ATM). Id. at Abstract. The bank’s data processing system communicates
with other banks through specialized ATM networks and digital switches, so
that a user of one bank’s ATM can access an account in another bank. Id. at
col. 4, ll. 12–23. Funds transfers can be accomplished in real time. Id. at
col. 7, ll. 19–22.
Computerworld discloses that in June 1995 Security First Network
Bank was approved to provide services including the ability to make money
transfers over the Internet. Ex. 1007, 80.
Claim 1
Our Decision to Institute details the disclosures in the references that
render claim 1 obvious over the combination of EB and SFCU Dec. to
Institute 29–31, and Lawlor and Computerworld,id. at 24–26. Patent Owner
contends that none of the asserted prior art references discloses a routed
transactional data structure. PO Resp. 58. Patent Owner’s entire argument
is based on a construction that we have declined to adopt. Id. at 58–60. As
discussed above, we have construed this term to mean using a data structure
that facilitates switching the processing of information associated with a user
selected transactional application that provides immediate processing.
EB discloses that when a user selects electronic banking, the network
controller sets up a direct connection between the financial switch (FS) bank
and the customer, at which point the bank takes over the session
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management. Ex. 1004, 129. EB also discloses the need for a bank to
possess software to extract home banking customer account information to
set a cutoff time for updating accounts during (e.g., immediately) or after the
session. Id. at 134. EB further discloses the Fed Wire network, which
transfers credits and debits that immediately affect an institution’s available
funds. Thus, EB discloses a routed transactional data structure, as we have
construed that term.
Patent Owner further contends that none of the prior art references
discloses the use of a Web application or a service network atop the Web.
Although we have revised our construction of “Web application,” to mean a
computer program to perform a certain type of work using the Web, we have
declined to adopt Patent Owner’s proposed construction. As discussed
above, SFCU discloses using a home page and the Web to conduct everyday
business, such as funds transfers, using a World Wide Web server. EB
discloses a program that offers four categories of banking services
(transactions the bank can perform). Ex. 1004, 124–25. Thus, the
combination of SFCU and EB discloses a computer program to perform a
certain type of work using the Web. In view of these disclosures, and as
detailed in our Decision to Institute, we conclude that the preponderance of
the evidence shows that claim 1 is unpatentable under 35 U.S.C. § 103 over
the combination of EB and SFCU.
We reach the same conclusion with respect to the combination of
Lawlor and Computerworld. Lawlor discloses that, following the user’s
selection of the particular type of transaction, sub-options are displayed and
the software is responsive to further inputs from the user. Ex. 1006, col. 41,
ll. 57–60. Funds transfers, such as payments, can be accomplished
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immediately, in real time, and the transactions can be routed through the
originating ATM network or another ATM network. Id. at col. 7, ll. 49–53,
col. 22, ll. 28–52, col. 50, ll. 44–59. Lawlor further discloses a banking
module 80H that conducts funds transfers between accounts (Ex. 1006, col.
20, ll. 59–63) and a routing module that permits efficient routing of
transactions to the appropriate module for servicing (id. at col. 20, ll. 27–
29). Thus, Lawlor discloses a routed transactional data structure, as we have
construed that term. Computerworld’s discussion of accessing banking
services over the Internet and using Netscape Navigator in such transactions,
Ex. 1007, discloses a Web page displayed on a computer screen and a Web
application, i.e., a software program that can be accessed by an Internet user.
Patent Owner argues that the combination of Lawlor and
Computerworld is not appropriate under 35 U.S.C. § 103 because a goal of
Lawlor is to avoid the need for banks to install new communication lines or
software. PO Resp. 63-65 (“it would not have been obvious to make any
changes to Lawlor’s system”). However, the question of whether a given
inventor (here, Lawlor) would consider it obvious to modify his invention in
view of the prior art is not the issue. This issue is whether a person of
ordinary skill in the art would have considered it obvious to include
accessing banking services over the Internet using a browser (as taught in
Computerworld) in the system of Lawlor. Here, Lawlor discloses “a new
central computer/communications system performing new functions” and an
ATM network linking to a digital packet switched network, such as the
Internet, of which the World Wide Web is a part. Ex. 1006, col. 7, ll. 40-50.
Petitioner notes that the combination of Lawlor and Computerworld is
nothing more than combining the remote banking services of Lawlor with
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the World Wide Web banking Web sites described in Computerworld
without any significant modification. Pet. 41. Petitioner points out that both
references discuss home banking systems, i.e., the disclosed Computerworld
systems operate on the World Wide Web, while Lawlor operates over
standard phone networks. Id. Citing the Declaration of Dr. Sirbu Ex. 1003
(“Sirbu Decl.”), Petitioner persuasively argues that one of ordinary skill in
the art would have found it obvious to adapt the Lawlor system to the World
Wide Web, as Computerworld discusses banks that were performing money
transfers over the World Wide Web.
In consideration of the above, we conclude Petitioner has shown by a
preponderance of the evidence that, under 35 U.S.C. § 103, claim 1 is
unpatentable over the combination of Lawlor and Computerworld.
Claims 2, 3, and 11
Claim 2 recites “an exchange over the Web” completes the transfer of
funds, and claim 3 recites that “a management agent is used to complete” the
exchange. EB in combination with SFCU discloses both of these features.
EB discloses transaction instructions and processing to complete banking
transactions, such as the exchange of funds (Ex. 1004, 125), and accessing
the transactional capabilities through a network (id. at 129). Petitioner notes
that SFCU discloses that the network used to access such transactions may
be the Web. Pet. 69. EB also teaches that a computer performing session
management functions manages the transactions. Id. at 120–131. Petitioner
notes that the Stanford Federal Credit Union had installed a system for
performing banking transactions in which a World Wide Web server
provides the management agent. Id. at 69-70.
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Claim 11 depends from claim 1 and recites that the “Web transaction
is accessing an account across the Web from a Web application.” As
discussed above, Petitioner has shown that SFCU discloses the added
limitation of accessing accounts through the Internet using a Web browser.
Thus, we conclude that Petitioner has demonstrated that the
preponderance of the evidence shows that claims 2, 3, and 11 are
unpatentable under 35 U.S.C. § 103 over the combination of EB and SFCU.
Although Lawlor does not disclose an exchange over the Web being
used to complete the transfer of funds in a Web application, as recited in
claim 2, Lawlor discloses a customer using a public data network (“PDN”),
such as a packet-switched digital telecommunication network, to interface
with an ATM network, to transfer funds. Ex. 1006, col. 7, ll. 40-50.
Computerworld discloses the use of the Web to perform such transactions.
Thus, we are persuaded that Petitioner has demonstrated that the
combination of Lawlor and Computerworld discloses the features recited in
claim 2.
Lawlor further discloses that the manager 80A in CPU 80 schedules
and coordinates the flow of transactions through various system modules by
sending the transactions to the appropriate module, e.g., settlement module
and the banking module, “for processing and control of interactions with the
external environment.” Id. at col. 20, ll. 11-16; col. 20, l. 26 – col. 21, l. 10.
Thus, the central computer serves as a management agent used to complete
the transfer of funds as recited in claim 3.
Claim 11 depends from claim 1 and recites that “the Web transaction
is accessing an account across the Web from a Web application.” As
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discussed above, Computerworld discloses the added limitation of accessing
accounts through the Internet using a Web browser.
In consideration of the above, we conclude that Petitioner has
demonstrated that the preponderance of the evidence shows that, under 35
U.S.C. § 103, claims 3 and 11 are also unpatentable over the combination of
Lawlor and Computerworld.
MOTION TO EXCLUDE
Petitioner moves to exclude certain documents as not authenticated or
hearsay. Paper 47 (“Mot. to Exclude”). Specifically, Petitioner argues that
we should exclude Exhibits 2014–2016, and 2018, (web pages purported to
be from Webopedia and Wikipedia), and Exhibit 2019 (purported to be from
webtrends.about.com), as unauthenticated and hearsay (id. at 1–4), and as
irrelevant (id. at 5–6), because they post–date the relevant time period, i.e.,
November 13, 1995. Patent Owner opposes, citing case law where, based on
the characteristics of the website, courts have held such documents to be
sufficiently authenticated. Paper 50 (“Opp. to Mot. to Exclude”) 1–4.
Patent Owner also argues that the exhibits are relevant because they are
offered for purposes of claim construction and that post-dated references
may be cited to show the state of the art at or around the time of the
invention. Id. at 5–6.
Petitioner argues that the issue is whether these particular documents
are authenticated and that Patent Owner’s sole attempt to authenticate, a
statement by the inventor that each of the exhibits is a true, authentic, and
correct copy of the original document, is insufficient for authentication.
Paper 52 (“Pet. Reply”) 1–3.
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Under Federal Rules of Evidence (“FRE”) 901(b)(1) a proponent may
authenticate evidence through testimony that the evidence is what it is
claimed to be. In Loraine v. Markel American Insurance Co., 241 F.R.D.
534, (D. Md. 2007), the court noted that a witness authenticating electronic
evidence must “provide factual specificity about the process by which the
electronically stored information is created, acquired, maintained, and
preserved without alteration or change, or the process by which it is
produced if the result of a system or process that does so.” Id. at 545. The
inventor’s statements do not meet these criteria. However, under FRE
901(b)(4) a party may authenticate evidence using circumstantial evidence in
conjunction with the appearance, contents, substance, internal patterns, or
other distinctive characteristics of the evidence. Although Patent Owner has
not provided evidence such as hash values or metadata (see Lorraine at 547),
the contents and substance of the documents indicate that they are what they
purport to be. Given their technical nature of the documents, this panel can
assign them appropriate weight.
Patent Owner also argues that these exhibits are not hearsay, arguing
that they are offered in the context of claim construction to establish what
the Exhibits teach about how a person of ordinary skill would interpret the
exhibits. Opp. to Mot. to Exclude 4. Patent Owner cites Neev v. Abbott
Med. Optics, Inc., CIV. 09-146 RBK, 2012 WL 1066797 at *14 (D. Del.
Mar. 26, 2012) (citing Abbott Labs v.Diamedix Corp., 969 F. Supp. 1064,
1066 n.1 (N.D. Ill. 1997)) to support the proposition that evidence proffered
to establish the effect on a person of ordinary skill in the art is not hearsay.
Opp. To Mot. to Exclude 4. Petitioner responds that Neev concerned the
admissibility of statements about the general state of the art at the time of the
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invention, while in this case, Patent Owner cites the exhibits as factual
support for its position and in order to establish what the exhibits actually
teach. Paper 53 (“Pet. Reply to Opp. to Mot. to Exclude”) 4.
We addressed a similar issue in IPR2013-00194 and IPR2013-00195
concerning web page print–outs offered as exhibits. As in those cases, in
this proceeding, we do not cite these exhibits in our Final Written Decision.
Furthermore, in those cases, we determined that, notwithstanding the
hearsay aspects of the exhibits, we could exercise our discretion to assign
appropriate weight to the evidence. We reach the same conclusion here and
deny Petitioner’s Motion to Exclude.
ORDER
In consideration of the above, it is
ORDERED that claims 1–3 and 11 do not recite patent–eligible
subject matter and are unpatentable under 35 U.S.C. § 101;
FURTHER ORDERED that claims 1–3 and 11 are unpatentable under
35 U.S.C. §103;
FURTHER ORDERED that claims 1–6 and 11 are unpatentable under
35 U.S.C. § 112, second paragraph;
FURTHER ORDERED that Petitioner’s Motion to Exclude is
DENIED; and
FURTHER ORDERED, that because this is a Final Written 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.

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PETITIONER:
Lori A. Gordon
Michael Q. Lee
Sterne, Kessler, Goldstein & Fox P.L.L.C.
1100 New York Avenue, NW
Washington, DC 20005
Lgordon-ptab@skgf.com
Mlee-ptab@skgf.com

PATENT OWNER
Lakshmi Arunachalam (pro se)
laks22002@yahoo.com

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