Supercell Oy

Patent Trials and Appeals Board

May 11, 2020

IPR2019-00083 (P.T.A.B. May. 11, 2020)

Trials@uspto.gov Paper 45
571-272-7822 Date: May 11, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

GREE, INC.,
Petitioner,
v.
SUPERCELL OY,
Patent Owner.

IPR2019-00083
Patent 9,104,520 B2

Before STACEY G. WHITE, DANIEL J. GALLIGAN, and
JOHN R. KENNY, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
Denying-in-Part and Dismissing-in-Part Patent Owner’s
Contingent Motion to Amend
Dismissing Patent Owner’s Motion to Exclude
35 U.S.C. § 318(a)

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I. INTRODUCTION
In this inter partes review, GREE, Inc. (“Petitioner”) challenges the
patentability of claims 1–8, 10–16, and 18–20 of U.S. Patent No.
9,104,520 B2 (“the ’520 patent,” Ex. 1001), which is assigned to Supercell
Oy (“Patent Owner”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and
arguments raised during the trial in this inter partes review. For the reasons
discussed below, we determine that Petitioner has proven by a
preponderance of the evidence that claims 1–8, 10–16, and 18–20 of the
’520 patent are unpatentable. See 35 U.S.C. § 316(e) (2012) (“In an inter
partes review instituted under this chapter, the petitioner shall have the
burden of proving a proposition of unpatentability by a preponderance of the
evidence.”). We also determine that Patent Owner’s proposed substitute
claims 21–28, 30–36, and 38–40 are unpatentable, and, therefore, we deny
Patent Owner’s Contingent Motion to Amend as to these claims. We
dismiss Patent Owner’s Contingent Motion to Amend as to claims 29 and 37
because claims 9 and 17, for which claims 29 and 37 are proposed as
substitutes, are not challenged in this inter partes review.
A. Procedural History
On October 12, 2018, Petitioner requested inter partes review of
claims 1–8, 10–16, and 18–20 of the ’520 patent on the following grounds:
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Claims Challenged 35 U.S.C. §1 Reference(s)/Basis
1, 7, 8, 10, 15, 16, 18 103
Waldmann,2 Schuelein,3
Applicant Admitted Prior Art
(“APA” or “AAPA”)4
6, 14, 19, 20 103
Waldmann, Schuelein, AAPA,
ZIP Format5
2–5, 11–13 103
Waldmann, Schuelein, AAPA,
O’Neill6
Paper 1 (“Pet.”), 8. Patent Owner filed a Preliminary Response. Paper 8
(“Prelim. Resp.”). We instituted trial on all grounds of unpatentability.
Paper 9 (“Dec. on Inst.”), 39.
During the trial, Patent Owner filed a Response (Paper 19, “PO
Resp.”), Petitioner filed a Reply (Paper 25, “Pet. Reply”), and Patent Owner
filed a Sur-reply (Paper 29, “PO Sur-reply”). Patent Owner also filed a
Contingent Motion to Amend (Paper 20, “Motion to Amend”), Petitioner
filed an Opposition to Patent Owner’s Contingent Motion to Amend
(Paper 26, “Opp. Amend”), Patent Owner filed a Reply to Petitioner’s
Opposition (Paper 30, “Reply Amend”), and Petitioner filed a Sur-reply to
Patent Owner’s Reply (Paper 36, “Sur-reply Amend”).

1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
35 U.S.C. § 103 that became effective before the filing of the application for
the ’520 patent. Therefore, we apply the post-AIA version of this section.
2 WO 2007/020300 A2, published Feb. 22, 2007 (Ex. 1004).
3 US 2006/0271925 A1, published Nov. 30, 2006 (Ex. 1005).
4 Certain disclosures in “Background of the Invention” section of the ’520
patent (Ex. 1001), as identified by Petitioner. See Pet. 16–18, 36–63.
5 .ZIP File Format Specification (v6.3.0), revised Sept. 29, 2006 (Ex. 1006).
6 US 6,832,373 B2, issued Dec. 14, 2004 (Ex. 1009).
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Patent Owner filed a Motion to Exclude (Paper 37), to which
Petitioner filed an Opposition (Paper 38), and in support of which Patent
Owner filed a Reply (Paper 39).
An oral hearing was held on February 19, 2020, a transcript of which
appears in the record. Paper 41 (“Tr.”).
B. Related Matters
The parties state that the ’520 patent is at issue in Supercell Oy v.
GREE, Inc. et al, No. 4:17-cv-05556-YGR (N.D. Cal.). Pet. 1; Paper 4, 1–2.
C. Real Parties in Interest
Each party identifies itself as the real party in interest. Pet. 1;
Paper 4, 1.
D. The ’520 Patent and Illustrative Claim
The ’520 patent generally relates to upgrading an application.
Ex. 1001, code (57), 1:15–17. As background, the ’520 patent explains that
the installation package of an application has a data portion and a
customized information portion. Ex. 1001, 1:42–43. According to the ’520
patent,
the same version of application may have different installation
packages with the same data portion and different customized
information portions. Accordingly, once the application is to be
upgraded to a higher version, many patch packages with different
customized information are needed. For example, when the
application has 100 release channels, e.g. an official channel, an
IE and a 360 browser and etc., 100 different patch packages with
the same data portion needs to be provided, which results in
heavy workload for developers.
Ex. 1001, 1:47–56. To address this purported problem, the ’520 patent
proposes applying a patch package to the data portion of a current
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installation package and then adding the customized information portion
from the current installation package to the newly generated data portion to
obtain a new installation package. Ex. 1001, 2:4–16.
Of the challenged claims, claims 1, 10, and 18 are independent.
Claim 1 is illustrative and is reproduced below.
1. A method for upgrading an application, comprising:
obtaining a patch package corresponding to a current
installation package of an application;
removing a customized information portion from the
current installation package and obtaining a data portion of the
current installation package;
generating a data portion of a new installation package
according to the patch package and the data portion of the current
installation package;
obtaining the new installation package by adding the
customized information portion to the data portion of the new
installation package; and
installing the new installation package.

II. ANALYSIS
A. Level of Ordinary Skill in the Art
Citing the testimony of its declarant, Dr. Paul Clark, Petitioner asserts
that a “person of ordinary skill in the art of the ’520 patent would have either
an undergraduate, graduate, or doctoral degree in computer science (or a
similar field, e.g., electrical engineering, etc.), or three to five years’ industry
experience in the general field of software engineering and application
development.” Pet. 21 (citing Ex. 1003 ¶ 8).
In our Institution Decision, we provided a preliminary assessment of
the level of skill in the art as that of “an individual (i) with an undergraduate
degree in computer science or electrical engineering or (ii) with any
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undergraduate degree plus three to five years’ experience as an application
developer or software engineer.” Dec. on Inst. 13 (citing Ex. 1003 ¶ 8;
Ex. 2001 ¶ 26). In its Response, Patent Owner agrees with this preliminary
assessment. See PO Resp. 12 (arguing that a person of skill in the art
“would have an undergraduate degree in computer science or electrical
engineering, or have an undergraduate college degree in another discipline
plus three to five years’ industry experience in the general field of software
engineering and application development”). During the trial, Petitioner did
not further address the level of skill in the art. See generally Pet. Reply.
Based on the record developed during trial, we adopt our preliminary
assessment of the level of ordinary skill in the art from the Institution
Decision. See Dec. on Inst. 13; PO Resp. 12; Ex. 1003 ¶ 8; Ex. 2001 ¶ 26;
Ex. 2019 ¶ 28.
B. Claim Interpretation
In an inter partes review for a petition filed before November 13,
2018, 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) (2018); see Changes to the Claim Construction
Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending
37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at
37 C.F.R. § 42.100(b) (2019)). The Petition was accorded a filing date of
October 12, 2018, and, therefore, the broadest reasonable interpretation
standard for claim interpretation applies. See Paper 5 (Notice of Filing Date
Accorded to Petition).
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In applying a broadest reasonable interpretation, claim terms generally
are given their ordinary and customary meaning, as would be understood by
one of ordinary skill in the art in the context of the entire disclosure. See In
re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). This
presumption may be rebutted when a patentee, acting as a lexicographer, sets
forth an alternate definition of a term in the specification with reasonable
clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994). Furthermore, only terms that are in controversy need to be
construed, and only to the extent necessary to resolve the controversy. See
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
200 F.3d 795, 803 (Fed. Cir. 1999)).
1. Customized Information Portion
The challenged independent claims and the proposed substitute
independent claims all recite “a customized information portion.” Patent
Owner argues that “[t]he term ‘customized information portion’ is defined in
the specification as comprising ‘at least one of a release channel of the
application, a network traffic tip, an update mode or a link to the release
channel.’” PO Resp. 13 (citing Ex. 1001, 4:10–12; Ex. 2019 ¶ 52).
According to Patent Owner, “the specification of the ’520 defines the
customized information portion and identifies a list of items, at least one of
which must be included in the customized information portion.” PO Sur-
reply 5–6. Petitioner contends that these four types of information are
examples of customized information and that the specification of the ’520
patent identifies other types of customized information. Pet. Reply 2–3
(citing Ex. 1001, 6:14–30, 9:10–13).
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We agree with Petitioner. The claims themselves do not define
“customized information portion.” Thus, we turn to the ’520 patent
specification, which states the following: “In an example of the present
invention, the customized information portion comprises at least one of a
release channel of the application, a network traffic tip, an update mode or a
link to the release channel.” Ex. 1001, 9:10–13 (emphasis added).
Therefore, the disclosed customized information portion that has at least one
of those four categories of information is merely exemplary.
Another passage of ’520 patent, cited by Patent Owner, provides the
same description without expressly disclosing its exemplary nature, reading:
“[t]he customized information portion comprises at least one of a release
channel of the application, a network traffic tip, an update mode or a link to
the release channel.” Ex. 1001, 4:10–12; PO Resp. 13; PO Sur-reply 5. In
context, however, that description is also exemplary, as it describes the
customized information portion in block 102 of Figure 1 of the ’520 patent
as “an embodiment of the present invention.” Ex. 1001, 3:56–63, 4:8–12.
And the ’520 patent emphasizes that the description of its disclosed
embodiments “is only preferred examples of the present invention and is not
used to limit the protection scope of the present invention.” Ex. 1001, 9:58–
60. The ’520 patent does not provide a limiting definition for “customized
information portion.”
Furthermore, the ’520 patent identifies more types of “customized
information” than those recited in Patent Owner’s construction: “According
to FIG. 4, customized information included in the extension field includes:
a[ Message-Digest Algorithm 5 (‘md5’)] value of the apk file (‘apk md5’), a
release channel (‘channelId’), a device type (‘profile device type’), an
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update mode (‘update mode’), a build version (‘build version’), and an
address of a market (‘market url’).” Ex. 1001, 6:20–25. We have no basis
under the broadest reasonable construction standard to limit the customized
information portion of the challenged claims to that which contains at least
one of the categories of customized information included in Patent Owner’s
proposed construction.
No further construction is necessary to resolve the dispute before us.
We further note that, as explained below, the asserted prior art teaches “a
customized information portion” under Patent Owner’s proposed
construction.
2. Removing
Claim 1 recites “removing a customized information portion from the
current installation package and obtaining a data portion of the current
installation package.” Claims 10 and 18 recite similar limitations.
Petitioner argues that “[t]he specification of the ’520 patent does not
expressly define the term ‘remove’” and that the term “removing” “should
be construed according to [its] plain and ordinary meaning, with the
understanding that ‘removing’ requires some affirmative action beyond
merely ignoring the customized information portion during upgrading or for
comparison purposes.” Pet. 33–34 (citing Ex. 1003 ¶ 19). In its application
of the prior art to the claims, Petitioner argues that removing information
encompasses “identif[ying], sav[ing], and transferr[ing]” the information.
Pet. 39 (citing Ex. 1003 ¶ 36).
Patent Owner argues that
the terms “removing / remove / being removed” would be
understood by a [person of ordinary skill in the art] to mean that
the customized information portion in question is taken from the
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installation package so that it is no longer present in the
installation package and is set aside for later use.
PO Resp. 15 (citing Ex. 2019 ¶¶ 51, 53; Ex. 1001, 5:24–26, Figs. 1, 6).
In the Decision on Institution, we addressed these proposed
constructions and made a preliminary determination that “‘removing’
information, as recited in the claims, encompasses ‘identif[ying], sav[ing],
and transferr[ing]’ the information, as proposed by Petitioner, and ‘set[ting]
aside for later use’ the information, as proposed by Patent Owner.” Dec. on
Inst. 9. We disagreed, however, with Patent Owner’s position that “the
recited ‘removing’ requires that the ‘customized information portion’ be ‘no
longer present in the installation package.’” Dec. on Inst. 8; see also id.
at 6–9 (claim construction analysis for the term “removing”).
For the reasons that follow, based on the full trial record, we
determine, consistent with our Decision on Institution, that removing the
customized information portion does not require that the customized
information portion be “no longer present in the installation package.”
Nevertheless, in our patentability analysis below, we find that the asserted
prior art teaches removing a customized information portion under Patent
Owner’s proposed interpretation as well.
We begin our claim interpretation analysis with the language of the
claims. As noted above, claim 1 recites “removing a customized
information portion from the current installation package and obtaining a
data portion of the current installation package.” Later, claim 1 recites
“obtaining the new installation package by adding the customized
information portion to the data portion of the new installation package.”
Thus, in the context of the claimed method, the “customized information
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portion” is removed so that it can be added later to the new data portion to
obtain the new installation package.
The ’520 patent specification uses the term “removing” in the same
sense as the claims, namely removing customized information to obtain a
data portion and then adding the customized information to a newly
generated data portion. Figure 1 of the ’520 patent is reproduced below.

Figure 1 of the ’520 patent is a flowchart of a method of upgrading an
application. Ex. 1001, 3:31–33. Referring to Figure 1, the ’520 patent states
that “[i]n block 102, a customized information portion is removed from the
current installation package and a data portion of the current installation
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package is obtained.” Ex. 1001, 4:7–9. The ’520 patent further states the
following:
In block 104, the new installation package is obtained by
adding the customized information portion to the data portion of
the new installation package and the new installation package is
obtained.
In this block, the customized information portion removed
in block 102 is added to the data portion of the new installation
package.
Ex. 1001, 5:20–26. Thus, it is the removed customized information portion
that is used again in the claimed upgrading procedure.
Based on the claim language and the specification, we agree with
Patent Owner that “removing a customized information portion from the
current installation package,” as recited in claim 1, encompasses “set[ting]
aside for later use” that customized information portion. See PO Resp. 15.
Claim 1 recites “obtaining the new installation package by adding the
customized information portion to the data portion of the new installation
package,” and the “customized information portion” is what was
“remov[ed] . . . from the current installation package.” The passage from the
specification quoted above makes clear that the previously removed
“customized information portion” is added to the newly generated data
portion. Ex. 1001, 5:20–26. Thus, the specification of the ’520 patent
explains that the removal is to set aside the customized information portion
for later use in the upgrading process, but it does not define “removal” as
resulting in a change to the “current installation package.”
Patent Owner argues that the prosecution history supports its proposed
interpretation. PO Resp. 17–18 (citing Ex. 1002, 192–96, 221); see
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1299 (Fed. Cir. 2015)
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(“The PTO should also consult the patent’s prosecution history in
proceedings in which the patent has been brought back to the agency for a
second review.”). Patent Owner argues the following:
During prosecution of the ’520 patent, the applicant
distinguished the claimed invention from the cited art by
explaining that in the art cited by the examiner the signature was
not “explicitly removed,” and “[o]n the contrary . . . the
customized information portion is removed from the current
installation package.”
PO Resp. 17–18 (quoting Ex. 1002, 192–93). The relevant portion of the
prosecution history discussing the IP.com prior art reference is as follows:
In IP.com, each file in the software product has a business
signature that is sensitive to all the content of the file except
certain content that is “unneeded” for comparison purposes (see
P2, first paragraph, lines 3-4). In IP.com, the business signature
is not explicitly removed from the corresponding file. On the
contrary, as recited in claim 1, the customized information
portion is removed from the current installation package.
Ex. 1002, 192–193 (Feb. 17, 2015 Response to Office Action) (emphasis
added).
We find that the cited portion of the prosecution history does not
support Patent Owner’s position for two reasons. First, during prosecution,
the applicant did not define the term “removing”; rather, the applicant
simply noted that certain information has not been “explicitly removed.”
Thus, the applicant’s arguments do not shed light on what it actually means
to be “removing” specified information. Second, as quoted above, the
applicant argued that, in the IP.com reference, “the business signature is not
explicitly removed from the corresponding file.” Ex. 1002, 192. It is not
entirely clear how this was responsive to the Examiner’s rejection. In
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particular, the Examiner mapped the “unneeded” content of IP.com to the
“customized information portion,” as set forth in the following passage:
P2: “The invention includes a new packager program that
generates a business signature for each file. The business
signature is a cryptographic checksum (which is currently based
on md5 but could be differently based) sensitive to all the content
of the file [data portion] except certain content that is
“unneeded” for comparison purposes [customized information
portion]. The mere action of recompilation will not change the
business signature. Currently only the timestamp is considered
unneeded content, but in the future other content may be isolated
and designated as unneeded.”
Ex. 1002, 164–165 (Nov. 26, 2014 Non-Final Action). According to the
rejection, the Examiner mapped “certain content that is ‘unneeded’ for
comparison purposes,” such as the timestamp, to the claimed “customized
information portion,” and the Examiner mapped the rest of the “content of
the file” to the data portion. Ex. 1002, 164–165. According to the quoted
portion of the rejection, the business signature is a cryptographic checksum
that is based on all content except the “unneeded” content (the “customized
information portion”). Thus, whether the business signature was “explicitly
removed” does not address the issue of whether the “certain content that is
‘unneeded’ for comparison purposes” (the “customized information
portion”) was removed. Thus, we do not find the prosecution history
particularly insightful as to the meaning of “removing.”
Having considered the intrinsic record, we now turn to the extrinsic
evidence. Patent Owner relies upon a dictionary and a thesaurus to argue
that the ordinary meaning of “remove” is to “get rid of, eliminate,” and
“delete,” among other synonyms. PO Resp. 16 (citing Ex. 2013; Ex. 2014;
Ex. 2019 ¶ 53). Patent Owner further analogizes the “removing” recited in
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the claims to a “cut and paste” operation, in which text “is identified, saved
(to a clipboard), and transferred to a new destination (upon paste)” and
“necessarily removed from its former location, i.e., is no longer present in
the position from which it was cut.” PO Resp. 20. Patent Owner contrasts
this with a copy and paste operation and argues that “the claims of the ’520
patent would not specify to ‘remove’ a customized information portion if it
only meant ‘copy’ and retain the customized information portion in its
unaltered state.” PO Resp. 20.
We find that the extrinsic evidence, as a whole and in context, does
not support construing “removing” as requiring the deletion of the material
that is removed. For example, Patent Owner cites a dictionary definition of
“remove” as “to convey from one place to another.” PO Resp. 16 (quoting
Ex. 20147). This is consistent with the notion that removed data are set aside
for later use. It does not necessarily follow that data that are conveyed from
one place to another are then separately deleted from their original location.
Patent Owner also agrees with Petitioner’s declarant’s testimony that
removing includes “extracting.” PO Resp. 17 (citing Ex. 1003 ¶ 19).
Extracting data from a location, however, does not necessarily require
deletion of the data from that location. For example, a page may be
extracted from a document but not deleted from that document if a user
wants to isolate a particular page but not alter the underlying document. In
this sense, the ’520 patent is directed to upgrading an application, and the
challenged claims do this by performing certain operations on or with parts
of a “current installation package” to arrive at a “new installation package.”

7 Patent Owner cites Exhibit 2013, but the quoted material appears in
Exhibit 2014.
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In particular, a “patch” is applied to the “data portion of the current
installation package” to “generat[e] a data portion of a new installation
package,” and the “new installation package” is obtained “by adding the
customized information portion to the data portion of the new installation
package.” After the upgrade process, the “current installation package” is
simply an old version of software whose contents are irrelevant. The ’520
patent is concerned with installing the updated installation package. It
discloses nothing about what happens with the older installation package or
what the contents of the older installation package are.
In the Decision on Institution, we stated the following:
For purposes of claim 1, the “customized information portion”
and the “data portion” are the two components of the “current
installation package” that are required to practice the remainder
of the claim. Whether or not the “customized information
portion” is actually deleted from the “current installation
package” appears to be of no significance for the performance of
claim 1. Indeed, in the context of computer technology, once a
subset of data is removed by setting it aside from a larger set of
data, it may involve little more than a labeling exercise to deem
the set-aside data no longer present in the original larger set of
data. The non-set-aside data can simply be considered to be
another data set that does not have the set-aside subset of data.
Dec. on Inst. 8–9.
With reference to our Decision on Institution, Patent Owner argues
the following:
[T]he removal of a customized information portion requires that
it no longer be a part of the data set to which it once belonged, as
the Board acknowledged in its institution decision. Institution
Decision, Paper 9 at 8 (“once a subset of data is removed by
setting it aside from a larger set of data, it may involve little more
than a labeling exercise to deem the set-aside data no longer
present in the original larger set of data”) (emphasis added).
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Whether this non-association is accomplished by
relabeling pointers to data or by an operation similar to a “cut
and paste” is not detailed in the ’520 patent. The ’520 patent
does, however, require that the removed customized information
portion no longer be present in the original larger set of data that
is the installation package.
PO Sur-reply 11–12. Patent Owner’s acknowledgment that the ’520 patent
does not detail how removal affects the current installation package indicates
that an effect on the current installation package is not a concern of the ’520
patent, as explained above. Furthermore, even if we accepted Patent
Owner’s proposed construction, Patent Owner’s argument here makes clear
that having data be “no longer present in the installation package” may take
the form of a “non-association” of the data from a set of data, which may be
“accomplished by relabeling pointers to data,” rather than deletion of data.
PO Sur-reply 11–12.
Based on the trial record, we do not consider Patent Owner’s proposed
construction to be the broadest reasonable interpretation. Rather, we
maintain our preliminary determination that the broadest reasonable
interpretation of “removing” in light of the specification of the ’520 patent
encompasses identifying, saving, and transferring8 the information and
setting aside the information for later use. Dec. on Inst. 9.
We nonetheless address obviousness under Patent Owner’s proposed
construction in our analysis below because it is similar to subject matter
proposed in Patent Owner’s Contingent Motion to Amend, and we determine

8 We use the conjunction “and” because we deem all three to be required.
We do not deem merely identifying information, for example, to meet the
“removing” limitation.
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that, even accepting Patent Owner’s proposed construction, the challenged
claims are not patentable over the prior art of record.
3. Obtaining
Each of the challenged independent claims and each of the proposed
substitute independent claims recites “obtaining” or “obtain.” Patent Owner
argues that to “obtain” means “to get, or acquire, or secure (something)
through an effort or by request.” PO Resp. 13 (citing Ex. 1001, 4:7–9, Figs.
1, 6; Ex. 2019 ¶ 54). Patent Owner argues that this construction is necessary
because our interpretation of “removing” in the Decision on Institution “is
not meaningfully distinguishable from ‘obtaining.’” PO Resp. 14.
Petitioner disputes this proposed construction and argues that no
construction is necessary. Pet. Reply 4–6. For the “obtaining” limitations—
“obtaining a patch package,” “obtaining a data portion,” and “obtaining the
new installation package”—Patent Owner makes no distinction over the art
based on its proposed construction for “obtaining.” We, therefore, agree
with Petitioner that no explicit construction is necessary for the term
“obtain.”
4. Comment Field of the ZIP File / Apk File
Patent Owner argues that “[t]he ‘comment field of the zip file’ /
‘comment field of the apk file,’” as recited in claims 6, 14, 19, and 20,
“would be understood by a [person of ordinary skill in the art] to mean ‘a
field at the end of a zip/apk file used by developers to store information
describing the zip/apk file.’” PO Resp. 21–22 (citing Ex. 2019 ¶ 57); see
Ex. 1001, claims 6, 14, 19, 20. Petitioner disagrees, arguing this proposed
construction is too narrow. Pet. Reply 10. Neither party cites any intrinsic
evidence that would define the involved phrases. PO Resp. 21–22; Pet.
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Reply 10. The only non-testimonial extrinsic evidence that either party cites
for construing the involved phrases is the definition for the comment field in
the ZIP File Format Specification. PO Resp. 21–22; Pet. Reply 10. As
Patent Owner explains, “The comment field of a zip file is defined in the ZIP
File Format Specification as residing in the ‘end of central directory record’
and comprising ‘[t]he comment for this .ZIP file.’” PO Resp. 22 (alteration
in original) (quoting Ex. 1006, 2, 5, 17; Ex. 2019 ¶ 57).
We do not adopt Patent Owner’s proposed construction, which defines
the recited comment fields, not merely based on what they are, but also on
how they are used (i.e., “used by developers to store information describing
the zip/apk file”). Patent Owner provides no credible support for including
such a use requirement into the construction of the recited comment fields.
As discussed above, the only cited non-testimonial evidence is the definition
from the ZIP File Format Specification, which, as shown above, does not
include such a use requirement. Other than specifying that we are not
adopting this proposed use requirement, we do not need to further construe
the recited comment fields because the cited prior art indisputably discloses
ZIP files and comment fields within them, thereby satisfying both Patent
Owner’s proposed construction (minus the use requirement) and the ZIP File
Format Specification’s definition. See PO Sur-reply 22 (“The existence of
ZIP files and comments fields within them is not in dispute.”). Thus, further
construction of these terms is not necessary to resolve any dispute in this
case.
C. Principles of Law
A patent claim is unpatentable under 35 U.S.C. § 103 if the
differences between the claimed subject matter and the prior art are such that
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the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) any secondary
considerations, if in evidence.9 Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966).
D. Obviousness over the Combination of
Waldmann, Schuelein, and AAPA
(Claims 1, 7, 8, 10, 15, 16, 18)
Petitioner asserts claims 1, 7, 8, 10, 15, 16, and 18 of the ’520 patent
are unpatentable under 35 U.S.C. § 103 as obvious over the combined
teachings of Waldmann, Schuelein, and AAPA. Pet. 22–29, 36–61.
1. Waldmann
Waldmann describes a method for installing a new version of software
on a computer by using a delta-update package to create an updated software
installation package from an old installation software package. Ex. 1004,
code (57). As part of the updating process, Waldmann discloses ways “to
preserve data and preferences input by [a] hearing device professional.”
Ex. 1004, 21:3–10.

9 Patent Owner does not present any objective evidence of nonobviousness
(i.e., secondary considerations) as to any of the challenged claims.
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2. Schuelein
Schuelein relates to updating software and discloses identifying
“customer specific data and/or customer protocols” of a previous version of
the software and “integrat[ing] the customer specific data with the revised
version of the software application.” Ex. 1005, code (57), ¶¶ 36, 52.
3. AAPA
Petitioner identifies as “Applicant Admitted Prior Art (‘APA’ [or
(‘AAPA’)]” various disclosures in the “Background of the Invention”
section of the ’520 patent relating to the use of a patch package to update
software. See, e.g., Pet. 16–17, 36–37, 45, 63 (citing Ex. 1001, 1:23–28,
1:30–38, 1:42–47, 1:51–52, 1:57–58).
As acknowledged in AAPA, “increment upgrade solutions are widely
used currently.” Ex. 1001, 1:26–29. According to AAPA, “[i]n the
increment upgrade solution, an old installation package and a new
installation package are both binary file, differences between the old
installation package and the new installation package are found out by using
a bsdiff tool, and a patch package is obtained.” Ex. 1001, 1:30–34. AAPA
also discloses that “the installation package of the application includes a data
portion and a customized information portion” and that “[t]he bsdiff
algorithm is performed only for the data portion.” Ex. 1001, 1:42–47.
4. Independent Claim 1
a) Overview of Petitioner’s Contentions and
Our Findings as to Undisputed Limitations
Petitioner argues that each of Waldmann, Schuelein, and AAPA
teaches “[a] method for upgrading an application,” as recited in the preamble
of claim 1. Pet. 36–37 (citing Ex. 1004, 15:2–4, 21:11–13; Ex. 1005, code
(57); Ex. 1001, 1:26–28). We agree that each of Waldmann, Schuelein, and
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AAPA teaches upgrading an application, as discussed above in our overview
of the prior art.10 See above §§ II.D.1–3.
For the limitation reciting “obtaining a patch package corresponding
to a current installation package of an application,” Petitioner relies on
Waldmann’s disclosure of receiving a delta-update package and AAPA’s
disclosure of obtaining a patch package. Pet. 37–38 (citing Ex. 1004, 15:1–
2, 17:1–4; Ex. 1001, 1:30–38; Ex. 1003 ¶ 35). We are persuaded, and we
find, that Waldmann and AAPA teach this subject matter. For example,
Waldmann discloses receiving a “delta-update package,” which “comprises
an executable file 3250, which is an installation script suitable for managing
the described updating of said old installation-software package.” Ex. 1004,
17:1–5. AAPA discloses that “differences between the old installation
package and the new installation package are found out by using a bsdiff
tool, and a patch package is obtained.” Ex. 1001, 1:30–34.
Petitioner contends that “removing a customized information portion
from the current installation package and obtaining a data portion of the
current installation package,” as recited in claim 1, would have been obvious
based on the combined teachings of Waldmann, Schuelein, and AAPA. Pet.
38–41 (citing Ex. 1001, 1:42–47; Ex. 1005 ¶¶ 32–33, 41–42, Figs. 3, 4; Ex.
1003 ¶ 36). Petitioner argues that both Schuelein and Waldmann disclose
preserving customized information during a software upgrade process.
Pet. 22–23 (citing Ex. 1004, 20:26–21:10; Ex. 1005 ¶¶ 32, 33, 52; Ex. 1003
¶¶ 23–25). In particular, Petitioner relies on Schuelein’s disclosure of

10 We need not decide whether the preambles of the challenged claims are
limiting because we find that Petitioner has shown that these preamble
recitations are taught by the cited art.
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identifying and saving certain customer-specific data for use later in the
updating process. Pet. 39–41 (citing Ex. 1005 ¶¶ 32–33, 41–42, Figs. 3, 4);
see also Pet. 23 (discussing Schuelein’s disclosure in explaining a reason to
combine). Petitioner also relies on Waldmann’s disclosure of ways “to
preserve data and preferences input by the hearing device professional.”
Ex. 1004, 21:8–10, quoted in Pet. 22–23. More particularly, Waldmann
discloses the following:
In optional step S13, any old versions of the hearing-
device fitting-software package are deleted from the storage
medium of the computer system on which the new version of
the hearing-device fitting-software package shall be installed.
This shall avoid problems during the installation depicted in
step S15. Alternatively, paths and directories belonging to the
old version of the hearing-device fitting-software package can
be renamed. A further alternative is to overwrite the old
version of the hearing-device fitting-software package by the
new version of the hearing-device fitting-software package.
This can allow to preserve data and preferences input by the
hearing device professional.
Ex. 1004, 20:27–21:10.
Petitioner notes that Waldmann’s procedures for preserving data and
preferences are alternatives to deleting the old software, which avoids
installation problems. Pet. 22–23. Petitioner argues the following:
A person of ordinary skill in the art would have also understood
that the technique for preserving customized information as
disclosed by Schuelein would have accomplished both of the
goals contemplated by Waldmann—removing the customized
information “shall avoid problems during the installation” in
the same manner as deleting the old installation (which
included the customized information), but later integrating the
customized information back into the installation “can allow to
preserve data and preferences input” prior to the upgrade.
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Pet. 23 (citing Ex. 1004, 21:8–10; Ex. 1003 ¶¶ 24–25). According to
Petitioner, the combination of Waldmann and Schuelein
would have resulted in a system for upgrading software
application installation packages through the use of patches as
disclosed by Waldmann where customized information would
have been removed and preserved throughout the upgrade
process by identifying, saving, and transferring the customized
information prior to upgrade and integrating the information
into the new installation package as taught by Schuelein.
Pet. 24 (citing Ex. 1003 ¶ 25).
As noted by Petitioner (Pet. 27), AAPA discloses that “the installation
package of the application includes a data portion and a customized
information portion” and that “[t]he bsdiff algorithm is performed only for
the data portion.” Ex. 1001, 1:42–47. Petitioner argues
[a] person of ordinary skill in the art would . . . have been
motivated to combine APA with the disclosure of Waldmann
and Schuelein because the known separation of installation
packages into a data portion and a customized information
portion would have permitted the preservation of customized
information as taught by both Waldmann and Schuelein.
Pet. 27 (citing Ex. 1003 ¶ 24).
Citing AAPA’s disclosure that “the installation package of the
application includes a data portion and a customized information portion”
(Ex. 1001, 1:42–43, quoted in Pet. 38), Petitioner argues that “[w]hen the
customized information portion is removed as taught by Schuelein, then it
would be obvious in view of APA that the data portion of the installation
package remains.” Pet. 41 (citing Ex. 1003 ¶ 36).
We discuss Patent Owner’s arguments as to the “removing” limitation
below.
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Petitioner argues Waldmann and AAPA teach “generating a data
portion of a new installation package according to the patch package and the
data portion of the current installation package.” Pet. 41–43 (citing
Ex. 1004, code (57), 10:27–29, 21:5–10; Ex. 1001, 1:30–38, 1:44; Ex. 1003
¶ 37). We are persuaded, and we find, that Waldmann and AAPA teach this
subject matter. As noted by Petitioner (Pet. 41), Waldmann discloses “using
said delta-update package (3200) for creating said updated installation-
software package (300) out of said old installation-software package (200).”
Ex. 1004, code (57). Waldmann also discloses ways to “preserve data and
preferences input by the hearing device professional.” Ex. 1004, 21:3–10.
Petitioner argues that
[a] person of ordinary skill in the art would understand that, to
preserve data and preferences, the delta-update package would
only be applied to the data portion—i.e. the portion of the old
installation package that needs to be upgraded—so that the data
and preferences to be preserved do not get changed or deleted.
Pet. 42 (citing Ex. 1003 ¶ 37). As also noted by Petitioner (Pet. 42), AAPA
discloses that “differences between the old installation package and the new
installation package are found out by using a bsdiff tool, and a patch
package is obtained” and that “[t]he bsdiff algorithm is performed only for
the data portion.” Ex. 1001, 1:30–34, 1:44.
Petitioner relies on Schuelein and Waldmann to teach “obtaining the
new installation package by adding the customized information portion to
the data portion of the new installation package,” as recited in claim 1.
Pet. 43–44 (citing Ex. 1005 ¶¶ 34, 52; Ex. 1004, 21:3–10; Ex. 1003 ¶ 38). In
particular, Petitioner relies on Schuelein’s disclosure of “automatically
integrat[ing] the customer specific data with the revised version of the
software application.” Ex. 1005 ¶ 52, quoted in Pet. 43. Furthermore,
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Petitioner relies on Waldmann’s disclosure of “preserv[ing] data and
preferences input by the hearing device professional.” Ex. 1004, 21:3–10,
quoted in Pet. 44. Petitioner argues
[a] person of ordinary skill in the art at the time of the alleged
invention would have understood that another way to preserve
data and preferences as described by Waldmann would be to re-
input those customized data and protocols—i.e. to add them to
the new version of the software package—as taught by
Schuelein.
Pet. 44 (citing Ex. 1003 ¶ 38).
We discuss Patent Owner’s arguments as to the “obtaining the new
installation package” limitation below.
Petitioner contends Waldmann and AAPA teach “installing the new
installation package,” as recited in claim 1. Pet. 44–45 (citing Ex. 1004,
21:11–14; Ex. 1001, 1:34–38, 1:57–58). We are persuaded, and we find,
that Waldmann and AAPA teach this subject matter. For example,
Waldmann discloses that “[i]n step S15, the updated installation-software
package created in step S5 is used for installing the desired new version of
the hearing-device fitting-software package in the computer system.”
Ex. 1004, 21:11–14, quoted in Pet. 44–45.
b) Patent Owner’s Arguments and Our Analysis
Patent Owner’s arguments for this ground focus on the limitations of
claim 1 reciting “removing a customized information portion from the
current installation package and obtaining a data portion of the current
installation package” and “obtaining the new installation package by adding
the customized information portion to the data portion of the new installation
package” and also focus on Petitioner’s reasoning to combine the references.
PO Resp. 25–44.
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i. Removing a customized information portion
Patent Owner argues that Schuelein does not teach “removing a
customized information portion from the current installation package and
obtaining a data portion of the current installation package” for two reasons.
PO Resp. 28–34. First, Patent Owner argues that Schuelein does not teach
“a customized information portion.” PO Resp. 29–31. Patent Owner
acknowledges that Schuelein discloses customer specific data and protocols,
but Patent Owner disputes Petitioner’s argument that Schuelein’s “network
information” teaches “a network traffic tip,” which is one example of
customized information according to the ’520 patent. PO Resp. 29–31
(citing Ex. 1005 ¶¶ 5, 19–21, 32; Ex. 2019 ¶ 81; Ex. 1003 ¶ 36; Ex. 2015,
64:2–65:1); see Pet. 41 (“Schuelein further teaches that customized
information may include network information, for example, which
corresponds to an example of customized information provided by the ’520
patent: a network traffic tip.”).
As an initial matter, we do not find the parties’ arguments regarding
whether Schuelein’s network information would be termed a “network
traffic tip” particularly helpful given Patent Owner’s acknowledgement that
“[t]he term ‘network traffic tip’ is not a term of art and would not generally
be known by a [person of ordinary skill in the art].” PO Resp. 22–23 (citing
Ex. 2019 ¶ 58). Other than mentioning “network traffic tip” three times as
an example of customized information, the ’520 patent contains no
disclosure of what a “network traffic tip” is. Ex. 1001, 4:10–12, 8:37–39,
9:10–13. Therefore, because the term “network traffic tip” is not recited in
any claim, because the ’520 patent does not describe what the term “network
traffic tip” means, and because Patent Owner states that it “is not a term of
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art and would not generally be known by a [person of ordinary skill in the
art]” (PO Resp. 22–23), we need not and we do not address whether
Schuelein’s network information would be termed a “network traffic tip.”
As Petitioner correctly asserts, AAPA discloses an installation
package having a “customized information portion.” Pet. 38–39 (citing
Ex. 1001, 1:42–47). In particular, AAPA discloses that “[c]urrently, the
installation package of the application includes a data portion and a
customized information portion,” and AAPA further discloses “a release
channel of the installation package” as an example of “customized
information.” Ex. 1001, 1:42–47. Thus, AAPA discloses “a customized
information portion” under Patent Owner’s proposed construction of the
term as “comprising ‘at least one of a release channel of the application, a
network traffic tip, an update mode or a link to the release channel,’” which
we have not adopted. PO Resp. 13; see above § II.B.1. In addition, Patent
Owner acknowledges that Petitioner “relied on APA for the existence of a
customized information portion.” PO Sur-reply 16 (citing Pet. 38–41).
Furthermore, as Patent Owner acknowledges (PO Resp. 29),
Schuelein discloses customer-specific data and protocols. Ex. 1005 ¶ 32,
cited in Pet. 39. Schuelein discloses the following: “The customer specific
data and/or customer protocol data identified and saved may include the type
of information detailed previously. For instance, the data identified and
saved may relate to the type of hardware, the hardware configuration, the
software configuration, measurement protocols generated by the customer,
and network information.” Ex. 1005 ¶ 32. As Petitioner points out, the ’520
patent identifies “device type” as an example of “customized information.”
See Pet. Reply 16 (citing Ex. 1001, 6:20–25). We are persuaded by
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Petitioner’s argument that Schuelein’s disclosure of the type of hardware
and the hardware configuration discloses “device type,” thereby teaching
“customized information” consistent with the ’520 patent. See Pet.
Reply 16–17 (citing Ex. 1001, 6:20–25; Ex. 1005 ¶ 32; Ex. 1014, 78:4–9).
Second, Patent Owner argues that Schuelein’s disclosure of
identifying, saving, and transferring customer specific information does not
teach “removing.” PO Resp. 31–34; PO Sur-reply 15–18. Patent Owner’s
arguments rely on its proposed interpretation of “removing” to mean that the
removed data “is no longer present in the installation package.” PO
Resp. 15, 31–34. For the reasons discussed above in § II.B.2, we do not
agree that Patent Owner’s proposed construction is the broadest reasonable
interpretation. Patent Owner argues that Schuelein’s “identification and
saving/transferring of customer specific data is akin to a ‘copy’ operation in
which the desired data exists both in its original location and in the newly
desired location.” PO Resp. 31–32 (citing Ex. 2019 ¶ 82). Thus, Patent
Owner acknowledges that Schuelein teaches identifying, saving, and
transferring the information and setting aside the information for later use,
which is encompassed by the broadest reasonable interpretation of the term
“removing,” as discussed above. We agree, and we find Schuelein teaches
“removing” by disclosing that “customer specific data and/or customer
protocol data for a software application may be identified and saved 206”
and “may be transferred to the central location 208,” where this data may be
integrated into a revised version of the software. Ex. 1005 ¶¶ 32–33, 35–36.
Thus, the data are identified, saved, and transferred and set aside for later
use.
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We also are persuaded that “removing a customized information
portion from the current installation package and obtaining a data portion of
the current installation package,” as recited in claim 1, would have been
obvious based on the asserted prior art even under Patent Owner’s proposed
construction. As Petitioner correctly points out (Pet. 38–39), AAPA
discloses that “[c]urrently, the installation package of the application
includes a data portion and a customized information portion.” Ex. 1001,
1:42–43. Thus, it was known in the prior art to have an installation package
with two parts: a data portion and a customized information portion. Under
Patent Owner’s proposed construction, removing the customized
information portion would require taking it “from the installation package so
that it is no longer present in the installation package.” PO Resp. 15. Thus,
after removal, the installation package would simply be the data portion.
Stated differently, the data portion is by definition the installation package
less the customized information portion.
Under Patent Owner’s proposed construction, neither the customized
information portion nor the data portion is changed as a result of the
removing step. Rather, after the removing step, according to Patent Owner,
the current installation package and the data portion are identical except for
the label applied. As we stated in the Decision on Institution, “in the context
of computer technology, once a subset of data is removed by setting it aside
from a larger set of data, it may involve little more than a labeling exercise
to deem the set-aside data no longer present in the original larger set of
data.” Dec. on Inst. 9. Referring to this statement from the Decision on
Institution, Patent Owner notes that “[w]hether this non-association is
accomplished by relabeling pointers to data or by an operation similar to a
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‘cut and paste’ is not detailed in the ’520 patent.” PO Sur-reply 12. That the
’520 patent does not detail how this is accomplished is not surprising. As
noted above in our claim construction discussion, the ’520 patent is not
concerned with what happens to the “current installation package” after
updating. Rather, the constituent parts of the current installation package—
the customized information portion and the data portion—are used to create
a new installation package, and, therefore, both of these portions continue to
exist after the removal step. Indeed, they must exist to complete the claimed
upgrading process. Patent Owner’s argument about “relabeling pointers to
data” (PO Sur-reply 12) highlights the fact that Patent Owner’s proposed
construction does not require any change to the data but, rather, is simply a
matter of labeling data. Patent Owner’s argument over the prior art,
therefore, rests entirely on an alleged distinction between AAPA’s
disclosure of a “data portion” having particular data and a differently labeled
data package (“current installation package” less “customized information
portion”) having the same data. We are persuaded that taking the
customized information portion from the installation package so that it is no
longer present in the installation package would have been obvious to a
person of ordinary skill in the art because it would have simply involved
considering the data portion to be the installation package without the
customized information portion.
Furthermore, AAPA establishes that the data portion is a separate
entity that is obtained so that operations can be performed on it independent
of the customized information portion. In particular, AAPA states the
following: “In the increment upgrade solution, an old installation package
and a new installation package are both binary file, differences between the
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old installation package and the new installation package are found out by
using a bsdiff tool, and a patch package is obtained.” Ex. 1001, 1:30–34.
AAPA further states that “[t]he bsdiff algorithm is performed only for the
data portion.” Ex. 1001, 1:44–47, cited in Pet. 38–39. Thus, AAPA
establishes that “obtaining a data portion of the current installation package”
was known in the prior art so that the bsdiff algorithm could be performed
on the data portion.
In addition, Patent Owner acknowledges that “Waldmann actually
teaches that ‘any old versions of the hearing-device fitting-software are
deleted.’” PO Resp. 41 (citing Ex. 1004, 20:27–21:3; Ex. 2015, 77:3–8). In
particular, Waldmann discloses the following: “In optional step S13, any
old versions of the hearing-device fitting-software package are deleted from
the storage medium of the computer system on which the new version of the
hearing-device fitting-software package shall be installed.” Ex. 1004,
20:27–21:2. Patent Owner, however, argues that deleting the whole
installation package does not teach removing a portion of that package. PO
Resp. 41. We disagree because deleting an entire file deletes all portions of
that file, and, according to Patent Owner, deletion is synonymous with
removal. See PO Resp. 16 (citing Ex. 2014) (“While the term ‘remove’ is
not defined in the Microsoft Computer Dictionary, its synonym is ‘delete.’”).
We further note that the AAPA contradicts Patent Owner’s assertion
that
[t]he need for the invention [of the ’520 patent] arose because
then-available incremental upgrade technologies only operated
on entire installation files—the bsdiff tool was used to take an
old installation package and a new installation package as
inputs and produce a patch package based on the binary level
difference between the two files.
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PO Resp. 3. As noted above, AAPA states that “[t]he bsdiff algorithm is
performed only for the data portion.” Ex. 1001, 1:44–47. Thus, it was
already known in the prior art, as evidenced by AAPA, that a bsdiff
algorithm is performed only for the data portion and not the entire
installation package to obtain a patch package for the installation package.
Based on the foregoing, we are persuaded by Petitioner’s arguments
and evidence, and we find that the combination of Waldmann, Schuelein,
and AAPA teaches “removing a customized information portion from the
current installation package and obtaining a data portion of the current
installation package.”
ii. Obtaining the new installation package by adding the
customized information portion to the data portion
Patent Owner also contends Schuelein does not teach “obtaining the
new installation package by adding the customized information portion to
the data portion of the new installation package.” Patent Owner argues that
Schuelein’s customer specific data
are not in the category of data included in a customized
information portion of an installation package which, as
explained by the claims of the ’520 patent “comprises at least
one of a release channel of the application, a network traffic tip,
an update mode or a link to the release channel.”
PO Resp. 35 (citing Ex. 1001, 4:10–12; Ex. 2019 ¶ 83). For the reasons
explained above in § II.B.1, we do not agree with Patent Owner that the
claimed “customized information portion” is limited to the four categories of
information identified by Patent Owner, and, for the reasons explained
above in § II.D.4.b.i, we are persuaded that both AAPA and Schuelein teach
the claimed “customized information portion.”
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Patent Owner also argues that in Schuelein, “the customer specific
data and customer protocols of Schuelein are added to an installation
package on a remote site.” PO Resp. 35. The challenged claims, however,
do not specify a location at which the customized information portion must
be added to the data portion. By contrast, independent claim 9, which is not
challenged, recites “a client terminal . . . obtains the new installation
package by adding the customized information portion to the data portion of
the new installation package.” Schuelein discloses that “a data processing
system located at the central location may automatically integrate the
customer specific data with the revised version of the software application.”
Ex. 1005 ¶ 52, quoted in Pet. 43. Thus, we are persuaded Schuelein teaches
adding the customized information portion to the data portion even though it
teaches doing this at a central location, rather than at a client.
iii. Rationale to combine
Patent Owner also argues that a person of ordinary skill in the art
would not have been motivated to combine Waldmann, Schuelein, and
AAPA. PO Resp. 40–43. Patent Owner argues that “[b]y its nature,
customer specific data, i.e., data specific to a customer,” as disclosed in
Schuelein, “would not be part of an installation patch meant to upgrade
software on a multitude of users’ computers.” PO Resp. 40 (citing Ex. 2019
¶¶ 69–70). The claims, however, do not require the “customized
information portion” to “be part of an installation patch meant to upgrade
software on a multitude of users’ computers,” as suggested by Patent
Owner’s argument. See PO Resp. 40. Rather, claim 1 recites “generating a
data portion of a new installation package according to the patch package
and the data portion of the current installation package” and then “obtaining
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the new installation package by adding the customized information portion
to the data portion of the new installation package.” Thus, the “customized
information portion” is not required to be part of the patch in claim 1 but,
rather, is added to the new data portion, which is generated according to the
patch. In the same way, Schuelein discloses “automatically integrat[ing] the
customer specific data with the revised version of the software application.”
Ex. 1005 ¶ 52, quoted in Pet. 43.
Patent Owner also argues Petitioner mischaracterizes Waldmann
because Waldmann actually teaches deleting old versions and a person of
ordinary skill in the art “would have understood that deleting an old version
of an installation package after installing a new installation package does not
remove and preserve metadata while patching the data portion of an
installation package, as is required by the claims of the [’]520 patent.” PO
Resp. 41 (citing Ex. 2001 ¶ 72). We do not agree with Patent Owner that
Petitioner mischaracterizes Waldmann. Waldmann discloses the following:
In optional step S13, any old versions of the hearing-
device fitting-software package are deleted from the storage
medium of the computer system on which the new version of
the hearing-device fitting-software package shall be installed.
This shall avoid problems during the installation depicted in
step S15. Alternatively, paths and directories belonging to the
old version of the hearing-device fitting-software package can
be renamed. A further alternative is to overwrite the old
version of the hearing-device fitting-software package by the
new version of the hearing-device fitting-software package.
This can allow to preserve data and preferences input by the
hearing device professional.
Ex. 1004, 20:27–21:10 (emphasis added). Thus, this passage of Waldmann
teaches that deleting old versions “avoid[s] problems during the installation”
of the updated software, and it also teaches that alternatives to deleting allow
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the preservation of certain data. Petitioner argues that these two goals—
avoiding problems during installation and preserving data—are achieved by
alternative procedures in Waldmann but can both be achieved by applying
Schuelein’s teachings of identifying, saving, and transferring customized
information for later reincorporation into the updated software. See Pet. 23
(citing Ex. 1003 ¶¶ 24–25).
Patent Owner also argues that “[g]enerating and applying the delta-
update of Waldmann would create a unique patch for every different set of
customer data that customized any new release of an installation package,”
which “would produce undesirable results” because there would be so many
different patches. PO Resp. 42–43 (citing Ex. 2019 ¶ 74). Petitioner,
however, argues that Waldmann’s delta-update package teaches the claimed
“patch package” and that “the delta-update package would only be applied to
the data portion—i.e. the portion of the old installation package that needs to
be upgraded.” Pet. 37–38, 42. In combination with Waldmann, Petitioner
relies on Schuelein’s teaching of reincorporating customized information
after the patch package (Waldmann’s delta-update package) has been
applied. Pet. 43–44. Thus, we do not agree with Patent Owner’s argument
that in Petitioner’s proposed combination there is a “problem of an
incalculable number of patches being required for the various possible
combinations of customized information portions of installation packages
with a common data portions of an installation package.” PO Resp. 43.
Having considered the full record developed during trial, we are
persuaded by Petitioner’s reasoning to combine Waldmann, Schuelein, and
AAPA. As discussed above, Waldmann discloses using a “delta-update
package” to update an old software package. Ex. 1004, code (57), 17:1–5.
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Waldmann also discloses ways “to preserve data and preferences input by
the hearing device professional.” Ex. 1004, 21:8–10. Similarly, Schuelein
discloses identifying and saving certain customer-specific data and then
“automatically integrat[ing] the customer specific data with the revised
version of the software application.” Ex. 1005 ¶¶ 32–33, 52. Thus, we
agree with Petitioner that “both Waldmann and Schuelein disclose that it is
desirable to preserve customized data during the upgrade process.” Pet. 26–
27 (citing Ex. 1003 ¶ 23). Furthermore, as discussed above, AAPA
discloses that an “installation package of the application includes a data
portion and a customized information portion” and that the bsdiff algorithm,
which is used to obtain the patch package, “is performed only for the data
portion.” Ex. 1001, 1:30–34, 1:42–47. In light of these teachings of the
prior art, Petitioner contends that a person of ordinary skill in the art would
have been motivated to combine AAPA with Waldmann and Schuelein
“because the known separation of installation packages into a data portion
and a customized information portion would have permitted the preservation
of customized information as taught by both Waldmann and Schuelein.”
Pet. 27 (citing Ex. 1003 ¶ 24). We agree because AAPA discloses what
would have been known to a person of ordinary skill in the art at the relevant
time, namely that to upgrade software a patch is applied to a data portion but
not to the customized information portion. See Koninklijke Philips N.V. v.
Google LLC, 948 F.3d 1330, 1337 (Fed. Cir. 2020) (“[T]he inquiry into
whether any ‘differences’ between the invention and the prior art would
have rendered the invention obvious to a skilled artisan necessarily depends
on such artisan’s knowledge.”). Waldmann and Schuelein both disclose a
desire to preserve customized information during upgrading, and Schuelein
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discloses integrating the customized information into the updated software in
a manner that furthers Waldmann’s goals of avoiding problems during
installation and preserving data. See Ex. 1004, 20:27–21:10; Ex. 1003
¶¶ 24–25. Thus, we find a person of ordinary skill in the art would have
been motivated to combine the teachings of Waldmann, Schuelein, and
AAPA to upgrade a software application and preserve customized data at the
same time.
c) Determination of unpatentability of claim 1
For the reasons discussed above, we determine that the combination
of Waldmann, Schuelein, and AAPA teaches or renders obvious all of the
limitations of claim 1 and that a person of ordinary skill in the art would
have had reason to, and would have been motivated to, combine the
teachings of these references in the manner asserted. Having considered the
full record developed during trial, we are persuaded by Petitioner’s
contentions and evidence, and we determine that Petitioner has proven by a
preponderance of the evidence that claim 1 of the ’520 patent is unpatentable
under 35 U.S.C. § 103 as obvious over the combined teachings of
Waldmann, Schuelein, and AAPA.
5. Independent Claims 10 and 18
Independent claim 10 is directed to “[a] non-transitory computer
readable medium storing instructions thereon for upgrading an application,
the instructions when executed by a processor cause the processor to”
perform operations that correspond to the steps recited in claim 1.
Independent claim 18 is directed to “[a] storage apparatus for storing an
installation package of an application, comprising: a processor for executing
modules stored in a non-transitory computer readable storage medium”
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where the modules are “a first storing module” and “a second storing
module.” Independent claim 18 recites operations similar to steps recited in
claim 1.
Petitioner contends claim 10 would have been obvious over the
combined teachings of Waldmann, Schuelein, and AAPA for the reasons
discussed for claim 1. See Pet. 22–29, 36–45 (arguing claims 1 and 10
together). Petitioner separately addresses claim 18, but its contentions are
similar to its contentions for claims 1 and 10 given the substantial similarity
of the claimed subject matter. See Pet. 50–61.
Patent Owner does not raise additional arguments concerning these
claims but, rather, argues that Petitioner’s contentions fail for the reasons
addressed above with respect to claim 1. See generally PO Resp. 25–44.
We have reviewed Petitioner’s contentions for claims 10 and 18, and
we are persuaded that Petitioner has shown that the combination of
Waldmann, Schuelein, and AAPA teaches the additional subject matter
recited in claims 10 and 18. See Pet. 22–29, 36–45, 50–61. For this reason
as well as the reasons given above in our analysis of claim 1 in § II.D.4, we
are persuaded by Petitioner’s contentions and evidence, and we determine
that Petitioner has proven by a preponderance of the evidence that claims 10
and 18 of the ’520 patent are unpatentable under 35 U.S.C. § 103 as obvious
over the combined teachings of Waldmann, Schuelein, and AAPA.
6. Dependent Claims 7, 8, 15, and 16
Dependent claim 7 recites the following:
The method according to claim 1, wherein generating a
data portion of a new installation package according to the
patch package and the data portion of the current installation
package comprises: reading all of the data portion of the current
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installation package into a memory, and reading all of the patch
into the memory; generating the data portion of the new
installation package in the memory.
Dependent claim 15 depends from claim 10 and recites similar subject
matter.
In its analysis of claims 7 and 15, Petitioner cites Waldmann’s
disclosures of receiving a delta-update package and using it to update
software and argues,
Because Waldmann discloses that a patch package can be
received in a single portion, stored in a storage medium, and the
old installation package may be read at least in part, it would
have been obvious to a person of ordinary skill to read all of the
patch and all of the data portion of the old installation package
disclosed by Waldmann into memory in a single operation
because this would have been the most resource-efficient way
to apply a patch received in a single portion.
Pet. 45–46 (citing Ex. 1004, 13:22–23, 19:12–15, 19:23–24, 19:28–20:1;
Ex. 1003 ¶ 39). Petitioner also argues AAPA’s disclosure of using a patch
package to generate a new installation package teaches this subject matter.
Pet. 46 (citing Ex. 1001, 1:34–38, 1:42–45).
Dependent claim 8 recites the following:
The method according to claim 1, wherein generating a
data portion of a new installation package according to the
patch and the data portion of the current installation package
comprises: reading a preset length of the data portion of the
current installation package into a memory and reading a preset
length of the patch into the memory, in each read operation;
generating a part of the data portion of the new installation
package according to data read in each read operation after the
read operation is performed; performing the reading operation
and generating operation repeatedly until all parts of the data
portion of the new installation package is generated; obtaining
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the data portion of the new installation package by combining
each part of the data portion of the new installation package.
Dependent claim 16 depends from claim 10 and recites similar subject
matter.
For claims 8 and 16, Petitioner cites Waldmann’s disclosure that
“[t]he delta-update package can be received in one or several portions”
(Ex. 1004, 19:12–13) and argues that “[i]f the delta-update package were
received in several portions, it would have been an obvious design choice to
a person of ordinary skill in the art to apply each portion of the update
package individually to each corresponding part of the data portion of the
current installation package.” Pet. 48–49 (citing Ex. 1004, 19:12–13; Ex.
1003 ¶ 40); see also Pet. 49–50 (citing Ex. 1004, 16:13–16, Fig. 2; Ex. 1003
¶ 41) (providing additional explanation as to obviousness of claimed subject
matter).
Patent Owner does not separately address the additional limitations
recited in claims 2–6. See generally PO Resp.
Having considered the full record developed during trial, we are
persuaded by Petitioner’s contentions and evidence, and we determine that
Petitioner has proven by a preponderance of the evidence that claims 7, 8,
15, and 16 of the ’520 patent are unpatentable under 35 U.S.C. § 103 as
obvious over the combined teachings of Waldmann, Schuelein, and AAPA.
E. Obviousness over the Combination of Waldmann,
Schuelein, AAPA, and ZIP Format
(Claims 6, 14, 19, 20)
Petitioner asserts claims 6, 14, 19, and 20 of the ’520 patent are
unpatentable under 35 U.S.C. § 103 as obvious over the combined teachings
of Waldmann, Schuelein, AAPA, and ZIP Format. Pet. 29–31, 61–63.
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1. ZIP Format
ZIP Format is a “specification [that] is intended to define a cross-
platform, interoperable file storage and transfer format.” Ex. 1006, 1. ZIP
Format explains that .ZIP files have several sections, including an “end of
central directory record” section, which includes a “.ZIP file comment” of
“variable size.” Ex. 1006, 2, 5.
2. Claims 6, 14, 19, and 20
Claim 6 recites:
The method according to claim 1, wherein when the current
installation package is a zip file, the customized information is
comprised in a comment field of the zip file; or when the current
installation package is an apk file, the customized information is
comprised in a comment field of the apk file.
Claim 14 depends from independent claim 10 and recites similar subject
matter. Claim 19 depends from independent claim 18 and recites the “zip
file” subject matter recited in claim 6, and claim 20 depends from claim 18
and recites the “apk file” subject matter recited in claim 6.
Petitioner argues that Waldmann teaches storing an installation
package using compressed files and that a person of ordinary skill would
have been motivated to use the ZIP Format because it “is a standard format
for providing compressed files that may later be extracted.” Pet. 29–30
(citing Ex. 1004, 15:24–27, 16:7–10; Ex. 1007, 1; Ex. 1003 ¶¶ 29–30).
Waldmann discloses “extracting compressed files” to obtain certain data.
Ex. 1004, 16:7–10. Petitioner further argues that “[i]t would have been
obvious to a person of ordinary skill in the art to store customized
information—indeed, any information at all—in the comment field of a .zip
file since the sole function of the comment field is to store information.”
Pet. 62 (citing Ex. 1003 ¶ 43).
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Patent Owner argues that, “[w]hile a [person of ordinary skill in the
art] at the time of the invention of the claims of the ’520 patent would have
knowledge of the ZIP format, nothing in the ZIP format would suggest
combination with Waldmann and Schuelein.” PO Resp. 47 (citing Ex. 2019
¶ 75). We disagree with Patent Owner’s argument. Waldmann itself
discloses “extracting compressed files” to obtain certain data. Ex. 1004,
16:7–10. The .zip file format disclosed in ZIP Format was used for data
compression. See Ex. 1003 ¶ 29 (“A person of ordinary skill in the art
would have been well aware of the .zip file structure and the ZIP Format
specification because of the widespread use of that compression format in a
large variety of software applications prior to April 2013.”); Ex. 2019 ¶¶ 42,
75 (“ZIP files, invented in 1989, were designed for archiving data efficiently
via lossless data compression.”). Thus, we are persuaded by Petitioner’s
contention that using the teachings of ZIP Format in combination with
Waldmann, Schuelein, and AAPA “would have simply constituted the use of
the known .zip file format for the exact purpose described by Waldmann,
and a person of ordinary skill in the art would have had a reasonable
expectation of success in doing so.” Pet. 30 (citing Ex. 1003 ¶ 30).
Patent Owner also disputes Petitioner’s contention that it would have
been obvious to store customized information in the comment field of a .zip
file, arguing that Petitioner’s contention is based on hindsight. PO
Resp. 44–49. Patent Owner argues that
[t]he mere existence of the zip comments field, a field at the end
of a zip file used by developers to store information describing
the zip file, does not make obvious to a [person of ordinary skill
in the art] to use the field for the purpose of storing a
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customized information portion of an installation package as is
required by the claims of the ’520 patent.
PO Resp. 46. We disagree with Patent Owner. As the Supreme Court has
stated, “The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416. As discussed above, Waldmann discloses the use of
compressed files, and the ZIP Format provided a well-known structure for
compressed files. Ex. 1004, 16:7–10; Ex. 1003 ¶ 29; Ex. 2019 ¶¶ 42, 75.
We are persuaded by Petitioner’s assertion that the purpose of the comment
field is to store data. Pet. 62 (citing Ex. 1003 ¶ 43); see Ex. 1006, 17 (“The
comment for this .ZIP file. ZIP file comment data is stored unsecured. No
encryption or data authentication is applied to this area at this time.
Confidential information should not be stored in this section.”). Storing
particular data—in this case, “customized information”—in the comment
field of a .zip file simply uses a storage location for its predictable and
known use of storing data. Thus, we are persuaded by Petitioner’s
contention that “[i]t would have been obvious to a person of ordinary skill in
the art to store customized information—indeed, any information at all—in
the comment field of a .zip file since the sole function of the comment field
is to store information.” See Pet. 62 (citing Ex. 1003 ¶ 43).
Moreover, if Patent Owner’s proposed construction for “comment
field of the zip file” were adopted, it would further support a conclusion of
obviousness. In particular, as discussed above in § II.B.4, Patent Owner
asserts that a person of ordinary skill in the art would have understood
“comment field of the zip file” to mean “a field at the end of a zip[] file used
by developers to store information describing the zip[] file.” PO Resp. 21–
22 (citing Ex. 2019 ¶ 57). If the comment field is where developers store
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data and if customized information is stored therein, as recited in the claims,
then it stands to reason that the customized information is developer data of
the type required in Patent Owner’s construction. Otherwise, Patent
Owner’s construction would exclude the subject matter recited in the claims.
See PO Sur-reply 14 (citation omitted) (“Petitioner ignores the way that the
comment field of the zip/apk file is used in the context of the ’520 patent—
where it is utilized to store a customized information portion of an
installation package distributed by developers to be installed on end-user
devices.”). Furthermore, customized information was known in the prior art,
as discussed above with respect to AAPA (Ex. 1001, 1:42–43), and, as
acknowledged by Patent Owner, “[t]he existence of ZIP files and comments
fields within them is not in dispute” (PO Sur-reply 22). Indeed, Patent
Owner and its declarant, Mr. Jonathan Hochman, rely on the asserted prior
art ZIP Format specification as support for Patent Owner’s proposed
construction. PO Resp. 22 (citing Ex. 1006, 2, 5, 17); Ex. 2019 ¶ 57 (citing
Ex. 1006, 2, 5, 17). Thus, storing customized information in the zip
comment field would have been using the comment field for its intended
purpose, as recognized by a person of ordinary skill in the art, namely for
“developers to store information describing the zip/apk file,” such
information including “customized information,” as recited in claims 6, 14,
19, and 20. See PO Resp. 21–22.
For the foregoing reasons, we are persuaded by Petitioner’s
contentions with respect to the “zip file” limitations of claims 6, 14, and 19.
As to the “apk file” limitations of claims 6, 14, and 20, Petitioner
argues that
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[a]n apk file is a type of archive file similar to the .zip format,
and a person of ordinary skill in the art would see no functional
difference between the two formats such that it would have
been just as obvious to place customized information in an apk
file comment field.
Pet. 63 (citing Ex. 1003 ¶ 43). Patent Owner does not separately dispute
Petitioner’s contentions as to the “apk limitations” of claims 6, 14, and 20.
Petitioner’s contentions for the “apk limitaitons” are supported by the
evidence of record, including the testimony of Dr. Clark. See Ex. 1003 ¶ 43
(“Although an apk file is a different format than a zip file, based on my
knowledge and experience in my opinion the two file formats are similar in
that they both have comment fields that do not participate in signature
verification. As such, in my opinion, a person of ordinary skill in the art
would have found it just as obvious to utilize the comment field in an apk
file for the same reasons described above with respect to a zip file.”).
Having considered the full record developed during trial, we are
persuaded by Petitioner’s contentions and evidence, and we determine that
Petitioner has proven by a preponderance of the evidence that claims 6, 14,
19, and 20 of the ’520 patent are unpatentable under 35 U.S.C. § 103 as
obvious over the combined teachings of Waldmann, Schuelein, AAPA, and
ZIP Format.
F. Obviousness over the Combination of Waldmann,
Schuelein, AAPA, and O’Neill
(Claims 2–5, 11–13)
Petitioner asserts claims 2–5 and 11–13 of the ’520 patent are
unpatentable under 35 U.S.C. § 103 as obvious over the combined teachings
of Waldmann, Schuelein, AAPA, and O’Neill. Pet. 31–32, 63–68.
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1. O’Neill
O’Neill discloses a procedure for updating software in which a client
device polls a server for a server manifest, which has information used to
determine the latest version of software to be updated. Ex. 1009, 13:1–24,
Fig. 2A. The client device uses the server manifest to determine if an update
should be downloaded, and if so, the client device requests, receives, and
installs the update. Ex. 1009, 13:25–60, Fig. 2A. O’Neill also discloses the
use of an md5 algorithm for validation of an update package. Ex. 1009,
38:38–64.
2. Claims 2 and 11
Claim 2 recites:
The method according to claim 1, wherein obtaining a patch
package corresponding to an old installation package of an
application comprises: sending a request to upgrade the
application; receiving a upgrading file; the upgrading file
indicating a relation between information of installation
packages and information of patches corresponding to the
installation packages; determining the patch package
corresponding to the current installation package; downloading
the patch package according to the information of the patch.
Claim 11 depends from independent claim 10 and recites similar subject
matter.
Petitioner argues O’Neill’s disclosures of requesting and receiving a
server manifest, using the server manifest to determine if an update package
should be downloaded, and downloading the update package teach the
additional subject matter recited in claims 2 and 11. Pet. 64–65 (citing
Ex. 1009, 13:1–3, 13:9–10, 13:15–17, 13:22–24, 13:27–33; Ex. 1003 ¶ 45).
Petitioner argues that Waldmann discloses providing several delta-update
packages but that Waldmann, Schuelein, and AAPA do not “explicitly
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disclose a means to identify which specific update package to download
when multiple versions of the update are available.” Pet. 31–32 (citing
Ex. 1004, 7:25–26, 21:15–21; Ex. 1003 ¶ 32). Petitioner argues that “[a]
person of ordinary skill in the art would . . . have been motivated to combine
the update query and retrieval process of O’Neill in order to provide a means
to determine which of Waldmann’s multiple update packages to download
on the client device.” Pet. 32 (citing Ex. 1003 ¶ 33).
Patent Owner argues that, “because the delta-update package of
Waldmann is generated based on the difference between an old installation
file and a desired installation file, the ‘server manifest’ of O’Neill is not
needed in order to determine the latest version to be used (i.e., the desired
installation file).” PO Resp. 53 (citing Ex. 2019 ¶ 76). According to Patent
Owner, therefore, “[c]ombining these references would be an undesirable
practice of adding redundant and unnecessary features together.” PO
Resp. 53. Patent Owner’s argument, however, does not address
Waldmann’s disclosure that “[a] manufacturer can provide for several
different delta-update packages when issuing one new version of
hearing-device fitting-software package.” Ex. 1004, 21:15–21. Petitioner
argues, and we are persuaded, that the existence of several update packages
would have motivated a person of ordinary skill in the art to use O’Neill’s
teachings to select from among those several packages. See Pet. 32.
Patent Owner also argues that a person of ordinary skill in the art
would not have been motivated to combine Schuelein and O’Neill because
“Schuelein sends information to a remote server so the remote server can
perform an upgrade, while O’Neill sends a manifest to a client machine so it
can determine the software version to which it needs to be updated.” PO
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Resp. 54 (citing Ex. 2019 ¶ 76). According to Patent Owner, “[t]ransferring
a manifest of available patches in O’Neill is not desirable or necessary in
light of Schuelein because Schuelein performs the upgrade remotely.” PO
Resp. 54. Patent Owner also argues that “[i]f a [person of ordinary skill in
the art] were to add O’Neill to the combination of Waldmann and Schuelein
described above, the resulting system would add a server manifest of the
extraneous update patches produced by this illogical combination of art.”
PO Resp. 54–55 (citing Ex. 2019 ¶ 76).
Patent Owner’s arguments rely on bodily incorporating particular
teachings from one reference into another; however, the Court of Appeals
for the Federal Circuit has
consistently held . . . that “[t]he test for obviousness is not
whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; nor is it
that the claimed invention must be expressly suggested in any
one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of
ordinary skill in the art.”
MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed.
Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Waldmann discloses that “[a] manufacturer can provide for several different
delta-update packages” (Ex. 1004, 21:15–21), and O’Neill discloses a
procedure to determine if a particular update package should be downloaded.
Ex. 1009, 13:1–60, Fig. 2A. Based on these disclosures, we are persuaded
by Petitioner’s contention that a person of ordinary skill in the art would
have been motivated to use O’Neill’s teachings “to provide a means to
determine which of Waldmann’s multiple update packages to download on
the client device.” See Pet. 32.
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We are persuaded by Petitioner’s contentions and evidence that a
person of ordinary skill in the art would have been motivated to combine the
teachings of Waldmann, Schuelein, AAPA, and O’Neill and that the asserted
combination teaches or renders obvious the subject matter of claims 2
and 11. See Pet. 31–32, 64–65. Having considered the full record
developed during trial, we determine that Petitioner has proven by a
preponderance of the evidence that claims 2 and 11 of the ’520 patent are
unpatentable under 35 U.S.C. § 103 as obvious over the combined teachings
of Waldmann, Schuelein, AAPA, and O’Neill.
3. Claims 3–5, 12, and 13
Claims 3–5, 12, and 13 recite the use of Message-Digest Algorithm 5
(md5) values to select a particular patch package. For example, claims 3
and 12 recite, inter alia, “determin[ing] the patch package corresponding to
the current installation package according to the relation when the md5 value
of the current installation package is identical with the md5 value of one of
the installation package in the relation.” Petitioner relies on O’Neill’s
disclosure of using update signatures to determine if an update package
should be downloaded and its disclosure of generating a signature using an
md5 algorithm. Pet. 66–67 (citing Ex. 1009, 13:15–17, 13:22–24, 13:27–33,
38:38–44, 38:56–60; Ex. 1003 ¶¶ 45–46). O’Neill discloses that “client
device 104 compares the update signature in the server manifest with that of
the existing operational software present on the client device 104” to
determine if the update package should be downloaded and installed.
Ex. 1009, 13:25–33. O’Neill discloses that “a signature or hash value may
be generated using a known MD5 algorithm” and also that “MD5
technology may be used to substantially guarantee that the downloaded
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update package is the correct, unaltered data file by comparing the
calculated MD5 signature or hash value with the MD5 signature contained in
the update package, to thereby verify the integrity of the data file.”
Ex. 1009, 38:38–40, 38:55–61.
Claim 4 depends from claim 3 and recites “wherein the md5 value of
the current installation package is obtained by performing the md5 for the
current installation.” Claim 5 depends from claim 3 and recites “wherein the
md5 value of the current installation package is obtained from the
customized information of the current installation package.” Claim 13
depends from claim 12 and recites the two wherein clauses of claims 4 and 5
as alternatives.
For the subject matter of claim 4, Petitioner relies on O’Neill’s
disclosure of generating a signature using an md5 algorithm. Pet. 67–68
(citing Ex. 1009, 13:27–33, 38:38–44, 38:56–60). For the subject matter of
claim 5, Petitioner argues “O’Neill discloses an ‘expected digital signature
previously stored in the electronic device.’” Pet. 68 (quoting Ex. 1009,
39:26–27). Petitioner argues the following:
It would have been obvious to obtain the md5 value from the
customized information portion of the current installation
package since the md5 value itself is not part of the data for the
underlying application, and because it is not application data it
would have been obvious to a person of ordinary skill to obtain
it from the other portion—the customized information
portion—of the installation package as taught by APA.
Pet. 68 (citing Ex. 1003 ¶ 45; Ex. 1001, 1:42–44).
Patent Owner contends O’Neill does not teach “the md5 value of the
current installation package is obtained from the customized information of
the current installation package,” as recited in claims 5 and 13. PO
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Resp. 51–53. Patent Owner argues that “Petitioner conflates the MD5 hash
with the ‘digital signature’ of O’Neill which is defined as ‘a manufacturer
designated information string that is used to authenticate the source of the
update package.’” PO Resp. 52 (quoting Ex. 1009, 38:35–38) (citing
Ex. 2019 ¶ 93). Although O’Neill states that a signature may be designated
by a manufacturer, it also discloses a signature generated using an md5
algorithm, as is clear from the following passage: “In one embodiment the
digital signature comprises a manufacturer designated information string that
is used to authenticate the source of the update package 110. Additionally,
as shown in state 1408, a signature or hash value may be generated using a
known MD5 algorithm.” Ex. 1009, 38:35–40. Petitioner relies on O’Neill’s
disclosure of a signature generated using an md5 algorithm. See Pet. 67–68.
Thus, we disagree with Patent Owner’s argument that Petitioner conflates
the md5 hash with the digital signature.
Patent Owner also argues that, “[b]ecause the MD5 hash produces a
fingerprint of a portion of data, an MD5 of a not-yet-generated update
package would not exist on a client machine.” PO Resp. 51–52 (citing
Ex. 2019 ¶ 93). Claims 5 and 13, however, recite the “md5 value of the
current installation package,” not the “new installation package,” which is
generated in claims 1 and 10. Thus, claims 5 and 13 are not directed to “an
MD5 of a not-yet-generated update package,” as suggested by Patent
Owner’s argument. See PO Resp. 51–52.
We are persuaded by Petitioner’s contention that “[i]t would have
been obvious to obtain the md5 value from the customized information
portion.” See Pet. 68. In particular, O’Neill discloses a “digital signature
previously stored in the electronic device” and also discloses that “a
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signature . . . may be generated using a known MD5 algorithm.” Ex. 1009,
38:38–40, 39:26–28. Furthermore, AAPA discloses that an “installation
package of the application includes a data portion and a customized
information portion.” Ex. 1001, 1:42–43. Dr. Clark testifies that
[a]n md5 hash value is not application data, i.e. it is not used by
the underlying application, and thus it is not part of the data
portion, so it would therefore be obvious to a person of ordinary
skill to obtain it from the non-data portion, i.e. the customized
information portion, of the installation package.
Ex. 1003 ¶ 45. In view of this evidence, Petitioner’s contention that it would
have been obvious to store the md5 value, which is not part of the data
portion, in the other portion, i.e., the customized information portion, is
rationally underpinned. See Pet. 68. Patent Owner does not dispute that the
md5 hash value is not application data; rather, Patent Owner argues about
encryption and comment fields for zip files. PO Sur-reply 23 (“The
comment field of the zip file is where customized information portion of the
installation file is stored.”), 23–24 (“[T]he MD5 digital signature of O’Neill
cannot be stored in the unencrypted customized information portion as is
required by the ’520 patent.”). The ’520 patent does not use the term
“encrypt” or any derivative of the term, and O’Neill is not relied on for
claims reciting zip files. Thus, we do not see the relevance of these
arguments by Patent Owner.
We are persuaded by Petitioner’s contentions and evidence that a
person of ordinary skill in the art would have been motivated to combine the
teachings of Waldmann, Schuelein, AAPA, and O’Neill and that the asserted
combination teaches or renders obvious the subject matter of claims 3–5, 12,
and 13. See Pet. 31–32, 65–68. Having considered the full record
developed during trial, we determine that Petitioner has proven by a
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preponderance of the evidence that claims 3–5, 12, and 13 of the ’520 patent
are unpatentable under 35 U.S.C. § 103 as obvious over the combined
teachings of Waldmann, Schuelein, AAPA, and O’Neill.

III. CONTINGENT MOTION TO AMEND
Having determined that claims 1–8, 10–16, and 18–20 of the ’520
patent are unpatentable, we address Patent Owner’s contingent Motion to
Amend.
A. Legal Standard
In an inter partes review, amended claims are not added to a patent as
of right; rather, they must be proposed as a part of a motion to amend.
35 U.S.C. § 316(d). The Board must assess the patentability of proposed
substitute claims “without placing the burden of persuasion on the patent
owner.” Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1328 (Fed. Cir. 2017)
(en banc); see Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15
at 3‒4 (PTAB Feb. 25, 2019) (precedential). Subsequent to the issuance of
Aqua Products, the Federal Circuit issued a decision in Bosch Automotive
Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017), as well as
a follow-up order amending that decision on rehearing. See Bosch Auto.
Serv. Sols., LLC v. Iancu, No. 2015-1928 (Fed. Cir. Mar. 15, 2018) (Order
on Petition for Panel Rehearing).
In accordance with Aqua Products, Bosch, and Lectrosonics, the
patent owner does not bear the burden of persuasion to demonstrate the
patentability of the substitute claims presented in the motion to amend.
Rather, ordinarily, “the petitioner bears the burden of proving that the
proposed amended claims are unpatentable by a preponderance of the
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evidence.” Bosch, 878 F.3d at 1040 (as amended on rehearing); see
Lectrosonics, Paper 15 at 3–4. In determining whether a petitioner has
proven unpatentability of the substitute claims, the Board focuses on
“arguments and theories raised by the petitioner in its petition or opposition
to the motion to amend.” Nike, Inc. v. Adidas AG, 955 F.3d 45, 51 (Fed. Cir.
2020). The Board itself also may justify any finding of unpatentability by
reference to evidence of record in the proceeding. Lectrosonics, Paper 15 at
4 (citing Aqua Products, 872 F.3d at 1311 (O’Malley, J.)). Thus, the Board
determines whether substitute claims are unpatentable by a preponderance of
the evidence based on the entirety of the record, including any opposition
made by the petitioner.
Notwithstanding the foregoing, the patent owner’s proposed substitute
claims must meet the statutory requirements of 35 U.S.C. § 316(d) and the
procedural requirements of 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4–
8. Accordingly, the patent owner must demonstrate: (1) the amendment
proposes a reasonable number of substitute claims; (2) the proposed claims
are supported in the original disclosure (and any earlier filed disclosure for
which the benefit of filing date is sought); (3) the amendment responds to a
ground of unpatentability involved in the trial; and (4) the amendment does
not seek to enlarge the scope of the claims of the patent or introduce new
subject matter. See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121.
B. Proposed Substitute Claims
Patent Owner proposes contingently substituting claims 21–40 for
claims 1–20. Motion to Amend 1. As an initial matter, a motion to amend
may “[c]ancel any challenged patent claim” or “[f]or each challenged claim,
propose a reasonable number of substitute claims.” 35 U.S.C. § 316(d)(1).
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Claims 9 and 17 are not challenged in this inter partes review, and,
therefore, Patent Owner may not propose substitute claims for claims 9
and 17. Thus, we dismiss Patent Owner’s Motion to Amend as to proposed
substitute claims 29 and 37, which Patent Owner proposes to substitute for
original claims 9 and 17.
Petitioner does not dispute that Patent Owner has satisfied the four
threshold requirements for a motion to amend identified above. See
generally Opp. Amend. As to proposed substitute claims 21–28, 30–36, and
38–40, we are persuaded that Patent Owner proposes a reasonable number of
substitute claims, namely one per challenged claim. We also are persuaded
that Patent Owner’s proposed amendments respond to a ground of
unpatentability involved in the trial. See Motion to Amend 11–12.
Regarding support for the substitute claims and whether they enlarge the
scope of the current patent claims, as mentioned, Petitioner has not
challenged Patent Owner’s amendments on that basis, and in light of our
findings below, we do not need to independently analyze those issues.
Below, we address the patentability of the proposed substitute claims
over the cited prior art. In particular, our analysis focuses on the parties’
dispute regarding whether the proposed substitute claims are unpatentable
based on the same grounds as their respective challenged claims, specifically
whether proposed substitute claims 21, 27, 28, 30, 35, 36, and 38 (which
correspond, respectively, to claims 1, 7, 8, 10, 15, 16, and 18) would have
been obvious over Waldmann, Schuelein, and AAPA; whether proposed
substitute claims 26, 34, 39, and 40 (which correspond, respectively, to
claims 6, 14, 19, and 20), would have been obvious over Waldmann,
Schuelein, AAPA, and ZIP Format; and whether proposed substitute
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claims 22–25 and 31–33 (which correspond, respectively, to claims 2–5
and 11–13) would have been obvious over Waldmann, Schuelein, AAPA,
and O’Neill. See, e.g., Motion to Amend 11–23; Opp. Amend 1–23.
Proposed substitute claim 21 is illustrative of the proposed substitute
independent claims, and is reproduced below, with underlining to indicate
language added to original claim 1 and double brackets or strikethrough to
indicate language removed from original claim 1.
21. A method for upgrading an application, comprising:
obtaining a patch package corresponding to a current
installation package of an application, the current installation
package comprising a customized information portion and a data
portion;
removing [[a]] the customized information portion from
the current installation package to obtain the and obtaining a data
portion of the current installation package, the current
installation package no longer containing the customized
information portion after the removing;
generating a data portion of a new installation package
according to the patch package and the data portion of the current
installation package;
obtaining the new installation package by adding the
customized information portion to the data portion of the new
installation package; and
installing the new installation package.

Motion to Amend 26. Proposed substitute claims 30 and 38, corresponding
respectively to independent claims 10 and 18, recite similar additional
limitations.
As can be seen from the edits to the claim language, Patent Owner
proposes three changes to claim 1, and as explained below, none of these
changes patentably distinguishes the claim over the prior art of record. The
first change is that proposed substitute claim 21 recites “the current
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installation package comprising a customized information portion and a data
portion.” This is disclosed by AAPA, which, as discussed above in
§ II.D.4.b.i, states that “[c]urrently, the installation package of the
application includes a data portion and a customized information portion.”
Ex. 1001, 1:42–43.
The second and third changes are reflected in the “removing” step,
which recites “removing the customized information portion from the
current installation package to obtain the data portion of the current
installation package, the current installation package no longer containing
the customized information portion after the removing.” Thus, in proposed
substitute claim 21, the removing is performed to obtain the data portion,
whereas claim 1 recites “removing a customized information portion . . . and
obtaining a data portion.” Furthermore, Patent Owner’s proposed substitute
claim 21 expressly states that after the removing the current installation
package no longer contains the customized information portion. This is
similar to Patent Owner’s proposed construction for “removing” “to mean
that the customized information portion in question is taken from the
installation package so that it is no longer present in the installation
package.” PO Resp. 15; see Sur-reply Amend 5 (“‘No longer present’ is the
same as ‘no longer containing.’”). Patent Owner’s arguments in support of
the Motion to Amend are the same in substance as its arguments in the
Response based on its proposed claim construction for “removing.” See
Motion to Amend 9–17. As discussed above in § II.D.4.b.i, we determine
that the subject matter of claim 1 would have been obvious under Patent
Owner’s proposed construction for “removing.” For the same reasons,
Patent Owner’s amendments do not patentably distinguish over the prior art.
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As discussed above in § II.D.4.b.i, AAPA establishes that an
installation package has two parts: a data portion and a customized
information portion. Ex. 1001, 1:42–43 (“Currently, the installation package
of the application includes a data portion and a customized information
portion.”). AAPA establishes that the data portion is a separate entity that is
obtained so that operations can be performed on it independent of the
customized information portion. In particular, AAPA states the following:
“In the increment upgrade solution, an old installation package and a new
installation package are both binary file, differences between the old
installation package and the new installation package are found out by using
a bsdiff tool, and a patch package is obtained.” Ex. 1001, 1:30–34. AAPA
further states that “[t]he bsdiff algorithm is performed only for the data
portion.” Ex. 1001, 1:44–47. Thus, Patent Owner’s proposed amendment to
recite removing the customized information portion “to obtain the data
portion” does not distinguish over AAPA, which already discloses obtaining
the data portion so that the bsdiff algorithm can be performed.
Furthermore, as discussed above in § II.D.4.b.i, AAPA confirms that
the data portion is simply the installation package without the customized
information portion. Therefore, as discussed above, removing the
customized information portion from the installation package so that “the
current installation package no longer contain[s] the customized information
portion after the removing” would have been obvious to a person of ordinary
skill in the art because it would have simply involved considering the data
portion to be the installation package without the customized information
portion. Stated differently, a customized information portion and a data
portion together make up an installation package. Ex. 1001, 1:42–43
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(“Currently, the installation package of the application includes a data
portion and a customized information portion.”). The data portion by
definition, therefore, is the installation package without the customized
information portion.
Patent Owner argues that “the explicit language of the proposed
substitute claims requires that the subset (customized information portion) is
no longer stored with the full set that makes up the installation package file.”
Sur-reply Amend 5. In the context of computer storage, it is not entirely
clear what it means that certain information is not “stored with” other
information. As noted above in § II.D.4.b.i, in response to our statement in
the Institution Decision that, “in the context of computer technology, once a
subset of data is removed by setting it aside from a larger set of data, it may
involve little more than a labeling exercise to deem the set-aside data no
longer present in the original larger set of data” (Dec. on Inst. 9), Patent
Owner argues that “[w]hether this non-association is accomplished by
relabeling pointers to data or by an operation similar to a ‘cut and paste’ is
not detailed in the ’520 patent” (PO Sur-reply 12). Thus, Patent Owner
acknowledges that the ’520 patent does not explain how removal occurs or
what must happen to data to deem that the data are removed, but Patent
Owner also acknowledges that “relabeling pointers to data” would suffice to
remove data. Based on the plain language of the proposed substitute claims,
the constituent parts of the current installation package—the customized
information portion and the data portion—are used to create a new
installation package, and, therefore, both of these portions continue to exist
after the removal step. Indeed, they must exist to complete the upgrading
process. Patent Owner’s proposed amendment, therefore, rests entirely on a
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label for data. Prior to removal, the current installation package has two
portions. After removal, the current installation package is simply one of the
portions. As discussed above in § II.D.4.b.i, the removal does not change
the content of either the customized information portion or the data portion.
We conclude that this relabeling of data would have been obvious to a
person of ordinary skill in the art.
In response to Patent Owner’s Motion to Amend, Petitioner argues the
following:
To the extent the limitation “installation package no longer
containing the customized information portion” is construed to
mean the customized information portion is deleted, this
limitation is rendered obvious by the combination of
Waldmann’s disclosure of deleting old versions (which would
include any customized information along with the data portion,
as taught by APA) and Schuelein’s identifying, saving, and
transferring customized information.
Opp. Amend 11 (citing Ex. 1003 ¶ 25). Patent Owner argues that
“Waldmann merely deletes or overwrites a complete old installation on a
client machine entirely before a new installation package is installed” but
“describes no selective removal of a customized information portion of an
installation file from the larger set of data that makes up the installation
file.” Reply Amend 8. We find that deleting an entire file teaches deleting a
portion of that file and, therefore, that deleting the current installation file
teaches deleting the customized information portion such that the “current
installation package no longer contain[s] the customized information
portion.” Thus, we are persuaded by Petitioner’s argument that the subject
matter recited in the proposed substitute claims would have been obvious to
a person of ordinary skill in the art even if it requires deleting the
customized information portion. See Opp. Amend 11 (citing Ex. 1003 ¶ 25).
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Furthermore, Patent Owner’s proposed amendment does not limit the
claims to requiring removing only the customized data portion, as suggested
by Patent Owner’s “selective removal” argument. See Reply Amend 8.
Even if we were to interpret Patent Owner’s proposed substitute claims to be
so limited, the record evidence demonstrates that such a requirement would
not render the proposed subject matter patentable. Specifically, we disagree
with Patent Owner’s assertion that Waldmann does not describe such
“selective removal.” Reply Amend 8. For example, Waldmann discloses
creating an updated installation-software package from an old
installation-software package “by deleting portions of said old installation-
software package and/or replacing portions of said old installation-software
package.” Ex. 1004, 10:24–11:1, quoted in Pet. 42, cited in, inter alia,
Pet. 38. Although Waldmann does not discuss specifically removing a
“customized information portion” from a file, Waldmann’s disclosure
demonstrates that selective removal of a portion of a file was well within the
knowledge and skill of a person of ordinary skill in the art, regardless of the
content of the data in that portion. See Philips, 948 F.3d at 1337.
For the foregoing reasons and for the reasons discussed in our
unpatentability analysis of claim 1, we conclude that the subject matter of
proposed substitute claim 21 would have been obvious based on the
combined teachings of Waldmann, Schuelein, and AAPA. Proposed
substitute independent claims 30 and 38 recite similar additional subject
matter, and we conclude that the subject matter of these proposed substitute
claims also would have been obvious based on the combined teachings of
Waldmann, Schuelein, and AAPA.
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The proposed substitute dependent claims recite the same subject
matter as the original dependent claims but are amended to change their
dependency to reflect the proposed substitute independent claims.
Therefore, the proposed substitute dependent claims are unpatentable for
reasons discussed above with respect to the proposed substitute independent
claims and the original dependent claims. More particularly, proposed
substitute dependent claims 27, 28, 35, and 36, which correspond,
respectively, to claims 7, 8, 15, and 16, are unpatentable as obvious over
Waldmann, Schuelein, and AAPA; proposed substitute dependent claims 26,
34, 39, and 40, which correspond, respectively, to claims 6, 14, 19, and 20,
are unpatentable as obvious over Waldmann, Schuelein, AAPA, and ZIP
Format; and proposed substitute dependent claims 22–25 and 31–33, which
correspond, respectively, to claims 2–5 and 11–13, are unpatentable as
obvious over Waldmann, Schuelein, AAPA, and O’Neill.
Having considered the full record developed during trial, we deny
Patent Owner’s Motion to Amend as to proposed substitute claims 21–28,
30–36, and 38–40 because they are unpatentable under 35 U.S.C. § 103.

IV. WEIGHT OF TESTIMONY
Patent Owner argues that “Petitioner’s expert’s testimony should be
afforded little weight in view of certain omissions and misstatements in Dr.
Clark’s curriculum vitae (‘CV’).” PO Resp. 56. In particular, Patent Owner
argues that Dr. Clark’s CV “appears to be missing his current employer, to
have misstated his adjunct faculty position as current, and omitted several
legal cases for which he was been retained.” PO Resp. 58. The only
misstatement Patent Owner identifies in Dr. Clark’s CV is the statement that
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he “serves” (present tense) as an adjunct professor despite his testimony at
deposition that he is not currently an adjunct professor. PO Resp. 56 (citing
Ex. 1004, 40 (third page of CV); Ex. 2016, 23:7–17). Dr. Clark’s CV
elsewhere states that he “has served . . . as an adjunct professor.” Ex. 1003,
38 (first page of CV). Thus, we see the use of the present tense later in the
CV to be akin to a typo.
Patent Owner also notes that Dr. Clark omitted certain things from his
CV, such as his current job as CEO of Clear Guide Medical and additional
legal cases for which he had been retained. PO Resp. 57 (citing Ex. 2016,
4:20–6:23, 7:18–8:9, 22:15–24:7). We do not see how these omissions
should impact his credibility under the circumstances of this case. His CV
lists “LEGAL CASES,” but it does not represent that this list includes every
legal case for which he has been retained, and we are aware of no
requirement to list all such engagements. As for his current employment,
Patent Owner does not assert that the employment listing misstates anything
but only that it omits a position he currently holds. Most importantly, Patent
Owner, through its counsel, had the opportunity to depose Dr. Clark, and, at
the beginning of the deposition, Dr. Clark volunteered that he works for
Clear Guide Medical in response to the question “Where do you work?” Ex.
2016, 4:20–22. This was the third question after “Where do you live?” and
“What’s your home address?” Ex. 2016, 4:7–18. Thus, we perceive no
attempt by Dr. Clark to deceive Patent Owner or the Board as to his current
employment.
Patent Owner also argues that Dr. Clark, throughout his declaration
and testimony, “asserts that the knowledge of one of ordinary skill in the art
will suffice where the prior art fails to disclose the claim limitations” and,
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therefore, applies the wrong standard to his obviousness analysis. PO
Resp. 24–25. Furthermore, Patent Owner argues that, “because an inter
partes review may only be requested ‘on the basis of prior art consisting of
patents or printed publications,’ 35 U.S.C. § 311(b), expert testimony cannot
take the place of disclosure from patents or printed publications.” PO
Resp. 24–25. In so arguing, however, Patent Owner, does not direct us to
declaration testimony in which Dr. Clark supplies allegedly missing
limitations without evidence from the prior art. See PO Resp. 23–25. In any
event, as evident from our analysis of the claimed and proposed subject
matter, we do not rely on Dr. Clark’s testimony alone to supply missing
limitations.

V. PATENT OWNER’S MOTION TO EXCLUDE
Patent Owner moves to exclude Exhibit 1013, which is U.S. Patent
No. 9,069,885 B1, and certain portions of Exhibit 1014, which is the
transcript of the deposition of Patent Owner’s declarant, Mr. Jonathan
Hochman. Paper 37.11 Because we do not rely on Exhibit 1013 or any of

11 Before the oral argument, Patent Owner objected to two of Petitioner’s
demonstrative slides as allegedly “[c]ontain[ing] new evidence – testimony
previously not developed, discussed, or explained in any paper before the
Board.” Paper 40. The two slides contain passages from Exhibit 1014 that
are the subject of the motion to exclude. During oral argument, we stated
that “we will not foreclose the presentation of those slides” and that “[w]e
will rule on the motion to exclude in due course.” Tr. 4:14–16. We also
reminded the parties that “demonstratives are not evidence.” Tr. 4:16–18;
see also Paper 35 (“The parties are reminded that the demonstrative exhibits
presented in this case are not evidence and are intended only to assist the
parties in presenting their oral argument to the panel.”).
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the portions of Exhibit 101412 that Patent Owner seeks to exclude, we
dismiss Patent Owner’s motion as moot.

12 After oral argument, we allowed the parties to file a paper identifying in
the oral hearing transcript where any new alleged evidence was cited during
the oral hearing. Paper 42. Patent Owner cited a passage from the
deposition of its declarant Mr. Hochman (Exhibit 1014, 80:2–16) that Patent
Owner contends was not cited in any substantive paper. Paper 44. We do
not rely on this portion of Exhibit 1014 in any manner in this Decision.
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VI. CONCLUSION13
For the reasons discussed above, we determine Petitioner has proven,
by a preponderance of the evidence, that the challenged claims are
unpatentable, as summarized in the following table:

13 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims 35 U.S.C. § References/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 7, 8,
10, 15,
16, 18
103 Waldmann,
Schuelein, AAPA
1, 7, 8, 10, 15,
16, 18

6, 14, 19,
20
103 Waldmann,
Schuelein,
AAPA, ZIP
Format
6, 14, 19, 20
2–5, 11–
13
103 Waldmann,
Schuelein,
AAPA, O’Neill
2–5, 11–13
Overall
Outcome
1–8, 10–16,
18–20

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We also determine that proposed substitute claims 21–28, 30–36, and
38–40 are unpatentable and deny the motion to amend as to these claims, as
summarized in the following table:

VII. ORDER
Accordingly, it is:
ORDERED that claims 1–8, 10–16, and 18–20 of the ’520 patent have
been shown to be unpatentable;
FURTHERED ORDERED that Patent Owner’s Contingent Motion to
Amend is dismissed as to proposed substitute claims 29 and 37 and denied as
to proposed substitute claims 21–28, 30–36, and 38–40;
FURTHERED ORDERED that Patent Owner’s Motion to Exclude is
dismissed; and
FURTHERED 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.

Motion to Amend Outcome Claims
Original Claims Cancelled by Amendment
Substitute Claims Proposed in the Amendment 21–40
Substitute Claims: Motion to Amend Granted
Substitute Claims: Motion to Amend Denied 21–28, 30–36,
38–40
Substitute Claims: Not Reached 29, 37
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PETITIONER:
John Alemanni
Andrew Rinehart
Scott Kolassa
jalemanni@kilpatricktownsend.com
arinehart@kilpatricktownsend.com
skolassa@kilpatricktownsend.com

PATENT OWNER:
Jennifer Bush
jbush-ptab@fenwick.com