Twitter, Inc.v.Evolutionary Intelligence LLC

Patent Trial and Appeal Board

Jun 9, 2015

09284113 (P.T.A.B. Jun. 9, 2015)

Trials@uspto.gov Paper 42
571-272-7822 Entered: April 16, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC., TWITTER, INC., AND YELP INC.,
Petitioner,

v.

EVOLUTIONARY INTELLIGENCE, LLC,
Patent Owner.
____________

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____________

Before KALYAN K. DESHPANDE, BRIAN J. McNAMARA, and
GREGG I. ANDERSON, Administrative Patent Judges.

ANDERSON, Administrative Patent Judge.

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

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INTRODUCTION
On October 22, 2013, Apple, Inc. (“Petitioner”)1 filed a Petition
requesting inter partes review of claims 2–14 and 16 of U.S. Patent No.
7,010,536 (Ex. 1001, “the ’536 patent”). Paper 1 (“Pet.”). On April 25,
2014, we granted the Petition and instituted trial for claims 2–12, 14, and 16
of the ’536 patent on all of the grounds of unpatentability alleged in the
Petition. Paper 8 (“Decision on Institution” or “Dec. Inst.”).
After institution of inter partes review, Twitter, Inc. (“Twitter”) and
Yelp Inc. (“Yelp”) filed a corrected Petition and Motion to Join the inter
partes review. IPR2014-00812, Papers 4, 8. We granted the motion and
joined Apple, Twitter, and Yelp (collectively, “Petitioner”) in the inter
partes review. Paper 16. Evolutionary Intelligence, LLC (“Patent Owner”)
filed a Patent Owner Response. Paper 20 (“PO Resp.”). Petitioner filed a
Reply. Paper 28 (“Pet. Reply”). Patent Owner filed a Motion to Exclude.
Paper 34 (“PO Mot. Exclude”)
An oral hearing was held on January 6, 2015. The transcript of the
consolidated hearing has been entered into the record. Paper 41 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons discussed
below, we determine that Petitioner has not shown by a preponderance of the
evidence that claims 2–12, 14, and 16 of the ʼ536 patent are unpatentable.
Patent Owner’s Motion to Exclude is denied.

1 Twitter, Inc. and Yelp Inc. filed a Petition in case IPR2014-00812 against
the same patent, which case was joined with this case. Decision Granting
Motion for Joinder (Paper 16). Twitter, Inc. and Yelp Inc. are also
collectively referred to as “Petitioner” in this case.

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A. Related Proceedings
Petitioner states that on October 23, 2012 it was served with a
complaint alleging infringement of the ’536 patent in Civil Action No. 6:12-
cv-00783-LED in the District of Eastern District of Texas (Ex. 1007), which
was transferred to the Northern District of California as Civil Action No.
3:13-cv-4201-WHA. The ’536 patent is also the subject of several other
lawsuits against third parties. Pet. 2.2
B. The ’536 Patent
The ’536 patent is directed to developing intelligence in a computer or
digital network by creating and manipulating information containers with
dynamic interactive registers in a computer network. Ex. 1001, 1:11–20;
3:1–5. The system includes an input device, an output device, a processor, a
memory unit, a data storage device, and a means of communicating with
other computers. Id. at 3:6–11. The memory unit includes an information
container made interactive with, among other elements, dynamic registers, a
search engine, gateways, a data collection and reporting means, an analysis
engine, and an executing engine. Id. at 3:15–23.
The ’536 patent describes a container as an interactive nestable logical
domain, including dynamic interactive evolving registers, which maintain a
unique network-wide lifelong identity. Id. at 3:29–35. A container, at

2 The Petition does not include page numbers. We have assigned page
numbers beginning with page 1 at heading I.A. and concluding with page 31
at heading V. This convention corresponds to the assigned page numbers in
the Table of Contents. As Patent Owner did in Patent Owner’s Response
(PO Resp. 1), all citations to the “Petition” are to the Petition filed by Apple
in IPR 2014-00086. The Petition filed by Twitter and Yelp is a virtual copy.
but the page numbers differ and we will not add those additional citations.
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minimum, includes a logically encapsulated portion of cyberspace, a
register, and a gateway. Id. at 9:2–4. Registers determine the interaction of
that container with other containers, system components, system gateways,
events, and processes on the computer network. Id. at 3:43–46. Container
registers may be values alone or contain code to establish certain parameters
in interaction with other containers or gateways. Id. at 9:19–22. Gateways
are integrated structurally into each container or strategically placed at
container transit points. Id. at 4:54–57. Gateways govern the interaction of
containers encapsulated within their domain by reading and storing register
information of containers entering and exiting that container. Id. at 4:58–66;
15:46–49.
The system for creating and manipulating information containers is
set forth in Figure 2B as follows:

Figure 2B illustrates a computer network showing nested containers,
computer servers, and gateways at Site 1 through Site 7. Id. at 10:59–62.
Any of Sites 1 through 7 may interact dynamically within the system; for
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example, Site 1 shows a single workstation with a container and gateway
connected to an Intranet. Id. at 10:64–67. Site 2 shows a server with a
gateway in relationship to various containers. Id. at 11:2–3. Site 3 shows an
Internet web page with a container residing on it. Id. at 11:3–4. Site 4
shows a personal computer with containers and a gateway connected to the
Internet. Id. at 11:4–6. Site 5 shows a configuration of multiple servers and
containers on a Wide Area Network. Id. at 11:6–7. Site 6 shows a work
station with a gateway and containers within a container connected to a
Wide Area Network. Id. at 11:7–9. Site 7 shows an independent gateway,
capable of acting as a data collection and data reporting site as it gathers data
from the registers of transiting containers and as an agent of the execution
engine as it alters the registers of transient containers. Id. at 11:8–13.
An example of the configuration the containers may have is provided
in Figure 4 as follows:

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Figure 4 shows an example of container 100 that includes
containerized elements 01, registers 120, and gateway 200. Id. at 12:65–67.
Registers 120 included in container 100 include, inter alia, active time
register 102000, passive time register 103000, neutral time register 104000,
active space register 111000, passive space register 112000, neutral space
register 113000, and acquire register 123000. Id. at 14:31–39.
C. Illustrative Claim
Claims 2 and 16 are the two independent claims challenged. Claim 2
is reproduced below:
2. An apparatus for transmitting, receiving and
manipulating information on a computer system, the apparatus
including a plurality of containers, each container being a
logically defined data enclosure and comprising:
an information element having information;
a plurality of registers, the plurality of registers forming
part of the container and including
a first register for storing a unique container
identification value,
a second register having a representation
designating space and governing interactions of the container
with other containers, systems or processes according to utility
of information in the information element relative to an
external-to-the-apparatus three-dimensional space,
an active space register for identifying space in
which the container will act upon other containers, processes,
systems or gateways,
a passive resister for identifying space in which the
container can be acted upon by other containers, processes,
systems or gateways,
a neutral space register for identifying space in
which the container may interact with other containers,
processes, systems, or gateways; and
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a gateway attached to and forming part of the container,
the gateway controlling the interaction of the container with
other containers, systems or processes.
D. Ground Upon Which Trial Was Instituted
Trial was instituted on the ground that claims 2–12, 14, and 16 of the
’536 patent were anticipated under 35 U.S.C. § 102(e)3 by Gibbs.4 Dec. Inst.
27. Patent Owner does not contend that Gibbs is not prior art.
ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In
re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1279–83 (Fed. Cir. 2015). . If
an inventor acts as his or her own lexicographer, the definition must be set
forth in the specification with reasonable clarity, deliberateness, and
precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
1249 (Fed. Cir. 1998). The terms also are given their ordinary and
customary meaning as would be understood by one of ordinary skill in the
art in the context of the disclosure. In re Translogic Tech., Inc., 504 F.3d
1249, 1257 (Fed. Cir. 2007).
Neither Petitioner nor Patent Owner disputes our constructions in the
Decision on Institution. PO Resp. 15, n. 3. Our prior constructions,
including the rationale for them, are repeated below.

3 The ’536 patent was filed prior to the effective date of § 102, as amended
by the America Invents Act (“AIA”)—March 16, 2013— and is governed by
the pre-AIA version of § 102(e). See AIA § 3(n)(1).
4 U.S. Patent No. 5,836,529, filed Oct. 31, 1995 (“Gibbs,” Ex. 1006).
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1. “container”
Independent claims 2 and 16 recite the term “container,” as do several
of the dependent claims, e.g., claims 5 and 7. The Specification describes a
“container” as “a logically defined data enclosure which encapsulates any
element or digital segment (text, graphic, photograph, audio, video, or
other), or set of digital segments, or referring now to FIG. 3C, any system
component or process, or other containers or sets of containers.” Ex. 1001,
8:64–9:2.
Thus, we construe “container” to mean “a logically defined data
enclosure which encapsulates any element or digital segment (text, graphic,
photograph, audio, video, or other), or set of digital elements.”
2. “register”
Independent claims 2 and 16 recite “a plurality of registers, the
plurality of registers forming part of the container.” The Specification of the
’536 patent broadly describes “container registers” as follows:
Container registers 120 are interactive dynamic values
appended to the logical enclosure of an information container
100, and serve to govern the interaction of that container 100
with other containers 100, container gateways 200 and the
system 10, and to record the historical interaction of that
container 100 on the system 10. Container registers 120 may
be values alone or contain code to establish certain parameters
in interaction with other containers 100 or gateways 200.

Ex. 1001, 9:14–23.
Thus, we determine “register” means a “value or code associated with
a container.”
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3. “active space register”/“passive space register”/”neutral space
register”

The terms “active space register,” “passive space register,” and
“neutral space register” appear in independent claim 2.
The Specification of the ’536 patent states, at several locations, that
registers are “dynamic” and “interactive.” See Ex. 1001, 7:25–30. As
discussed above, registers are user-created and attach to a unique container.
Id. at 14:23–26. Registers may be of different types, including pre-defined
registers. Id. at 14:1–3. Pre-defined registers are available immediately for
selection by the user, within a given container. Id. at 14:3–6. Pre-defined
registers may be active, passive, or interactive and may evolve with system
use. Id. at 14:29–30. In the context of predefined registers, “active space,”
“passive space,” and “neutral space” are part of the system history. Id. at
14:30–42, Fig. 4. The Specification does not describe further any of the
terms.
The claim 2 elements, “active space register,” “passive space
register,” and “neutral space register” each expressly defines the function of
the element in claim 2.
The “active space register” is:
“for identifying space in which the container will act upon other
containers, processes, systems or gateways . . .” (emphasis added).

The “passive space register” is:

“for identifying space in which the container can be acted upon by
other containers, processes, systems or gateways . . .” (emphasis
added).

The “neutral space register” is:
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“for identifying space in which the container may interact with other
containers, processes, systems, or gateways . . .” (emphasis added).

Patent Owner lists “neutral space register” as a term for further
construction. PO Resp. 19–22. Patent Owner’s argument is directed toward
whether “neutral space register” is a limitation shown in Gibbs and will be
addressed in our anticipation analysis section below.
As discussed above, we have construed the term “register” to mean
“value or code associated with a container.” The modifiers “active,”
“passive,” and “neutral” serve to distinguish the claimed registers that are
defined functionally in claim 2. No further construction is required.
4. “acquire register”
The term “acquire register” appears in claims 8, which depends from
claim 2, and independent claim 16. The Specification describes the acquire
register as “enabling the user to search and utilize other registers residing on
the network.” Ex. 1001, 15:27–29. This is consistent with the claim
language itself. Dec. Inst. 13. No further construction is required.
5. “gateway”
Independent claims 2 and 16 recite “a gateway attached to and
forming part of the container, the gateway controlling the interaction of the
container with other containers, systems or processes.”
The ’536 patent describes that:
[g]ateways gather and store container register information according
to system-defined, system-generated, or user determined rules as
containers exit and enter one another, governing how containers
system processes or system components interact within the domain of
that container, or after exiting and entering that container, and
governing how containers, system components and system processes
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interact with that unique gateway, including how data collection and
reporting is managed at that gateway.

Ex. 1001, 4:58–66.
Neither party raises any issue with our preliminary construction (Dec.
Inst. 13–14) and thus, based on the Specification, our final construction of
“gateway” is “hardware or software that facilitates the transfer of
information between containers, systems, and/or processes.”
6. means elements
Claims 9–12 each contain means plus function elements. Petitioner
contends that there is a lack of structure for certain means plus function
elements. We do not reach this issue because, for reasons discussed below,
Petitioner has not put forth a sufficient case of unpatentability as to the
independent claim from which claims 9–12 depend.

7. “first register having a unique container identification value”
Unlike all the previous terms, “first register having a unique container
identification value” was not construed in the Decision on Institution. Patent
Owner contends the term requires construction in light of contentions made
by Petitioner’s expert, Dr. Henry Houh, in his deposition testimony. PO
Resp. 16–19 (citing “Houh Deposition,” Ex. 1008). The term appears in
claims 2 and 16. Specifically, Patent Owner contends the Houh Deposition
asserts that the term “unique container identification value” is for “any
container.” PO Resp. 16 (citing Ex. 1008, 106:21–109:8) (emphasis
omitted). Patent Owner contends this testimony is contrary to the
Declaration of Dr. Houh (“Houh Declaration,” Ex. 1003, ¶¶ 110–111). Id.
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Patent Owner cites the language of the claim itself to assert “first
register having a unique container identification value” is directed to the
container of which the term is an element and not “any” container.” PO
Resp. 16. Patent Owner argues use of the article “a” is dictated because it is
the first reference to the term, which has no antecedent basis. Id.
Patent Owner cites to the Specification as describing “a register with a
‘unique network-wide lifelong identity’ for the given container.” PO Resp.
16–17 (citing Ex. 1001 at 3:29–39) (emphasis omitted). Patent Owner
argues the system-defined registers may include “an identity register
maintaining a unique network wide identification and access location for a
given container.” Id. at 17 (citing Ex. 1001, 3:57–64) (emphasis omitted).
Patent Owner also references the prosecution of the ’536 patent, in
which claim 29 recites interacting between first and second information
containers, and claim 30, which depends from claim 29, recites “wherein the
steps of determining identification information are performed by reading
respective identification registers of the first and second containers.” See id.
at 17 (citing Ex. 1002, 50–51). Patent Owner argues this claim language
“make no sense if the ‘unique identification value’ is construed as
identifying containers other than those interacting, because the entire point
of the exchange was to compare unique identifiers to see if interaction
between the two containers would be allowed.” Id. Patent Owner thus
proposes the term “first register having a unique container identification
value” means “a first register having a value that uniquely identifies the
given container.” Id. at 19.
Petitioner argues that absent “reference to any particular container”
the term applies to “any” container. Pet. Reply 9. In further support of its
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position, Petitioner argues the use of the article “a,” as opposed to “the,”
precludes the claim language from being limited to the “the container that
includes the register.” Id. Petitioner notes all the other registers recited
reference “the” container, so “a” must mean any. Id. Petitioner contends the
“identity register” disclosure is not dispositive and is just “one example” of
the first register. Id. 9–10 (citing Deposition of Mathew Daniel Green,
Ph.D. (“Green Deposition,” Ex. 2009, 113:1–22, 107:2–110:22; see id. at
66:11–22). The Petitioner alleges the original claims from the prosecution
are irrelevant. Id. at 10.
In construing claims we consider the broadest reasonable
interpretation consistent with the Specification. In re Cuozzo, 778 F.3d at
1278–1282. We start with the claim language. Claim 2 recites “[a]n
apparatus . . . including a plurality of containers, each container being a
logically defined data enclosure and comprising.” Ex. 1001, 30, 31–34
(emphasis added). The claim proceeds to recite “a first register for storing a
unique container identification value.” From this language, we conclude
that the “first register” is a part of “each container.” The “first register”
claim limitation further includes “a unique container identification value.”
In the context of this claim, we are not persuaded by Petitioner’s argument
that the use of “a” before the disputed term broadens the disputed term to
“any” container. Pet. Reply 9. .
The Specification describes a “container” in some detail, a description
which we noted above in construing “container.” See Ex. 1001, 3:29–35.
The Specification describes “container” as follows:
A container is an interactive nestable logical domain
configurable as both subset and superset, including a minimum
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set of attributes coded into dynamic interactive evolving
registers, containing any information component, digital code,
file, search string, set, database, network, event or process, and
maintaining a unique network-wide lifelong identity.

Id. (emphasis added). Among other things, the container “maintain[s] a
unique network-wide lifelong identity.” Id. at 3:34–35. While “first
register” appears only in the Abstract and the claims, registers are described
and include “an identity register maintaining a unique network wide
identification and access location for a given container.” PO Resp. 17
(citing Ex. 1001, 3:57–64) (emphasis omitted). The claims do not include an
“identity register,” but do include the “first register,” and the term under
consideration, “a unique container identification value.” While Petitioner
correctly notes that the Green Deposition states the “identity register” is an
“example,” Dr. Green goes on to testify “[h]owever, I think that from the
context of the specification, my interpretation is that those descriptions refer
to the first register for storing a unique container identification value.” Ex.
2009, 113:11–15. Based on the Specification, we conclude the description
of “identity register” in the Specification describes the “unique container
identification value” of the “first register.” There is no other reasonable
explanation associating the functionality of the “identity register” with the
claimed invention. Petitioner’s argument that the “identity register” is an
“example” does not persuade us otherwise. Pet. Reply 9. An “example”
does not preclude the “first register” claimed from being described as the
“identity register,” particularly given that “first register” is not otherwise
described in the Specification and “identity register” is not part of any claim.
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We disagree with Petitioner’s argument that claims asserted in the
prosecution history are irrelevant to claim construction. Pet. Reply 10. We
note that originally filed claim 30 recites, in pertinent part: “steps of
determining identification information are performed by reading respective
identification registers of the first and second containers.” We read this
language to support Patent Owner’s contention that each container has an
“identification register” to determine whether interaction between containers
is allowed. Originally filed claim 30 recites in part “reading respective
identification registers.” Claim 30’s language corresponds to the
Specification’s description of the “identity register” and the claimed “first
register for storing a unique container identification value.”
Neither party has specifically relied on any extrinsic evidence and our
construction is based primarily on intrinsic evidence. To the extent the
Houh and Green Depositions may be considered extrinsic evidence; we have
considered the party’s citations to them, noting them above.
Thus, we adopt Patent Owner’s proposed construction and construe
“first register having a unique container identification value” to mean “a first
register having a value that uniquely identifies the given container.”
B. Anticipation of Claims 2–12, 14 and 16 by Gibbs
Petitioner contends that claims 2–14 and 16 of the ʼ536 patent are
anticipated under 35 U.S.C. § 102(e) by Gibbs. Pet. 12–31. To support this
position, Petitioner cites the testimony of Henry Houh. The only ground of
unpatentability presented is anticipation.5

5 Patent Owner “reasserts” its objection to the Petition as improperly
incorporating by reference the Houh Declaration. PO Resp. 22, n.5 (citing
37 C.F.R. § 42.6 (a)(3)).
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“[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the claim, it
cannot be said to prove prior invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102.” Net MoneyIn, Inc. v. VeriSign, Inc., 545
F.3d 1359, 1371 (Fed. Cir. 2008). Notwithstanding the preceding, we must
analyze prior art references as a skilled artisan would, but this is “not,
however, a substitute for determination of patentability in terms of § 103.”
Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268–69 (Fed. Cir.
1991).
For reasons discussed below, Petitioner has not established by a
preponderance of the evidence that claims 2–12, 14, and 16 are unpatentable
as anticipated by Gibbs.
1. Gibbs Overview
Gibbs describes a system and process for monitoring and managing
the operation of a railroad system. Ex. 1006, 3:65–4:10. The railroad
management system operates on a computer system and its components are
connected via a network. Id. at 5:12–14.
Figure 1 is reproduced below.

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Figure 1 is an object based railroad transportation network management
system. As shown in Figure 1, central computer 26 organizes and stores this
railroad system information so that it can later retransmit the information in
response to a request from any node 24, 28, 29, 30, 32, or 34. Ex. 1001,
5:28–31.
The system is object oriented and uses objects to represent important
aspects of the railroad system such as train object 72, locomotive object 74,
crew object 78, car object 80, end-of-train object 82, and computerized train
control object 89. Id. at 7:5–8. A map object library contains map objects to
generate a transportation network map object and to display and transmit
information in response to a user request. Id. at 8:53–63. A control
management object allows the user to activate any object within the map
object library. Id. at 8:20–31.
Each object in the railroad management system has at least four
distinct types of data: locational attributes, labeling attributes, consist
attributes, and timing attributes. Id. at 9:28–10:4, Fig. 7. These attributes
can include information such as a unique ID, the physical location of the
object, and object specific data. Id. at 10:46–51. Each object contains
references to its associated data structure, i.e., the four data types described
above, and program instructions. Id. at 7:21–27.
2. Whether Gibbs discloses the claimed “container”6
In the Petition, Petitioner argued the objects used by Gibbs’s railroad
management system are examples of logically defined data enclosures. Pet.
13. The objects are, therefore, the “containers” specified in the preamble of

6 Both independent claims 2 and 16 include the limitation in question.
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claim 27 of the ’536 patent. Id. (citing Ex. 1003 ¶¶ 107–111). In its Reply,
Petitioner contends Gibbs “shows the claimed ‘container’ via its description
of a collection of transport, map, and report objects that are instantiated and
used to display maps and reports to users.” Pet. Reply 1, 3 (citing Pet. at 15,
18–19, 23; Ex. 1003 ¶¶ 89–90, 94, 96–97; “Houh Supplemental
Declaration,” Ex. 1009 ¶¶ 5–16). Dr. Houh uses the term “TMR
subsystem,” i.e., “transport object/map object/report object,” as “shorthand
for the architecture and objects” described in Gibbs’s collection of objects.
Pet. Reply 2. “TMR subsystem” is not a term used in Gibbs.
a. Denial of Petition based on change of theory
Patent Owner argues that Petitioner changed its position from citing
Gibbs’s objects as meeting the container limitation to now contending the
TMR subsystem is the “container.” PO Resp. 24 (citing Ex. 1008, 102:19–
104:13). Patent Owner characterizes the change as a switch from express
anticipation to an inherency argument. Id. at 37. Patent Owner contends we
should deny the Petitioner because of the change of position. Id. at 38.
The Petition asserted that the objects of Gibbs meet the container
limitation. Pet. 13 (citing Ex. 1003 ¶¶ 107–111). In particular, on behalf of
Petitioner, Dr. Houh asserted that “[T]he objects used by the Gibbs railroad
management system are examples of logically defined data enclosures, and
exemplify the ‘containers’ claimed in claim 2 of the ’536 patent.” Ex. 1003
¶ 110. Patent Owner notes that Dr. Houh subsequently stated in his
deposition that the TMR subsystem “must be” present in Gibbs. PO Resp. 3.

7 The preamble forms an antecedent basis for “containers” as used in the
claims and will be given weight. See, Eaton Corp. v. Rockwell Int’l Corp.,
323 F.3d 1332, 1339 (Fed. Cir. 2003).
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Patent Owner argues that this testimony represents an impermissible change
in Petitioner’s position from express anticipation to inherent anticipation. PO
Resp. 3, 24, 37–38. Petitioner denies it is now proceeding on an inherency
theory, arguing that Dr. Houh’s use of the label “TMR subsystem” during
his deposition is a shorthand for the architecture and objects in Gibbs that
anticipate the claims, rather than new evidence. Pet. Reply 3. Dr. Houh
contends that his position is not new. Ex. 1009 ¶38. Nevertheless,
Petitioner argues that anticipation exists when a claimed limitation is
implicit in the relevant reference. Id. at 5.
Anticipation by Gibbs remains the sole challenge asserted by
Petitioner. Even if Petitioner has altered some of its positions concerning its
challenge, in this case we do not find cause to dismiss the Petition on that
basis. In view of Petitioner’s argument that it has not changed its position,
we proceed on the basis that Dr. Houh stands by his testimony that “[T]he
objects used by the Gibbs railroad management system are examples of
logically defined data enclosures, and exemplify the ‘containers’ claimed in
claim 2 of the ’536 patent.” Ex. 1003 ¶ 110.
b. Whether the “collection of transport, map and report objects” of
Gibbs discloses “a plurality of containers” comprising all the
registers of the claims
The objects of Gibbs fall within our construction of “container” as
meaning “a logically defined data enclosure which encapsulates any element
or digital segment (text, graphic, photograph, audio, video, or other), or set
of digital elements.” We, however, determine that Gibbs does not disclose a
“container” as claimed. Claims 2 and 16 recite “each container being a
logically defined data enclosure and comprising,” among other things, the
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specified registers. As discussed above, each of the active, passive, and
neutral registers of claim 2 “identif[y] space” in which the claimed container
“will act,” “can be acted upon,” and “may interact with other containers,
processes, systems, or gateways.” Claim 16 recites a second register that
“govern[s] interactions of the container with other containers, systems or
processes.” 8 Claim 16 also recites an “acquire register” that controls
“whether the container adds a register from other containers or adds a
container from other containers when interacting with them.”
In order to show that the various objects of Gibbs are the necessary
registers of the claimed “container,” Petitioner argues that the “discrete”
entities of Gibbs are within an “object-oriented programming structure” as is
conventionally known. Pet. Reply 4 (citing Ex. 1003 ¶¶ 78, 89; Ex. 1006,
7:24–27) (emphasis omitted). Thus, according to Petitioner, Gibbs’s system
combines the transport, map, and report objects so a user can access data
about the train system. Id. at 4–5. Petitioner contends this “[c]ompound
‘object’ created by combining the transport, map, and report objects in
varying manners to give users access to real-time data about the train system
is plainly a ‘container.’” Id. (citing Ex. 1009 ¶¶ 33–37, 42–48; see Ex. 1001,
3:28–34). Thus, Petitioner contends the “discrete” objects of Gibbs may be
combined to disclose the registers of the claimed “container.” See Pet. 13–
18.

8 Furthermore, each claimed container of claims 2 and 16 has a gateway
attached to it. (Ex. 1001, 30:55–57; 32:43–45). Similar to the registers, the
gateway “control[s] the interaction of the container with other containers,
systems or processes.”
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Patent Owner disputes Petitioner’s contention that Gibbs shows a
collection of objects that disclose the claimed “container.” PO Resp. 25.
Patent Owner argues Gibbs discloses “22 distinct objects” which are “treated
by the processing unit 48 as discrete entities.” Id. (citing Ex. 1006, 7:24–27;
8:20–23; 8:48–52; 9:27–31). In addition, Patent Owner argues that Gibbs
differentiates between two “genuses of objects,” i.e., transport objects and
service objects, which do not overlap. Id. More specifically, the transport
objects are detailed in a transport object library as shown in Figure 5 of
Gibbs. Id. Details of service objects are shown in Figures 6a, 6b, and 6c.
Id. at 26.
Because the objects are discrete, Patent Owner argues Gibbs’s
attributes and other data items belong with a specific object and not every
object. PO Resp. 26. In support of its argument, Patent Owner points to the
attributes of the transport object data structure, e.g., locational attributes,
labelling attributes, consist attributes, and timing attributes, are retrieved to
effect maps in the map object library. Id. (citing Ex. 1006, Fig. 7, 9:58–67).
The attributes described in Gibbs’s transport object are not, according to
Patent Owner, attributes of any other object. Id.
Petitioner further argues what an anticipatory reference teaches must
be viewed from the perspective of the person of ordinary skill and what is
implicit in the reference. Pet. Reply 5. Thus, Petitioner relies on various
disclosures from Gibbs to support its contention that the collection of objects
having different functions and attributes, e.g., transport, map, and report
objects, would be considered a container to a person of ordinary skill. Id. at
5–6.
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As discussed above, the Houh Declaration submitted with the Petition
contends that the objects of Gibbs “exemplify the ‘containers’ claimed in
claim 2 of the ’536 patent.” Ex. 1003 ¶ 110. However, the Houh Deposition
states that the container is “the thing that comprises the transport object
library objects, the map object library objects, report object library objects
that are instantiated and running in the system.” Ex. 1008, 73:17–24. The
Houh Supplemental Declaration alleges the deposition testimony is
consistent with the Houh Declaration. Ex. 1009 ¶ 38. We have reviewed
the paragraphs of the Houh Declaration submitted with the Petition (Ex.
1003 ¶¶ 90, 92, 94, 96–97, 104) cited in the Houh Supplemental Declaration
at paragraph 38. Other than ¶ 110 of the Houh Declaration, the Houh
Supplemental Declaration does not identify any specific object or collection
of objects as constituting the “container.”
Petitioner also argues that its position in the Petitioner Reply on what
constitutes a “container” is supported by the original Houh Declaration. Pet.
Reply 3 (citing Ex. 1003 ¶¶ 89–90, 94, 96–97). As discussed above,
however, the original Houh Declaration described the various objects of
Gibbs in some detail but, other than paragraph 110, did not specify what
particular object or group of objects constitutes a “container.”
Petitioner argues that what an anticipatory reference teaches must be
analyzed from the perspective of one of ordinary skill and that is it proper to
take into account not only specific teachings of the references, but also what
inferences one of ordinary skill in the art reasonably would be expected to
draw. Pet. Reply. 5 (citations omitted). In view of the apparently
inconsistent testimony of Dr. Houh, we are not persuaded that the inferences
a person of ordinary skill reasonably would be expected to draw from Gibbs
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would anticipate the claimed “container.” The Houh Declaration is not
consistent in identifying where the “container” element is found in Gibbs.
The Houh Declaration differs from the Houh Deposition and Houh
Supplemental Declaration. We relied on the Houh Declaration in instituting
inter partes review. Dec. Inst. 17–18. Petitioner now relies on the Houh
Deposition testimony and Houh Supplemental Declaration. See, e.g., Pet.
Reply 3 (heading A.), 4. As such, Petitioner’s evidence is inconsistent and
does not specify where the container element is found in Gibbs.
Instead, we credit the testimony of Patent Owner’s expert, Dr. Green,
who testifies that the transport object library of Gibbs is distinct from the
service object library. Ex. 2006 ¶¶ 86–94; see Ex. 1006, Fig. 4. Dr. Green
concludes:
Gibbs thus discloses the objects in Figure 4 as falling into two
genuses: transport objects and service objects. Gibbs discloses
each of these genuses as a library (i.e., “transport object library
64” and service object library 66”) that consists of specific
types of objects.

Ex. 2006 ¶ 88. This testimony distinguishes the claimed container from the
two separate collections of objects, transport and service, in Gibbs. Neither
are we persuaded by the extensive description in the Houh Declaration of the
various objects of Gibbs. Pet. Reply 3 (citing Ex. 1003 ¶¶ 89–100, 108–
109). We agree with Patent Owner that “Gibbs does not disclose any
single,” logically defined container that “comprises the instantiation of the
transport, map, and object libraries.” PO Resp. 39.
Thus, while Gibbs may disclose some objects that function like the
claimed registers, Gibbs does not disclose the claimed container. Rather, the
“attributes or data items disclosed by Gibbs are each described as belonging
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to particular objects, not as generically belonging to every object in
Gibbs’[s] system.” PO Resp. 26.
c. Nesting of containers-inherency
Petitioner states it is not proceeding on principles of inherency,
arguing the disclosure is explicit. Pet. Reply 3. Patent Owner noted that,
while it is “unclear,” Dr. Houh apparently argued the disclosure of Gibbs
inherently disclosed the claimed container. PO Resp. 38–40 (citing Ex.
1008, 76:23–78:10, 75:16–76:16).
The argument Patent Owner understood as one of inherency was
based on the TMR subsystem “nesting,” which also is described in the ’536
patent. Id. at 39. Patent Owner contends nesting is present only when a
container includes “the logical description of another container.” Id. (citing
Ex. 1001 at 9:4–9; 4:46–53). Patent Owner argues Gibbs does not disclose
any nestable containers each including the logical description of another
container. Id. Petitioner responds that nothing in the claim language limits
encapsulation of other containers to those including a logical description of
another container. Pet. Reply 6–7.
Patent Owner raises nesting only in the context of a perceived
inherency argument by Petitioner. PO Resp. 39. Petitioner is not alleging
inherency. Pet. Reply 3. Thus, inherency is not before us.
To the extent Petitioner perceives nesting as supporting its argument
that Gibbs discloses the claimed container, it is not persuasive. Petitioner
argues that Gibbs discloses a unique ID for the transport object within the
boundaries of the map. Id. at 7. That one object of Gibbs has a unique ID
allowing it to interact with another object is insufficient. The ’536 discloses
that every container includes a logical description of “all containers defined
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and to be defined in cyberspace.” Ex. 1001, 9:8–9. As discussed above, this
feature is claimed, for example,9 in the neutral register of claim 2 which
recites that “each container” of the apparatus claimed has a neutral register
that “may interact” with other containers. That one transport object of Gibbs
has an ID that allows it to be available to one other object does not disclose
what is claimed. See PO Resp. 28 (arguing transport objects have unique
IDs but service objects do not).
d. Conclusion
For the reasons discussed above, we determine Petitioner has not
shown by a preponderance of the evidence that Gibbs discloses the claimed
container.
3. Whether Gibbs Discloses “first register having a unique container
identification value”
Petitioner also contends the railroad management system of Gibbs
also discloses the claimed “plurality of registers” because it includes a
number of libraries. Pet. 18 (citing Ex. 1003 ¶¶ 77, 82–85, 87, 115–117).
Petitioner argues the “first register” of claim 1 is disclosed in Gibbs because
objects in the train management system of Gibbs have unique IDs which
correspond to the object. Id. (citing Ex. 1003, ¶¶ 82, 118-119).
Specifically, Petitioner relies on the transport object, which is
uniquely identified. Pet. Reply 10. Petitioner’s position is based on its
proposed construction of “a unique container identification value,” that
“any” one object or container with a unique ID meets the limitation. We
construed the term above and found that the term relates to a value that
“uniquely identifies the given container.” Thus, each container claimed

9 Claim 2 includes four other registers.
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must include the first register having a unique identifier. Gibbs is presented
by Petitioner as showing only the transport object, i.e., container, with a
unique identifier.
For the reasons discussed above, we determine Petitioner has not
shown by a preponderance of the evidence that Gibbs discloses “a first
register having a unique container identification value.”
4. Whether Gibbs Discloses “a neutral space register”
Claim 2 recites a “neutral space register for identifying space in which
the container may interact with other containers, processes, systems, or
gateways.” (Emphasis added). Gibbs discloses a train consist report. Ex.
1006, 16:53–17:4. To generate a train consist report a particular train is
selected. Id. A train report object retrieves data from the train object and
car object of the selected train. Id. The train report object allows the user to
see graphically the positioning of the cars in the selected train. Id.
Petitioner alleges the train object and car object therefore intersect, i.e.,
interact, in the report object to meet the neutral register limitation. Pet. 18
(citing Ex. 1003 ¶ 98).10
Patent Owner argues the fact that the train consist report lists the train
object and associated car objects does not show the required interaction with
other objects, i.e., containers. PO Resp. 50–51. Patent Owner contends the

10 In its Response at page 20, Patent Owner objects to the Decision on
Institution stating: “In addition, Petitioner cites the disclosures related to the
active and passive space registers, as meeting the neutral space register
limitation.” Dec. Inst. 20 (citing Pet. 18 (citing Ex. 1003 ¶¶ 138–140)). The
Decision on Institution found support for a “neutral space register” based on
the map report object generated from the train and car objects. Id. The
quote above was a restatement of Petitioner’s argument, prefaced by “[i]n
addition.”
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mere retrieval of data and reporting the data graphically is not the required
interaction because each of the train and car objects separately returns the
data. Id. at 51.
Patent Owner further argues Gibbs does not “identify space” where
interaction may occur. PO Resp. 52. Instead, a user of the train
management system of Gibbs selects a train. Id. Only after the train is
selected is locational information in the form of latitude and longitude
generated for the selected train. Id. Patent Owner contends that the train
consist report described in Gibbs is based on train selection, “not the
locations of the train and cars.” Id. (citing Ex. 1006, 16:53–54 (“To generate
a train consist report, the train report object 414 prompts the user to select a
particular train.”)). To the extent train location is identified by latitude and
longitude, Patent Owner argues they are “mere data; they do not identify the
space in which the ‘interaction’ may occur.” Id. We find both of Patent
Owner’s substantive arguments relating to Gibbs’s train report persuasive.
First, the claim limitation requires “interaction” and the mere collection of
separate data does not disclose any interaction. Second, merely because
spatial information is generated after another event, i.e., selection of a train
object is not “identifying space,” it is, at best, identifying space based on
another action. The claim language supports both of our conclusions.
Petitioner’s Reply fails to address the arguments made by Patent
Owner, restating what is shown in Gibbs, and concluding the train reports
shows interaction. Pet. Reply 14–15. Similarly, Petitioner conclusorily
argues “the location of the transport object” meets the “identifying space”
limitation. Id. at 15. These arguments are not persuasive because they fail
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to set forth a factual basis and persuasive rationale for reaching the
conclusion.
Thus, we determine Petitioner has not shown by a preponderance of
the evidence that Gibbs discloses “neutral space register” as claimed.
5. Whether Gibbs discloses an “active space register,” “passive
space register,” and “acquire register”
Claim 16 is not unpatentable as anticipated by Gibbs because Gibbs
does not disclose either the claimed container or the first register. Claim 2 is
not anticipated for the additional reason that the neutral register is not
disclosed by Gibbs. Given our conclusions above, we need not address
Patent Owner’s additional arguments regarding the other claimed registers of
claims 2 and 16.
6. Conclusion
Petitioner has not shown by a preponderance of the evidence that
independent claims 2 and 16 are anticipated under § 102(e) by Gibbs.
Claims 3–12, and 14 are multiply dependent on claims 1 or 2. By reason of
their dependency on claim 2, Petitioner has not shown by a preponderance of
the evidence that claims 3–12, and 14 are anticipated under § 102(e) by
Gibbs.
C. Patent Owner’s Motion to Exclude
Patent Owner filed a Motion to Exclude (“Mot. Exclude,” Paper 34)
the Houh Supplemental Declaration. The Houh Supplemental Declaration
was filed with Petitioner’s Reply Brief. Mot. Exclude 2. Petitioner filed an
Opposition to Patent Owner’s Motion to Exclude. (“Opp. Mot. Exclude,”
Paper 36). Petitioner alleges principally that the Houh Supplemental
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Declaration was not objected to prior to filing the Motion to Exclude. Opp.
Mot. Exclude 1. Patent Owner did not file a Reply.
Patent Owner must object to the evidence it seeks to exclude.
37 C.F.R. § 42.64(a). Once an objection is filed, a motion to exclude “must
be filed to preserve any objection.” 37 C.F.R. § 42.64(c). The motion to
exclude must identify the objection. Id.
There is no record that Patent Owner objected. The Motion to
Exclude does not identify any objection, as is required. Accordingly, the
Motion to Exclude is denied.
ORDER
ORDERED,
For the reasons given, it is
ORDERED that claims 2–12, 14, and 16 of U.S. Patent No. 7,010,536
have not been shown by a preponderance of the evidence to be unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:
Jeffrey Kushan
jkushan@sidley.com
Vaibhav P. Kadaba
wkadaba@kilpatricktownsend.com
Robert J. Artuz
rartuz@kilpatricktownsend.com
PATENT OWNER
Anthony Patek
pto@gutridesafier.com
Todd Kennedy
todd@gutridesafier.com