SAP America Inc v. Clouding Corp

1. Case Identification

• Case #: IPR2014-00300
• Patent #: 7,254,621
• Filed: December 26, 2013
• Petitioner(s): SAP America Inc.
• Patent Owner(s): Clouding IP, LLC
• Challenged Claims: 1-9 and 17

2. Patent Overview

• Title: Enabling Data Access and Manipulation From a Pervasive Device
• Brief Description: The ’621 patent relates to methods and systems for enabling pervasive computing devices to access and manipulate data. The invention uses a series of proxy servers to obtain data requested by a device and returns information regarding available data manipulation operations (e.g., printing, faxing) for that data.

3. Grounds for Unpatentability

Ground 1: Anticipation by Schilit - Claims 1-9 and 17 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 disclosed every limitation of the challenged claims. Schilit described a system with a mobile web browser ("m-link") that accesses a server to retrieve a document identified by a URL. The server then parsed the document, separated content from hyperlinks, and determined "context-appropriate services" such as printing or faxing. These services were then "bundled with" the hyperlinks and provided to the mobile device for display. Petitioner asserted that Schilit's disclosure of providing a list of service links, which were identified by URLs, directly met the claim limitation of "providing references to the determined data manipulation operations." The argument extended to dependent claims by mapping Schilit's teachings on determining services based on location, user, or content type.

Ground 2: Obviousness over Flynn and Schilit - Claims 1-9 and 17 are obvious over Flynn in view of Schilit.

• Prior Art Relied Upon: Flynn ("The Satchel System Architecture: Mobile Access to Documents and Services," a 2000 journal article) and Schilit (Patent 6,670,968).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Flynn disclosed a "Satchel system" allowing a pervasive device to access remote documents and invoke services on them. Flynn’s system used infrared gateways to determine device location and provide context-aware services through an "Enquiry Service" that returned HTML forms for service execution. While Flynn taught a complete system, Petitioner argued Schilit supplied the specific web-based techniques for manipulating content and providing service links that would have been obvious to integrate. Schilit's teachings on parsing web content and returning selectable service links (URLs) would be a logical implementation for Flynn's more general HTML service forms.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Flynn and Schilit because they shared the common purpose of obtaining data for a pervasive device and providing options to execute services on that data. A POSITA would have been motivated to apply Schilit's more advanced and user-friendly web browsing and service-linking techniques to improve the functionality and interface of Flynn's established framework for context-aware services.
  • Expectation of Success: Petitioner asserted a high expectation of success, as applying Schilit’s known web browsing advancements to Flynn’s system was a predictable and straightforward integration of complementary technologies.

Ground 3: Obviousness over Barrett and Schilit - Claims 1-9 and 17 are obvious over Barrett in view of Schilit.

• 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 disclosed a "Web intermediary framework" that used a programmable proxy server to optimize web browsing on pervasive devices like the PalmPilot. Barrett's proxy could manipulate content by, for example, "distilling" it to remove unneeded color depth before sending it to the device. Petitioner argued that a POSITA would find it obvious to enhance Barrett's content-manipulating proxy with the functionality taught by Schilit. Schilit taught a proxy-like system that also manipulated content but added the crucial step of determining and providing links to available data manipulation services (e.g., printing).
  • Motivation to Combine: A POSITA would combine the references because both used proxy servers to manipulate web content for pervasive devices. It would have been a natural and expected improvement to enhance Barrett's proxy—which focused on content transformation for display—by adding Schilit's functionality for dynamically discovering and presenting services related to that content. This would create a more robust and useful tool for the end-user.
  • Expectation of Success: Success would be expected as the combination involved improving one proxy server's known functionality with another's known, complementary functionality, a common practice in the field of web and network services.

4. Key Claim Construction Positions

• Petitioner adopted several constructions from the Board's institution decision in a prior, terminated IPR (IPR2013-00088) involving the same patent.
• "references to the determined data manipulation operations": This term was construed as "an identifier, such as a URL, an e-mail address, or a combination of an e-mail address and subject line, specifying a location of a data manipulation operation or service on a computer network." This construction was central to Petitioner's arguments, as it allowed the service links and URLs disclosed in Schilit to be directly mapped onto this key claim limitation.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-9 and 17 of the ’621 patent as unpatentable.