UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. FedEx Corporate Services, Inc., Petitioner

Transcription

1 Paper No. UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD FedEx Corporate Services, Inc., Petitioner v. Catharon Intellectual Property, LLC, Patent Owner Patent No. 6,065,046 Filing Date: February 3, 2015 PETITION FOR INTER PARTES REVIEW FedEx Corporate Services, Inc. ( FedEx ), requests inter partes review of claims 1, 7, 8, 12, 14, 16, 17, 21, 25, 26, 29, 30, and 35 ( the challenged claims ) of U.S. Patent No. 6,065,046 ( the 046 patent ) (Ex. 1001), now assigned to Catharon Intellectual Property, LLC ( Patent Owner ), in accordance with 35 U.S.C. 311-

2 319 and 37 C.F.R et seq. FedEx notes that this petition is filed concurrently with another petition for inter partes review for the 046 patent, which requests inter partes review of claims 1, 4-6, 8, 10, 11, 13, 14, 16, 17, 21-24, 26, 29-31, and 34. Dependent claims 7, 12, 25, and 35, which are addressed in this petition, are not addressed in the other petition. The required fees are submitted herewith in accordance with 37 C.F.R (a) and 42.15(a). If a required fee or any additional fees are due during this proceeding, the Office is authorized to charge such fees to Deposit Account No

3 TABLE OF CONTENTS Inter Partes Review TABLE OF AUTHORITIES... iii LIST OF EXHIBITS... v I. Introduction... 1 II. Mandatory Notices... 4 A. Real Party-in-Interest... 4 B. Related Matters... 4 C. Lead and Backup Counsel and Service Information... 5 III. Grounds for Standing... 5 IV. Statement of Precise Relief Requested for Each Claim Challenged... 6 A. Claims for Which Review Is Requested... 6 B. Statutory Grounds of Challenge... 6 C. The Person of Ordinary Skill in the Art... 6 D. Claim Construction Broadest Reasonable Interpretation (BRI) code module exchange means user-friendly programming code V. The 046 Patent VI. Claims 1, 7, 8, 12, 14, 16, 17, 21, 25, 26, 29, 30, and 35 of the 046 Patent Are Unpatentable A. Ground 1: Goodman Renders Obvious Claims 1, 7, 8, 12, 14, 16, 17, 21, 25, 26, 29, 30, and Claims 1 and Claims 8, 12, and Claims 16, 17, 21, and i -

4 4. Claims 26 and Claims 30 and B. Ground 2: Goodman in View of the W3C Working Draft for HTML3 Scripting Renders Obvious Claims 1, 7, 8, 12, 14, 16, 17, 21, 25, 26, 29, 30, and VII. CONCLUSION ii -

5 TABLE OF AUTHORITIES CASES Page(s) Aristocrat Techs. Austl. Pty Ltd. v. Int l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008)...7 Catharon Intellectual Property, LLC v. FedEx Corporate Services, Inc., Case No. 6:14-cv (E.D. Tex. Feb. 3, 2014)...4 Harmonic, Inc. v. Avid Tech., Inc., IPR , Paper 12 (PTAB Sept. 25, 2013)...8 In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997)...8 In re Swinehart, 439 F.2d 210 (CCPA 1971)...8 Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205 (Fed. Cir. 2003)...7 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)...7 STATUTES 35 U.S.C. 102(b)...4, U.S.C , 6 35 U.S.C. 112, 6...7, 8, 9 35 U.S.C , 6, 8 35 U.S.C U.S.C OTHER AUTHORITIES 37 C.F.R , 5 37 C.F.R (b) C.F.R iii -

6 Fed. R. Civ. P. 12(b)(1), (4), and (5)...5 MPEP iv -

7 LIST OF EXHIBITS Inter Partes Review Petition Exhibit 1001: U.S. Patent No. 6,065,046 to Feinberg et al. Petition Exhibit 1002: File History for Application No. 08/902,591 Petition Exhibit 1003: Petition Exhibit 1004: Petition Exhibit 1005: Petition Exhibit 1006: Petition Exhibit 1007: Petition Exhibit 1008: Petition Exhibit 1009: Petition Exhibit 1010: Petition Exhibit 1011: Petition Exhibit 1012: Petition Exhibit 1013: Petition Exhibit 1014: Original Complaint for Patent Infringement in Catharon Intellectual Property, LLC v. FedEx Corporate Services, Inc., Case No. 6:14-cv (E.D. Tex. Feb. 3, 2014). Declaration of Benjamin Goldberg Reserved Reserved Reserved Reserved Reserved Reserved World Wide Web Consortium ( W3C ) Working Draft for HTML3 Scripting (Feb. 8, 1996), available at ( HTML3 Scripting ) Danny Goodman, Danny Goodman s JavaScript Handbook. Foster City, CA: IDG Worldwide (1996) Chuck Mcmanis, How-To: The basics of Java class loaders, JavaWorld (Oct. 1, :00 AM PT), Patrick Chan & Rosanna Lee, The Java TM Class Libraries: An Annotated Reference (1996) - v -

8 Petition Exhibit 1015: Copyright Record for The Java TM Class Libraries: An Annotated Reference (U.S. Copyright Office) - vi -

9 I. Introduction The 046 patent purports to solve a problem faced by users in downloading and executing programs over a network: an entire program must be loaded before anything can be executed using the program. Ex at 2: According to the 046 patent, most applications can become very large, making downloading impractical due to the limited bandwidth of most Internet connections. Id. at 2: To purportedly solve this problem, claims of the 046 patent recite a system and method for interacting individual and independent machine-executable modules to be downloaded and executed individually. The 046 patent explains that [b]ecause executable code of the applications program is broken down into individually executable modules, the program can be downloaded piecemeal, module by module, as the individual modules are needed by the user s execution of the program. Accordingly, the user need not wait for the entire program to be downloaded before the user can start using the program. Id. at 4: Ex But the purported solution offered by the 046 patent was neither unique nor novel. An abundance of prior art existed at the time of invention that allowed for the separate download and execution of a program s modules at runtime. The patentee s ignorance of the technology at the time of invention stems from the patentee s misunderstanding of the prior art, as evidenced by inaccurate statements present in the 046 patent specification. Ex

10 2 Inter Partes Review For example, the specification incorrectly states that Java, Active-X and almost all other programming languages use a programming paradigm based on the C programming language. Id. at 2: In fact, many popular languages that existed at the time of the invention, such as JavaScript, Basic, Pascal, COBOL, Fortran, LISP, and Smalltalk, bore no relation to C. Also, although Java borrowed the syntax of C, the rest of the Java language including its handling of classes and objects bears no relation to C. Consequently, Java does not have the problems of C that the patentee attributes to Java s ties with C, such as the mandatory loading of an entire program before execution (see id. at 2:28-30). Ex Indeed, at the time of invention, Java already included dynamic class loading, in which only modules that were needed by a running program were loaded. Ex Furthermore, as shown by the prior art, Sun Microsystems, which developed Java, had already developed Java dynamic class loading using browsers over the Internet prior to the time of invention. Id. Applicants also made inaccurate statements during prosecution in order to overcome a final rejection of the claims. In a Final Office Action mailed August 16, 1999, the Examiner rejected claims 1, 2, 4-8, 10-17, 21-27, 29-32, and under 35 U.S.C. 103(a) over U.S. Patent No. 5,774,660 ( Brendel ) in view of U.S. Patent No. 5,727,950 ( Cook ). See Ex at In an Amendment filed December 16, 1999, Applicants stated that their invention required cooperation or interaction of the individual and independent machine-executable code modules and the

11 3 Inter Partes Review sharing of parameters. See id. at 873. Applicants distinguished this from Java applets, such as those in Cook, by alleging that this kind of interaction is not possible with the Java applets referred to in the prior art, specifically, Cook et al. See id. (emphasis added). But Java applets were able to interact and share parameters with one another at least as early as See, e.g., Ex at 55-57; Ex. 1015; Ex One example of Java applets interacting with one another involves a master applet [that] keeps track of a color and a bullet applet [that] paints an oval in the color maintained by the master [applet]. See, e.g., Ex at 56 (emphases added). Despite the ability for Java applets to cooperate and interact with one another, the Examiner allowed the claims based on Applicants misrepresentations. See Ex at 876 (Notice of Allowability dated January 3, 2000, indicating that the claims were allowed responsive to the... remarks filed on 12/16/99 ). Ex Java was not the only technology that embodied the claims before Patent Owner s application. More than a year before the application, the field of web browsers had started to introduce mechanisms for adding functionality to Web applications. In particular, the Netscape Navigator 2.0 browser introduced JavaScript and a book by Danny Goodman detailed aspects of using JavaScript to create Web applications. As described in this petition, Goodman s book, The JavaScript Handbook, described every aspect of the challenged claims more than a year before Patent Owner s application. And even if Patent Owner were to argue that a narrow claim interpretation should overcome the teachings of Goodman, notwithstanding no

12 basis for such an argument in the claims, the combination of Goodman and a World Wide Web Consortium Working Draft specification for HTML3 Scripting would overcome that argument and also render the claims obvious. Accordingly, because every limitation of the challenged claims was well known and described in prior art before the invention date of the 046 patent, the challenged claims should all be cancelled. Petitioner has filed another petition for IPR challenging claims of the 046 patent. IPR The two petitions have distinguishing characteristics. The primary reference in this petition, Goodman, and the secondary reference, HTML3 Scripting, are prior art to the 046 patent under 102(b), so Patent Owner cannot allege that the date of conception for its supposed invention preceded the applicable date of the prior art. Additionally, each petition presents grounds of rejection for claims that are not addressed in the other petition. II. Mandatory Notices A. Real Party-in-Interest FedEx is the real party-in-interest pursuant to 35 U.S.C. 312(a)(2) and 37 C.F.R. 42.8(b)(1). B. Related Matters In accordance with 37 C.F.R. 42.8(b)(2), Petitioner identifies the following USPTO and district court proceedings: Catharon Intellectual Property, LLC v. FedEx Corporate Services, Inc., Case No. 6:14-cv (E.D. Tex. Feb. 3, 2014). Ex

13 Petitioner has filed another petition for IPR based on different grounds of rejection and an overlapping but different set of claims. IPR C. Lead and Backup Counsel and Service Information In accordance with 37 C.F.R. 42.8(b)(3) and (b)(4), Petitioner identifies Jeffrey Berkowitz, Reg. No. 36,743, as lead counsel and Jia W. Lu, Reg. No. 61,543, as backup counsel. Mr. Berkowitz can be reached at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Freedom Dr., Reston, VA (phone: ); and Ms. Lu can be reached at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, 901 New York Avenue, NW, Washington, DC, (phone: ). III. Grounds for Standing Pursuant to 37 C.F.R (a), FedEx certifies that the 046 patent is available for inter partes review and that FedEx is not barred or estopped from requesting this review of the 046 patent challenging the patent claims on the grounds identified herein. This petition is timely filed under 35 U.S.C. 315(b), being filed within one year of service of Patent Owner s complaint alleging infringement. See Ex In addition, no Post-Grant Review has been instituted on the 046 patent. See 35 U.S.C. 311(c). 1 FedEx has contested in a Motion to Dismiss under Fed. R. Civ. P. 12(b)(1), (4), and (5) before the district court whether there is subject matter jurisdiction and proper 5

14 IV. Statement of Precise Relief Requested for Each Claim Challenged A. Claims for Which Review Is Requested FedEx respectfully requests review under 35 U.S.C. 311 of 1, 7, 8, 12, 14, 16, 17, 21, 25, 26, 29, 30, and 35 of the 046 patent, and the cancellation of these claims as unpatentable. B. Statutory Grounds of Challenge The challenged claims of the 046 patent are unpatentable under pre-aia 35 U.S.C The claim constructions, reasons for unpatentability, and evidence supporting this request are detailed below. C. The Person of Ordinary Skill in the Art A person of ordinary skill in the art relating to the 046 patent would be someone with a degree in Information Systems, Computer Science, or Electrical Engineering, or four years of professional system development experience, plus one year of work experience with computer networking, or equivalent additional formal education such as graduate studies, or work experience to replace formal education. Ex process and service of process of the Complaint; no return of service or legally sufficient notice has been filed to trigger the one-year bar for filing an inter partes review. 6

15 D. Claim Construction Broadest Reasonable Interpretation (BRI) Claim terms are given their ordinary and accustomed meaning as understood by one of ordinary skill in the art. Phillips v. AWH Corp., 415 F.3d 1303, (Fed. Cir. 2005) (en banc). A claim subject to inter partes review receives the broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R (b). And as such, the constructions in this proceeding may differ from the constructions applicable in district court. 2 Several limitations in the challenged claims are set forth in means-plus-function format and should be construed pursuant to 35 U.S.C. 112, 6. When construing a means-plus-function limitation, the claimed function must be identified, and then the corresponding structure that actually performs the claimed function must be identified in the specification. See Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003). A means-plus-function claim term is limited to the structures disclosed in the specification and equivalents. Id. [T]he corresponding structure for a claim for a computer-implemented function is the algorithm disclosed in the specification. Aristocrat Techs. Austl. Pty Ltd. v. Int l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (alteration in original) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)). 2 The broadest reasonable interpretation ( BRI ) should be applied to all claim terms, including those not specifically addressed in this petition. 7

16 To the extent that the specification may describe any structure corresponding to the claimed functions discussed below, it identifies general software-modified generic digital processing circuits. See, e.g., Ex at 16: An inter partes review, as sought by this petition, cannot address whether such structure meets the requirements of 35 U.S.C. 112, 6, so FedEx does not comment on it here. See 35 U.S.C. 311(b); see also Harmonic, Inc. v. Avid Tech., Inc., IPR , Paper 12 (PTAB Sept. 25, 2013). Also, functional claim language not limited to a specific structure covers all devices that are capable of performing the recited function. MPEP 2114; see In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Swinehart, 439 F.2d 210, (CCPA 1971) ( [I]t is elementary that the mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art. ). 1. code module exchange means Claims 16, 26, and 30 recite a code module exchange means ( CMEM ). Ex at 49:51-57, 50:59-64, 51:32-40, 52: Each claim should be construed under 112, 6 (Ex ) and recites its own function: claim 16 recites retrieving a single code module from among said machine-executable code modules and transferring said single code module to said remote computer in response to a request for said single code module from said remote computer (id. at 49:51-56); claim 26 recites cooperating with the code module exchange means of the other computer to transfer a single code module from among said machine-executable code 8

17 modules from said first computer to said second computer (id. at 50:59-64); and claim 30 recites obtain[ing] from said remote computer a further machine-executable code module of said applications program and executing said further machineexecutable code module upon reception thereof from said remote computer (id. at 51:32-40). In other words, the claimed function is transferring a code module upon request to the requesting computer. 3 Id. at 49:56-57 ( retrieving a single code module from among said machine-executable code modules and transferring said single code module to said remote computer ); see also id. at 7:59-65, 11:44-57, 12:2-5, 12:21-25, 12:40-49, 16:33-47, 16:48-65, 19: Ex The corresponding structure and proposed construction for the CMEM is computer software that performs the claimed function. Id. at 16:33-36 ( softwaremodified generic digital processing circuits ). While not necessarily sufficient to comply with 35 U.S.C. 112, 6, the construction is consistent with general statements in the specification and with claims 16, 26, and 30. Ex The specification does not disclose any structure or algorithm; rather, it defines the 3 Given the limited functions recited in the claims, Patent Owner cannot reasonably claim that the CMEM must provide all of the functions described in the specification dynamic downloading of executable code, program version control, client-to-client module exchange, virus and malicious program protection, data uploading, idle-time downloading, and code module caching. Id. at 19:

18 CMEM in purely functional terms: processes incoming requests for code modules of the applications program or programs stored in memory area 18. Id. at 11: The most that the specification says about the CMEM is that it proceeds with retrieving and transmitting a selected machine-executable code module only if the user authentification [sic] code in the request matches a user authentification [sic] code in the stored list. Id. at 12: Indeed, the specification expressly states that [t]hese functions are variously performed by the CMEM. Id. at 19: Not only is the CMEM described in purely functional terms, it is detached from any hardware whatsoever: It is to be noted that the various dedicated function blocks of processing units 30 and 54 are generally and preferably implemented as software-modified generic digital processing circuits. Accordingly, code-module exchanger 40 and 56 are characterizable as protocols for the exchange of code modules between a server 14 or 22 and a user computer 12. Id. at 16: Ex user-friendly programming code Although Petitioner does not agree that user-friendly programming code allows a person of skill in the art at the time of invention to determine, with reasonable certainty, the scope of a claim using that term, Petitioner submits that the term should be construed for purposes of this petition as follows. The BRI for userfriendly programming code is a software language that must be interpreted or translated for direct machine use. The specification permits this construction. Ex at 7:5-10 ( Where the machine-executable code modules are written in a 10

19 user-friendly programming code, each user computer includes an interpreter module implemented as software-modified generic digital processing circuits which translates the code modules from the programming code into machine code utilizable by the respective computer. ), 14:44-46 ( The code modules held in memory store 72 are in a user-friendly pseudocode language which must be translated or interpreted for direct machine use. ). The 046 patent gives one example of what the applicants considered a user-friendly programming code TenCORE, the language provided in the microfiche appendix of the application, which was derived from the TUTOR language. Ex ; Ex at 6:7-9 ( Generally, it is contemplated that machine-executable code modules are written in a user-friendly programming code such as TenCORE. ). V. The 046 Patent The 046 patent, which issued on May 16, 2000, was filed on July 29, 1997, as Application No. 08/902,591. The 046 patent does not claim the benefit of any earlier priority dates. Independent claim 1, and claims 4-7 depending therefrom, is directed to a method for optimally controlling storage and transfer of computer programs between computers on a network in which modules are transmitted from a first computer to a second computer. See Ex at 47: Independent claim 8, and claims depending therefrom, is directed to controlling storage and transfer of computer programs between computers on a network in which modules are transmitted from a 11

20 second computer to a first computer. See id. at 48: Independent claim 16, and claims 17 and depending therefrom, is directed to a computer system that transmits modules to a remote computer. Id. at 49: Independent claim 26, and claim 29 depending therefrom, like claim 1, is directed to a computer system in which a first computer transmits modules to a second computer. See id. at 50: Independent claim 30, and claims 31, 34, and 35 depending therefrom, also like claim 1, is directed to a computer system that transmits modules to a remote computer. See id. at 51: Independent claims 1, 8, 16, 26, and 30 recite the inventive aspects of the challenged claims, e.g., the transmission of interacting individual and independent machine-executable code modules. See, e.g., id. at 47:21-22 (claim 1), 48:32-33 (claim 8), 49:43-45 (claim 16), 50:56-58 (claim 26), 51:23-24 (claim 30). During prosecution, the examiner repeatedly rejected the challenged claims over prior art, see Ex at (1/29/99 Office Action) and (8/16/99 Office Action), and the patentee ultimately obtained allowance of the claims by adding the limitation interacting to its claimed modules, emphasizing that these interacting modules form a single program. See id. at (12/16/99 Amendment) and (1/3/00 Notice of Allowance). But as shown in Sections VI.A.1-5 below, the inventive aspects of the challenged claims, including the individual and independent modules that are also interacting, were well known in the art at the time of invention. Ex

21 Also, the dependent claims include peripheral features that even the patentee does not claim to be novel. For example, dependent claims 7, 12, 25, and 35 relate to translating a programming language into machine code prior to execution. And as shown in Sections VI.A below, these peripheral features were widely used in the art at the time of invention. VI. Claims 1, 7, 8, 12, 14, 16, 17, 21, 25, 26, 29, 30, and 35 of the 046 Patent Are Unpatentable Claims 1, 7, 8, 12, 14, 16, 17, 21, 25, 26, 29, 30, and 35 are rendered obvious by Danny Goodman, Danny Goodman s JavaScript Handbook (1st ed. 1996) ( Goodman ). Goodman was published no later than April 22, 1996, and is prior art under 35 U.S.C. 102(b) (pre-aia law applies to this patent). Ex Goodman teaches a wide range of applications and uses for JavaScript, including one in particular in which an application is defined as a group of separate files that may be separately transmitted from a server to a client at runtime, as requested by the client. See id. at Because no reason to combine multiple references is required to reject the claims under Ground 1, and because Goodman teaches the claimed elements, Petitioner believes Ground 1 is the preferred basis of rejecting the claims. If, however, Patent Owner argues that the JavaScript contained within HTML files as taught in Goodman somehow fall outside the claim element a plurality of interacting individual and independent machine-executable code modules, then Ground 2 overcomes such an argument. As Ground 2 explains, the same challenged 13

22 claims are rendered obvious by Goodman in view of HTML3 Scripting. HTML3 Scripting teaches that the JavaScript contained in HTML files in Goodman s Decision Helper Application could instead be contained in separate files. Ex at 5-6. Accordingly, the claims are obvious, whether considering Goodman alone or considering Goodman in view of HTML3 Scripting. A. Ground 1: Goodman Renders Obvious Claims 1, 7, 8, 12, 14, 16, 17, 21, 25, 26, 29, 30, and 35 Goodman renders obvious claims 1, 7, 8, 12, 14, 16, 17, 21, 25, 26, 29, 30, and 35. Ex Claims 1 and 7 [1.P] ( A method... ) The preamble is not limiting. Regardless, Goodman describes a method using JavaScript in which an application is separated into modules that are separately transmitted from a server computer to a client computer at runtime for execution. Ex at [1.1] Goodman teaches storing an applications program (e.g., the Decision Helper Application) in a nonvolatile memory of a first computer (e.g., server (not shown) connected to a user computer running a browser), said applications program being stored as a plurality of interacting individual and independent machine-executable code modules (e.g., files comprising the Decision Helper Application). Id. As Goodman describes, the applications program Decision Helper Application comprises a number of modules (contained within files ) with a defined structure. Id. at 440 ( the file structure of this 14

23 application. Table 20-1 gives a rundown of the files used in the Decision Helper. ); see also id. at Table 20-1 (reproduced below). Although Goodman does not explicitly describe the storage of files in nonvolatile memory, one skilled in the art would have understood this to be the case, at least because Goodman teaches the use of computer programs and JavaScript, and files relating to computer programs and JavaScript were stored in the nonvolatile memory of a computing system at the time of application of the 046 patent. See Ex In fact, the term file in the context of computer programs and JavaScript refers to a collection of data that is stored in nonvolatile memory. See id. Data that is stored in RAM or other volatile memory is not properly or even commonly referred to as a file. See id. Indeed, Goodman was published with an accompanying CD-ROM disc that contained, on nonvolatile memory, the files that were used as examples in the teachings of the text. Ex at 460. At the very least, it would have been obvious for one of ordinary skill in the art at the time of invention to store these files in a nonvolatile memory of the server in order to provide reliable storage of the files. See Ex

24 See Ex at 460. The HTML files that form the Decision Helper Application each comprise an independent machine-executable code module. Ex The modules are independent because each is separately retrieved and loaded by a browser on a remote computer, and when this is done, each module has a function for the application. See Ex The modules are interacting at least because they modify a common document object (see, e.g., Ex. 1012, ch. 8 at ), and because they store information in a common set of cookies, such that any one of the modules may store or retrieve information in any one of the cookies (id. at 459 (describing the design using cookies to maintain data globally ), 464 ( Each of the documents containing entry forms retrieves and stores information in the cookie. ), (describing how cookies allow storage and retrieval of information); 461 ( There is a 16

25 great deal of interdependence among these files. )). 4 While some of Goodman s modules may have some degree of relationship in that, for example, dhload.htm in turn loads dhnav.htm, dhicon.htm, dh1.htm, and dhhelp.htm (id. at 466), the files dh1.htm, dh2.htm, dh3.htm, dh4.htm, and dh5.htm alternatively display in the main frame (id. at 470) to implement various functionality of the application (id. at ). Under the BRI, the claims do not require that each module of an application be independent from every other module only that there be at least some independent modules. Because they are not loaded or displayed at the same time as each other, at least the files dh1.htm, dh2.htm, dh3.htm, dh4.htm, and dh5.htm are independent. Further, dhload.htm and dh1.htm may be viewed as independent modules because each is stored and loaded by a client computer separately. Ex The HTML files contain machine-executable code because they contain both HTML and embedded JavaScript code contained within <SCRIPT>... </SCRIPT> tags. Ex at (describing how browsers interpret the <SCRIPT> tags and other JavaScript code); (script contained within the <SCRIPT>... </SCRIPT> HTML tags). A browser also executes the 4 Goodman uses the phrase interdependence to describe the interacting nature of the modules they share information through a set of common cookies. Thus, the JavaScript modules contained in the Decision Helper Application HTML files are interacting individual and independent as claimed in the 046 patent. 17

26 18 Inter Partes Review JavaScript code when certain JavaScript event handlers are triggered, such as the onload or onclick handlers. Id. at (describing the onclick handler), (further describing event handlers), 137 (describing the onload handler); 82 (describing how an event handler may refer to a function defined elsewhere, in which case the event causes the browser to execute the function); see also Ex The dh1.htm and dh2.htm files, like each of the files of the Decision Helper Application, contain JavaScript code within <SCRIPT LANGUAGE ="JavaScript">... </SCRIPT> tags and within the onload and onchange event handlers. Ex at Thus, they are machine-executable code modules. [1.2][1.3] Goodman teaches in response to a request from a second computer transmitted over a network link, retrieving a selected one of said machine-executable code modules and only said selected one of said machine-executable code modules from said memory and transmitting said selected one of said machine-executable code modules over said network link to said second computer. For example, the Decision Helper Application is initially loaded by a user when the user opens the dhload.htm file, which causes the browser to create a window with four frames and load the following four files: dhnav.htm, dhicon.htm, dh1.htm, and dhhelp.htm. Id. at 466. Goodman teaches using navigation buttons to load additional portions of the Decision Helper Application after the initial set of pages are loaded. The dhnav.htm file contains code that creates navigation buttons on the screen. Id. ( [T]his document was designed as a client-side image map that has four regions scripted corresponding to the locations of the four buttons (see Figure 20-1).

27 19 Inter Partes Review There is one function connected to each button (see the following example). ). The machine-executable code within dhnav.htm determines which screen is currently in view and which screen is next (or previous) in the sequence. Id. at 467. The code contained within the gonext function, for example, assigns a new href value to the JavaScript location object. Id. The gonext function is called when a user clicks within coordinates defined in the dhnav.htm page. Id. at ( <AREA SHAPE="RECT" COORDS= "25,80,66,116" HREF="javascript:goNext( )"> ; [O]ur attributes point to the JavaScript functions defined in the Head portion of this document. When a user clicks on the rectangle specified by an <AREA> tag, the browser invokes the function instead [of an entirely new URL]. ). When the gonext function is executed by a user clicking on a navigation button, it causes the browser to load the next HTML page into the main frame. Goodman teaches the functionality of the JavaScript location object. Id. at The object represents information about the URL of any currently open window, including each of the frames within a window. Id. at 140. Setting the value of the location object instructs the browser to open the URL (location) set as the value. Id. at 141 ( [T]he way to point your browser to another URL is to set the window.location object to that URL.... ), 142 ( Using [the href] property (or just the window.location object reference) on the left side of an assignment statement is the JavaScript method of opening a URL for display in a window. ). Thus, in the Decision Helper Application dhnav.htm file, when the gonext function executes

28 20 Inter Partes Review (i.e., when a user clicks on that portion of the application), the function causes the browser (on the second computer) to request the next HTML file for the main frame of the application from the server (the first computer). For example, Goodman shows that the gonext( ) function requests a single code module, e.g., dh_.htm, where _ is a number between 1 and 4, each of which is a single code module, and the corresponding dh_.htm module is retrieved and transferred. Ex (explaining that in JavaScript, when location.href is assigned a URL (e.g., dh_.htm), then the file (e.g., dh_.htm) is loaded); see Ex at 467 ( parent.entryforms.location.href = dh + curroffset +.htm ); see also id. at 141 ( [T]he way to point your browser to another URL is to set the window.location object to that URL.... ), 142 ( Using [the href] property (or just the window.location object reference) on the left side of an assignment statement is the JavaScript method of opening a URL for display in a window. ). Goodman teaches retrieving and transferring a selected one... and only said selected one... code module[] in response to a request for the selected code module. As described, the result of the HTML and JavaScript files in Goodman s Decision Helper Application is that clicking next when displaying dh1.htm in the main frame causes the second computer to retrieve dh2.htm from the first computer, and only that file. See also Ex ; Ex at 149 (teaching using a browser to retrieve a remote resource over the network: For the best results, open a URL (for the upper frame) to a Web document on the network.... ), 150 ( The

29 21 Inter Partes Review host name of a typical URL is the name of the server on the network that stores the document you are viewing in the browser. ). Goodman teaches that the interaction between clients and servers uses HTTP. Id. at 151 ( The first component of any URL is the protocol being used for the particular type of communication. For World Wide Web pages, the HyperText Transfer Protocol (http) is the standard. ). It further teaches hosting the Decision Helper Application on a publicly available server on the Web. Id. at 23 ( The final four chapters are devoted to full-fledged JavaScript-enhanced applications. All four examples also run on my Web site ( so you can use them from the CD-ROM or see how well they work on-line from a server. ). One of ordinary skill in the art would understand that the downloading of a file on a webpage to the user computer (second computer) includes first transmitting an HTTP request over a network link to retrieve the file from the memory on the server (first computer), in response to which the server (first computer) transmits the requested file via an HTTP response to the user computer (second computer) over the network. See Ex Also, one of ordinary skill in the art would understand that the HTTP request would constitute the claimed request because an HTTP request from a browser, generated when a user selects a link in the browser or JavaScript code sets a new value for the window.location object, is a request to retrieve the resource identified by the link. See Ex Further, any reference to a web server also teaches the use of HTTP requests at least because the Web operates on a collection of

30 22 Inter Partes Review clients, servers, and documents that are accessible over the Internet using the HTTP protocol. See Ex Claim 7 depends from claim 1 and further recites wherein said machine-executable code modules are written in a user-friendly programming code, further comprising translating said selected one of said code module at said second computer from said programming code into machine code directly utilizable by said second computer. To the extent it is possible to reasonably determine whether a particular programming language provides for user-friendly programming code, both HTML and JavaScript fall within that classification. Ex For example, browsers capable of processing JavaScript, as with Netscape Navigator 2.0 described in the Goodman reference, contain an interpreter for translating the JavaScript code into machine code that is directly utilizable by the computer running the browser. Ex at 37 ( [T]he browser software interprets the JavaScript commands and statements from the text files.... [and] contains all the mechanisms to convert your code into actions. ), 47 ( The only requirement for the browser is that it be compatible with the first release of JavaScript. Netscape s Navigator 2.0 is the first to include JavaScript support. Most other modern browser versions to be released later in 1996 will likely include JavaScript support as well. ); Ex Accordingly, based on the only possible construction for userfriendly programming code as presented above, both HTML and JavaScript fall within that term because they are interpreted languages. Id.

31 2. Claims 8, 12, and 14 [8.P] ( A method... ) The preamble is not limiting. Notwithstanding, Goodman describes a method using JavaScript in which a webpage is separated into modules that are separately transmitted from a server computer to a client computer at runtime for execution. Ex at [8.1] Goodman teaches storing a portion of an applications program in a first computer, said applications program comprising a plurality of interacting individual and independent machineexecutable code modules, only some of said machine-executable code modules being stored in said first computer. For example, Goodman describes a first computer (e.g., a user computer running a browser) that loads the dhload.htm file. Ex. 1004; Ex at The dhload.htm file is a portion of an applications program (e.g., the Decision Helper Application). Ex at 460 ( the file structure of this application. Table 20-1 gives a rundown of the files used in the Decision Helper. ); see also id. at Table 20-1; Ex The HTML files containing JavaScript that comprise the applications program Decision Helper Application described in Chapter 20 of Goodman at least the files dh1.htm, dh2.htm, dh3.htm, dh4.htm, and dh5.htm each comprise an independent machine-executable code module. The modules are independent because each is separately retrieved and loaded by a browser on a remote computer, and when loaded by a browser, each module has a function for the application. See Ex The modules are interacting because they modify a common document 23

32 24 Inter Partes Review object (see, e.g., Ex. 1012, ch. 8 at ) and store information in a common set of cookies, such that any one of the modules may store or retrieve information in any one of the cookies. Id. at 464 ( Each of the documents containing entry forms retrieves and stores information in the cookie. ); id. at 461 ( There is a great deal of interdependence among these files. ). While some of Goodman s modules may have some degree of relationship in that, for example, dhload.htm in turn loads dhnav.htm, dhicon.htm, dh1.htm, and dhhelp.htm (id. at 466), the files dh1.htm, dh2.htm, dh3.htm, dh4.htm, and dh5.htm alternatively display in the main frame (id. at 470) to implement various functionality of the application (id. at ). Under the BRI, the claims do not require that each module of an application be independent from every other module only that there be at least some independent modules. Because they are not loaded or displayed at the same time as each other, at least the files dh1.htm, dh2.htm, dh3.htm, dh4.htm, and dh5.htm are independent. Further, dhload.htm and dh1.htm may be viewed as independent modules because each is stored and loaded by a client computer separately. Ex The HTML files contain machine-executable code because they contain both HTML and embedded JavaScript code, contained within <SCRIPT>... </SCRIPT> tags. Ex at (describing how browsers interpret the <SCRIPT> tags and other JavaScript code); (script contained within the <SCRIPT>... </SCRIPT> HTML tags). A browser also executes the JavaScript code when certain JavaScript event handlers are triggered, such as the

33 25 Inter Partes Review onload or onclick handlers. Id. at (describing the onclick handler), (further describing event handlers), 137 (describing the onload handler); 82 (describing how an event handler may refer to a function defined elsewhere, in which case the event causes the browser to execute the function); see also Ex The dh1.htm and dh2.htm files, like each of the files of the Decision Helper Application, contain JavaScript code within <SCRIPT LANGUAGE ="JavaScript">... </SCRIPT> tags and following the onload and onchange event handlers. Ex at Thus, they are machine-executable code modules. Also, because the Decision Helper Application contains alternative files for display in the main frame dh1.htm, dh2.htm, dh3.htm, dh4.htm, and dh5.htm when the browser on the user s computer loads the dh1.htm file, before the dh2.htm file is not loaded, only a portion of the application s independent files are stored on the first computer. Ex [8.2] Goodman teaches executing at least one of said machine-executable code modules on said first computer. When a user on the first computer navigates to a particular HTML file containing <SCRIPT>... </SCRIPT> HTML tags (e.g., dhload.htm ), the browser loads and executes at least a script contained within those tags. Ex ; Ex at The browser also executes script following the onload handler, an element of the <BODY> or <FRAMESET> HTML tag. Id. at 137. For example, when the browser loads the dh1.htm file, it executes the loaddecisionname function, which retrieves the name from a shared cookie, using

34 26 Inter Partes Review an empty string if the value is not present. Id. at 470. When the browser loads the dh2.htm file, it executes the loadalternatives function, which retrieves the alternatives values from a set of shared cookies. Id. at 472. Similarly, when the dhload.htm file is loaded, the browser executes the getdecisionname function, and if that returns an empty value, executes the initializecookies function. Id. at 466 ( if getdecisionname( ) == null) { initializecookies( ) } ). [8.3] Goodman teaches transmitting, to a second computer via a network link, a request for a further machine-executable code module of said applications program. Goodman teaches hosting the Decision Helper Application on a publicly available server on the Web (the second computer). Id. at 23 ( The final four chapters are devoted to full-fledged JavaScript-enhanced applications. All four examples also run on my Web site ( so you can use them from the CD- ROM or see how well they work on-line from a server. ). Thus, when Goodman teaches using navigation buttons to load additional portions of the Decision Helper Application after the initial set of pages are loaded, that teaching involves transmitting a request to the server (a second computer via a network link) for a further machineexecutable code module of the application. For example, Goodman teaches the dhnav.htm file, which is loaded as an HTML frame during the initial application loading by the dhload.htm file prior to loading the dh1.htm file. Id. at 466 ( <FRAME NAME="navbar" SRC="dhNav.htm" SCROLLING=no> ). The dhnav.htm file, in turn contains code that creates navigation buttons on the

35 27 Inter Partes Review screen. The machine-executable code within dhnav.htm determines which screen is currently in view and which screen is next (or previous) in the sequence. Id. at 467. The code contained within the gonext function, for example, assigns a new href value to the JavaScript location object. Id. The gonext function is called when a user clicks within coordinates defined in the dhnav.htm page. Id. at ( <AREA SHAPE="RECT" COORDS= "25,80,66,116" HREF="javascript:goNext( )"> ; [O]ur attributes point to the JavaScript functions defined in the Head portion of this document. When a user clicks on the rectangle specified by an <AREA> tag, the browser invokes the function instead [of a new URL]. ). Ex When the gonext function is executed by a user clicking on a navigation button, it causes the browser to load the next HTML page into the main frame. Goodman teaches the functionality of the JavaScript location object. Id. at The object represents information about the URL of any currently open window, including each of the frames within a window. Id. at 140. Setting the value of the location object instructs the browser to open the URL (location) set as the value. Id. at 141 ( [T]he way to point your browser to another URL is to set the window.location object to that URL.... ), 142 ( Using [the href] property (or just the window.location object reference) on the left side of an assignment statement is the JavaScript method of opening a URL for display in a window. ). Thus, in the Decision Helper Application dhnav.htm file, when the gonext function executes

36 28 Inter Partes Review (i.e., when a user clicks on that portion of the application), the function causes the browser to request the next HTML file for the main frame of the application. The result of the HTML and JavaScript files in Goodman s Decision Helper Application is that clicking next when displaying dh1.htm in the main frame causes the browser to retrieve and execute dh2.htm. Ex The dh1.htm and dh2.htm files, like the other files that make up the Decision Helper Application, contain JavaScript code within <SCRIPT LANGUAGE ="JavaScript">... </SCRIPT> tags and following the onload and onchange event handlers. Ex at Thus, they are machine-executable code modules. Ex As another example, Goodman describes a dhload.htm file, which contains a frameset. Ex at 466 ( <FRAMESET... <FRAME NAME="entryForms" SRC="dh1.htm">... </FRAMESET> ). Loading the frameset causes the browser that has loaded the dhload.htm file to submit another HTTP request to the server, requesting, for example, the dh1.htm file. Ex The dh1.htm file in Goodman, like the dhload.htm file, contains JavaScript code within <SCRIPT LANGUAGE ="JavaScript">... </SCRIPT> tags. Ex at Thus, it is a machine-executable code module. Further, dhload.htm and dh1.htm may be viewed as independent modules because each is stored and loaded by a client computer separately. Ex [8.4][8.5] Goodman teaches receiving said further machine-executable code module at said first computer from said second computer over said network link and executing said further

37 29 Inter Partes Review machine-executable code module on said first computer. For example, when the first computer loads the frameset contained in the dhload.htm file and the first computer sends a request for a further machine-executable code module (e.g., the dh1.htm file) to the second computer, it receives the further machine-executable code module. Ex Once the browser loads the dh1.htm file as instructed, the first computer executes the JavaScript code contained within the module. In this example, the dh1.htm file contains JavaScript that executes once the browser loads the HTML file. Ex at 470 ( onload="loaddecisionname( ); document.forms[0].decname.focus( )" ), 137 (explaining that the onload event handler causes the browser, once a page loads, to execute the code provided to the handler). Ex Claim 12 depends from claim 8 and further recites wherein said machine-executable code modules are written in a user-friendly programming code, further comprising translating said selected one of said code module at said second computer from said programming code into machine code utilizable by said second computer. To the extent it is possible to reasonably determine whether a particular programming language provides for user-friendly programming code, JavaScript falls within that classification. Ex For example, browsers capable of processing JavaScript, as with Netscape Navigator 2.0 described in the Goodman reference, contain an interpreter for translating the JavaScript code into machine code that is directly utilizable by the computer running the browser. Ex at 37 ( [T]he browser software interprets the JavaScript commands and statements from the text files.... [and] contains all the

38 mechanisms to convert your code into actions. ); 47 ( The only requirement for the browser is that it be compatible with the first release of JavaScript. Netscape s Navigator 2.0 is the first to include JavaScript support. Most other modern browser versions to be released later in 1996 will likely include JavaScript support as well. ); Ex Claim 14 depends from claim 8 and further recites wherein the storing of said portion of said applications program in said first computer includes caching said code modules in a nonvolatile memory of said first computer. Goodman teaches caching said code modules in a nonvolatile memory at least because Goodman teaches that HTML files containing JavaScript (pages) may be stored in the browser s disk cache. Ex at 208 ( Text objects (including the related text area object) have one unique behavior that can be very important to some document and script designs. Even if a default value is specified for the content of a field (in the VALUE = attribute), any text entered into a field by a user or script persists in that field as long as the document is cached in the browser s disk cache. Therefore, if users of your page enter values into some fields, or your scripts display results in a field, all that data will be there later, even if the user reloads the page or navigates to dozens of other Web pages or sites. ); Ex