PTAB

IPR2014-00299

SAP America Inc v. Clouding Corp

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Enabling Data Access and Manipulation from a Pervasive Device
  • Brief Description: The ’481 patent discloses methods and systems for allowing pervasive computing devices (e.g., PDAs) to access and manipulate data. The system uses a series of proxy servers to obtain data requested by a device and returns the data along with information about available data manipulation operations, such as printing or faxing.

3. Grounds for Unpatentability

Ground 1: Anticipation over Schilit - Claims 1-2, 25, 28, and 50-57 are anticipated by Schilit under 35 U.S.C. §102(e).

  • Prior Art Relied Upon: Schilit (Patent 6,670,968).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Schilit, which was not considered during prosecution, discloses every limitation of the challenged claims. Schilit describes an "m-link" browser on a mobile device that receives a data access request (e.g., a URL), accesses a server to obtain the requested data, determines context-appropriate services (e.g., printing, faxing) from a services database, and returns both the requested data and a list of available services to the device. This process directly maps to the claimed method of receiving a request, obtaining data, determining available manipulation operations and their locations, and returning this information to the pervasive device. Dependent claims related to user preferences (claim 28) and content type (claim 25) are also taught by Schilit, which discloses making services dependent on user characteristics and the format of the requested document.

Ground 2: Obviousness over Schilit in view of Hutsch - Claim 32 is obvious over Schilit in view of Hutsch under 35 U.S.C. §103.

  • Prior Art Relied Upon: Schilit (Patent 6,670,968) and Hutsch (Patent 7,269,664).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that claim 32 adds the limitation of determining available operations for a "user group" of which the user is a member. While Schilit teaches determining services based on an individual user's preferences, Hutsch explicitly discloses a system that includes a configuration server for storing user profiles and settings for "specific user groups or devices." Hutsch’s system enables data access and manipulation, similar to Schilit.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings because both references address the common problem of enabling pervasive devices to access and manipulate remote data via proxies. A POSITA would find it obvious to incorporate Hutsch’s known technique for user group-based customization into Schilit's context-aware service system to provide more tailored services in a multi-user environment.
    • Expectation of Success: The combination represented a predictable application of known design choices. Implementing user group profiles as taught by Hutsch into the service determination logic of Schilit was a straightforward enhancement with a high expectation of success.

Ground 3: Obviousness over Barrett in view of Schilit - Claims 1-2, 25, 28, and 50-57 are obvious over Barrett in view of Schilit under §103.

  • Prior Art Relied Upon: Barrett ("Intermediaries: New Places For Producing And Manipulating Web Content," a 1998 journal article) and Schilit (Patent 6,670,968).
  • Core Argument for this Ground:
    • Prior Art Mapping: Barrett discloses a foundational framework of using programmable proxy servers ("intermediaries") to intercept requests from pervasive devices (like a PalmPilot), obtain web content, and manipulate it for optimal display (e.g., content distillation). Petitioner argued this teaches the core steps of receiving a request, obtaining data, and returning it. Schilit was argued to supply the remaining limitations: specifically, the functionality of dynamically determining context-appropriate data manipulation operations (printing, faxing) and their locations, and returning that information along with the data.
    • Motivation to Combine: A POSITA would be motivated to improve Barrett’s more general content-distillation proxy server by incorporating the advanced functionality from Schilit. Adding dynamic, context-aware service determination was a natural and expected evolution in the field to make such proxy systems more useful for mobile users.
    • Expectation of Success: Combining Schilit's specific service-determination features with Barrett's established proxy framework was a predictable integration of complementary technologies.
  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 1-2, 25, 28, and 50-57 are obvious over Flynn in view of Schilit, and claim 32 is obvious over Flynn in view of Hutsch. These grounds relied on similar rationales, with Flynn disclosing a "Satchel system" for mobile access to documents and services.

4. Key Claim Construction Positions

  • Petitioner adopted the claim constructions set forth by the PTAB in its decision to institute a prior, terminated IPR on the ’481 patent (IPR2013-00075).
  • For the multiple "means for" limitations in the system claims (e.g., claim 50), Petitioner identified the corresponding structures from the ’481 patent’s specification.
    • "means for receiving," "means for obtaining," and "means for returning": These functions were argued to correspond to a "protocol proxy" as described in the specification.
    • "means for determining": This function was argued to correspond to either the "protocol proxy" or a "data manipulation server (DMS)."
  • These constructions were critical to Petitioner's arguments, as they allowed mapping the functions of prior art proxy servers (like those in Schilit, Barrett, and Flynn) to the claimed "means."

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the PTAB should institute trial because it had already done so on the same claims and grounds in a prior IPR (IPR2013-00075). That earlier case was terminated due to settlement shortly after institution. Petitioner asserted that because the Board had already found a "reasonable likelihood" of prevailing on these grounds, and because the instant petition presented the same evidence and arguments, institution was warranted.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-2, 25, 28, 32, and 50-57 of the ’481 patent as unpatentable.